Re Kamyr Inc

This matter concerns trade mark application number 619697, lodged by KAMYR, INC, for the mark LO-SOLIDS in Class 7, relating to paper pulp producing and handling equipment, specifically digesters and their component parts. The application was initially examined under the Trade Marks Act 1955, but due to its pendency before 1 January 1996, the registrability was subsequently considered under the Trade Marks Act 1995. An examiner raised objections under paragraphs 24(1)(c), (d), and (e) of the former Act, asserting that the mark was the phonetic equivalent of "LOW SOLIDS," a descriptive term for the goods.

The legal issues before the delegate of the Registrar of Trade Marks were whether the trade mark LO-SOLIDS was capable of distinguishing the applicant's goods from those of other persons, as required by subsection 41(2) of the Trade Marks Act 1995. This involved assessing whether the mark was inherently adapted to distinguish the goods, pursuant to subsection 41(3), and if not, considering whether it had acquired distinctiveness through use. The delegate was required to determine if the mark fell into the category of signs not inherently adapted to distinguish, as outlined in the explanatory note to subsection 41(6), or if it possessed a "scintilla of inherent adaptation to distinguish" under subsection 41(5), necessitating an assessment of combined factors including inherent distinctiveness, use, and other circumstances.

The delegate reasoned that while the mark LO-SOLIDS was the phonetic equivalent of "LOW SOLIDS," the hyphenated single word form, rather than the two separate words, meant it just escaped being a sign wholly ordinarily used to indicate a characteristic of the goods. Consequently, the mark was not considered to be wholly devoid of inherent distinctiveness and thus did not fall under subsection 41(6). Instead, the delegate applied subsection 41(5), requiring consideration of the inherent distinctiveness, use, and other circumstances. Despite the applicant's submissions and a US registration, the delegate found no sufficient evidence of use or intended use to demonstrate that the mark distinguished the applicant's goods. The applicant's own brochure used "LO-SOLIDS COOKING" to describe the process, and the US registration was not considered determinative.

Ultimately, the delegate was not satisfied that the trade mark LO-SOLIDS did or would distinguish the applicant's goods, as required by paragraph 41(5)(c). Therefore, under subsections 33(3) and (4) of the Trade Marks Act 1995, the application for registration of the trade mark was rejected.