Sonoco Products, Re

[1991] ATMO 66

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade Mark Application Number 513122 in the Name of SONOCO PRODUCTS COMPANY

This matter was the subject of a hearing in Perth in July 1991.  The applicant, Sonoco Products Company, a South Carolina corporation, of Hartsville, South Carolina, was represented by Mr Kelvin Lord of Kelvin Lord and Company, patent and trade mark attorneys of Perth.  The relevant facts are as follows.
     The application was made on 19 June 1989 and seeks registration of the mark ENVIRO-MATE in Part A of the Register in respect of "bags and sacks included in this class, especially grocery bags and sacks including plastic grocery bags and sacks", being goods in class 16.  The examiner required as a condition of registration that the applicant consent to disclaim exclusive use of the word ENVIRO, on the basis that it is "a transparent and obvious abbreviation for the word ENVIRONMENT and that it is becoming increasingly popular as a common part of trade marks".  The number of registrations and pending applications which contain this word was cited as support for the contention that it is increasingly popular amongst traders of all kinds.
     At the hearing Mr Lord submitted that the mark should be considered as being a single word, that is, ENVIROMATE, which has been separated into two parts by the use of a hyphen.  Such a use is, he contended, consistent with the definition of this punctuation sign.  He noted that it is Office practice not to disclaim parts of words, unless they are highlighted in some way, and referred to p220 of Shanahan's Australian Law of Trade Marks and Passing Off, second edition, for further comment on this aspect of the registration of trade marks.  Mr Lord also argued that it had not been established that ENVIRO, when considered in relation to the specified goods, was non-distinctive or common to the trade, as required under the provisions of sub-section 32(1) of the Act.  He noted that he had been unable to find any entry for ENVIRO in dictionaries such as the Concise Oxford, and suggested that it could be an abbreviation for a number of different words, such as ENVIRON.
     There are two issues to be decided in this matter: the inherent distinctiveness or otherwise of ENVIRO, and whether words or parts of words separated by a hyphen should be treated as a single word for the purpose of disclaimer requirements.  I shall deal with them in turn.
Distinctiveness of ENVIRO
     It is true as far as I can tell, that there is no listing for ENVIRO in dictionaries or similar reference works, as an abbreviation for ENVIRONMENT or anything else.  Nor am I aware of any evidence of general use of the term in newspapers, magazines, scientific journals, etc., as being an equivalent of ENVIRONMENT or ENVIRONMENTAL.
     It is also the case, however, that there are many instances of marks containing ENVIRO as a prefix, either on the register or the subject of pending applications.  These marks specify goods and services across a very wide range of classes, including class 16. 
     There is no doubt that the environment and all matters to do with it have developed in recent times into issues of great interest and importance to the general public.  It is now commonplace to see goods and services promoted as being environmentally safe or "friendly", and for public figures and organisations to urge the public to choose these sorts of goods or services in preference to those not so designed or formulated.  In these circumstances it is inevitable that traders will wish to incorporate in their trade marks some indication or suggestion that the goods or services identified with the marks meet these desirable criteria of environmental friendliness.  Although ENVIRO has yet to appear in a published reference work, so far as I know, its obvious connection with ENVIRONMENT and suitability for use as a prefix or other word element, fit it very well for this purpose.  The register and pending applications confirm this assumption.
     I believe these factors entitle me to conclude that ENVIRO is a term which traders in general will wish to use, as part of trade marks, or otherwise, in the legitimate description or extolling of their goods and services.  On this basis I conclude that for the purpose of trade mark registration it is non-distinctive: Oxford University Press v. Registrar of Trade Marks 17 IPR 509. The need to apply the provisions of sub-section 32(1) will therefore have to be considered when the term forms part of a mark for which registration is sought.
Disclaimer practice
     Current official practice in requiring disclaimers in respect of parts of marks is based on the findings of the High Court in Eclipse Sleep Products Inc. v. Registrar of Trade Marks 99 CLR 300. In that case, the Court stated:

"The consideration which would carry the most weight with the tribunal in deciding to require a disclaimer... would be that the applicant for a trade mark should not be permitted by the entry of the trade mark on the register to represent to the public that he has the right to the exclusive use of the parts or matter to the exclusive use of which the tribunal holds him not to be entitled and such parts or matter would presumably generally be those parts or matter not registrable per se....It would seem therefore that the tribunal should carefully consider whether a disclaimer should not be required whenever the proposed trade mark contains parts or matter to the exclusive use of which the tribunal holds the applicant not to be entitled and those parts or matter appear to be likely to become in use regarded as essential features of the mark as a whole; but that it would not normally require a disclaimer where the parts or matter form an insignificant portion of the mark as a whole, because the risk that another trader who used such a portion would infringe the registered mark would be trifling and to do so in such a case would only be to clutter up the register with unnecessary disclaimers."

The Registrar also takes guidance from decisions of the U.K. Registrar and courts, such as Philip Morris Inc.'s Trade Mark Appn. [1980] RPC 527 and Clement et Cie's Trade Mark 16 RPC 611. In the former the following comment was made:

"Such an outcome [that a court would find that use of the disclaimed element would be of something so nearly resembling the composite registration as to infringe that registration] is only possible, it would seem, if the disclaimed element were likely to be taken to have a trade mark connotation in the composite mark either by prominence, misspelling, association with such words as "line" or "brand", or whatever.  Where such a connotation is clearly unlikely (such as the name of the goods or an unregistrable laudatory epithet such as "new", "super" et al.) a disclaimer is quite unnecessary and the absence of a disclaimer in such a case does not indicate any rights in the element apart from the mark..."

On the basis of these precedents, it has been considered unnecessary to disclaim part of a single word, notwithstanding that it is a non-distinctive particular, unless the relevant letters were highlighted in some way, such as by the use of larger or fancier type.  Words or word elements joined together with hyphens have been considered not to constitute a single, continuous word, but to be in like case as parts of a word highlighted by the use of different type.
     I have noted that there is a considerable number of marks, the subject of pending applications or already registered, which include ENVIRO as a prefix.  As a general rule, a disclaimer of ENVIRO has been required wherever this element appears as a separate word, or joined with a hyphen to the rest of the mark.  This practice is in accord with the general disclaimer practice described above.  It is this practice which these proceedings have called into question.
     I have noted Mr Lord's submissions on the role and significance of a hyphen.  The Macquarie dictionary defines hyphen as: "a short stroke used to connect the parts of a compound word or the parts of a word divided for any purpose".  Fowler's Modern English Usage, second edition, states that the "primary function of the hyphen is to indicate that two or more words are to be read together as a single word with its own meaning".  In the article on this word, at p255, it is indicated, as an example of this function, that such composites are first hyphened and then, if appearances permit, made into a continuous word.
     The findings of the CAL-U-TEST TM [1967] FSR 39 are in agreement with this definition of the usage of the hyphen. In that case the mark CAL-U-TEST was considered to be a single word; despite TEST being found to be common to the relevant trade, it was found to be inappropriate to disclaim it since such a disclaimer was likely to give the erroneous inference that rights lay in the undisclaimed element and not the word as a whole.
     I think a review of this material leads to the conclusion that our practice in respect of hyphenated parts of words has been unnecessarily cautious, and that treatment of composites such as ENVIRO-MATE or CAL-U-TEST as single continuous words with no special highlighting of individual elements, requiring no disclaimer of those individual elements, is both desirable and consistent with the relevant precedents.  Thus, unless the particular non-distinctive element is rendered in a manner likely to give it a trade mark connotation, by virtue of prominent type or similar highlighting, I think it is appropriate to conclude that registration will give rights only in the composite mark as a whole, and not in the individual elements.  Where the particular hyphenated element is especially ill-adapted to function as a trade mark, as in the case of generic names, laudatory epithets or major geographical names, it becomes even less appropriate to require a disclaimer, as noted in the Philip Morris case, supra.
     My decision in the present matter, then, is that, although ENVIRO must be considered to be non-distinctive on the basis of the information available to me, ENVIRO-MATE may be accepted for registration without the requirement that exclusive rights to its use be disclaimed.  The application may therefore proceed to acceptance.

SUSAN FARQUHAR
Assistant Registrar
9 October 1991