Real Foods Pty Ltd
[2015] ATMO 92
•25 September 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1467089 (30) - RICE THINS- in the name of Real Foods Pty Ltd.
| Delegate: | Heath Wilson |
| Representation: | Applicant: Yves Hazan of Hazan Hollander. |
| Decision: | 2015 ATMO 92 Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection considered under section 41 – Trade Mark rejected. |
Background
This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):
Trade Mark No: 1467089
Trade Mark: RICE THINS (‘the Trade Mark’)
Filing Date: 23 December 2011
Applicant: Real Foods Pty Ltd
Specification of Goods:
Class 30: Foodstuffs made of rice; rice based snack foods; rice biscuits; rice cakes; rice crackers; snack food products made from rice; snack foods consisting principally of rice; crispbread slices made predominantly from rice; rice crispbread; rice based products; popped rice cakes; rice wafers (‘the designated goods’)
The Trade Mark was examined under section 31 of the Act and a ground of rejection was raised under section 41(5)[1]. The examiner’s first report provided:
Your trade mark is RICE THINS.
The word THINS is commonly used to indicate crackers, crisp bread, wafers, biscuits etc. Therefore, your trade marks indicates that your goods are ‘thins’ made of rice.
Other traders should be able to use RICE THINS in connection with goods or services similar to yours.
[1] Section 41 of the Act as it stood prior to amendments to that section brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012. (Schedule 6, Item 113).
The applicant was then given the option of providing evidence of use, intended use or any other circumstances under section 41(5). The applicant’s legal representative argued that the Trade Mark was inherently adapted to distinguish the designated goods. In the same correspondence, the applicant submitted the statutory declaration of Michael Christopher Pels (Managing Director of the applicant) made 30 May 2014 with annexures MP-1 to MP-83 (and confidential annexures MP-1 to MP-7).
The second report from the examiner focused on the evidence provided by the Applicant for the purposes of section 41(5). The report read:
Having carefully considered your submissions I am maintaining the section 41 ground for rejection. I am doing so because the evidence is insufficient to justify acceptance.
The examiner remained unconvinced as the demonstrated use was not of the Trade Mark alone but in close proximity to the Applicant’s ‘REAL FOODS’ brand. The evidence of use of ‘CORN THINS’ (another trade mark owned by the applicant, being trade mark registration no. 1132029) was unpersuasive as it is not use of the Trade Mark. The promotional figures provided were also deemed insufficient because it was unclear whether those promotional figures referred to products bearing the Trade Mark.
The applicant’s response to this second report further argued that use of the Trade Mark with other brands is acceptable and should not be discounted and went on to provide further information to support the declaration of Mr Pels. However, the submissions and evidence were not sufficient to convince the examiner that the Trade Mark should be accepted. The third examination report elaborated on the initial objection:
[T]he word THINS is commonly used to describe crackers, crispbread, wafers, biscuits etc. The trade mark RICE THINS therefore indicates that the goods in this application are ‘thins’ made of rice. And, as a matter of fact, numerous other traders are using RICE THINS to indicate ‘thins’ made of rice. The trade mark is therefore undoubtedly descriptive of the goods and is one that others should be able to use.
After the fourth examination report, the Applicant requested to be heard on the matter under section 33(4) of the Act. The subsequent hearing took place in Canberra on 7 July 2015. Yves Hazan of Hazan Hollander made representations via telephone conference on behalf of the Applicant. I conducted the hearing and the following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.
The Law
At the time the trade mark application was filed, section 41 of the Act provided:
41Trade mark not distinguishing applicant’s goods or services
(1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
Mr Hazan argued that the Trade Mark was inherently adapted to distinguish the designated goods and should be accepted prima facie under the provisions of section 41(3) of the Act. However, in the event I was not convinced by that argument, he submitted that the Trade Mark should be accepted under the provisions of section 41(5)(b) on the strength of the evidence provided.
Concerning the initial question of whether a trade mark is inherently adapted to distinguish goods from those of other traders, Kitto J in Clark Equipment Co v Registrar of Trade Marks said:[2]
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[2] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at 345–6, (Kitto J)
Section 41 of the Act is determined as at the filing date of the trade mark application[3], which in the current matter is 23 December 2011.
[3] See Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595 and Apple Inc. v Registrar of Trade Marks [2014] FCA 1304.
The ground for rejection was based on the view that ‘THINS’ indicates crackers, crispbread, wafers, biscuits and therefore ‘RICE THINS’ means those goods made of rice. The highest that Mr Hazan put it was that the Trade Mark may be indicative of the designated goods but it is not descriptive of them and is not an expression that other traders, acting without improper motive, would desire to use upon or in connection to the designated goods. It is worth noting that the word ‘THINS’ appearing within the Trade Mark does not have a dictionary definition, but in Sports Warehouse, Inc v Fry Consulting Pty Ltd[4] it was observed that:
One can place too much weight on dictionary definitions. Whilst they provide a guide to the meaning of a word, they may not set out its meaning exhaustively. Colloquial usage may provide further meanings to those set down in the dictionaries.
[4] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (at para 86) per Kenny J.
It does not necessarily follow that words without a dictionary definition are therefore a ‘covert’ or ‘skillful allusion’ to the designated goods.[5] In the current matter, it is more accurate to say that the Trade Mark consists of a sign that is used in a colloquial way to indicate the kind and the characteristics of the product.[6] In particular, the ordinary signification of the Trade Mark is that the applicant’s products are both thin and made of rice. In terms of the ‘other traders’ test in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[7] the likelihood of other traders desiring to use the Trade Mark (or one that closely resembles it) in relation to the designated goods may be tested by appropriate examples from the marketplace. On that point I note that there are examples of other traders using the word ‘THINS’ not as a badge of origin, but as a descriptor for crackers or crispbread.
[5] See Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 (at p201).
[6] See Note 1 to section 41(6) of the Act.
[7] (1913) AC 624, at p 634.
Having taken into account that the presumption of registrability is applicable at this stage of the assessment, I am nevertheless satisfied that a prima facie ground for rejection exists under section 41(5). I acknowledge the particular construction of the Trade Mark and the nature of the word ‘THINS’ has an element of distinctiveness to it and this provides the Trade Mark with some inherent adaptation to distinguish the designated goods from those of other traders.
Ultimately, I find myself unable to decide the question of whether or not the Trade Mark is capable of distinguishing the designated goods, but on the basis of the facts set out previously, I am satisfied that the Trade Mark is to some extent inherently adapted to distinguish. However, this is not necessarily fatal to the application. Section 41 also provides a scheme for the assessment of whether the Trade Mark has acquired capacity to distinguish the goods through its use in trade.[8] Accordingly, I will now consider the applicant’s evidence of use, intended use and any other circumstances that may be relevant in the consideration.
[8] Blount Inc v Registrar of Trade Marks [1998] FCA 440
Evidence
The declaration of Mr Pels provides that the applicant is an Australian company incorporated in March 1980. It has been producing and selling CORN THINS since 1998 in a number of different flavours (including Original, Soy and Linseed, Multigrain and Sesame).
In 1999, Mr Pels decided to introduce a thin rice cake variant on its CORN THINS product. The simple difference appears to be, perhaps predictably, that one product is made from wholegrain brown rice and the other from maize. By May 2000, the applicant’s RICE THINS products were being sold in Australia. An example of the early product packaging can be seen below:[9]
[9] Annexures MP-9 and MP-11 to the Pels declaration.
In around 2005-2006[10], the new packaging of the applicant’s product appeared, which is almost identical to the updated packaging for the applicant’s CORN THINS product. The words RICE THINS are again given visual prominence in comparison to the REAL FOODS logo.
[10] Annexure MP-14.
The “existence on a label of a clear dominant ‘brand’ is of relevance to the assessment of what would be taken to be the effect of the balance of the label.”[11] However, this does not meant that another part of the label cannot act to distinguish the goods. The relative distinctiveness of the words is also relevant in determining the likely perception of the product label by consumers. In this regard, the expression REAL FOODS when used in relation to food products has a lack of prima facie distinctiveness,[12] and its strength as the clear dominant brand on the packaging is accordingly diminished.
[11] Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390; (2002) 56 IPR 182 (at 191).
[12] See for example, Unilever Australia Limited v Karounos [2001] FCA 1132; (2001) 52 IPR 361; Unilever Plc and Unilever Australia v Regal Cream Products Pty Ltd [2011] ATMO 98.
Drawing an analogy with the “Cheezy Twists” decision[13]: while the words “RICE THINS” are capable of describing the contents of the package, my view is that they do more than that. I also note that there is a description of the product present on the package which also tends to indicate that RICE THINS is performing a branding function.
[13]Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH [2001] FCA 1874; (2001) 190 ALR 185; (2001) 54 IPR 344; [2002] AIPC 91-771 at [26]. (“Cheezy Twists”)
I am satisfied that the context in which the Trade Mark appears on the packaging would appear to the consumer as possessing the character of a brand.[14] The question is whether there is sufficient evidence of this Trade Mark use that the Trade Mark is capable of distinguishing the designated goods.
[14] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 422.
I note that the applicant’s product bearing the Trade Mark has been available in the marketplace for around ten years before the priority date and has been available in the following supermarkets: Woolworths from 2000 to 2002, Coles from 2000-2007, Franklins from 2001 to 2011 and Metcash from 2001 to date. The evidence indicates that the Applicant’s RICE THINS is not its most popular product, but there have been significant sales of the product for the years 2001 to 2010.[15] Considering the evidence as a whole it appears that the applicant has in later years focused on the promotion of its more popular CORN THINS product rather than the product bearing the Trade Mark.
[15] Confidential annexures MP-2 to MP-5.
This focus on the trade mark CORN THINS rather than RICE THINS is reflected in the evidence before me. There are many examples of advertisements featuring the CORN THINS product and only a few advertisements featuring the Trade Mark. Those that do feature the Trade Mark appeared alongside the many varieties of the applicants CORN THINS products. In addition, I find that the designated goods are much broader than popped rice cakes or crispbread made of rice, which appear to be the only goods the Trade Mark has been applied to.
The majority of the applicant’s evidence concerns the use of the trade mark CORN THINS in the industry. This evidence does not constitute use of the Trade Mark. It may provide an indication of the intended use of the Trade Mark under section 41(5) but that is where the relevance of such evidence ends.
Ultimately, I am satisfied that there is evidence of use before the priority date in the Australian marketplace. However, I am not satisfied that such evidence of use is sufficient to demonstrate that the Trade Mark does or will distinguish the designated goods from those of other traders.
Decision
Section 33 of the Act relevantly provides:
33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note:For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:For applicant see section 6.
I am not satisfied that the Trade Mark does or will distinguish the designated goods under section 41(5)(c). Under section 33(3) I reject trade mark application no. 1467089.
Heath Wilson
Hearing Officer
Trade Marks Hearings & Opposition
25 September 2015
0
12
0