Re Nexoft Corporation

[1994] ATMO 1

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application number 534301 to register a trade mark in the name of NEXOFT CORPORATION

Application No. 534301 was lodged on 14th May, 1990 by NEXOFT CORPORATION, incorporated in California, of 11105 Dana Circle, Cypress, California, 90630, United States of America.  It sought registration of the mark:

PORTABLE
  CARRY-ALL

in respect of "containers for computer games" in class 28.  It claims priority date of 20th December, 1989 under the provisions of s.109 of the Act.

An examiner's report of 27th August, 1991 objected to the mark's registrability in terms of paragraphs 24(1)(c), (d) and (e) of the Act on the grounds that the words comprising the mark have a direct reference to the character or quality of the goods specified by describing the goods as being portable containers.  On 4th June, 1993 a statutory declaration was lodged by Mr. Samuel Stewart of Playcorp Pty. Ltd., the Australian distributor, concerning use of the applicant's mark.  After considering the evidence, the examiner issued a further report stating that the mark fails to qualify for registration under the provisions of sub-ss.24(2) and 26(2) of the Act.  Subsequently, the applicant requested to transfer the application to Part B of the Register to which the examiner responded that the applicant's mark fell into the category of marks which must be regarded as being inherently devoid of distinctiveness, and therefore it was not registrable in Part B despite use of the mark.  A further statutory declaration was provided by Mr. Kenneth Edward Niblett, a solicitor, relating  to the subject trade mark not being generic, together with submissions from the applicant's attorneys, Spruson & Ferguson, patent and trade mark attorneys of Sydney, requesting that the mark be reconsidered for registration in Part B.  Should the submissions be unsuccessful, the attorneys waived the applicant's right to a hearing and requested a decision on the written record.
Decision
In order to evaluate registrability of a mark in Part B of the Register, it must be determined whether the mark is one which at some time in the future will satisfy the requirements of sub-s.26(2) as to inherent distinctiveness and distinctiveness in fact (see Burger King Corporation v. Registrar of Trade Marks (1973) 128 CLR 417).

The question of the mark's adaptability to distinguish will be resolved by considering the mark in light of the well recognized test of deciding whether the nature of the mark is such that no other trader would wish to adopt the mark, without improper motive, for use in connection with the same or similar goods (see Clark Equipment Company v. Registrar of Trade Marks (1964) 111 CLR 511).

The definitions of the word CARRY-ALL in various dictionaries appear as follows:  The Macquarie Concise Dictionary  - ' n. a portable case or bag'; The Random House Dictionary of the English Language  - 'a large basket, bag, etc.'; The Collins English Dictionary  - ' n. the usual U.S. and Canadian name for a holdall'.  And 'holdall' in the same dictionary: 'n. Brit. a large strong bag or basket.  Usual U.S. and Canadian name: carryall'.

As with many words that originated in the United States of America, the meaning of the word CARRY-ALL is easily understood by the vast majority of the Australian population, and a search for its meaning would not be required (see Mark Foy's Ltd. v. Davies Coop & Co. Ltd. (1956) 95 CLR 190). Having regard to what constitutes directly descriptive words in Mark Foy's v. Davies Coop, supra, where Dixon CJ stated at p. 195:

The test must lie in the probability of ordinary persons
                 understanding the words, in their application to the goods,
                 as describing or indicating or calling to mind either their

nature or some attribute that they possess,
 as well as  comment by his Honour in an earlier case Howard Auto-Cultivators Ltd. v. Webb Industries Pty. Ltd. (1946) 72 CLR 175 at 184, that:

... the meaning of all words is governed by their context
                 and how words are understood depends upon the universe
                 of discourse,

I believe that members of the Australian community will interpret the mark as directly referring to the applicant's goods by describing the goods as being portable bags or containers for computer games.  Consequently, I am in agreement with the examiner's conclusions as to the descriptive nature of the mark PORTABLE CARRY-ALL, which is clearly supported by the meanings of the word CARRY-ALL stated in the recognized English language dictionaries. 

Considering distinctiveness in fact, I turn first to the statutory declaration with an exhibit lodged by Mr. S. Stewart.  He declares that the applicant commenced using the subject mark in Australia on the goods specified in March, 1991, and that since that period 25,000 units of the goods have been sold, the wholesale selling price being A$11.95 per unit and A$19.95 representing the recommended retail selling price per unit.  No advertising figures have been provided.  On the last page of the catalogue affixed as exhibit "A" to the declaration is shown the mark in use on a container which is described as: "The complete portable organiser for your GAME BOY.  This cleverly designed high tech carry all stores all your GAME BOY components including GAME BOY ear phones, Game Link cable, five of your favourite games, plus it ensures maximum protection for your investment".

Mr. Niblett states in his declaration that on requesting a PORTABLE CARRY-ALL in a video game department of the Virginia Megastore in Pitt Street Mall, Sydney, he was shown a product marketed by Ascii, which was available in two versions, one for the GAME BOY console and the other for the GAME GEAR console.  He had also ascertained from the sales assistant that the name PORTABLE CARRY-ALL was exclusive to the Ascii, and that other manufacturers used other names to designate similar goods. 

The catalogue appended to Mr. Stewart's declaration reinforces use of the words 'portable carry all' in a descriptive sense, i.e. a portable bag or container with specially designed compartments for computer games and accessories.  In view of the moderate exposure in Australia of the applicant's goods bearing the subject mark over a period of approx. two years, I conclude that the extent to which the mark consisting of purely descriptive words is unadapted to distinguish the applicant's goods, outweighs the extent to which its use establishes any capacity to become distinctive in terms of s.25 of the Act.   In this regard I refer to the words of Gibbs J. in Burger King, supra, at p. 426 that

"if [a mark] is simply a laudatory or descriptive epithet,
           registration will generally be refused even if there is
           evidence of such user as has in fact rendered the word
           distinctive of the applicant's goods".

In view of my earlier comments, I consider the words PORTABLE CARRY-ALL to be most apt for describing portable containers for computer games, and therefore to be words which other manufacturers are likely to desire for use in relation to similar goods in ordinary course of their business, even though at present other words are chosen by traders to name such products, as declared by Mr. Niblett.  As such, the applicant's mark belongs to the category of words which are so adapted for descriptive purposes that even 100% distinctiveness in fact would not justify their registration (see Clark Equipment v. Registrar of Trade Marks, supra).

As I have found that the subject mark does not meet the requirements of section 25 of the Act, I must refuse registration of this application.

V. Zars
Acting Hearing Officer

10 January 1994