Trade mark application number 1887774 (43) UNCANNED - in the name of Campbell Soup Company

[2019] ATMO 84

TRADE MARKS ACT 1995

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

ReTrade mark application number 1887774 (43) – UNCANNED - in the name of Campbell Soup Company

Delegate:                   Robert Wilson

Representation:        Applicant: King & Wood Mallesons

Decision:                   2019 ATMO 84

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application exists under s 41 – trade mark has no ordinary signification in respect of information services – trade mark inherently adapted to distinguish – application accepted

Background

1. On 16 November 2017 Campbell Soup Company (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:	1887774
Services:	Class 43: Provision of information on food and food production, including via a website  (‘the Applicant’s Services’)
Trade Mark:	UNCANNED	(‘the Trade Mark’)

2. The Application was examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’) and on 18 March 2018 the Examiner issued an adverse report which indicated the examiner’s view that there was a ground for rejecting the application under s 41 and that the Applicant might overcome the ground for rejection if it supplied evidence of use pursuant to s 41(4) of the Act. The Examiner stated in the report:

Your trade mark is, or has as its main feature, UNCANNED

This indicates that your services, being the provision of information on food and food production, are about food which is not canned.

Other traders should be able to use UNCANNED in connection with goods or services similar to yours.

3. The Applicant responded to the adverse report on 27 April 2018 with submissions indicating the Applicant’s view that the ground for rejection was raised in error and why it considered this to be the case. The Examiner was not persuaded by the Applicant and on 4 May 2018 issued a second adverse report. On 23 October 2018, the Examiner issued a third adverse report following further submissions from the Applicant. On 18 January 2019 the Applicant requested to be heard by way of written submissions only. On 2 April 2019 the Applicant provided written submissions for that purpose.

4. I have been allocated the matter to decide as a delegate of the Registrar of Trade Marks.

The Law in Respect of s 41

5. 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).

6. The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend 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 connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire.[1]

[1] (1913) AC 624, 634-5.

7. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, 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 they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]

[2] [1964] HCA 55, [5] (‘Clark Equipment’).

8. In the, relatively, recent case of Cantarella Bros v Modena Trading (‘Cantarella’)[3] the High Court indicated that the test for distinctiveness is a two-step process: the first step being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods, then having determined the answer to that question the second step is to consider the likelihood of the sign being needed by other traders. Much of the case law in regard to s 41 has dealt with goods; however, the law applies similarly to services.

Consideration

[3] [2014] HCA 48.

The Ordinary Signification

9. It is necessary to bear in mind the relevant goods and/or services when assessing the ordinary signification of a sign. This is necessary because the ordinary signification determined must be the ordinary signification if the sign were to be used in connection with the relevant goods and/or services—rather than in connection with something else. In the present matter the services are: provision of information on food and food production, including via a website. The qualification ‘including via a website’ adds nothing to, nor takes anything away, from the specification which precedes it.

1. It is usual for trade mark examiners to carry out research when endeavouring to determine the ordinary signification of signs. Research in relation to a sign which consists of a word, such as in the present case, typically includes consultation of the following resources: a database of names on the Australian electoral role, a dictionary, a database of pharmaceutical names, the Gazetteer of Australia, and a foreign language search. The default dictionary used by trade mark examiners in Australia is the Macquarie Dictionary.

2. None of the aforementioned resources return a result for ‘uncanned’. That is not the end of the matter, however. The adjective ‘canned’ has a commonly understood meaning in relation to foodstuffs; the Macquarie Dictionary indicates that its meanings include: preserved in a can, tin or jar. The term ‘can’ also has well understood meanings including as a noun defined by the Macquarie Dictionary as: a container, sometimes sealed, usually for a liquid and made of aluminium or sheet iron coated with tin or other metal. ‘Can’ is also a transitive verb with definitions including: to put in a container, usually sealed for preservation.

3. The prefix ‘un-’ has a well understood meaning, for which the Macquarie Dictionary has the following definitions:

   un-(1)

   a prefix meaning ‘not’, freely used as an English formative, giving a negative or opposite for, in adjectives (including participial adjectives) and their derivative adverbs and nouns, as in unfair, unfairly, unfairness, unfelt, unseen, unfitting, unformed, unheard-of, unget-at-able, and less freely in certain other nouns, as in unease, unrest, unemployment. Note: Of the words in [un-(1)] only a selected number are separately entered, since in most formations of this class, the meaning, spelling, and pronunciation may readily be determined by reference to the simple word from which each is formed. (emphasis added)

   un-(2)

   a prefix freely used in English to form verbs expressing a reversal of some action or state, or removal, deprivation, release, etc., as in unbend, uncork, unfasten, etc., or to intensify the force of a verb already having such a meaning, as in unloose.

4. The Applicant submitted that, ‘As a starting point, the Trade Mark has no natural meaning – it is an invented word’. The Applicant based this assertion on the absence of an entry in the Macquarie Dictionary for ‘uncanned’ ‘nor any variant, such as uncan’. As the emphasised part of the definition of un-(1), above, indicates the mere absence of those words from the dictionary does not necessarily lead to the Applicant’s conclusion.

5. In conducting their research examiners, as a matter of routine, conduct searches of the internet. The examiner in this matter undertook such a search for the term ‘“uncanned”’. The search returned 39,500 results. The Applicant was provided with a copy of the examiner’s research prior to responding to the second adverse examination report. The results included a definition from the Collins online dictionary which indicated that ‘uncanned’ is an adjective meaning not canned. This result alone tends to indicate that the Trade Mark is not an invented word and, in conjunction with the discussion in the previous paragraphs, I am satisfied that it is not. Further, I am satisfied that it has a readily apparent meaning when used in connection with goods which are typically stored in cans, such as foodstuffs.

6. Whilst ‘uncanned’ has a readily apparent meaning in connection with foodstuffs, it is also apparent that this is a rather unnatural term that is unlikely to be ordinarily used to describe foodstuffs which are not in cans. This poses the question of whether a finding that ‘uncanned’ has a readily apparent meaning amounts to a finding that the word has an ordinary signification in connection with those goods. The decision in Cantarella does not make it clear, and provides little guidance, on how the ordinary signification of a sign is to be determined. It is unclear from the decision whether a sign which is found to have an apparent meaning in respect of certain goods, therefore necessarily has an ordinary signification in connection with those goods. In the absence of further guidance, I take the view that the second conclusion does not necessarily follow from the first.

7. There is a risk in taking this approach that I might be accused of conflating the two limbs in Cantarella; however, the questions to be answered are closely related: ‘Often the answer to the first question … will provide the answer to the second question’.[4] Having decided to take this approach I am satisfied that ‘uncanned’ has no ordinary signification in connection with the goods of foodstuffs. I take some comfort from the fact that if I were to have taken the alternative approach—and having then moved to consider the second limb from Cantarella—I would have found that it is unlikely that the sign would be needed by other traders.

   [4] Telstra Corporation Ltd v Phone Directories Co Australia Pty Ltd [2015] FCAFC 156, [126].

8. As indicated above, the question to be answered here is not what is the ordinary signification when used in connection with foodstuffs, but ‘What is the ordinary signification of the Trade Mark when used in connection with the Applicant’s information services?’. It was not immediately apparent, at least to me, whether an information service, or information itself, might be described as ‘canned’ or ‘uncanned’.

9. A search of the internet for the term “canned information” returned 8,900 results. Some examples of use of the term are:

• I realise you’re relying rather heavily on ‘canned’ information about …[5]

• Her tour and information is delivered in a conversational style rather than canned information …[6]

• Very often a manufacturer will give you canned information …[7]

• Dervin takes the counter view that most ‘canned’ information is not relevant to the needs of most individuals …[8]

• Canned information gets repetitive and boring in a short time …[9]

  [5] Eilis OHara, John Michael Kilkelly, Mossfort (2009) Ancestry < at 17 May 2019.

  [6] Kurt, Explore and Capture the City Sights (2018) Airbnb < at 17 May 2019.

  [7] Supertractor3, Scan Tool Review (2014) eBay < at 17 May 2019.

  [8] Donald Case and Lisa Green (eds) Looking for information: A Survey of Research on Information Seeking, Needs, and Behaivour (4^th ed, 2016) 119.

  [9] John Boitnott, The Do’s and Don’ts of Dashboarding (2015) Inc < at 17 May 2019.

1. It is apparent from the examples provided above that information can be directly described as ‘canned’. The Macquarie Dictionary includes a definition for ‘canned’ which is: Chiefly US Colloquial prepared in advance. It appears to be in this sense that ‘canned’ was used in the examples provided. It is apparent from the examples and other search results that the ordinary signification of ‘canned’—to at least a significant number of consumers of information when used in connection with information—is that it describes information which is prepared in advance and without consideration of the specific needs of the individual consumer of that information.

2. I am also of the view that ‘uncanned’ when used in connection with the good of information has a readily apparent meaning. However, a search of the internet for the term ‘uncanned information’ yielded two only results, neither of which assist this inquiry. For reasons similar to those discussed above in respect of foodstuffs I am satisfied that ‘uncanned’ has no ordinary signification in respect of information.

3. The discussion above was, again, a consideration of the ordinary signification of ‘uncanned’ in respect of a good, in this case information. The next question is whether ‘uncanned’ has any ordinary signification in respect of the Applicant’s Services. I will begin this enquiry with a consideration of the ordinary signification of ‘canned’ in respect of services generally. A search of the internet for ‘canned services’ returned 2,190 results. Some examples are provided below:

• [We] create every online marketing campaign from scratch … rather than selling you canned services from a menu.[10]

  [10] About (2019) Glass Marketing Group < at 17 May 2019.

• No ‘canned’ services or ‘black boxes’, we customise designs to meet your particular needs.[11]

  [11] Insight. Vision. Solutions. (2014) Moy Consumer Insights Solutions LLC < at 17 May 2019.

• eVise is not a typical ‘canned services’ provider.[12]

• We offer customized services, designed to meet your needs. … Don’t settle for canned services designed to meet the needs of most businesses.[13]

• However, others, including the authors, cannot find … any clear and reasonable basis for excluding automated, standard, general, routine or ‘canned’ services, whose performance …[14]

• We believe each decision we recommend should be based on the needs of the client, not just one niche speciality or a menu of canned services.[15]

• [W]e also saw a surprising number of missed opportunities where an agency’s canned services did not align with …[16]

  [12]Business Technology Should Be About Business eVise < at 17 May 2019.

  [13] Welcome to Hebb & Company Hebb & Company LLC < at 17 May 2019.

  [14] Werner Haslehner et al, Tax and the Digital Economy: Challenges and Proposals for Reform (2019).

  [15] Website Design Increase conversations and build trust (2019) New Vista Digital < at 17 May 2019.

  [16] OPM agencies are at a crossroads – Which path will they take? (2019) Impact < at 17 May 2019.

1. It is apparent that ‘canned’ also has an ordinary signification in connection with information services: that being a service which is a standard service, rather than one which is based on the specific needs of a particular customer. Again, it seems to naturally follow that ‘uncanned’ is likely to have a readily apparent meaning if used in connection with services (of many different types). However, a search of the internet for ‘uncanned services’ returned a single, uninstructive result. The research conducted by the examiner does not indicate that ‘uncanned’ is used ordinarily in connection with the relevant services (or any services).

2. The awkward nature of the term and the apparent absence of its use indicate strongly that ‘uncanned’ has no ordinary signification to persons who will purchase the Applicant’s Services. If the approach I have taken happens to be wrong I, again, take comfort from the fact that had I gone on to consider the second limb from Cantarella I would have found that it was unlikely that other traders would need to use ‘uncanned’ in connection with the Applicant’s Services. I find therefore that the Applicant’s Trade Mark is inherently adapted to distinguish the Applicant’s Services and as a delegate of the Registrar I accept the application.

Decision

1. I am satisfied that the Applicant’s Trade Mark is inherently adapted to distinguish the Applicant’s Services. The application may therefore be accepted.

Robert Wilson
Hearing Officer
Hearings and Oppositions
31 May 2019