Wella Aktiengesellschaft, Re

[1995] ATMO 35

TRADE MARKS ACT 1955

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

Re:      Application to register the trade mark PERFECTLY YOU per application number 583779(3) in the name of Wella Aktiengesellschaft

Application number 583779 was filed on 4 August 1992 by the well known West German manufacturer of hair products, Wella Aktiengesellschaft (Wella). The trade mark is the words PERFECTLY YOU, represented in plain type. The goods nominated are the goods listed in the class heading for International Class 3 - that is,

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps, perfumery, essential oils; cosmetics, hair lotions, dentifrices; preparations for cleaning, conditioning and embellishing the hair.

The examiner of trade marks objected to this mark.  He said:

... the words PERFECTLY YOU ... have direct reference to the quality of the goods in the application.  The mark is laudatory, saying that the goods sold under the mark are perfect for the consumer.  As a laudatory mark, the words do have direct reference to the goods. 

The section 24(1) objection was maintained through four reports, whereupon the applicant's agent, F.B. Rice & Co, patent and trade mark attorneys of Sydney, requested a hearing. This hearing was conducted before me in Sydney on 5 July 1995. Wella was represented by Mr Wayne Willis of F.B. Rice & Co..

Mr Willis made comprehensive submissions in respect of this trade mark application.  He first drew my attention to the judgements of Lord Justice Parker in W. & G. Du Cross, (1913) 30 RPC 660, the W. & G. case,  and that of Chief Justice Dixon in the Mark Foy's Ltd. v Davies Coop & Co Ltd, (1956) 95 CLR 190 - the TUB HAPPY case, and put the argument that PERFECTLY YOU is not a term that conveys any tangible meaning in relation to class 3 goods.   He supported this argument with two separate grounds.  First, he put to me that while the expression PERFECTLY YOU does mean that something 'suits you perfectly' it is, in the main, a deprecating expression used mockingly when we are called to comment on a failure in discernment.  This sort of use, he said, is exemplified where someone known for their flagrant style, comes up with yet another fashion extreme and draws forth the caustic observation that the outfit is 'perfectly you!'.  His second ground was that PERFECTLY YOU does actually mean that the goods are 'perfect for you' and that in relation to goods put on the market for the  population at large, it is patently impossible to design them so that the formulation specifically suits each and every member of that population.  Referring to the goods for which Wella is famous, he pointed to the absurdity of claiming that a shampoo is perfect for someone who is bald. 

From this line of reasoning I was asked to conclude that the objection to PERFECTLY YOU is just as faulty as the objection put to Chief Justice Dixon  in respect of the words TUB HAPPY.  His Honour says,  (supra) at p194:

It is, I think, a mistake first to assume that words like "Tub Happy" do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is.  Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods....

The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons.  The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea.  Many uses of words are purely emotive ....

Decision

Taking His Honour's directives as a starting point and then getting back to Mr Willis' argument regarding the meaning of the term PERFECTLY YOU,  I think I must address the following points.

The Chief Justice first cautions that it can be a mistake to assume that an expression conveys a meaning and then, on that assumption, proceed to institute a search for that meaning.  Attempting to apply this principle to an expression like PERFECTLY YOU, however, is clearly a nonsense. PERFECTLY YOU has a well known and plain meaning. This plain meaning would be known both to ordinary members of the public and to the examiner. The process therefore fails at the very first step, because no assumption of any kind is involved. Rather than research to find evidence of assumed meanings, the examiner in fact had the task of determining whether the well known meaning of these words applied to the goods of the application, and further, conveyed any direct reference

The second directive that His Honour points to is the fallacy of assuming that the words of a trade mark are intended to convey a definite meaning.  This is because many words provide nothing more than an emotive suggestion devoid of any real information. There are, of course, many well known trade marks which come within these parameters.  They are the words which, like the words referred to by Lord McNaughten in Eastman Photographic Material Co.'s Application (1898) 15 RPC 476 at 486 (the SOLIO case) convey a 'covert and skilful allusion' to the character or quality of the goods'. They are words which only provide an indirect reference.  YIELD, Ciba-Geigy Australia Ltd v Eli Lilly  & Co (1983) 2 IPR 353, a case cited by Mr Willis, is an example of such a mark. It evokes an image of 'high productivity' but notwithstanding, has been judged to be a word that is not entirely apt for descriptive use within the trade. YIELD was thus determined to be capable of becoming distinctive.  A great many of these evocative and emotive words are on the Register.  A few examples that spring to mind include:   AJAX, with its emotive reference to strength;  APEX,  with its emotive reference to supremacy and SUNLIGHT, with its emotive reference to purity.  PERFECTLY YOU, however, is not a word that simply evokes an emotive idea.  It is an expression which Mr Willis agrees, means, perfect for you.  In relation to soaps, perfumes, hair products, cosmetics and like goods  - which Wella seeks to cover -  this description is a direct reference.  It proclaims to the public that these goods will suit them perfectly.  This pronouncement is a laudatory claim for the character of the goods and, for such purpose, is just as appropriate to the use of any other trader whose goods are designed to suit a wide range of customers.  I therefore reject the submissions that PERFECTLY YOU should be allowed because it is simply an emotive term that gives no tangible information about the goods.

Before moving on from the TUB HAPPY case, (supra) it may be useful to recollect the circumstances. The case derived from an infringement action and was on appeal from the Supreme Court wherein McLelland J. found that the term TUB HAPPY was a bona fide description of washable clothing.  He dismissed the infringement action.  In the High Court appeal, the Bench was divided.  Dixon C.J. and Williams J. came to the conclusion that TUB HAPPY did not impart sufficient information to constitute a direct reference. They found the term 'newly coined' with nothing more than a 'cloudy suggestion that all will be well in the wash tub' (see p201).   Kitto J. dissented.  He agreed with the primary judge. He found that TUB HAPPY was a successful description and that it did constitute direct reference. Despite this division of opinion, however, the question at the heart of the determination is agreed, and is recorded in Justice William's judgement per the test for distinctiveness deriving from the SOLIO case  (supra). Again on p201, apropos of his assessment of the words TUB HAPPY, he says:

..They do not trespass upon the rights of other traders to use any ordinary English words or phrases referring to the washable qualities of their goods.  They do not attempt to "enclose and appropriate as private property certain little strips of the great open common of the English language." 

And herein, of course, lies the nub of any question of distinctiveness.  Whether the word or expression refers directly to the character or quality of the goods is simply this question of whether or not other traders are likely to want to use that term in promoting or describing the character or quality of their goods.  If a word or expression fails that test it fails the test of distinctiveness and is not, at least prima facie, fit for registration.  The separate directives of the TUB HAPPY case should not be taken out of context.   The wider test is set out by  Dixon C.J.  at p195

The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess. 

If a mark evokes an image, that fact alone will not save it if, at the same time, the mark successfully describes a character or a claim for quality. The question of distinctiveness is therefore not answered by whether or not the mark gives rise to an emotive reference or to concrete information - but whether or not the expression is one which other traders are likely to want to use in order to indicate an attribute of their goods.  And if it is practice for a trader to use words with emotive appeal for this purpose, then the question must arise as to whether or not that term is distinctive.

Turning now to Mr Willis' arguments, I accept that the expression 'perfectly you!' can indeed be used in the deprecating manner he suggests.  However, I do not consider that the term has in fact been debased to the point that it only conveys heavy irony.  On the contrary, the examples read out to me by Mr Willis at the hearing (all apparently quoted from literary sources) seemed to me to have been sincerely meant and essentially re-assuring or complementary.  In any case, regardless of any untoward intent that may give rise to the expression PERFECTLY YOU, the person receiving the comment is generally expected to take it at face value, and indeed be re-assured or complemented.  I thus do not accept Mr Willis' submissions that the term PERFECTLY YOU is essentially derogatory and therefore of no practical use to other traders.

The second ground put to me by Mr Willis in respect of the meaning of the expression is that PERFECTLY YOU means the goods are perfectly suited to you. This, he argued, was an outrageous and extravagant claim which would not be taken seriously by ordinary customer seeking out  shampoos or cosmetics. Thus, he says, it is not a term that would be of any use to other traders, and therefore is not one which they would seek to use. I am well aware that many class 3 products are put onto the market with properties to suit very specific skin and hair types.  Shampoos, for example, are designed for dry or oily hair, for split ends, for hair damaged by sun, bleach, dyes, and so on. Products may just as well, however, be created for a range of conditions, and these will be promoted by reference to the fact that they are not specialist lines, but are suitable for everyone.  For goods of this kind the expression PERFECTLY YOU seems to me to be an apt and appealing description. Certainly it carries strong elements of promotional hype - as per Mr Willis' example of a customer who is quite bald -  but that is commonplace promotion. In my opinion PERFECTLY YOU is an entirely fitting expression for any trader to use in the course of recommending that its products will suit all customers.

If a mark is apt for normal description, it fails the tests for both Part A - per sub-section 24(1) of the Trade Marks Act, and Part B - per section 25. Consequently, as I have found that PERFECTLY YOU is apt for normal description of class 3 goods, I refuse to register trade mark  application number 583779.

Helen R. Hardie

DeputyRegistrar

13 July 1998