Saramar LLC

[1999] ATMO 124

Decision by a delegate of the Registrar of Trade Marks, with reasons

RE:Trade Mark Application 723295 in the name of Saramar Corporation for the trade mark sheer support.

Background

The applicant's trade mark consists of the words Sheer Support and claims the following goods (the designated goods) in class 25:

Hosiery and hosiery items, including pantyhose, stockings, tights, socks

The present trade mark is a divisional application made under section 45 of the Trade Marks Act 1995 (the Act) claiming some of the goods specified in the initial application number 597231 (the initial application). The initial application was for the trade mark Sheer Support and claimed 'all goods' in class 25 and was a pending application at the time the present application was filed. The present application therefore fulfils the requirements for an application made under s45 and the filing date for the present application becomes the filing date of the initial. This date is 2 March 1993.

The application was examined and at the first report grounds for rejection were raised under s41 of the Act.  In this regard the examiner held that when applied to the designated goods the trade mark was not inherently adapted to distinguish.  Inherent in this finding was that acceptance of the trade mark for registration would be possible only under the provisions of s41(6).

Following issue of the examiner's report, which raised the same grounds as were raised against the initial application, the applicant sought a hearing which I conducted in Sydney on 12 July 1999.  Ms Marion Heathcote of the Sydney attorney firm Davies Collison Cave appeared for the applicant.

Submissions

In her submissions the attorney puts forward the view that Sheer Support is not the ordinary or natural way to describe hosiery.  Support, defined in Macquarie, she says is a verb meaning to bear, to hold up, to sustain, to undergo or endure, and she notes a number of additional definitions in the same vein.  She notes also that Macquarie provides a number of relevant definitions for Sheer as thin, diaphanous, as fabrics; unmixed; unqualified and utter.  Taken together, she says the trade mark simultaneously conveys the notion of thin, diaphanous fabric which can provide unqualified and absolute sustenance either through the longevity of wear, or through traumatic situations that the wearer may encounter.

sheer support therefore, while being not absolutely unsuggestive, does not consist wholly of a sign that other traders would desire to use on, or in connection with, their similar goods.  On this basis, she says, the trade mark is inherently adapted to distinguish the designated goods, and maintains the trade mark is therefore registrable under section 41(3) of the Act.

My attention was drawn to the Barrier Cream[1], and Sheer Relief[2] cases and to the decision of the registrar's delegate in the clean n soak[3] and the lo solids[4] applications which are relevant to the present matter, the attorney said, and to the operation of s33 of the Act.

[1] Faulding (FH) & Co Ltd v Imperial Chemical Industries (Aust. and NZ) Ltd 112 CLR 537

[2] Kolotex Glo Australia Pty Limited v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1

[3] Allergan Inc Appn (1996) 37 IPR 639

[4] Kamyr Inc Appn (1996) AIPC 91-247

At the hearing the attorney offered to waive the application's Divisional status if doing so would aid acceptance of the trade mark.

The applicant presented evidence at the hearing as a declaration by their attorney, containing a further declaration of Christine Paranthoiene, the senior product manager of the applicant company.  These declarations set out how the mark has been used, details of sales and promotional expenses and attachments showing the mark in use. Attachments to the Declaration refer to use of the mark in advertising and promotion of the goods and mentions substantial sales and expenditure on advertising.  The declaration referred to use since February 1993 in relation to women's hosiery, including pantyhose and stockings, and claims the trade mark now is regarded as distinguishing the applicant's goods.

The evidence in the exhibits shows sheer support has been used in relation to pantyhose and stockings.

Issue

The substance of the attorney's submissions is that the trade mark is inherently adapted to distinguish the designated goods, or in the alternative that, as it is at least to some extent inherently so adapted, and taking into account use of the trade mark, the trade mark does or will distinguish those goods.  The trade mark in these circumstances is therefore registrable under s41(3) or s41(5) of the Act.  The first issue before me then is to decide the extent to which the trade mark is adapted to distinguish the designated goods.

Legal test

Section 41 sets out how the enquiry as to whether a trade mark is capable of distinguishing is to be made.

Section 41:

(1) …

(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.

(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.

(6) If the Registrar finds that the trade mark is not 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.

Discussion

section 33
Section 33 provides that the registrar must accept an application unless satisfied the application has not been made in accordance with the Act or there are grounds for rejecting it.  Justice Branson in OREGON[5] observed it was doubtful s33(1) had any practical effect in deciding capacity to distinguish which is a process controlled by s41.

[5] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498

Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered ("the designated goods or services"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "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".

Having taken such matter into account, it is theoretically open to the Registrar to conclude:

(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) 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; or
(c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

On this authority it is in terms of s41 that the present matter must therefore be decided.

adaptation

In regard to the meaning that can be attributed to sheer support, the attorney suggests it her submissions that it is a clever allusion, a double innuendo, and selected by the applicant to invoke a sense of something about the goods that they would provide a level of assistance in sustaining the wearer.

While Support is defined in Macquarie as a verb meaning to bear to hold up (a load, mass etc), to sustain or withstand, as the attorneys suggests, it is however also defined as a noun meaning something that acts as a device, usually of elastic or cotton webbing, to hold up some part of the body.

Use of Support as a noun, rather than as a verb, is evident in the material submitted in evidence.  Thus we see claims such as 'Sheer Support stockings are fashionably sheer, proving that support stockings don't have to be [thick]’,  ‘[Elastane and Nylon] ‘provides flexibility and comfortably firm support’, and [the process] ‘delivers support with a sheer appearance’.  Promotional material included in evidence similarly refers to Support as a noun and mentions objectives of a promotional program as 'to ensure this product penetrates the support segment in the department store category’ and 'to provide a competitive edge against other support products’.  This material suggests Support has a well known meaning, when applied to pantyhose and stockings, as the name of something which supports the wearer's legs.  The use of Support as a noun rather than as a verb is accentuated when Support is combined with Sheer.

In this regard the attorney has submitted that Sheer denotes either an absolute quality or a thin or diaphanous material.  She maintains, following the decision in Sheer Relief (above), that sheer support conveys a generally favourable but unconscious thought about a thin diaphanous fabric which can nevertheless ‘provide unqualified and absolute sustenance and endurance throughout the products life’.  Thus sheer support, the attorney maintains, is a purely emotive reference to the assistance a woman can expect from her hosiery or the reliance she can place on it.  sheer support is not therefore wholly a sign that ordinarily is used to indicate the goods.

This is, however, a view I find difficult to accept.  When speaking of women's hosiery, Sheer has primarily a meaning of thin or diaphanous.  Similarly, as Macquarie defines it, and the applicant's own use demonstrates, Support describes a type of hose that holds up some part of the body.  It is I think, in the face of the direct reference of Sheer and Support to pantyhose and the like, going further than just an emotive reference when these words are applied to pantyhose and stockings.  sheer support is therefore a trade mark that consists wholly of a sign that is ordinarily used to indicate the character or quality of the designated goods.  In these circumstances sheer support has no inherent ability to distinguish the designated goods and the provisions of s41(6) apply.

use - extent and duration
The applicant shows use since February 1993 on women's pantyhose and stockings. .  The goods are extensively promoted through point of sale displays, paid advertising in nationally circulated women's magazines, and targeted mail outs.  The applicant shows use on women's hosiery items having a relatively low unit cost in the vicinity of $5 to $6.  The volume of sales is high particularly as those sales are derived from a limited set of goods, being support pantyhose and stockings.

However the evidence provided shows the trade mark is most often used in conjunction with the applicant's well known brand kayser, (registered trade marks 33036/55919).  There is nothing to suggest in the evidence that sheer support is used to denote anything more than that the goods are kayser's version of a sheer support hose, or that sheer support is promoted with the intention that it alone distinguishes the designated goods or that it is responsible alone for the generation of the sales claimed.

Ability to distinguish
The trade mark for which registration is sought differs sufficiently from that which is shown in evidence as applied to the applicant's goods.  Section 41(6) states that it must be established the trade mark, not the trade mark in combination with another distinctive element, does distinguish the designated goods at filing.  In these circumstances the evidence of use does not, for the purposes of s41(6), demonstrate that at the date of filing the trade mark distinguishes those goods.

divisional claim (s45)
In the course of the hearing the attorney for the applicant offered to waive the divisional claim if this would facilitate acceptance of the trade mark.  I have found sheer support has no inherent ability to distinguish and that at the time of filing, which is the priority date of the initial application, it did not distinguish.

If the divisional status is waived this will allow the present application to revert to its actual filing date (2 December 1996) and will allow the use between February 1993 and 2 December 1996 to be taken into account for the purpose of s41(6).  However, given the trade mark's lack of inherent ability to distinguish, the additional three years of use between 1993 and 1996 remains insufficient for the trade mark to meet the requirements of s41(6).

If I had found differently, that sheer support was to some extent adapted to distinguish, and taking into consideration the combined effect of the evidence of use of sheer support, together with its low level of inherent adaptation, I would have found that use remains insufficient to demonstrate the trade mark does or will distinguish for the purpose of s41(5).

Decision

I find sheer support is not a combination of words that is inherently adapted to distinguish the designated goods.  I find also that the extent of use of the trade mark does not establish the trade mark did distinguish those goods from goods of other persons at the date of filing.  The trade mark is not therefore capable of distinguishing the applicant’s goods from the goods of other persons.  I therefore reject the application under the provisions of s41(2) of the Act.

TH Turner
A/senior examiner
Trade Marks Hearings

7 December 1999