Re Sabra International Pty Ltd

[1992] ATMO 78

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application number 505285 to register a trade mark in the name of SABRA INTERNATIONAL PTY LTD

On 21 February 1989 SABRA INTERNATIONAL PTY LTD (the proprietor) of 256B Canterbury Road Surrey Hills Victoria lodged application 505285 to register a trade mark for goods in Class 32.   The goods to be covered by the application have been amended to 'Fruit juice,  carbonated and non-carbonated soft drinks including tea in ready to drink form included in this class;  natural water'.   The mark, which is shown below, has as its principle elements the word SUNRAYSIA and a stylised smiling face or sun.

In her first report the examiner raised an objection that the mark was not distinctive because of the prominence of the words SUNRAYSIA and SPARKLER - it was said the goods were described as sparkling beverages from the Sunraysia district of Victoria and that the mark as a whole was not distinctive.   Following lodgement of evidence of use, the applicant was advised that the mark could be accepted in Part B of the Register with disclaimers of the words SUNRAYSIA, SPARKLER and HAVE A NICE DAY and an endorsement allowing variation to the flavour of the drink.   The applicant did not agree with the requirement for a disclaimer of SUNRAYSIA as a condition of registration, claiming that the evidence provided clearly established that the word is distinctive.

When the disclaimer requirement was maintained, the applicant requested a decision on the written record and waived its right to be heard in the matter.

It was agreed by the examiner and the applicant that the mark as a whole is capable of becoming distinctive so I must consider the geographic significance of the word SUNRAYSIA and the registrability of the mark as a whole.   In the response to the first report, the applicant agreed that the Sunraysia district in Victoria is primarily known for production of citrus fruit.   It was submitted that the beverages which are their goods of interest are one step removed from the fruit from which these are made and the word, therefore, is capable of becoming distinctive and so registrable in Part B without a disclaimer of SUNRAYSIA.  

To determine whether a mark is distinctive or capable of becoming distinctive I must consider the two paragraphs of sub-s.26(2).   These are a) is the mark adapted to distinguish?   and b) by use or any other circumstance does it in fact distinguish?   These questions were discussed by Gibbs J in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417.

The inherent distinctiveness of SUNRAYSIA SPARKLER has been considered before in Re Application by Sabra International Pty Ltd 18 IPR 181. Mr Forno, the hearing officer, found here that the mark was descriptive of sparkling drinks from the Sunraysia area. The goods claimed by this application are slightly wider than those in the above decision but, I think, do not differ sufficiently for me to find that the word has no geographic significance in respect of them. The matter might be different if 'Tea' were the goods of interest as it may be possible to show that it is unlikely that this crop could be produced in the region. (See Tijuana Smalls (1973) RPC 453). But 'tea in ready to drink form' must be included in the term 'non-alcoholic beverage'. I do not think that a geographic word could ever be registered as a trade mark for 'natural water'. Mr Forno, noted in Sabra International supra that the 1989 district telephone book listed more than one hundred business firms and associations using the word SUNRAYSIA.   He also found that there were seven soft drink manufacturers listed in the area.   Comparing this with the 1990 listings I find the situation unchanged.   Soft drink manufacturers operate in Merbein, Imrymple and Mildura - three of the centres of the Sunraysia area.   It follows then that there are traders who would be likely to require use of the word in the normal course of their trade.   I agree with my colleague that because of its geographic significance the word Sunraysia is not inherently adapted to distinguish these goods of one trader from those of another.   In respect of the word SPARKLER Mr Forno referred to a previous unpublished decision on application 465325(32) where the word was found to have direct reference to the goods of the application.   I also agree with this decision and the conclusion that SPARKLER is not registrable in either part A part B of the Register for these goods.

Having found that there is no inherent distinctiveness in the word SUNRAYSIA for the goods of this application, I may not allow it to proceed to registration in either part A or part B of the Register no matter what volume of evidence of use or special circumstances were put before me.

I now turn to considering the mark as a whole.   Because of the prominence of SUNRAYSIA in the mark I do not think the mark is prima facie distinctive.   The word overshadows the smiling face/sun device and so the mark is not acceptable in Part A except under the provisions of 26(2).   Turning to the question of inherent distinctiveness I find that it is adapted to distinguish the goods of the applicant although it contains several non-distinctive elements.   I may now consider the requirements of s26(2)(b) which is whether the mark is distinctive in fact through use or other circumstances. 

The applicant provided evidence of use consisting of two declarations of Daniel Presser, a director of the applicant company.   Mr Presser attests to sales figures for the mark over a four year period, from September 1987 to September 1991, in excess of $5 million.   Extensive advertising over the same period was said to exceed $1 million in costs.   Some examples of labels, radio scripts used in advertising and a videotape of a television advertisement were included in exhibits.   I must say now that, because I consider the device in the mark is what adapts it to distinguish the applicant's goods, radio advertising cannot help demonstrate distinctiveness through use as the device cannot be featured through this medium.   In both the labels and the television advertisement the word SUNRAYSIA features prominently, overshadowing the device.   The sales figures are impressive but use prior to the application's lodgement is for only two years.   Such use may be found to be sufficient for registration in Part A where supporting declarations from other sources are also lodged or where there is some inherent distinctiveness in the word element of the mark.   Neither of these options apply in this matter.   The only declaration lodged is from a representative of the applicant and, as noted above, I have found  SUNRAYSIA is inherently non-distinctive.   For these reasons I consider the mark cannot proceed in Part A.

The evidence does demonstrate that the mark as a whole is capable of becoming distinctive through use and the mark may be registered  in Part B with a disclaimer of the non-distinctive word SUNRAYSIA.   The disclaimer is required as the word SUNRAYSIA, which has been found to be unregistrable for these goods, could be taken as an essential feature of the mark.   The addition of a disclaimer will define the proprietor's rights under the registration (See Eclipse Sleep Products Inc v. Registrar of Trade Marks 99 CLR 300).

Decision
I will accept this application in Part B of the Register with a disclaimer in the usual terms of the word SUNRAYSIA.   A claim to vary the descriptive words '100% natural mandarine lime flavoured' has already been agreed.   I will also allow a variation to the word SPARKLER.   I will allow two months from the date of this decision for the applicant to agree to these requirements.   If by the end of that time the applicant has not agreed, the application will be refused in either part A or part B of the Register..

Patricia Wearne
A/Hearing Officer
7 December 1992