The Toro Company, Re

Applications numbers 569899 and 569900 were made by The Toro Company for the registration of the word mark RECYCLER. Application 569899 sought registration for "lawn care equipment including lawn mowers, parts and fittings" in class 7, while application 569900 sought registration for "lawn care equipment including lawn tractors, parts and fittings" in class 12. The examiner raised objections under paragraphs 24(1)(c), (d), and (e) of the Trade Marks Act, arguing that the mark directly described the character or quality of the goods as recycling equipment. The applicant contended that RECYCLER was a coined word with a skilful and covert allusion to the goods, not a direct description, and pointed to prior registrations and foreign court decisions as precedent. The examiner maintained that the mark was descriptive, particularly in light of current public emphasis on recycling and the function of such equipment. The matter was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the word RECYCLER was registrable as a trade mark for lawn care equipment. Specifically, the delegate had to consider whether the mark was descriptive of the goods, whether it was a coined word, and whether it possessed inherent distinctiveness sufficient for registration in either Part A or Part B of the Register. The delegate also had to assess the weight to be given to the applicant's survey evidence conducted in the United States and consider arguments regarding the potential for a word to acquire secondary meaning through use.

The delegate reasoned that the word RECYCLER, while not appearing in dictionaries, is a natural development of the English language from the verb "recycle" and clearly denotes something that recycles. The delegate found that lawn care equipment designed to process grass clippings into mulch or compost falls within the meaning of recycling, making RECYCLER an apt and descriptive denomination for such goods. The delegate gave limited weight to the applicant's US survey evidence, finding it did not support the claim that RECYCLER was a coined word without meaning, and instead tended to confirm the examiner's view that it was descriptive. The delegate also found no evidence that the applicant's use of the mark had acquired factual distinctiveness or altered the ordinary meaning of the word. Applying the principles that a mark must possess inherent distinctiveness to qualify for registration and that the Registrar has a duty to protect the public interest, the delegate concluded that RECYCLER lacked inherent distinctiveness and was a word likely to be needed for descriptive use in the future.

Consequently, the delegate refused the applications to register the word RECYCLER in class 7 and class 12.