Valeant Pharmaceuticals International v Care Pharmaceuticals Pty Ltd

[2008] ATMO 51

TRADE MARKS ACT 1995

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

Re:Opposition by Valeant Pharmaceuticals International to registration of trade mark application 1069618(5) - HELPS BABY BREATHE EASIER, NATURALLY - proceeding in the name of Care Pharmaceuticals Pty Ltd.

Delegate:

Ian Thompson

Representation:

Opponent:  Trevor Stevens of Davies Collison Cave

Applicant:  Written submissions by Michael Brewis of Wray & Associates

Decision:

2008 ATMO 51

Section 52 opposition – section 41 – trade mark has no inherent adaptation to distinguish the goods of the applicant – evidence does not show the trade mark has gained a secondary meaning as denoting the applicant’s goods – opposition established, registration refused

Background

1. Care Pharmaceuticals Pty Ltd, of Bondi Junction New South Wales, (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

Application No: 1069618

Priority Date:                   11 August 2005

Goods:Saline preparations in this class including preparations for application to mucous membranes; nasal preparations comprising or containing saline; nasal drops including saline nasal drops

Trade Mark:  HELPS BABY BREATHE EASIER, NATURALLY

1. Following examination, the application was accepted for possible registration and advertised as such in the Australia Official Journal of Trade Marks on 8 December 2005.

2. On 16 February 2006, Valeant Pharmaceuticals International, of Costa Mesa, California, United States of America, (‘the opponent’) filed Notice of Opposition, (‘the Notice’) to the registration of the trade mark.  The Notice cites 9 grounds of opposition to the registration of the trade mark, these being:

   1.        The trade mark is not capable of distinguishing the applicant's goods and/or services in respect of which registration of the trade mark is sought by the applicant from those of other persons and registration should be rejected under section 41 of the Act

   2.        The use of the trade mark would be contrary to law and registration of the trade mark by the applicant would be contrary to subsection 42(b) of the Act

   3.        The use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to section 43 of the Act

   4.        The applicant is not the owner of the trade mark and registration would be contrary to section 58 of the Act

   5.        The applicant does not intend:

   (a)        to use, or authorise the use of, the trade mark in Australia; or

   (b)        to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods specified in the application and registration would be contrary to section 59 of the Act

   6.        The use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to section 60 of the Act

   7.        The Registrar accepted the application on the basis of evidence or representations that were false in material particulars and registration of the trade mark would be contrary to subsection 62(b) of the Act

   8.        The trade mark is not a sign used, or intended to be used to distinguish goods or services dealt with or provided in the course of trade by the applicant from goods or services so dealt with or provided by any other person.

   9.        Registration of the trade mark ought to be refused in the exercise of the Registrar’s discretion, by reason of the conduct of the applicant and/or the nature of the mark and/or of its use and/or on such other grounds as the Registrar or the court, on appeal, may see fit to allow.

3. Of the above grounds, the opponent relied on section 41 at the hearing and I find, for the sake of completeness, that the other grounds have not been established.

4. The parties served and filed evidence in support and evidence in answer to the opposition.

5. As a delegate of the Registrar of Trade Marks, I heard the submissions of the parties at a hearing in Sydney on 13 November 2007.  Mr Trevor Stevens of Davies Collison Cave represented the opponent.  The applicant relied on written submissions by its attorney, Mr Michael Brewis of Wray & Associates. 

6. In opening his submissions, Mr Stevens drew my attention to the declarations of the parties served and filed in relation to these proceedings.  The declaration of the opponent is by Matthew Marshall, a paralegal of the opponent.  He says:

   I am aware that Paedpharm Pty Ltd markets a range of products for the treatment of nasal congestion. Attached hereto and marked Exhibit A are copies of extracts from the company's web site at the "brands" identified at is "fess little noses" Saline Nose Drops. That product is described in the following terms:

   "Helps baby breathe easier, naturally. Non-medicated saline nose drops for newborns and babies."

   Similarly in relation to Paedpharm Pty Ltd's FESS product, that product is described as follows:

   "Helps you breathe easier, naturally. Non-medicated relief for sinus, hayfever and nasal congestion".

   Elsewhere in the extracts from Paedpharm Pty Ltd's web site at Exhibit A there are further examples of that company's descriptive use of the words "helps baby breathe easier, naturally".

   The words "breathe easy" are very commonly in use in relation to respiratory treatments and the relief of sinus, hayfever and nasal congestion.  Attached hereto and marked Exhibit B are copies of extracts of the results of a GOOGLE SEARCH illustrating the common occurrence of those words in relation to the goods of interest to the Applicant.

   In the context of the phrase "helps baby breathe easier, naturally", I consider that the descriptive meaning of the words "breathe easier" is very clear.

   In my opinion Paedpharm Pty Ltd's intention is to use the phrase "helps baby breather easier, naturally" to describe the benefits of its saline nose drops for babies. This is clear from the following statement in the company's publicity material:

   "fess little noses Saline Nose Drops – Helps baby breathe easier, naturally. Non-medicated saline nose drops for newborns and babies."

   Paedpharm Pty Ltd does not use the phrase "helps baby breathe easier, naturally" in a trade mark context. The phrase is a product descriptor and the Applicant has no intention of using that description as a trade mark.

7. Mr Stevens then discussed the evidence in answer from the opponent.  This is a declaration by Mr Malcolm Yesner, who is the Managing Director of the opponent.  Mr Yesner says:

   Since December 2003, my Company has carried out an extensive promotional and advertising program in relation to goods provided under the Trade Mark. Annexed hereto and marked MY-2 are examples of various leaflets and posters, each of which prominently features the Trade Mark.

   Annexed hereto marked MY-3 is a statement of the approximate numbers of the leaflets and posters referred to in Annexure MY-2 that were distributed, and the amount expended by my Company in having these leaflets and posters manufactured. Such leaflets and posters are distributed on my company's behalf in "bounty bags" or gift bags of promotional items given to new mothers on their departure from hospital.

   My Company has had an extensive program of advertising its goods provided under the Trade Mark. I estimate the amount expended by my Company on advertising its goods provided under the Trade Mark is as follows.

8. Mr Yesner goes on to give advertising expenditure by the opponent which is slightly under one hundred thousand dollars for the year 2004 and significantly less for the years 2005 and 2006.

9. Mr Yesner goes on to aver:

   Much of my Company's expenditure on its advertising of its goods provided under the Trade Mark has been in relation to advertisements placed in relevant magazines. Annexed hereto marked MY-4 are examples of pages from some magazines that include advertisements placed by my Company relating to its goods provided under the Trade Mark.

10. Mr Yesner gives a summary of the applicant’s advertising in tabular form – this being:

Publication	Readership	Circulation
Practical Parenting	113,000	85,000
Mother & Baby	150,000	91,576
Bounty Baby Annual	227,000	227,000
Sydney's Child	427,944	142,648
Melbourne's Child	365,646	121,882
Adelaide's Child	124,020	41,340
Brisbane's Child	169,044	56,348
Canberra's Child	88,287	29,429
Kids in Perth	225,000	75,000
1,889,941	870,223

1. Mr Yesner states that the applicant sold over half a million dollars of goods under the trade mark before the priority date of the application.

Submissions

1. Mr Stevens pursued argument directed at section 41 of the Act.  Specifically, he referred me to subsection 41(3) and submitted that the trade mark has no inherent adaptation to distinguish the goods of the applicant.  Mr Stevens adverted to the Trade Mark Examiner’s Manual which explains:

   "The applicant's chance of success in this respect (ie. 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 connection with  their own goods.  The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish 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.

   Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 at 513 (the Michigan case).

2. Mr Stevens subsequently returned to the Examiner’s Manual and its discussion of phrases and slogans.  However, first he said:

   The explanatory NOTE to Section 41 within the Act specifically states that words which are used to indicate the intended purpose of the goods are not inherently adapted to distinguish.

   In the present case, the goods of application 1069618 are defined as follows:

   Saline preparations in this class including preparations for application to mucous membranes; nasal preparations comprising or containing saline; nasal drops including saline nasal drops.

   The Applicant's trade mark consists of to the following words: HELPS BABY BREATHE EASIER, NATURALLY

   The Examiner's Manual at 22.12 says the following:

   Slogans are prima facie acceptable if capable of distinguishing.

   A trade mark may be composed of a number of words. When deciding whether a multi-word trade mark is capable of distinguishing the applicant's designated goods or services, the same inquiries are made as for a single word. The question of whether or not a trade mark is capable of distinguishing will in either case:

   .... 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 closely resembling it.

   W & G Du Cros Ltd's Appn (1913) 30 R.P.C. 660 at 672

   Trade marks composed of more than one word include phrases, mottos, maxims, epigrams, proverbs, and adages. Multi-word trade marks of this type may be categorised as slogans. They are commonly used in the course of trade and advertising to promote a cause or an idea or a product. ....... As in the case of single words, evidence, get-up and/or any other circumstances may establish that a trade mark is capable of distinguishing the applicant's goods or services where this cannot be decided otherwise. Case Law for consideration in relation to slogans includes Comfort Shirt Co Pty Ltd's Appn (No 4) (1961) 31 AOJP 1169, “Irons itself automatically in the wash”, Johnson & Johnson Pty Limited's Appn (1962) 32 AOJP 1214 “Best for baby best for you”.

3. Concerning the inherent adaptation of the trade mark to distinguish the applicant’s goods from the goods of other traders, Mr Brewis, for the applicant stated:

   In the GO ON case Unilever Australia Ltd v Societe Des Produits Nestle S.A., [2006] FCA 782, the Court commented as follows :

   There are numerous examples of phrases and exhortations that can obtain distinctiveness. No different test is applied in assessing slogans as trade marks or in determining their inherent capacity to distinguish.

   And further, from the same case:-

   The increasing use of slogans in advertising and their use by traders as trade marks ..... has led to the use of multiple trade marks, with distinctiveness being acquired by a slogan by use with another strong trade mark.  The use of a slogan in conjunction with a registered mark may lead, in time, to recognition by the public that separate use designates the origin of a product and distinguishes it from other products.

   There is no evidence to the effect that the mark is not capable of distinguishing the applicant's goods – the opponent's pointing to instances of use of components of the mark being used in a descriptive manner is not sufficient to discharge this onus.

   There is no evidence to the effect that other traders in similar goods would, without any improper motive, be likely to think of the mark and wish to use it in relation to their similar goods. Exhibit B to the Marshall declaration does not refer to a single instance of use of the mark by any other party

4. I will return to the submissions of the parties during my discussion of the issues under section 41 of the Act.

Section 41

1. Section 41 of the Act provides:

   41Trade mark not distinguishing applicant’s goods or services

   (1)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).

   (2)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.

   Note:For goods of a person and services of a person see section 6.

   (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:For goods of a person and services of a person see section 6.

   Note 2: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 (1) and 7(3) and section 8).

   (6)If the Registrar finds that 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, the following provisions apply:

   (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   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: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 (1) and 7(3) and section 8).

2. The nature and operation of section 41 were discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440 where she said:

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that 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; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

1. The start point in my considerations is thus subsection 41(3) and an assessment of the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons.

2. It seems a matter of common sense that the consideration of whether the trade mark HELPS BABY BREATHE EASIER, NATURALLY is inherently adapted to distinguish the applicant’s goods must focus on the inherent nature and meaning of the trade mark – and not focus on whether other traders are actually using it.  Too much attention to whether other traders are actually using a word or expression may become bound up with the inchoate rights of others and distract from the test in MICHIGAN, above.  That is:

   [T]he question whether a mark is adapted to distinguish [is to] 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. [Parenthetical material added for clarity]

3. Of course, if other traders are using a word or expression for the sake of their ordinary signification in the normal course of trade, that may be powerful corroboration of a lack of inherent adaptation.  However, cases such as Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 and Eutectic Corporation v Registrar of Trade Marks (1980) 1A IPR 550 were decided on the ordinary meanings of the words and not by reference to whether other traders were, in fact, using those words for their ordinary significance.  Indeed, in Eutectic there was evidence before the Court from those in the welding trade stating that they had not encountered the ordinary use of the words in relation to welding rods – the term ‘eutectic’ was an unusual and specialist term in the trade.

4. It seems to me that if any person encountered the words HELPS BABY BREATHE EASIER, NATURALLY on a nostrum, they would know immediately the nature of the goods.  The expression is a simple explanation of the nature and purpose of the goods – there does not seem to be anything fanciful about it.

5. On any rational view, the words mean that the goods are a natural preparation for respiratory relief in young children.

6. As such, it is apparent that the words are, or the expression is, without any inherent adaptation to distinguish as they are an obvious and natural way to extol the nature of the goods and are a succinct expression of the intended purpose of the goods.

7. Despite the opposition being couched in terms of subsection 41(5), once the conclusion is reached that other traders are likely to need the expression in the normal course of trade to convey the nature and intended purpose of their similar goods, it is apparent that the lack of inherent adaptation within the trade mark is such that it can only be properly viewed as being one to which the provisions of subsection 41(6) apply.

8. I return now to the submissions of the parties concerning whether because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant and therefore the trade mark must be taken to be capable of distinguishing the designated goods.

9. In this regard, Mr Stevens says, and I will help his submissions by illustrating them with exhibit evidence he refers to:

   The applicant's advertisements in evidence repeat the following statement in nearly all published advertisements for the goods:

   To help your baby breathe easier, fess little noses is formulated to thin and loosen the mucus. It offers the same natural, saline formulation as FESS Natural Nasal Spray, but in a drop format that's ideal for newborns and babies. And because it's non-medicated, you can use it as often as you want and it is unlikely to irritate your baby's delicate nasal membranes.

   These statements by the applicant specifically refers to the intended purpose of the applicant's goods.

   Mr Stevens then referred to the following aspect of the applicant's evidence:

   i.The repeated descriptive use of the words HELPS BABY BREATHE EASIER, NATURALLY or similar phrases at Exhibit MY-4 of opponent’s declaration. 

   To help your baby breathe easier, fess little noses" is formulated to thin and loosen the mucus. And because it's non-medicated, you can use it as often as you want and it is unlikely to irritate your baby's delicate nasal membranes.

ii.The use of other trade marks, in the proper sense, coupled with descriptive slogans – Mr Stevens refers here to Exhibit MY-2 and MY-6.

iii.          In the above listing of Paedpharm products

• Note the lack of use of the symbol ™ and

• Use of descriptive slogans

1. Mr Stevens referred to the exhibits MY-2 and MY-6 and drew my attention to discrepancies in declarant's statements:

   • The applicant's literature clearly identifies the company's trade mark. The slogan HELPS BABY BREATHE EASIER, NATURALLY is not used or identified in the literature as a trade mark.

   • At paragraphs 6 and 8 of the applicant’s evidence the declaration refers to "goods": The reference to the applicant's goods is a reference to all the goods manufactured and offered for sale by the applicant.

   • annual turnover at paragraph 14: these amounts refer to total sales of the Applicant's nasal preparations under the company's various trade marks.

2. In referring to opponent's evidence in support – Mr Stevens noted, in particular, the following:

   • Descriptive use of words (Exhibit A)

3. I agree with Mr Stevens that the exhibit evidence of the applicant does not make any claim for a trade mark status of the words HELPS BABY BREATHE EASIER, NATURALLY.  The words appear to be more or less consistently used in proximately to other trade marks of the applicant where they might be reasonably perceived as being purely descriptive as in the above examples, or in that below:

1. In addition, the applicant has supplied details of its sales and advertising revenues and expenditures; however, it is trite trade mark law that use, per se, does not equal distinctiveness.  In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281,[1] Jacob J observed of the word TREATS which was used in conjunction with the trade mark ROBERTSONS:

   I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that `use equals distinctiveness'. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word `Soap' as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords. In the former case Lord Russell said (at page 145):

   `A word or words to be really distinctive of a person's goods must generally speaking be incapable of application to the goods of anyone else.'

   It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.

   [1] Quoted with approval by the Court in Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874

2. The use of the opposed trade mark by the applicant has also been very slight, when considered against what is necessary to use such a trade mark so to give it a secondary meaning which is widely recognized as being an independent trade mark which can stand alone in denoting on the goods of one particular trader.  It has not been used for particularly long nor, to judge from the sales and advertising figures supplied, extensively.  Thus while the point made the Unilever GO ON case, above, is that:

   The use of a slogan in conjunction with a registered mark may lead, in time, to recognition by the public that separate use designates the origin of a product and distinguishes it from other products.

This trade mark has had insufficient trade mark use over time for the public to build a recognition that any separate use designates the origin of the goods.

1. Thus when one considers whether because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant, the answer must be in the negative.

2. Accordingly, the opponent has established its opposition to the registration of the trade mark.

3. I observe also that, if my considerations had been under section 41(5) of the Act, the outcome would have been the same.  While the applicant uses the opposed trade mark in ways and in contexts that can only be taken to be an indication of the nature of the goods, and while there is no education of the public that it is, in fact, a trade mark, I could not be satisfied that the trade mark does or will distinguish the designated goods or services.

Section 55

1. Section 55 of the Act provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:  For limitations see section 6.

2. I refuse to register application 1069618.

Costs

1. The opponent sought it costs should it be successful.  I order costs against the applicant at the official scale.

Ian Thompson

Hearing Officer

Trade Marks Hearings

27 June 2008