The Icelandic Milk and Skyr Corporation

[2019] ATMO 116

TRADE MARKS ACT 1995

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

ReInternational Registration 1369541 (29) Australian Trade Mark Application number 1879480 (29) – SIMPLE SIDES - in the name of the Icelandic Milk and Skyr Corporation

Delegate:	Nicholas Smith
Representation:	Holder: Jonathan Feder of K&L Gates
Decision:	2019 ATMO 116 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA accepted for possible extension of protection to Australia

Background

1. On 6 September 2017, The Icelandic Milk and Skyr Corporation. (‘Holder’) applied to extend protection to Australia of International Registration 1369541 under the provisions of the Trade Marks Act 1995 (‘Act’) and Trade Marks Regulations 1995 (‘Regulations’).  Such an application is referred to as an International Registration Designating Australia (‘IRDA’).  The current details of the IRDA appear below:

Application Number:	1879480
International Reg.	1369541
Filing Date:	6 September 2017
Priority Date	8 March 2017
Goods:	Class 29: Cultured dairy products, namely, yogurt and strained yogurt (‘Holder’s Goods’)
Trade Mark:	SIMPLE SIDES	(‘Trade Mark’)

2. The IRDA was examined as required under Reg 17A.12 of the Regulations. On 1 December 2017 IP Australia issued a first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA, identifying a ground for rejection pursuant to s 41 of the Act (‘First Report’).  The examiner stated (paraphrased) that as the Trade Mark refers to simple side dishes other traders should be able to use SIMPLE SIDES or something nearly resembling this in connection with goods similar to the Holder’s Goods.

3. After further correspondence between the examiner and the attorneys for the Holder failed to overcome the objection, the Holder requested to be heard by the Registrar of Trade Marks under reg 17A.17 of the Regulations.

4. As a delegate of the Registrar of Trade Marks I heard this matter on 4 June 2019.  Jonathan Feder, partner at K&L Gates, representing the Holder, made oral submissions after having earlier provided me with an outline of written submissions in accordance with the pre-hearing directions I had given.  The Applicant has also chosen to provide and rely on a Statutory Declaration of Jonathan Ariel Feder with Annexures JAF-1 to JAF-7, made on 22 May 2019 (‘Feder Declaration’).

Legislative framework

5. Reg 17A.24 of the Regulations provides that:

(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it.

…

(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it, in whole or in part.

6. Section 41 of the Act provides:

41 – 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)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

7. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act, which corresponds to Reg 17A.24:

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[1] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

[1] (1998) 40 IPR 498, 505.

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] 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 [Applicant’s Services]. [that is, s 41(4) applies][2]

[2] [2017] ATMO 25, [38]-[40].

8. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court 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]. [3]

[3] [2017] FCAFC 56 at [236].

9. The process I am required to undertake is not a review of the examiner’s reasoning.  However, it is useful to understand how the examiner considered the question of inherent adaption to distinguish in respect of the Trade Mark.

1. In the First Report, the examiner reasoned that:

   Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods. This is because your trade mark is SIMPLE SIDES.

   SIDES is a word commonly used to abbreviate the term 'side dishes'. SIMPLE SIDES therefore indicates that your yogurt dairy products are easy or simple sides or simple side dishes.

2. In maintaining the objection, the Examiner has also reasoned:

   Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 established that the meaning of a trade mark is that which would be ascribed to it by the ordinary person, having regard to the goods or services to which it is applied. My opinion is that the ordinary person, seeing the trade mark SIMPLE SIDES applied to the designated goods, would readily see the descriptive meaning of goods which are simple sides or simple side dishes….

   I note your submissions regarding what Wikipedia, the "Eat for Health" website and to the links and screenshots contained in Annexure A consider to be side dishes. They are simply examples of what a side dish could be and would not be exhaustive; any food products could be made into a side dish or used in a recipe to create a side dish. Yogurt products are popular side dishes for Indian cuisine however I note this is not in the information you have provided.

3. The Applicant’s submissions in respect of s41 are summarised below:

• The Trade Mark has obtained registration in numerous jurisdictions outside Australia, including the European Union, India, Japan, New Zealand and the United States of American without a distinctiveness objection being raised.  

• A side dish is defined in the Macquarie dictionary as ‘a dish served in addition to a principal dish of a course’.  This is different to a condiment, which is a product used to give special or additional flavour to food, as a sauce or seasoning.  There are various foodstuffs that are commonly identified as side dishes, including dinner rolls, salad, baked potatoes or French fries, however there is no evidence that the Holder’s Goods are commonly offered for sale or used as a side dish.  Furthermore the fact that a product is used as an ingredient does not mean that it a ‘side dish’.

• Given that the Holder’s Goods are not side dishes, the ordinary signification of the Trade Mark is not a direct reference to the character or quality of the goods claimed in the application for the Trade Mark, a laudatory epithet, a geographical name or surname, or a word without distinctiveness. 

• There is no reason why another trader, acting honestly, would legitimately need to use the words SIMPLE SIDES in respect of the Holder’s Goods as there is no evidence that the Holders Goods are used as side dishes. Even if this is incorrect, it is necessary that the purported use by third parties will be trade mark use with respect to the goods claimed (and not merely descriptive use of the words with respect to side dishes). Other potential uses of the word SIMPLE SIDES would amount to an innocent, non-trade mark use, insufficient to trigger an objection under s 41.

1. I agree with the Examiner’s conclusion, that appears not to be disputed by the Holder, that the ordinary signification of the Trade Mark is ‘simple side dishes’.  The relevant enquiry then is whether other traders in the Holder’s Goods or similar goods might legitimately need to use the Trade Mark in respect of their goods.  This is dependent on whether the Holder’s Goods are ‘side dishes’.  While it is obviously possible for (almost) any food product to be served in addition to a main course, I consider that there is a distinct meaning to the words ‘side dishes’ that only encompasses a specific subset of foods that are commonly regarded or used in the manner described in the ordinary specification, that is as a dish served in addition to the principal dish in a course.

2. I do not consider that the term ‘side dish’ encompasses all foodstuffs, nor do I consider that traders in food products that are not commonly described or identified as side dishes have any legitimate need to use the Trade Mark as the Trade Mark is simply not a ‘direct reference’ to those goods.  This would include food products that are merely ingredients (such as flour), condiments added to dishes and not eaten separately (such as tomato sauce), and beverages.  

3. I accept the evidence in the Feder Declaration is that the Holder’s Goods are not commonly used or identified as side dishes.  In particular I note Annexure JAF-7 which consists of extracts from various supermarket and food producer websites of foodstuffs described as ‘sides’ or ‘side dishes’, which does not include any of the Holder’s Goods.  

4. I note that the Holder’s Goods are commonly used in Indian cuisine, but I am not aware of, nor is there any evidence before me, of any use of in Indian cuisine that would fall within the definition of ‘side dish’ being a dish served as an addition to the principal dish of a course.  Without conducting an extensive analysis of Indian cuisine, I note that (considering Indian foods in which yoghurt is a primary ingredient) raita would best be described as a condiment, lassi is a beverage and mishti doi (and other similar items) is a dessert.  Many other uses of yogurt are as an ingredient of a dish and not a side dish by itself (papri chaat).  Finally many Indian meals, such as thalis, do not operate on the basis of a principal dish and a side dish and to the extent that yogurt is used in a such a meal, it is done so to be mixed with the other elements, not as a separate side dish to a principal dish. 

1. Given that the Holder’s Goods are not side dishes I am satisfied that the Trade Mark, in the context of the Holder’s Goods, does not indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the Holder’s Goods or the time of their production.  I am unpersuaded that other traders, in the ordinary course of their business and without any improper motive, will think of or desire to use the Trade Mark, or something closely resembling it, in respect of the Holder’s Goods.  I find that the Trade Mark is inherently adapted to distinguish the Holder’s Goods from the goods of other traders and I find that the ground for rejection has not been established.

Decision

1. Regulation 17A.24 provides:

17A.24Final decision on examination

(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it.

(2)The Registrar may accept the IRDA subject to conditions or limitations.

(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it, in whole or in part.

1. As I am not satisfied that there is a ground for rejecting the IRDA I must accept the IRDA for possible extension of protection in Australia.  As a delegate of the Registrar, I now do so.

Nicholas Smith
Hearing Officer
Oppositions and Hearings
1 August 2019