The Toro Company, Re

[1994] ATMO 100

TRADE MARKS ACT 1955

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

Re:      Applications numbers 569899 and 569900 to register a trade mark in the name of  THE TORO COMPANY

Applications Nos. 569899 and 569900 were lodged by THE TORO COMPANY (the applicant) on 24 December, 1991. In both applications it seeks registration of the word mark RECYCLER, in respect of goods subsequently amended for application 569899, to "lawn care equipment including lawn mowers, parts and fittings in this class for all the aforesaid goods", in class 7, and for application 569900, to "lawn care equipment including lawn tractors, parts and fittings in this class for all the aforesaid goods and all other goods in this class", being class 12.

The examiner of trade marks raised objections in terms of paragraphs 24(1)(c), (d) and (e) of the Trade Marks Act on the ground that the mark refers directly to the character or quality of the applicant's goods, describing them as recycling equipment. The attorneys replied that RECYCLER has only a skilful and covert allusion to the goods. They pointed out that grass clippings cannot be recycled into new grass as, for example, glass is recycled into new glass.  The examiner was alleged to have followed a convoluted and complex thought process, and that did not indicate any obvious meaning of the mark.  RECYCLER, they claimed would be perceived merely as a fanciful reference to the goods. They also pointed out that RECYCLER had been registered in 1992 for vacuum cleaners and carpet cleaning machines, and argued that on this precedent, the applicant's marks should also succeed. Further, they submitted that fundamental administrative law required consistency and referred to a decision of Associate Chief Justice Jerome in the Federal Court of Canada in Canadian Parking Equipment Limited v Registrar of Trade Marks, Court No. T-1627-85 of 1 November, 1990. 

The examiner responded that, unlike carpet cleaning machines and vacuum cleaners, which do not contribute to a cyclic process, a number of machines and equipment encompassed in the present specifications of goods, do indeed have a recycling function and can be described as "recyclers". She said she was prepared to recommend the acceptance of the applications in Part B of the Register.  Subsequently, however, the examiner issued  another report advising the applicant that further search showed the word RECYCLER to be used in reference to recycling plants, and in reference to mowers which recycled grass clippings.  She now regarded the mark as unsuitable for registration even in Part B. 

The attorneys considered these newly found references to RECYCLER and argued that they constituted misuse of the applicant's trade mark.  They also pointed out that the data base searched was American and said that the mark should be assessed in terms of Australian use and meaning. The attorneys also reiterated the earlier submission that, at best, one could cut the grass very finely and mulch it and over time it may become fertilizer.  It was impossible however, to recycle cut grass into a meadow as one could recycle old  paper into new paper. 

The examiner maintained her position and rejected the claim that the research results were only examples of the applicant's mark in use. She said that, with the current public emphasis on recycling, the word RECYCLER was likely to be required for future use.  The applicant's attorneys then applied to be heard on the matter.

The hearing took place before me in Melbourne on 13 September 1994.  Mr  Brian Hendy, of Carter Smith & Beadle, a firm of patent and trade mark attorneys, Melbourne, appeared on behalf of the applicant. 

Submissions

Mr Hendy commenced his submissions by asserting that the word RECYCLER was coined by the applicant, and that the occurrence of the word in the search conducted by the examiner was, in fact, reference to the applicant's trade mark. In support, he tendered a copy of a survey commissioned in 1991 by the applicant.  This survey was conducted in Washington DC and was intended to show consumers' understanding of the word RECYCLER.  There was no evidence, he contended, that the word had any other meaning in Australia than that of the trade mark of the present applicant.  Being a coined word, it did not appear in any English dictionaries.  He conceded that the word had some reference to the character or quality of the lawn care equipment but, referring to Burroughs Wellcome & Co's Trade Mark 21 RPC 217, argued that the courts have recognized the natural inclination of a trader to select a mark which is not without some reference to the goods in respect of which it is used, and that a mark which covertly alludes to a quality or characteristic of the goods is not necessarily unregistrable. Mr Hendy submitted that the applicant's mark distinguished their goods from other traders in the field of lawn care equipment. Otherwise it was at least capable of distinguishing, as per the findings of Lee J in Bausch & Lomb Inc v Registrar of Trade Marks, 28 ALR 537 at p546, and should be accepted in Part B. He reminded me that, although some words have a direct relation to the character or quality of the goods, such words may lose their primary meaning. Once the evidence showed a secondary meaning, then, he submitted, the words were registrable as trade marks (Romer LJ in J & P Coats Ltd's Appn. (1936) 53 RPC 355 at p. 384).

Formal evidence of use was not filed, but Mr  Hendy established to my satisfaction that from the introduction of the mark into Australia in September 1991 through to December 1993, significant sales had taken place. 

Mr Hendy then directed my attention again to Coats Appn. (supra) p380, and advanced the view that RECYCLER  was not the only and natural description available for traders to use in relation to equipment similar to the applicant's goods.  He pointed out that the current applications were now in Part B and that part of the Register was intended for marks which, in use, were shown "as affording an indication of trade origin without trespassing upon the legitimate freedom of other traders" (American Screw Coy's Appn. [1959] RPC 344). RECYCLER, he said, was such a mark.

Discussion

First, I will consider Mr Hendy's submission that RECYCLER is a coined word, that this is evident from the fact that it does not appear in dictionaries, that there is no evidence of use of the word in Australia, and that RECYCLER is not a word that would naturally be used as a description of lawn mowers and lawn care equipment. 

The fact that a word is not listed in dictionaries does not conclusively establish that it is not descriptive. The decision in Heavenly Trade Mark [1967] RPC 306 shows that the Registrar is entitled to take into consideration his own knowledge of the use of words and language. As I noted at the hearing, recycler is the noun formed from the verb recycle.  In line with many parallels, such as driver, which is one that drives; singer, which is one that sings; and chopper, which is one that chops - recycler is clearly something which recycles.  The word RECYCLER may not have a presence in dictionaries, but it seems to me to be the natural word to adopt if recycle facilities become available, and a word is needed to denominate them. A natural word of this kind cannot be claimed as a word coined by the trade mark applicant.

The examiner's research did find examples of RECYCLER occurring in descriptive use in the United States, but it is true that no similar examples were located in any Australian sources.  It seems to me however, to be very likely that similar usage is developing in Australia. The concept of a RECYCLER is integral to loudly proclaimed concerns about waste disposal.  If it is not already a part of everyday Australian usage, I consider that it is clearly a word that will be needed by operators who deal with waste disposal and by traders who will be exploiting the market potential associated with the waste disposal industry. If traders are marketing equipment which recycles material of any kind, then RECYCLER appears to me to be the obvious word to apply to such equipment. I therefore cannot agree with Mr Hendy that RECYCLER is anything more than a natural and perfectly apt denomination for any equipment that is designed to recycle.

Second, I turn to the survey evidence.  As mentioned above, this survey was conducted on the applicant's behalf, and was undertaken in Washington DC.  The objectives of the report are stated as , inter alia, 

to determine what present and potential buyers of lawn mowers say the word "RECYCLE" means to them ..... the kind of things these ... buyers had in mind when they think of that word ... and how they would recycle grass clippings if they wanted to do so.  

As I advised Mr Hendy, for the reasons which follow, I do not feel that I can attach a great deal of weight to this material. It is a survey designed and carried out in the United States of America and though of some interest, I need to consider (as, indeed, Mr Hendy has argued in relation to use) the understanding of the word in the Australian context.  Next is the concern expressed in the MOBIL decision (1 IPR 366) that recording reactions to words in isolation is of limited value because that understanding may change dramatically when the word is seen applied to the goods. With these two failings I find I can only attach limited weight to the survey results. However, having said that, I then find that the survey data includes disparate opinions and that many of these do not support Mr Hendy's view that RECYCLER is a coined word and conveys no meaning.  For example, of the respondents interviewed :

32%  say RECYCLER is someone who uses things over and over
4%   say RECYCLER is something that enables you to reuse things
7%   say  a RECYCLER enables you to reuse things
25%  say a RECYCLER enabled you to reuse things around the house.

Then there is the question

Suppose you wanted to recycle your grass clippings ,  how would you do it?

and 15% of respondents answer:

take it to a RECYCLER or have it picked up.

Taken over all, my position is that by its very nature, I cannot give it any great weight to the outcomes of this survey. But it has produced responses showing that some (American) consumers understand RECYCLER as having the very meaning which the examiner identifies as descriptive; it is at loggerheads with Mr Hendy's submissions; and it tends to confound the claim that RECYCLER has no meaning.  I therefore do not consider that it weighs at all, in the applicant's favour.

Third, I look to Mr Hendy's arguments that some alluding reference in a mark does not necessarily rule out registration.  He has referred me to the findings in Burroughs, Wellcome & Co's Applns 21 RPC 217 at p 226, that a trade mark which covertly alludes to a quality or characteristic of the goods is not necessarily unregistrable.   I do not agree that the word RECYCLER  has only covert and skilful allusion to the nature of the goods under consideration.  The Macquarie Dictionary defines the verb "recycle" as

1. to treat (waste, empty bottles, old tins, etc.) so that new products can be manufactured from them;

2. to prepare (something) for a second use, often with some adaptation or reconstruction.

In Webster's Third New International Dictionary the same word is listed as

"to pass again through a cycle of changes or treatment". 

A great deal of emphasis is currently placed on the necessity to conserve our resources and to preserve or protect the natural environment. Local governments, conservation agencies  and other bodies are educating the public to reuse materials and to minimise waste. It is common knowledge that the processes of recycling are not limited to paper, glass, or cans. They extend to waste materials of many kinds. This is evident from the Macquarie definition. Against this background, where recycling is now such a prominent public issue, it seems to be quite clear that ordinary persons confronted with the word RECYCLER used in conjunction with lawn care equipment and lawn mowers, would understand that  it describes the goods as equipment designed to recycle grass clippings. Clippings processed into compost, will benefit the soil and promote growth. As Webster's definition indicates, recycled material passes through a cycle of changes and need not return to its original state.  Recycled newspaper may become insulating material, and recycled grass may simply become mulch or compost. Contrary to the finding in Burroughs, Wellcome (supra), RECYCLER  I find is the most suitable word to describe equipment which brings about such a process and, per Dixon C J in Mark Foy's Ltd v Davies Coop & Co Ltd (1956) CLR 190 at p. 195, I find it a word which conveys a great deal more than a mere allusory reference to the applicant's goods.

Fourth, I agree with Mr Hendy that the original meaning of a word may indeed be overtaken by trade mark use.  I find, however, that there is no evidence that the applicant's use has at all affected the understanding of the word RECYCLER.   Nor do I find that the applicant's use shows that this word has become factually distinctive of its lawn care equipment and mowers.

Fifth, I acknowledge the general need of consistency, but I refer to Lazarus Rosenfeld Pty  Ltd's Application, ( 1941) 11 AOJP 1047 and 1889, where it was  held that the Registrar is not bound by Trade Mark Office decisions in earlier cases. Furthermore, I agree with the examiner's point that it is not at all clear that vacuum cleaning equipment has the same potential to function as a recycler, as does lawn mowing equipment. 

Decision

I have found that RECYCLER is a perfectly apt denomination for equipment that performs a recycling function.  While it does not yet have a significant presence in dictionaries, it is a natural development of English, and being only a minor and predictable change from the verb recycle it is easily understood by ordinary English speakers. 

I largely disregard the survey which the applicant had conducted in the United States of America.  However, to the limited extent that I am willing to give this survey weight, I find that it tends to add substance to the examiner's argument that RECYCLER is a descriptive word that has reference to the applicant's goods.

Considering the meaning of the mark in the context of the applicant's goods, I have found that the treatment of grass clippings so as to produce mulch or compost comes within the meaning of the term recycling.  From this, I find that lawn care equipment and lawn mowers designed to process grass in this way are aptly described as RECYCLERS. 

I have found that there is no evidence of factual distinctiveness. However, factual evidence would seemingly be of little avail, in view of the very apt descriptive function I have found in the word RECYCLER.

Mr Hendy submitted in conclusion, that if I were to find that RECYCLER failed the test for Part A, then taking into account his submissions, I should admit the mark to Part B.  As per the directives of Gibbs J. in Burger King Corporation v The Registrar of Trade Marks (1974) 128 CLR 417 and Kitto J. in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR, to qualify for registration, a mark must pass the tests for inherent distinctiveness.  Where there appears to be no inherent distinctiveness, the application must fail both Part A and Part B.  My findings are that RECYCLER is an ordinary English description of equipment which recycles, and I am not satisfied that it has any inherent distinctiveness.  It is a word that previously was not much used but now has place in the language. My particular concern is that with waste disposal such a topical and growing issue, there will be a much greater need for the use of the word RECYCLER and, as per Lord Simonds in Yorkshire Copper Works Ltd's Appn. (1954) 71 RPC 150 at p154, it is the duty of the Registrar "to protect the interests of the public not only of today but of tomorrow and the day after".

In consideration of my findings I refuse these applications to register the word RECYCLER  in class 7 and in class 12

Helen R. Hardie

Deputy Registrar

22 December 1994