Sonoco Products, Re

This matter concerned a trade mark application by Sonoco Products Company for the mark ENVIRO-MATE in respect of bags and sacks, specifically grocery bags and sacks including plastic ones. The applicant sought registration in Part A of the Register. The examiner had required a disclaimer of exclusive use of the word "ENVIRO" on the basis that it was a transparent abbreviation for "ENVIRONMENT" and was becoming increasingly popular as a common part of trade marks, citing numerous registrations and pending applications containing the term.

The delegate of the Registrar of Trade Marks was required to determine two issues: first, the inherent distinctiveness of the term "ENVIRO" in relation to the specified goods, and second, whether words or parts of words separated by a hyphen should be treated as a single word for the purpose of disclaimer requirements. The applicant argued that ENVIRO-MATE should be considered a single word, that "ENVIRO" was not established as non-distinctive or common to the trade for the goods in question, and that dictionaries did not list "ENVIRO" as an abbreviation for "ENVIRONMENT".

The delegate found that while "ENVIRO" was not listed in dictionaries, its obvious connection to "ENVIRONMENT" and the prevalence of its use as a prefix in trade marks across various classes, including class 16, indicated that traders would wish to use it to describe goods as environmentally friendly. Consequently, "ENVIRO" was deemed non-distinctive. However, applying precedents such as *Eclipse Sleep Products Inc. v. Registrar of Trade Marks* and *CAL-U-TEST TM*, the delegate concluded that hyphenated words should generally be treated as single continuous words, and a disclaimer should not be required unless the non-distinctive element is highlighted in a way that gives it a trade mark connotation. Therefore, the application for ENVIRO-MATE was accepted for registration without the requirement of disclaiming exclusive use of "ENVIRO".