Sartorius Stedim North America Inc - [2024] ATMO 212

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2293981 (classes 6, 7, 9, 10, 11, 12, 17 and 20) - Celsius- in the name of Sartorius Stedim North America Inc.

Delegate:

Anne Makrigiorgos

Representation:

Applicant: Pizzeys Patent and Trade Mark Attorneys Pty Ltd

Decision:

2024 ATMO 212

Trade Marks Act 1995 (Cth) – ex parte hearing – examination of an application – whether grounds for rejection under section 41 established – ordinary meaning considered – mark not inherently adapted to distinguish a subset of goods – applicant give opportunity to delete this subset – subset goods deleted - application inherently adapted to distinguish remaining goods and accepted for registration for remaining goods

Background

On 17 August 2022, Sartorius Stedim North America Inc (‘Applicant’) applied to register trade mark number 2293981 (‘Application’) pursuant to the provisions of the Trade Marks Act 1995 (Cth).[1] Details of the Application appear below:

Filing Date: 17 August 2022

Trade Mark: Celsius (‘Trade Mark’)

Specification: See Annexure A (‘Goods’).

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations1995 (Cth).

The Application was examined as required under s 33. On 15 September 2022, IP Australia issued an Adverse Examination Report identifying grounds of rejection under a number of bases including s 41.[2] The examiner stated as follows:
Your trade mark is the word CELSIUS.
This can be defined as: a system for measuring temperature that is part of the metric system, in which water freezes at 0 degrees and boils at 100 degrees (Macmillan Dictionary).
As such, this word directly describes your claims in class 9 relating to apparatus and instruments for measurement, control and regulation, sensing and detection. This is because such claims would include items specifically focused on temperature, which utilises the CELSIUS system.
AND
This trade mark has limited inherent adaptation to distinguish your remaining claims in classes 6, 7, 9, 10, 11, 12, 17, 20. This is because the ultimate focus of such goods appears to be cryopreservation, and includes items for cooling and heating, insulation and containment and packaging and transport of cryopreserved materials. For this reason, the word CELSIUS, as a system of measuring temperature, is something that other traders providing similar goods and services are likely to need to use in the ordinary course of trade.
[2] The other matters raised were a s 44 objection and classification objections regarding some of the Goods but these matters were overcome before the Applicant requested a hearing.
In response to the objection, the Applicant filed submissions that the Trade Mark was inherently adapted to distinguish as follows (in summary):
The word CELSIUS is an ordinary everyday used English term purely associated with metric temperature. It is a number on a temperature scale. This is the “ordinary signification” of the mark. However, the mark does not indicate and describe particular characteristics of the goods, rendering it is sufficiently distinctive to qualify for registration.
A further adverse report was issued by the examiner on 26 October 2023 maintaining the grounds for rejection under s 41(3) (for the goods in class 9 relating to apparatus and instruments for measurement, control and regulation, sensing and detection) and s 41(4) (for the other goods identified in the Adverse Examination Report). The examiner also suggested the following amendments which would overcome the s 41 objections:
Class 6: Containers, and transportation and packaging articles, of metal; metal containers for holding and transporting flexible pouches for biological, medical or pharmaceutical liquids; Containers of metal (storage, transport); Metal pallets; ~~Metal racks for storage of containers filled with biopharmaceutical materials; Metallic frames for supporting disposable containers for biopharmaceutical materials.~~
Class 7: Mixing machines; ~~Mixing machines for mixing and homogenizing liquids in the pharmaceutical and chemical industries;~~ Lifting apparatus; ~~Packaging machines, namely, liquid container fillers;~~ Filling machines; ~~Machines for filling containers in the nature of disposable plastic bags with biopharmaceutical liquids;~~ Dispensing machines; ~~Dispensing machines for emptying containers filled with biopharmaceutical liquids;~~ Control devices for machines.
~~Class 9:~~ Measuring apparatus and instruments; controllers and regulators; Sensors and detectors; Electrical controllers; Temperature control apparatus for chilling biopharmaceutical materials in disposable containers; Temperature controllers for controlling the temperature of biopharmaceutical materials held in disposable containers designed for cryopreservation; Disposable containers for cryopreservation of biopharmaceutical materials, Protective devices and frames for use with disposable containers for biopharmaceutical materials; Apparatus for mixing biopharmaceutical media, in particular by vibration, rotation and wave motion; Weighing apparatus and instruments and parts therefor; weighing apparatus for weighing the amount of liquids filled into and dispensed from disposable containers; Automated liquid dispensing machines; Dosage dispensers, Liquid dosage devices that measure the amounts to be dispensed.
~~Class 10:~~ Disposable containers specially designed for cryopreserving biopharmaceutical materials; protective rigid housing structures for receiving disposable containers for cryopreserving biopharmaceutical materials; frames for supporting disposable containers for cryopreserving biopharmaceutical materials; storage units and transportation carts for disposable containers for cryopreserving biopharmaceutical materials; Protective devices in the nature of sleeves and frames for disposable containers for the low temperature control of biopharmaceutical materials for medical use.
~~Class 11:~~ Refrigerating and freezing equipment; Refrigerators, cooling apparatus and freezers for medical storage purposes; Refrigerating containers; Refrigerated shipping containers; Temperature controlled shipping containers; Refrigerated medical container for storage, transportation and cooling of medicines and pharmaceuticals; Freezing installations and machines for freezing biopharmaceutical materials; Laboratory freezers for cryogenic preservation; Heaters and heating systems for thawing frozen biopharmaceutical materials; Cooling and heating systems for processing biopharmaceutical materials; Containers equipped with temperature controllers for biopharmaceutical materials.
Class 12: ~~Transportation carts for disposable containers for cryopreserving biopharmaceutical materials;~~ Electric lift trucks; Mobile fork lifts.
~~Class 17:~~ ~~Insulated containers for the transport and storage of temperature sensitive goods; Thermal insulation covers for storage or transportation of biopharmaceutical materials.~~
Class 20: Containers, and closures and holders therefor, non-metallic; Containers, not of metal, for storage or transport; Containers for biopharmaceutical liquids, non-metallic; Packaging containers of plastic; Non-metal and non-paper insulated shipping containers for transporting frozen materials; Plastic shipping and storage boxes; crates and pallets, non-metallic; Disposable containers made of plastic for storage and transport of frozen biopharmaceutical materials; protective rigid housing structures made of plastic for receiving disposable containers for biopharmaceutical materials, Non-metallic frames for supporting disposable containers for biopharmaceutical materials; Sample bag cover specifically adapted to disposable containers for biopharmaceutical materials.
In response to the objections, the Applicant filed submissions on 12 June 2024 providing a schedule of the Goods and claiming they have no association with the meaning of the word Celsius stating (in summary):
[T]he indication of a temperature scale is meaningless and cannot describe any properties of a product as the Celsius temperature unit is known as "degree centigrade". The indication of a specific temperature requires a figure and the unit, such as 10 °C (degree centigrade). The goods of this application do not display a figure and a unit.
The words "temperature and "CELSIUS" are not considered as equivalents, and cannot be used one for the other. The word CELSIUS is not a normal term for the Goods.
A third adverse examination report was issued by the examiner on 7 August 2024 maintaining the ground for rejection under ss 41(3) and (4).
In response to the objection, the Applicant requested a hearing by way of written submissions on 15 September 2024. The Applicant filed written submissions, drafted by Julie Simpson of Pizzeys Patent & Trade Mark Attorneys on 14 October 2024.
As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the ground for rejection under s 41 identified by the examiner and I am not bound by the examiner’s findings. Nor is this hearing a review of the examiner’s objections. Whilst I may consider reasoning provided by the examiner in support of the objection, ultimately, I must make a decision based on my interpretation of the facts and law.

Discussion

Section 41 relevantly provides:
Trade mark not distinguishing applicant’s goods or services
(1)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 (the 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.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)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; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
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:For goods of a person and services of a person see section 6.
Note 3: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 (5) and 7(3) and section 8).
(5)…
The test to determine whether a trade mark is inherently adapted to distinguish was set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’):
[The] 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 … the question whether a mark is adapted to distinguish [is to] 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.[3]
[3] (1964) 111 CLR 511, 514.
In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court conveniently summarised the principles in respect of s 41 as follows:
(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).
(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[4]
[4] [2017] FCAFC 56, [236].
It is not a requirement that the words comprising a trade mark be totally meaningless for a trade mark to be registrable. As Wilcox J acknowledged (despite finding that the trade mark there in question did describe the goods), in Ocean Spray Cranberries Inc v Registrar of Trade Marks:
In reaching the above conclusion, I have not overlooked two matters relied on by Ms Baird. First, she says, a mark need not be "absolutely unsuggestive of qualities" of the goods for which registration is sought, provided it does not amount to a normal description.[5]
[5] [2000] FCA 177, [34] (citations omitted).
The first step is to consider whether the Trade Mark has an ordinary signification and, if so, what that ordinary signification is. The determination of the ordinary signification of the Trade Mark must be the ordinary signification if the sign were to be used in connection with the Goods. If the Trade Mark is found to have an ordinary signification it is then necessary to consider the second step, namely the likelihood of the Trade Mark being needed by other traders.

The Applicant submits that the Trade Mark is inherently adapted to distinguish all the Goods and in respect of the goods objected to under s 41(3), if the Trade Mark is held not to be inherently adapted to distinguish, it is at least to some extent, but not sufficiently, inherently adapted to distinguish.
The remainder of the Applicant’s submissions refer to the examiner’s suggested amendments, reproduced in [4] of this decision. The Applicant argues that the goods which the examiner is willing to retain in the specification, and therefore the goods which the examiner considers to be inherently distinctive, are of the same description as some of the goods which the examiner considers are not to any extent inherently adapted to distinguish or to some extent, but not sufficiently, inherently adapted to distinguish. Therefore, the Applicant submits the Trade Mark should equally be considered inherently distinctive for these similar goods.
The Applicant also argues that for classes 9, 10, 11 and 17, where the examiner has suggested deletion of all goods, even though the word CELSIUS is the name of a temperature scale and creates an allusion to temperature in general, this information is meaningless to a consumer in terms of the nature of the goods. The Trade Mark cannot tell the consumer whether the material is stored under cold or hot conditions, or at room temperature.
The Applicant submits that it has secured registrations for the Trade Mark throughout the world and attaches copies of the Certificates of Registration from Germany, Spain, the European Union (‘EU’), France, the United Kingdom (‘UK’), the United States of America (‘USA’) and Singapore (together ‘Overseas Registrations’).
In respect of these Overseas Registrations, I note the following from my own searches:

the registration covering class 9 in the UK is considerably narrower than the Goods of the Application and does not contain broad claims to ‘Measuring apparatus and instruments; controllers and regulators; Sensors and detectors; Electrical controllers; Temperature control apparatus for chilling biopharmaceutical materials in disposable containers; Temperature controllers for controlling the temperature of biopharmaceutical materials held in disposable containers designed for cryopreservation’. These claims appear to have been deleted during prosecution.
the EU registration is only in classes 10 and 12.
in the USA, the Trade Mark is not registered but upon examination, no objection was raised that the Trade Mark lacked distinctiveness. However, class 9 does not claim ‘Measuring apparatus and instruments; controllers and regulators; Sensors and detectors’, rather it claims ‘Liquid flow measuring apparatus and instruments; electrical controllers and flow regulators for industrial use; electric sensors and detectors’.
the Spanish mark is only published and not registered.

In Re Unilever plc's application, Hearing Officer Williams said that if ‘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.’.[6] Therefore, the treatment of the Trade Mark in foreign jurisdictions has limited bearing on whether the Trade Mark is inherently adapted to distinguish the Goods in Australia under Australian law, unless the matter at hand is in the vicinity of borderline.
[6] [2001] ATMO 39.
The word CELSIUS is defined as ‘adjective 1. Denoting or relating to a scale of temperature on which the temperature is degrees Celsius (°C) is numerically equal to the temperature in kelvins (K) reduced by 273.15. On this scale the triple point of water is 0.01°C and the boiling point of water under a pressure of 101.325 kPa is approximately 100°C. The degree Celsius is the unit of temperature equal to the kelvin. noun 2. The Celsius scale. Symbol: C.’[7]
[7] Macquarie Dictionary Online.
From my own knowledge, I consider the Australian adult population would be aware of the word CELSIUS and its meaning as a temperature scale. Thus, if the Applicant’s goods were thermometers, the word CELSIUS would be directly descriptive of a thermometer that measures in Celsius, rather than Fahrenheit or kelvin.
While the Goods do not specifically claim thermometers, I consider the goods ‘apparatus and instruments for measurement’ and ‘sensors and detectors’ include within their scope ‘apparatus and instruments for measurement of temperature and sensors and detectors for sensing, measuring and detecting temperature’. These goods would encompass thermometers. Further, controllers including electrical controllers and regulators include ‘temperature controllers and regulators’ e.g. a remote control for an air conditioner, which control and regulate temperature in any temperature scale, including Celsius. In addition, ‘temperature control apparatus for chilling biopharmaceutical materials in disposable containers and temperature controllers for controlling the temperature of biopharmaceutical materials held in disposable containers designed for cryopreservation’ manage and maintain desired temperatures in any temperature scale, including Celsius.
Therefore, for ‘apparatus and instruments for measurement, sensors, detectors, controllers, regulators, electrical controllers, temperature control apparatus for chilling biopharmaceutical materials in disposable containers and temperature controllers for controlling the temperature of biopharmaceutical materials held in disposable containers designed for cryopreservation’ (‘Subset Goods’), I consider the Trade Mark carries a direct and clear explanation of the purpose of the Subset Goods and is therefore is directly descriptive of these goods or of a characteristic of these goods. Given this, I must now determine the likelihood of the Trade Mark being desired for use by other traders in respect of the Subset Goods. Often the answer to the question as to the ordinary signification of the Trade Mark will provide the answer as to whether it is the case that other traders might legitimately need to use the Trade Mark in respect of the Subset Goods.[8]
[8] Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2015) 237 FCR 388, 419 [126] (Besanko, Jagot and Edelman JJ).
The desirability of a trade mark for use by traders generally must be considered in the context of the market for the goods and the desirability for use by other traders acting without improper motive. The Trade Mark has obvious utility and is apt to describe the Subset Goods and is clearly one which other traders will legitimately desire to use to indicate the Subset Goods measure, control, sense or regulate temperature using the Celsius scale. The word CELSIUS is therefore likely to be one that other traders would think of and legitimately desire to use for its ordinary signification to describe or refer to the purpose of the Subset Goods.
I am satisfied on the balance of probabilities that there is a ground for rejecting the Application in respect of the Subset Goods under s 41(3). The Applicant has not provided any evidence that it has used the Trade Mark before the filing date of the Application in respect of any Goods, and therefore the ground for rejection remains for the Subset Goods.
For the sake of clarification, there is a ground for rejecting the Trade Mark under s 41(3) for the following goods in class 9:
Measuring apparatus and instruments; controllers and regulators; Sensors and detectors; Electrical controllers; Temperature control apparatus for chilling biopharmaceutical materials in disposable containers; Temperature controllers for controlling the temperature of biopharmaceutical materials held in disposable containers designed for cryopreservation
As to the remainder of the Goods which appear in Annexure B (‘Remaining Goods’), I am not of the same opinion regarding the likelihood that other traders would think of the word CELSIUS and would want to use it to describe or refer to the purpose of the Remaining Goods. The Trade Mark is less apt to describe the Remaining Goods, making it more inherently apt to distinguish the Remaining Goods as the goods of a particular manufacturer.[9]
[9] Clark Equipment (n 3), 515.
Note 1 of s 41 states ‘Trade marks that are not inherently adapted to distinguish goods are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate, inter alia, some characteristic of goods’. The question then is whether the word CELSIUS is descriptive of the Remaining Goods or ordinarily used to indicate a characteristic of any of the Remaining Goods.
While for some of the Remaining Goods, temperature is important, such as refrigerators and freezers, and while refrigerators and freezers contain a thermostat or thermistor to regulate temperature, it is not immediately apparent to me, that CELSIUS could be used to describe any of the Remaining Goods or any characteristic of the Remaining Goods. CELSIUS is not a word that carries a direct and clear explanation of the purpose of the Remaining Goods.
A critical distinction must be drawn between the goods and their perceived attributes as may be insinuated by the Trade Mark. The latter does not provide the correct viewpoint from which to gauge ordinary signification since it is already one step removed from the goods themselves.
Further, as stated by Bennett J in Unilever Australia Ltd v Societe Des Produits Nestlé SA:
… A word descriptive of one category of goods may not be descriptive of a different category and thereby have a capacity to distinguish with respect to that different category.[10]
[10] [2006] FCA 782 [34].
A mark may have a descriptive flavour but still be inherently capable of distinguishing a trader’s goods. As Lockhart J observed in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd:
If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.
A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, electrics for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark and Yorkshire Copper Works Ltd v Registrar of Trade Marks. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd, per Parker J and the Perfection case. But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham, per Lord Herschell.
Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the identity (scil.) of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source.[11]
[11] [1991] FCA 402, [50] to [52] (citations omitted).
The Trade Mark need not be entirely unsuggestive in relation to the Remaining Goods and that a question of degree is involved in assessing its inherent adaption to distinguish them. I consider that the word CELSIUS does not convey to Australian purchasers, traders and consumers of the Remaining Goods any immediately apparent meaning or a connotation sufficiently definite to amount to a direct or indirect reference to the character or quality of these goods. The Trade Mark is not an apt or ordinary way of describing the Remaining Goods or a significant characteristic which the Remaining Goods may possess. Rather I am of the view that when CELSIUS is used in connection with the Remaining Goods, there is but a vague suggestion or allusion to goods for which temperature may be important, but temperature does not describe either the Remaining Goods nor a characteristic of these goods. For example, the word CELSIUS is not a description of a containers or a characteristic of a container or weighing machines or a characteristic of weighing machines. In short, CELSIUS does not convey anything sufficiently definite.
I consider that the Trade Mark is one where the relevant persons would need to do much more than just stop and reflect what the word CELSIUS could possibly mean with respect to the Remaining Goods. The Trade Mark is not apt to describe the Remaining Goods and is clearly not one which other traders will legitimately desire to use to indicate any character or quality of the Remaining Goods. In this circumstance, the Trade Mark is inherently adapted to distinguish the Remaining Goods from the goods of other persons.
. I am satisfied that a ground for rejection under s 41 has not been established for the Remaining Goods.

Decision

Section 33 of the Act provides:
Application 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.
As I am satisfied on the balance of probabilities that there is a ground for rejecting the Application in respect of the Subset Goods under s 41(3), the Applicant has been provided with the opportunity to amend the Class 9 Goods to delete the Subset Goods. The Applicant chose to take this opportunity and has requested a limitation of the Class 9 Goods to read ‘Class 9: Disposable containers for cryopreservation of biopharmaceutical materials, Protective devices and frames for use with disposable containers for biopharmaceutical materials; Apparatus for mixing biopharmaceutical media, in particular by vibration, rotation and wave motion; Weighing apparatus and instruments and parts therefor; weighing apparatus for weighing the amount of liquids filled into and dispensed from disposable containers; Automated liquid dispensing machines; Dosage dispensers, Liquid dosage devices that measure the amounts to be dispensed’. The amendment has now been made and on that basis, there is no longer a ground for rejecting the Application under s 41(3). I therefore accept the Application for possible registration.

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

7 November 2024

Annexure A

Class 6: Containers, and transportation and packaging articles, of metal; metal containers for holding and transporting flexible pouches for biological, medical or pharmaceutical liquids; Containers of metal (storage, transport); Metal pallets; Metal racks for storage of containers filled with biopharmaceutical materials; Metallic frames for supporting disposable containers for biopharmaceutical materials.

Class 7: Mixing machines; Mixing machines for mixing and homogenizing liquids in the pharmaceutical and chemical industries; Lifting apparatus; Packaging machines, namely, liquid container fillers; Filling machines; Machines for filling containers in the nature of disposable plastic bags with biopharmaceutical liquids; Dispensing machines; Dispensing machines for emptying containers filled with biopharmaceutical liquids; Control devices for machines.

Class 9: Measuring apparatus and instruments; controllers and regulators; Sensors and detectors; Electrical controllers; Temperature control apparatus for chilling biopharmaceutical materials in disposable containers; Temperature controllers for controlling the temperature of biopharmaceutical materials held in disposable containers designed for cryopreservation; Disposable containers for cryopreservation of biopharmaceutical materials, Protective devices and frames for use with disposable containers for biopharmaceutical materials; Apparatus for mixing biopharmaceutical media, in particular by vibration, rotation and wave motion; Weighing apparatus and instruments and parts therefor; weighing apparatus for weighing the amount of liquids filled into and dispensed from disposable containers; Automated liquid dispensing machines; Dosage dispensers, Liquid dosage devices that measure the amounts to be dispensed.

Class 10: Disposable containers specially designed for cryopreserving biopharmaceutical materials; protective rigid housing structures for receiving disposable containers for cryopreserving biopharmaceutical materials; frames for supporting disposable containers for cryopreserving biopharmaceutical materials; storage units and transportation carts for disposable containers for cryopreserving biopharmaceutical materials; Protective devices in the nature of sleeves and frames for disposable containers for the low temperature control of biopharmaceutical materials for medical use.

Class 11: Refrigerating and freezing equipment; Refrigerators, cooling apparatus and freezers for medical storage purposes; Refrigerating containers; Refrigerated shipping containers; Temperature controlled shipping containers; Refrigerated medical container for storage, transportation and cooling of medicines and pharmaceuticals; Freezing installations and machines for freezing biopharmaceutical materials; Laboratory freezers for cryogenic preservation; Heaters and heating systems for thawing frozen biopharmaceutical materials; Cooling and heating systems for processing biopharmaceutical materials; Containers equipped with temperature controllers for biopharmaceutical materials; none of the aforegoing for domestic use

Class 12: Transportation carts for disposable containers for cryopreserving biopharmaceutical materials; Electric lift trucks; Mobile fork lifts.

Class 17: Insulated containers for the transport and storage of temperature sensitive goods; Thermal insulation covers for storage or transportation of biopharmaceutical materials.

Class 20: Containers, and closures and holders therefor, non-metallic; Containers, not of metal, for storage or transport; Containers for biopharmaceutical liquids, non-metallic; Packaging containers of plastic; Non-metal and non-paper insulated shipping containers for transporting frozen materials; Plastic shipping and storage boxes; crates and pallets, non-metallic; Disposable containers made of plastic for storage and transport of frozen biopharmaceutical materials; protective rigid housing structures made of plastic for receiving disposable containers for biopharmaceutical materials, Non-metallic frames for supporting disposable containers for biopharmaceutical materials; Sample bag cover specifically adapted to disposable containers for biopharmaceutical materials.

Annexure B

Class 9: Disposable containers for cryopreservation of biopharmaceutical materials, Protective devices and frames for use with disposable containers for biopharmaceutical materials; Apparatus for mixing biopharmaceutical media, in particular by vibration, rotation and wave motion; Weighing apparatus and instruments and parts therefor; weighing apparatus for weighing the amount of liquids filled into and dispensed from disposable containers; Automated liquid dispensing machines; Dosage dispensers, Liquid dosage devices that measure the amounts to be dispensed.

Class 12: Transportation carts for disposable containers for cryopreserving biopharmaceutical materials; Electric lift trucks; Mobile fork lifts.

Class 17: Insulated containers for the transport and storage of temperature sensitive goods; Thermal insulation covers for storage or transportation of biopharmaceutical materials.