Re Unilever plc's application to register the trade mark PHOENIX

[2001] ATMO 39

TRADE MARKS ACT 1995

STATEMENT OF REASONS FOR A DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade mark application number 785789(3) - PHOENIX- in the name of UNILEVER PLC.

Background

Unilever Plc has applied to register the trade mark PHOENIX in class 3 for goods that I will describe simply as toiletries.  An examiner of trade marks has said that the trade mark is not, for the purposes of s 41, capable of distinguishing.  This is said to be because there is, in the United States, a city of that name.  The city is the largest in the state of Arizona and had, in 1990, a population of 983,000.  To put this in context, that figure is slightly more than three times the current population of Canberra.  It is a centre for data-processing and electronics research.  Its products include computer components, aircraft, machinery, food products and textiles.

I was assigned to hear and decide the matter, under delegation from the Registrar of Trade Marks.  I have accepted this application under the provisions of subsection 41(5).  I now set down brief reasons for that decision.

Reasons

Under the 1995 act, I am required to decide if the trade mark is "capable of distinguishing".  The general framework for this, under sections 33 and 41, has been conveniently summarised by one of my colleagues, Senior Examiner Ryan, as follows, with emphasis added:

1. If the trade mark has sufficient inherent adaptation to distinguish to be capable of distinguishing, no ground for rejection under s 41 then exists and s 33(1) binds the Registrar to accept the trade mark.

2. If the trade mark has no inherent adaptation to distinguish, the onus is then on the applicant to demonstrate to the Registrar's satisfaction that the trade mark nevertheless does distinguish the designated goods or services by reason of use.  If this is demonstrated, the Registrar must find that the trade mark is capable of distinguishing in terms of s 41(6).  If so, s 33(1) binds the Registrar to accept the trade mark.  An applicant's failure to demonstrate this means that the Registrar must reject the application in terms of s 41(2) and s 33(2).

3. If the trade mark has some inherent adaptation to distinguish, but insufficient to be capable of distinguishing on that basis alone, the onus is then on the applicant to demonstrate to the Registrar's satisfaction that, by the combination of the extent to which it is inherently adapted to distinguish, and/or the use or intended use of the trade mark by the applicant, and/or any other circumstances, the trade mark does or will distinguish the designated goods or services in terms of s 41(5).  If so, s 33(1) binds the Registrar to accept the trade mark.  An applicant's failure to demonstrate this means that the Registrar must reject the application in terms of s 41(2) and of s 33(2).

In trade mark terms, inherent adaptation to distinguish means the qualities possessed by a trade mark that cannot be changed or altered.  As expressed by Gibbs, J, in Burger King Corporation v Registrar of Trade Marks[1]:

[1] [1973] 128 CLR 417 at 424

"Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co. v Registrar of Trade Marks[2] - and is therefore not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise."

[2] [1964] 111 CLR 511

Under the 1995 legislation, the question is a practical one: "will the trade mark in question distinguish?"  This is quite different to the question under the former 1955 legislation; "does this trade mark have an ordinary meaning as a geographical name, yes or no?"  I cannot think why I could or should exclude, from an assessment of the inherent merits of the trade mark under the current legislation, the fact that the word in question has a very well-known meaning.

The Draft Manual of Practice and Procedure part 22, section 4.1, says that the only current geographical names that are prima facie capable of distinguishing are "geographical names unlikely to have a present connection with the goods or services".  This seems to suggest that the size of the city or place in question, and the likelihood of the goods originating there, are the only determinants.  I do not agree and I believe the draft manual appears to oversimplify the issue.

The place in question is not well-known as a source of the goods in question, which are of a general sort that could be made anywhere.  Therefore, I must also allow for the word in question having a very much more familiar meaning, particularly where the word is and has been frequently registered.  The 1985 edition of the United Kingdom Trade Mark Registry Work Manual described this class of marks as "place names with other meanings which have been registered many times in the past and which, by precedent, provide an indication of their ordinary signification."  

While I do not think the state of the register itself can be decisive in such a matter, a solid body of acceptances cannot be ignored, as the 1985 UK Manual has noted.  It is evidence that, over time, the trade mark has been repeatedly found registrable.  Wilcox J cautioned, of a similar proposition in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, with my emphasis added:

That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar[3] at 305:

[3] [1996] RPC 281

"Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence."

I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error.  Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

The last paragraph is important.  Firstly, consistency in public administration is desirable.  Secondly, there is a difference between the role of the court and that of the Trade Marks Office in such matters.  It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant.  It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.
Therefore, I will take the advice of the former UK Manual as useful.  I note, however, that there has apparently been some shift in policy in the United Kingdom.  The former manual went on to give the following examples, intended, obviously, as guidelines rather than absolute limits:

Mark   Size and location  Accept

MONARCH   2,000 in UK  Part A

AURORA                 50,000 in USA            Part B

FALCON                 200,000 in South America       Part B

The current UK Manual, on the other hand, does not make a distinction between place names that have a meaning in English and those that do not.  It sets general guidelines for the acceptance of a trade mark that is the name of a town or city that does not have a particular reputation for manufacture of the goods.  These are:

UK:  2000

"Industrialised areas such as" the USA, Japan and Europe:       100,000

China or South America:  250,000

I do not know why this new practice was instituted, or why the new guidelines, applied blind, are now higher than they were for some areas of the world but not for others.  I believe that, without some good understanding of why the former practice was varied, I should approach the matter in a somewhat different fashion.

The city of Phoenix has a sizeable population.  This urges caution as it poses some risk that the goods in question could be:

• made in Phoenix USA and

• sold under the trade mark in question for that reason and

• exported here.

When the geographical factors are reduced to these three dot points, the likelihood that the word will be needed here by a company in Phoenix, USA cannot be ignored.  Without more, I would say that grounds for rejection exist.  However, there is considerably more. 
Firstly, and most importantly, relative to the geographical significance, I believe that the probability that the trade mark will distinguish, because of its very strong other meaning, is comparatively much higher. I think it would be difficult to pretend that decisions of this sort are entirely objective. This is something that was recognised, albeit as something to guard against, by Whitford J in the CANNON case [1980] RPC 519 at 523. Section 41 of our own legislation, however, requires a level of balancing and evaluation that was absent in the CANNON case, decided under the older UK legislation. Subjective perceptions of customers in the main are more important under the new legislation than they have previously been, even though such factors make for difficult decisions. I should therefore do my best to allow for what the ordinary buyer will make of the word PHOENIX and give full weight to its very strong ordinary meaning.

There are factors beyond this.  The applicant's in-house solicitor, Ms Thilo, has provided me with what she assured me, at the hearing, is a sample of the mark as it is now used overseas.  I note that the mark is intended to be used with a stylised device of a phoenix, together with the house mark LYNX.  Significantly, the word PHOENIX is the thing that fixes the identity of the bird device.  It is not the other way round and it cannot be realistically argued that the bird device is there to lean against a geographical significance.  Nor is it possible to categorise the word PHOENIX, simply because it is found in such company, as a limping trade mark. 

It is true that there is no formal evidence of use.  However, I have no reason to believe that the sample tendered is provided with a disingenuous intent.  If it is taken at face value, it renders tangible the factors that argue for acceptance: the mark, as intended to be used, looks like a trade mark and will be seen as a trade mark.  This assessment, subjective as it is, is something that I must consider in the balance.

Finally, I should allow for the pattern of overseas registrations.  Individually, no one of them is decisive.  However, if it is said that the matter approaches the borderline, it would be difficult to justify placing additional obstacles in the way of a trade mark that is already accepted in comparable jurisdictions under analogous circumstances.  I will accept Ms Thilo's advice that the trade mark has been accepted in the United Kingdom and for the Principal Register in the USA - in which country is located the city named after the bird in question - without evidence of use.

On balance of all of these factors, I think that acceptance under the provisions of s 41(5), without the provision of formal evidence, is appropriate.

Terry Williams

Hearing Officer
16 May 2001