Trebor Bassett Limited v Henry Jones Foods Pty Ltd

[2005] ATMO 3

TRADE MARKS ACT 1995

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

Re: Opposition by Trebor Bassett Limited to registration of trade mark application 884033(29) - FRUIT PLUS - filed in the name of Henry Jones Foods Pty Ltd.

DELEGATE:	Terry Williams
REPRESENTATION:	Opponent: Wayne Willis of FB Rice & Co, attorneys Applicant: Michael Kirov of Spruson & Ferguson, attorneys
DECISION:	S 52 opposition: grounds under s 44 and 41 not established, registration to proceed

Background

1. Henry Jones Foods Pty Ltd (“Jones”) has applied to register the trade mark FRUIT PLUS in class 29, in respect of “fruit based snack bars”.  After examination, the Trade Marks Office accepted the application for possible registration but this is now opposed by Trebor Bassett Limited (“the opponent”).

2. The opposition has followed the process set out in the regulations, with the parties serving their respective evidence in support and evidence in answer, following which the opponent requested a hearing.  I conducted this, with Wayne Willis, solicitor and trade mark attorney of FB Rice and Co representing the opponent and Michael Kirov, solicitor and trade mark attorney of Spruson & Ferguson representing Jones.

Grounds of opposition

3. Prior to the hearing, the opponent had indicated that it relied on only two grounds set out in the notice of opposition.  These were the grounds under s 44 (deceptive similarity to a prior trade mark) and s 41 (applied-for mark not capable of distinguishing).  I will deal with them in that order.

Section 44

4. Mr Willis argued that various prior-filed trade marks, registered by the opponent and others, were deceptively similar to the present mark and that a ground of opposition was therefore established under s44, which is made relevant to opposition process by the action of s 57.  The trade marks in question are as follows:

Trade mark  number	Trade mark	Owner
626944	FRUIT BURST	Cadbury Schweppes Pty Ltd
818768	the opponent
818769	the opponent
847185	the opponent

5. It will not be necessary to set out in full the various elements of s 44, and sufficient detail appears above for the decision of this ground.  To come to the point, the ground of opposition is not established because the opponent has not satisfied me that any of the marks referred to above are either substantially identical with or deceptively similar (as further defined in s10) to Jones’s FRUIT PLUS trade mark.  I will now explain why this is so.

6. As Mr Kirov noted, a ground of opposition is not established unless I am satisfied that deceptive similarity exists.  See French J in Registrar of Trade Marks v Woolworths (1999) 44 IPR 411, “if the matter is left in doubt, then the application must be accepted”. By the same logic, if the same issue arises in opposition, the application should be registered. It is no longer a case that, as it was put in Sym Choon & Co v Gordon Choon Nuts Ltd (1949) 80 CLR 65, the proposed mark must be, overall, so unlike the rival mark that it is not reasonably probable that there will be confusion in the event of imperfect recollection. The matter now is to be approached from the opposite direction. No ground of rejection exists, and no ground of opposition is established for the purposes of s 55, unless certain key findings can be made.

7. Mr Kirov reminded me that the trade marks must be compared as wholes.  As to FRUIT BURST, the only element in common is “fruit”, an ordinary descriptive word in daily use in the relevant trade.  The meanings and sounds of the two trade marks are otherwise so readily distinguishable by look and sound in the ordinary circumstances of use and of imperfect recollection that the chances of any mistake or confusion are of the lowest order. 

8. Turning to the remaining marks, I think the graphical or pictorial elements may be put to one side.   As to the competing word, FRUTUS, I concede that there is a small measure of potential aural similarity under unusual circumstances.  That, however, is the end of the opponent’s case.  FRUTUS is an unusual word, having a look reminiscent of Latin or perhaps of the name “Brutus”.  It is not at all what Mr Willis called “apt for normal description”.  Nor is the aural similarity such as might give rise to a real tangible danger of deception or confusion.  No doubt the almost limitless talent of human beings to err will establish that there is some possibility that the elision of FRUiT plUS will be misheard as FRUTUS.  However, it takes imagination and the supposition of fairly fanciful circumstances to elevate this to any sort of likelihood.

9. The opponent’s argument in relation to s 41 tells against the alleged prospect of confusion.  If Mr Willis is correct and the words “fruit plus” are an ordinary combination in daily use, this must inevitably reduce the potential for those words to be confused with the single word FRUTUS.  While I will deal further with s 41 below, I will say at this point that the examiner was correct to suggest that the words FRUIT PLUS are to at least some degree a combination likely to be wanted by other traders acting only from proper motives.  This situation is also something that would also be clear to customers seeing and comparing the words FRUIT PLUS with FRUTUS.  The clearly distinguishable meanings would reduce any risk of confusion in those (comparatively rare) cases where it might tend to arise through phonetic similarity.

10. I conclude that the degree of resemblance is not such as would be likely to deceive or cause confusion.

Section 41

11. This application was accepted for possible registration under the provisions of s 41(5).  This provision allows the delegate to consider if the trade mark does or will distinguish the applicant’s goods from those of other traders having regard to the inherent merits of the mark, the extent to which it has been used or is intended to be used and any other relevant circumstances.  

12. S 41(2) is also relevant to the rejection of applications and hence, for present purposes, the refusal of registration.  It begins with the not-encouraging words 

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 (designated goods or services) from the goods or services of other persons”.  

13. However, Mr Kirov noted that this approach was still consistent with a presumption of registrability under s 33.  S 41, he said, was not to be seen as a mire from which applications could not emerge until the Registrar was “satisfied” that they were fit to accept.  Rather, and given the overall balance set by s 33, if I may continue to use Mr Kirov’s analogy, the Registrar is not authorised to plunge the application into the investigative mire unless the necessary conditions exist to authorise such treatment.  While, for reasons that follow, I accept that investigative immersion is unavoidable, I will approach the matter with s 33 firmly in mind.

14. Mr Willis attempted to undermine the examiner’s conclusion, which was in favour of acceptance, by questioning the extent, if any, to which the trade mark was inherently adapted to distinguish.  He referred to the now classic test formulated in MICHIGAN, Clark Equipment v Registrar of Trade Marks¹.  At 514, Kitto J explained the concept of inherent adaptability.  He said the question whether a mark is inherently adapted to distinguish must:

… be tested by 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

15. Mr Willis noted the Moutsias declaration in the evidence in support.  This reveals products sold under trade marks such as Uncle Toby’s Instant Porridge Plus, Vitasoy Calci-Plus, Soy Life High Cal+, Water +, Power Bar Protein Plus, Tetley Tea Plus, Dr Stuart’s Energy Plus Tea.  He argued that the combination was clearly and very strongly descriptive, a failing for which, in his view, the examiner had not fully allowed.  Mr Willis characterised the opponent’s evidence in support as showing that there was a level of use of combinations of “plus” of an unexpectedly high degree, and showing either the presence of a combination (fruit plus grains, in the evidence of Jones) or an enhanced effectiveness.  Thus, relevant combinations, such as “fruit plus honey”, may readily be used and legitimately needed by others.  Such evidence from the trade is highly relevant².

16. He said that other aspects of Jones’s evidence in support showed that trade marks incorporating “fruit” or “plus” were common and that combinations such as “icecream plus” had been consistently rejected at the Trade Marks Office.  Together these things showed how the market works and how past practice had been properly applied in that light, with the exception of the present acceptance, which he described as an aberration.

17. Mr Kirov had submissions to make on a number of points.  The first is the issue of inherent adaptation.  He noted firstly that the case law uses “inherently adapted to distinguish” in two senses.  He suggested that I should approach the case law in that knowledge.  

18. I agree with this point:  a trade mark might be said, in one sense, to be inherently adapted to distinguish, meaning that it was, at face value, inherently capable of registration in Part A of the old register.  The other sense of the words is confusingly close.  The other usage allows a trade mark to be said to be “not inherently adapted to distinguish”.  It might be expected that such a finding was to the effect that such a trade mark was only slightly below the first in ranking of inherent merit, but that is not the way in which those words are used in the second sense.  Their meaning, then, was that such a trade mark was not (at all) inherently so adapted, hence failing to qualify for Part A or for Part B of the old register, and that, for present purposes it was at the absolute bottom of the registrability barrel.  The classic test, Michigan, supra, is applicable to both of those senses and the degree to which it is to applied depends on the sense in which the key words “inherently adapted to distinguish” are used.  Therefore, in what follows, I will attempt to keep the distinction clear.

19. Mr Willis argued that because of the common use of expressions involving “plus” I should adjudge the words FRUIT PLUS as inherently without any adaptation to distinguish.  It was, consistently, a trade mark “devoid of any distinctive character”, British Sugar Plc v James Robertson & Sons Ltd³ one that could not do the job of a trade mark unless people were first educated to see a trade mark function in those words.

20. I do not agree with this.  No doubt it is possible to make textual use of “fruit plus vitamins” or fruit plus other things.  The extent to which that is possible supports Mr Willis.  However, I think that the examiner, in concluding that the trade mark has still some of this inherent attribute, has given correct weight to the fact that FRUIT PLUS is, without more, not an ordinary signifier.  It is certainly not “a sign that is ordinarily used to indicate … the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services” to use the wording of the Note to s 41(6).  This is the Note of which Wilcox J said⁴ “it fairly reflects the trend of relevant judicial authority”, as Mr Kirov pointed out. 

21. Of relevance here is Muller v Registrar of Trade Marks⁵, to which Mr Willis referred.  There the word LESS was said to be amenable to the addition of “link” words, as in “less aspirin”.  The word was found to be not distinctive.  But LESS was not a case where complete lack of inherent adaptation was alleged so that, as Mr Kirov argued, it does not shed any light on the presence of some bare minimum amount of inherent adaptation in the present matter.

22. In the present case, the words “fruit plus”, like “Michigan” (machinery) “Barrier” (cream) and “Less” (aspirin), are fairly readily amenable to the addition of a subsequent noun.  Mr Kirov argued that the potential for such textual use did not support the opponent’s case, and that the only potential use by others and with which the applicant need be concerned was honest use as a trade mark.  He noted, in this respect, that the classic test from Michigan stipulates that the apprehended use by others must be such that it would infringe.  However, this is something that Lindgren J looked at in the appeal case of Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, 56 IPR 30. Lindgren J noted the somewhat different language of the classic test when Kitto J himself rephrased it in FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd⁶.  At that later time Kitto J felt no need to mention infringement.  Of this, Lindgren J observed in Kenman:

In this respect the case (Faulding) is on all fours with Clark Equipment: other manufacturers, acting in the ordinary course of business and from proper motives, may wish to use the word of which registration is sought as an adjective followed by a noun indicating the nature of their products, and, on the assumption that such a use would be perceived as a trade mark use, they would infringe the plaintiff’s mark.  

23. As Mr Willis conceded at the hearing, it is somewhat circular to say that textual use may be ignored, as I observe was noted in Mark Foys Ltd v Davies Coop & Co Ltd ⁷.  To quote Lindgren J in Kenman, supra:

Faulding, Eutectic and TGI Friday’s, like Clark Equipment itself, do not go so far as to suggest that the likelihood of any kind of innocent use at all, including innocent non-trade mark use, by other traders of the mark sought to be registered or of a mark substantially identical or deceptively similar to it, will prevent it from being inherently adapted to distinguish. 

I infer from this that I therefore need to have regard to the degrees to which use is both probable and would (or might) be perceived to be trade mark use or, as Mr Willis put it, use as “a badge of some sort”.  

24. In my view, there are two points that give the present trade mark some degree of inherent adaptation.  Firstly, as I have said, there is no evidence at all that ‘fruit plus” is an ordinary term akin to those addressed in the Note to s 41(6).  Secondly, even though the use by others of “fruit plus honey” (etc) may be postulated, such use would have about it a tinge or scintilla of being unidiomatic English.  And, as Mr Kirov argued, some aspects of the opponent’s evidence also suggest that the public has been at least partially educated to perceive a trade mark, rather than a descriptive, function in combinations of the form “(Noun) plus”.  

25. I hasten to add, however, that unlike Kenman, this is a case where the degree of probability of apprehended use authorises the application of s 41(5).

26. Mr Willis anticipated such a finding.  He said that, should I reach that conclusion, the extent to which the trade mark had been used had still not rendered it capable of distinguishing the goods of Jones from those of others.  He argued that the extent of use, jointly with the house mark IXL, was insufficient.  In support of this, Mr Willis noted that Jones uses, immediately below the trade mark on the packaging of the goods, the descriptive text (capitalization and emphasis present in original): “A delicious and nutritious blend of Fruits Plus Grains”.  

27. Mr Kirov made submissions about the extent of the use, while Mr Willis noted the criticism by Jacob J in British Sugar, supra, of the “unspoken and illogical assumption that ‘use equals distinctiveness’".  I appreciate the caution sounded by Jacob J but I hardly think that the inherent merit of this present trade mark bears comparison to the notorious soap for soap example used by Jacob J, or even to TREATS, with which he was immediately concerned.

28. Accordingly, I think the decision to accept the application was correct.  On the information in the evidence in answer relied on by Jones, the trade mark clearly “does or will” distinguish.  Consistently, I cannot think that it is simply the trade mark IXL that distinguishes these goods.  This conclusion is a result of my assessment of the result of extensive sales building on the degree of inherent merit in the trade mark itself.  As to the sales, I note that in a 3 month period in 2001 the snack bars under the trade mark in question made up about one third of all such goods in the Coles, Woolworths, and Bilo chains.  Sales amount to over a million dollars in the period from December 2002 to April 2004.  While those sales figures do not bear out the projections put before the registrar’s delegate (annual sales of more than 2 million dollars were then mooted) I think they are consistent with the conclusion of the delegate at the time the application was accepted.

Conclusion

29. The opponent has not established either of the grounds of opposition on which it relied.  The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.  I further direct that the opponent pay the costs of Jones to the limit set out in the scale.

Terry Williams
Hearing Officer
Trade Marks Hearings
31 January 2005

¹ (1964) 111 CLR 511
² Re Estee Lauder Cosmetics Ltd (2000) AIPC 91-578
³ [1996] RPC 281
⁴ Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579
⁵ (1980) 31 ALR 177.
⁶ (1965) 112 CLR 537
⁷(1956) 95 CLR 190, at 194.