Trade mark application number 2033032 (30) – SNACKLES - in the name of Noshu Foods Pty Ltd

[2020] ATMO 158

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2033032 (30) – SNACKLES - in the name of Noshu Foods Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Applicant: Edward Thompson of Counsel instructed by Marque Lawyers Pty Ltd
Decision:	2020 ATMO 158 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 41 considered – no ordinary signification – trade mark inherently adapted to distinguish – trade mark application accepted

Background

1. On 27 August 2019, Noshu Foods Pty Ltd (‘Applicant’) filed an application to register the following trade mark:

   Trade Mark:  SNACKLES (‘Trade Mark’)

   Application Number:             2033032

   Priority Date:  27 August 2019

   Specification:  Class 30: Almond confectionery; Confectionery; Confectionery bars; Nut confectionery; Snack bars containing a mixture of grains, nuts and dried fruit (confectionery); Snack bars containing dried fruits (confectionery); Snack bars containing grains (confectionery); Snack foods consisting principally of confectionery; Natural sweetening substances; Cereal based food bars; Cereal based snack food; Snack food products made from soya flour; Natural sweeteners; Crisp snack food products made from cereals; Flavourings for snack foods (other than essential oils); Prepared snacks for culinary purposes made from cereals; Rice based snack foods; Sesame snacks; Snack bars consisting of chocolate; Snack food products consisting of cereal products; Snack food products made from cereals; Snack foods consisting principally of grain; Snack foods made from cereals; Snack foods made of whole wheat; Snack foods prepared from cereals; Snack foods prepared from grains; Snack products made of cereals; Snacks manufactured from cereals; Snacks manufactured from muesli; Cereal bars; Food products consisting of cereals; Food products predominantly made of cereals; Foods produced from puffed cereals; Foodstuffs made with cereals; Muesli consisting predominantly of cereals

   (‘Claimed Goods’).

2. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and a first examination report raising a ground for rejection under s 41(4) of the Act was issued on 25 February 2020. The ground for rejection was particularised as follows:

   Your trade mark is SNACKLES.

   This is a colloquial term for snack food. This indicates that your goods are snack food products. Other traders, in the ordinary course of trade and without any improper motive, would desire to make use of this term.

   Other traders should be able to use SNACKLES on the same or similar goods.

1. On 19 March 2020, the Applicant filed written submissions responding to the first examination report. The Applicant asserted that the Trade Mark was a made-up word that has no recognised dictionary definition. The Applicant observed that it had undertaken online searches and no common use of the Trade Mark was detected. Reference was also made to the prima facie acceptance of a similar trade mark application[1] by the Intellectual Property Office of New Zealand. For these reasons, the Applicant contended that the ground for rejection should be withdrawn.     

   [1] See New Zealand trade mark number 1130124 (filed 16 September 2019) in the name of Noshu Foods Pty Limited for the plain word ‘SNACKLES’ in respect of various snack foods and confectionery products in class 30.

2. A second examination report maintaining the s 41(4) ground for rejection was issued on 31 March 2020. This report explained that not every colloquial term has a dictionary definition and the Trade Mark’s capacity to distinguish the Claimed Goods must be considered from a broader perspective. To this end, it was reiterated that the ‘Research shows that some traders are already using the term in relation not only to snack food but also in relation to other related goods and services’ and the acceptance of the trade mark application in New Zealand was not binding on the examiner. In response, the Applicant requested to be heard.

3. A hearing was scheduled and I invited the Applicant to file further submissions and/or evidence. The Applicant duly filed written submissions (‘Submissions’) together with the declaration of Rachel Bajada (Managing Director of the Applicant) dated 10 June 2020 with Annexures A to I (‘Bajada Declaration’).

4. The Bajada Declaration explains that the Applicant offers a variety of sugar free snack food products which have won various awards and are stocked at both major and independent supermarket retailers across Australia and New Zealand. The declarant states that the Trade Mark is an invented term which was created by combining ‘snack’ and ‘crackle’.[2] In the declarant’s experience ‘snackles’ has no ordinary meaning and, as far as the declarant is aware, there is no such thing as a ‘snackles’ in Australia.[3] The declarant points out that only the Urban Dictionary, a website which comprises user created content, contains a definition for ‘snackles’ and this definition is unrelated to the Claimed Goods.[4] Accordingly, the declarant believes that Australian consumers would perceive the Trade Mark as a made-up expression and brand name.[5]

   [2] Bajada Declaration, [12].

   [3] Ibid, [15].

   [4] Ibid, [18]. The Urban Dictionary defines ‘snackle’ as ‘To abscond with food. Snackling is the act of stealing food, often in a humorous manner. The phrase was originally used when a person hoarded a particular snack, usually in a social situation. The term now covers any act of pilfering food’.

   [5] Ibid, [20].

5. As a delegate of the Registrar of Trade Marks, I heard this matter via video conference on 11 June 2020. The Applicant was represented at the hearing by Edward Thompson of Counsel and Emma Johnsen and Lilly McGuire from Marque Lawyers Pty Ltd.

6. As a preliminary observation, I note the following discussion is not a review of the examiner’s decision. Rather, it is a fresh consideration of the ground for rejection raised under s 41 of the Act. I am mindful that s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it or the application has not been made in accordance with the Act.

Section 41

1. Section 41 of the Act relevantly provides:

   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)  …

   (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.

1. To determine the merits of the s 41(4) ground for rejection, the extent of the Trade Mark’s inherent adaptation to distinguish the Claimed Goods must be considered. This is 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.[6]

   [6] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (emphasis added).

2. The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[7] indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step involves determining the ‘ordinary signification’ of the trade mark, in Australia, to persons who will purchase, consume or trade in the goods.[8] Once the ‘ordinary signification’ is deduced, 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 goods.

Ordinary signification

[7] [2014] HCA 48 (‘Cantarella’).

[8] Ibid [71].

1. As noted above, I am required to first determine the ordinary signification of the Trade Mark in Australia to persons concerned with the Claimed Goods. Such persons would include purchasers of snack foods and confectionery as well as retailers of such goods.

2. The Submissions emphasise that there is no definition for the Trade Mark (or other word variations such as ‘snackle’) in the Collins Dictionary, the Cambridge Dictionary, the Oxford Dictionary or the Webster’s Dictionary.[9] Likewise, only one definition for the Trade Mark appears in colloquial dictionaries[10] and, as mentioned at [6] of this decision, this definition has no descriptive relevance to the Claimed Goods. The Applicant submits that the absence of any such definitions reflects the fact that the Trade Mark would be perceived as a made-up word and not a generic descriptor.

   [9] Submissions, [16]-[17].

   [10] See Annexures C and D to the Bajada Declaration which include search results from online dictionaries such as ‘The Online Slang Dictionary’ and ‘Idioms by The Free Dictionary’.

3. The Submissions assert that the Bajada Declaration supports the proposition that the Trade Mark is inherently adapted to distinguish the Claimed Goods. Relevantly, the declarant’s evidence is that they were not aware of any use of the Trade Mark in Australia or New Zealand, whether it be descriptive or trade mark use. Put another way, the declarant’s experience is that there is no such thing as a ‘snackle’ in Australia or New Zealand.[11] Further, the Submissions point out that the first and second examination reports were devoid of any evidence to support the s 41(4) ground for rejection.

   [11] Bajada Declaration, [20].

4. In my view, there is considerable merit in the Submissions outlined at [13] to [14] of this decision. ‘Snackles’ has no dictionary meaning and appears to be a word invented by the Applicant.[12] However, the mere absence of a dictionary meaning is not determinative of a finding under s 41 of the Act. This is because the ordinary signification of the Trade Mark is found by considering the ordinary meaning it possesses to people in Australia who purchase, consume or trade in the relevant goods. Naturally, this inquiry extends beyond consulting traditional resources such as a dictionary and it is appropriate to consult the internet searches and results considered by the examiner when raising the ground for rejection.

   [12] In addition to the dictionaries mentioned by the Applicant at [13] of this decision, I note the research on file indicates that ‘snackles’ (or its singular, ‘snackle’) is not defined in the Macquarie Dictionary.

5. The internet research on file indicates that the s 41(4) ground for rejection was based on several recipes that included the Trade Mark in their title and a Wiktionary® entry. An inspection of the recipes extracted indicates that they primarily emanate from the same source – namely, an author named Dreena Burton who is based in the United States of America.[13] At its highest these recipes constitute evidence of one trader using the Trade Mark, possibly in a descriptive manner, in a foreign jurisdiction. Meanwhile, the Wiktionary® entry simply states that ‘snackle’ may be defined as ‘(Lancashire) A little snack; tiny tidbits of food’ and its use is, presumably, centred in the county of Lancashire in England. Leaving to one side the inherent unreliability of user created content, ostensibly this isolated example does not demonstrate sufficient common use in the marketplace which may give rise to an ordinary signification of the Trade Mark to consumers in Australia.

   [13] See, eg, ‘Pumpkin Snackle’ (Web Page) < ‘Wholesome Oat Snackles’ (Web Page) < gs.wtnczs>; ‘Wholesome Oat Snackles With Seeds’ (Web Page) < ‘Wholesome Oat Snackles’(Web Page) < olefoodplant basedrd.com/wholesome-oat-snackles/>.

6. Meanwhile, the internet search engine results extracted from the word searches of ‘snackles’, ‘snackle’, ‘“snackles” snack’ and ‘“snackles” confectionery’ do not disclose any ordinary signification for the Trade Mark. The search results predominantly demonstrate overseas use of ‘snackles’ as a trade mark or use of ‘snackles’ in relation to goods, such as application software, which are unrelated to the Claimed Goods. Put another way, the research fails to establish that the Trade Mark is likely to be understood by persons concerned with the Goods as being a colloquial term for snack foods.

7. For completeness, the fact that the Trade Mark is a combination of the words ‘snack’ and ‘crackle’, in this instance, has no bearing on its overall capacity to distinguish the Claimed Goods. The Trade Mark must be considered as a whole.[14] As such, it is not appropriate to institute a search for meaning by dissecting the Trade Mark, expanding the resultant components and subsequently deriving a meaning on this basis.

   [14] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380.

8. In light of the above, I am satisfied that the Trade Mark is, as the Applicant submitted, a ‘newly coined phrase’ or ‘neologism’.[15] As such, the Trade Mark is prima facie inherently adapted to distinguish the Claimed Goods within the meaning of s 41 of the Act. As explained at [8] of this decision, if any doubt remains regarding the Trade Mark’s capacity to distinguish the Claimed Goods, I note the presumption of registrability favours the application’s acceptance.

   [15] Submissions, [19].

9. Since I have found that the Trade Mark does not have an ordinary signification to persons in Australia concerned with the Claimed Goods, it follows that there would be no legitimate need for other traders to use the word in respect of the Claimed Goods. As such, consideration of the second step mentioned in Cantarella is not necessary in the circumstances.

Decision

1. Section 33 of the Act provides:

   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.

   Note: For this Act see section 6.           

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

   Note: For limitations see section 6.

   (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.

   Note: For applicant see section 6.

2. I am satisfied on the balance of probabilities that no grounds exist for rejecting the application. Accordingly, I accept trade mark application number 2033032.

Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 September 2020