Trade mark application number 2017036 (31) – Cat device - in the name of Mars Australia Pty Ltd

[2021] ATMO 145

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2017036 (31) – Cat device - in the name of Mars Australia Pty Ltd

Delegate:	Louise Tuohy
Representation:	Applicant: Ross McLean of Counsel instructed by Baker McKenzie
Decision:	2021 ATMO 145 Trade Marks Act 1995 (Cth) – Ex parte matter pursuant to section 33(4) – section 41 considered – trade mark not capable of distinguishing – evidence insufficient - application rejected

Background

1. This decision follows from an ex parte hearing at the request of Mars Australia Pty Ltd (‘Applicant’) pursuant to s 33(4) of the Trade Marks Act 1995 (Cth) (‘Act’) in relation to the following trade mark application:

   Application number:              2017036

   Trade Mark:  (‘Trade Mark’)

   Filing Date:  19 June 2019

   Specification:  Class 31: Raw and unprocessed agricultural, horticultural and forestry products, grains and seeds; live animals, birds and fish; cuttlefish bone, bones for dogs, edible chews for animals, products for animal litter; fresh fruits and vegetables; foodstuffs and beverages for animals, birds and fish

2. The application was examined as required by s 31 of the Act. The first examination report issued on 2 January 2020 and raised a ground for rejection under s 41(4) of the Act as follows:

   Your trade mark is the image of a reclining cat.

   Your trade mark is not prima facie capable of distinguishing the goods claimed in Class 31. This is because images of cats are commonly used in connection with pet food and animal litter, particularly those goods intended for cats.

   Consumers are therefore unlikely to associate your trade mark with one particular trade source. As such, your trade mark, by itself, is unable to distinguish your goods from those of other traders.

   Other traders should be able to use an image of a reclining cat, or some mark so nearly resembling it, in connection with goods similar to yours.

3. On 21 February 2020 the Applicant submitted a response to the first examination report. The examiner issued a second examination report maintaining the ground for rejection under s 41(4) of the Act on 10 March 2020. The Applicant did not respond to the second examination report, instead it exercised its right to be heard in relation to the s 41 ground for rejection.

4. The matter came before me, a delegate of the Registrar of Trade Marks on 3 November 2021. Ross McLean of Counsel, instructed by Baker McKenzie represented the Applicant, making verbal and written submissions on its behalf.

5. As a preliminary issue the Applicant acknowledges that the Trade Mark would be descriptive of live cats for sale and requests that the specification of goods be amended to delete the claim for ‘live animals, birds and fish’. Therefore, I proceed on the basis that the application is in respect of the following goods:

   Class 31: Raw and unprocessed agricultural, horticultural and forestry products, grains and seeds; cuttlefish bone, bones for dogs, edible chews for animals, products for animal litter; fresh fruits and vegetables; foodstuffs and beverages for animals, birds and fish (‘Goods’)

   Evidence

   • Declaration of Marni Crookes, Marketing Director of the Applicant made on 16 August 2021 (‘Crookes declaration’).
   • Declaration of Judith King, Trade Mark Attorney at Baker McKenzie for the Applicant made on 19 August 2021 with Exhibits JK-1 to JK-4 (‘King declaration’).

   Legislative Background and Reasoning

   Section 41

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.

   (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.

   (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.

7. Section 41 must be assessed having regard to s 33 of the Act, which embodies a ‘presumption of registrability’. Section 33(1)(b) compels the Registrar to accept a trade mark for registration unless the Registrar is satisfied that grounds exist for rejecting the application.

8. To determine the merits of the ground for rejection under s 41, the extent of the Trade Marks inherent adaptation to distinguish the Applicant’s Goods must be assessed. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that this was to be assessed:

   [B]y reference to the likelihood that 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.0F[1]

   [1] [1964] HCA 55, [5]; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’) [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ).

9. The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the services to which the proposed trade mark is to be applied. The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar services. 1F[2]

   [2] Cantarella, [71].

10. The Applicant submits that the device Trade Mark being a depiction of a cat has sufficient inherent adaptation to distinguish for the purposes of s 41(1) of the Act. The Applicant submits that the central issue in relation to device trade marks is whether the particular device is ‘sufficiently unusual in appearance’ to be inherently adapted to distinguish. The Applicant relies on Dexter’s Trade Mark;2F[3] Beecham Group PLC v Colgate-Palmolive Co;3F[4]and Boccaccio Pty Ltd v Hardy Wine Company Limited4F[5]and submits that these decisions establish that it is a matter of whether the devices are ‘ordinary representations’ of a subject which is common to the trade or whether they are ‘sufficiently stylised or otherwise distinctive’. The decisions observe that this is a question of degree and that the number of ‘meaningfully different’ variations available to other traders will be an important factor.5F[6]

    [3] (1893) 10 RPC 269 (Wright J).

    [4] (2001) 58 IPR 161 (Delegate Williams).

    [5] [2008] ATMO 16 (Delegate Lyons).

    [6] (2001) 58 IPR 161, 170 (Delegate Williams).

11. In the present case, the Trade Mark is a photographic depiction of Russian Blue breed of cat. The cat is lying on its left hand side with only its front legs visible and front paws crossed. The cat’s head is slightly raised so that the cat, whose eyes are central and prominent in the image, looks straight ahead at the viewer.

12. Exhibit JK-2 of the King declaration provides screenshots of pages from the websites of Woolworths Limited, Coles Supermarkets Australia Pty Ltd, Greencross Ltd, Pet Circle Pty Ltd and Best Friends Opco Pty Ltd dated 6 February 2021. The screenshots show packaging for cat foodstuffs and litter products, featuring cats and manufactured by traders other than the Applicant. I have reproduced a sample from the screenshots below:

13. The Applicant argues that this evidence clearly shows traders using depictions of recognised cat breeds as well as domestic short-haired cat types on the packaging of their cat foodstuff and litter products. Moreover, the cat poses used on packaging range from depictions of cats sitting or playing to cats lying down.  

14. In reviewing this evidence I acknowledge that there is a clear pattern of traders using photographic depictions of cats to promote their cat foodstuffs and litter products. As to the whether there are significant variations of cat images available to other traders, the Applicant has pointed out that the International Cat Association recognises 71 standardised breeds6F[7] which does not include the vast number of domestic short or long haired cat types which are not breeds. In addition, the Applicant submits that the cat poses available to a trader also provide meaningful different variations.7F[8] However, the number of variations of cats used in the trade does not mitigate the ordinary signification conveyed by a photographic image of a cat in respect of the Goods being that the goods are for cats.    

    [7] King declaration [7], Exhibit JK-2.

    [8] Beecham Group PLC v Colgate-Palmolive Co (2001) 58 IPR 161, 170 (Delegate Williams).

15. In conducting my own research in Google, I found that photographic depictions of cats lying on their side with front paws crossed are used by several traders. Moreover, depictions of short haired grey cats in that pose are used by other traders in relation to cat foodstuffs and litter products. I have reproduced two examples below: 8F[9]

    Image1                Image2  

    [9] Image1, Amazon < as at 22.11.21; and

16. It follows that the depiction of a Russian Blue breed of cat in a pose lying down with front paws crossed, the subject of the Trade Mark, or any grey cat in a similar pose that might be deceptively similar, applied to the cat foodstuffs and litter is, in my opinion, a depiction that another trader in the same class of goods might legitimately desire to use. Consequently, I find that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Goods and as such falls within the category set out under s 41(4) of the Act.

17. I now must determine whether any evidence of acquired distinctiveness provided in the Crookes declaration assists the Applicant pursuant to that provision.

    Consideration of the Evidence

18. The Crookes declaration explained that during 2015 and 2016 the Mars Incorporated group of companies worldwide, including the Applicant (‘Mars Group’), underwent a brand refresh for its DINE brand of cat food which involved the development of new brand identity guidelines. As part of the brand refresh the Mars Group commissioned the design of a trade mark through a specialist marketing and design agency. The agency recommended the Mars Group chose the Russian Blue breed of cat in the ‘hero’ pose (i.e. a cat lying down with front paws crossed) because it would resonate emotionally and be quite distinctive and therefore memorable. The agency’s recommendation was accepted by the Mars Group and it issued new global guidelines which required the Applicant to use the Trade Mark in respect of its DINE brand pack graphics and consumer communications.  

19. The Crookes declaration claims the Trade Mark has been used consistently on all the Applicant’s pack graphics and in still communications for its DINE products in the Australian market since 2015/2016 as required by the global brand guidelines.

20. However, in the absence of any evidence of use or intended use of the Trade Mark, the information regarding the development of the Trade Mark is insufficient to satisfy me that the Trade Mark is capable of distinguishing the Goods from the similar goods of other traders in the same field, nor are there any other circumstances which would allow me to accept the Trade Mark. I am satisfied there is a ground for rejecting the application pursuant to s 41(4).

    Decision

21. Section 33 of the Act provides:

    33  Application accepted or rejected

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

    (a)  the application has not been made in accordance with this Act; or

    (b)  there are grounds under this Act for rejecting it.

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

    (3)  If the Registrar is satisfied that:

    (a)  the application has not been made in accordance with this Act; or

    (b)  there are grounds under this Act for rejecting it;

    the Registrar must reject the application.

    (4)  The Registrar may not reject an application without giving the applicant an opportunity of being heard.

22. Under s 33 of the Act, I must accept the trade mark application unless there are grounds under the Act for rejecting it. I am satisfied that there is a ground under s 41(4) of the Act for rejecting trade mark application number 2017036. Therefore, I reject the application.

    Louise Tuohy
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    26 November 2021

    
    

Image2, Kellyville pets shop Australia < as at 22.11.21.