Spotlight Stores Pty Ltd, Re

[1994] ATMO 77

TRADE MARKS ACT 1955

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

Re:Application number 575072 to register a trade mark in the name of SPOTLIGHT STORES PTY. LTD.

Application number 575072 was lodged by SPOTLIGHT STORES PTY. LTD. (the applicant) on 24th March, 1992, for the trade mark HIGHLAND TARTANS in respect of a statement of goods subsequently amended to: "textiles and textile goods as are included in this class; fabrics; bed and table covers" in class 24 

In a report of 13th April, 1993, the examiner raised, inter alia, an objection to registrability of the mark in terms of paragraphs 24(1) (c), (d) and (e) of the Act, based on the mark being directly descriptive of the character or quality of the goods, because the word TARTANS is a distinctive fabric pattern used by the various Scottish Highland clans and HIGHLAND refers to an administrative region in northern Scotland.  The applicant's attorneys, Callinan Lawrie, patent and trade mark attorneys of Melbourne, submitted that the examiner should not analyse separately the constituent particulars comprising the mark, but should consider the mark in its totality.  In this regard, they asserted that, since the combination of the words HIGHLAND TARTANS did not enjoy usage in normal English, the mark could not be considered as one involving a direct reference to a character or quality of the goods, and therefore other traders could not be said to be equally entitled to use the words to indicate the origin or location of their goods.  Following an issue of a further report in which the examiner maintained the objection, the attorneys argued that the grouping of the words  HIGHLAND TARTANS qualified as invented words, because the combination HIGHLAND TARTANS did not appear in definitive reference books.  Furthermore, if this grouping was not employed in the normal English parlance, then the words could not have any ordinary meaning tantamount to direct reference.  To this, the examiner responded by explaining that the word HIGHLAND was used as an adjective, and the word TARTANS had a noun form, which, used together, meant the obvious to all English speakers, namely: tartan patterns or fabrics of or from the Highlands of Scotland.  The attorneys then advised that the applicant's mark had enjoyed use for three to four years, resulting in sales of the products of the order from 80 to 100,000 meters, at a price of approximately $4.00 per meter, and enclosed a copy of brochures showing the mark in use.  In their estimation, this additional information rendered the mark at least capable of becoming distinctive through use.  As these submissions were unsuccessful in obtaining registration of the mark even in Part B of the Register, as advised by an acting principal examiner, the attorneys waived the right to a hearing on the applicant's behalf, and requested a decision on the written record.

For the purpose of this decision, I will consider registrability of the applicant's mark in Part A of the Register, first dealing with the objections in terms of paragraphs 24(1)(c), (d) and (e) of the Act, and then the question of registrability in Part B, in accordance with the provisions of sub-section 44(2) of the Act.  Registrability of the mark in Part B of the Register will depend on the test as to whether the mark would, at some time in tuture, satisfy the requirements of sub-section 26(2) based on inherent distinctiveness and distinctiveness in fact.

Turning to the attorneys' contention that the applicant's mark HIGHLAND TARTANS constitutes invented words because the combination of those two words is not used in common parlance in the English language and it does not appear in recognized dictionaries, I refer to the often quoted passages from cases which have firmly established the principles to be applied to "invented" word or words.  In Eastman Photographic Materials Co. Ltd's Appn. (1898) 15 RPC 476, Lord Herschell pronounced at page 485:

"It may no doubt sometimes be difficult to determine whether a word is an invented word or not.  I do not think the combination of two English words is an invented word, even although the combination may not have been in use before ...".

And in a leading Australian case on this aspect, Howard Auto-Cultivators Ltd. v. Webb Industries Pty Ltd. (1946) 72 CLR 175, Dixon J., as he then was, at page 181:

"The fact that a word is not included in the dictionaries is not enough to show that it is an invented word, nor is the fact that it has been newly constructed ... The materials from which such a word has been fashioned cannot be neglected and if it is compounded of elements of which the source is manifest and the intended meaning is transparent, it becomes a question whether there is anything more than a colourable attempt at reproducing some of the sounds and all the sense of an expression belonging to common speech."

In Fairchild's Dictionary of Textiles by Dr. Isabel D. Wingate, 6th ed., TARTAN is defined as: " Originally a twilled woolen or worsted plaid worn by the Scottish Highlanders, each clan having its distinctive designs and colors.  The term is also loosely applied to the pattern or design of the cloth or to any fabric with a similar pattern."  A similar definition of the word appears in Encyclopedia of Textiles by Judith Jerde: "The tartan is plaid fabric that originated in the Scottish highlands and figured prominently in the history of Scottish dress.  Traditionally, tartans were made of wool or worsted, but now are made of blends, including manufactured fibers.  There are hundreds of different tartans today, and the term has become a generic one referring to bright plaid woven designs."  

As stated by the examiner, the word HIGHLAND also describes: "an administrative region in northern Scotland, formed from the former counties of Caithness, Sutherland, Nairnshire, Inverness, and Ross and Cromarty, excluding the Outer Hebrides.  Pop. 200,6000 (1987 est.)" (The Macquarie Dictionary).

Having regard to these definitions of the words comprising the mark, and viewing the mark in light of the words of Dixon C.J. concerning directly descriptive marks in Mark Foy's Ltd. v. Davies Coop & Co. Ltd. (1956) 95 CLR 190 at page 195:

"The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess",

I do not hesitate to assert that the precise meaning of the expression would be perfectly obvious to a speaker of the English language.  Consequently, in addition to finding that the applicant's mark fails to qualify for registration under paragraph 24(1)(c) as one not consisting of invented words, as discussed above, I also determine that it is unregistrable under paragraph 24(1)(d), comprising of words which have a direct reference to the character or quality of the nominated goods.  To further support my conclusions, I note from the lodged brochures the description of the products under the mark HIGHLAND TARTANS as "hot fashion mini-checks" and illustrations of different fabrics in the characteristic patterns readily recognizable as "tartan".  Consequently, the nature of the words HIGHLAND TARTANS is such that those words will be required by other traders for use, without improper motive, in connection with their similar products (see Clark Equipment Company v. Registrar of Trade Marks (1964) 111 CLR 511).

Considering distinctiveness in fact, I believe the estimate of the sales of the products amounting to approximately $400,000 does not outweigh the mark's total lack of inherent distinctiveness and any capacity to distinguish.  It has been established that if a mark is held to be inherently unadapted to distinguish, then even if the evidence of its use were to demonstrate factual distinctiveness, it would not suffice for a mark to achieve registration in Part A or Part B of the Register (see Burger King Corporation v. The Registrar of Trade Marks (1973) 129 CLR 417).

On the basis of the relevant factors, I find therefore that the applicant's mark is unsuitable for registration in either Part A or Part B of the Register.  Accordingly, I refuse this application.

Vija Zars

Senior Examiner

7 October 1994