Wella Aktiengesellschaft v Registrar of Trade Marks
[1995] FCA 1139
•22 DECEMBER 1995
CATCHWORDS
Trade Marks - application for registration of the words Perfectly You - International Class 3 goods - whether a direct reference to the character or quality of the goods - whether a mere laudatory epithet.
Trade Marks Act 1955 s 24(1)(d), s 44
Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 191 at 194, 195, 200, 201 applied
Registrar of Trade Marks v Muller (1980) 31 ALR 177 at 180 applied
Kolotex Glo Australia Pty Ltd v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1 considered
Re: Keystone Knitting Mills Ltd's Application (1928) 45 RPC 421 applied
Re: Joseph Crosfield & Sons, Limited [1910] 1 Ch 130 at 143 applied
WELLA AKTIENGESELLSCHAFT v THE REGISTRAR OF TRADE MARKS
No. NG 575 of 1995
CORAM:Lehane J
PLACE:Sydney
DATE: 22 December 1995
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY )
GENERAL DIVISION ) No. NG575 of 1995
BETWEEN:WELLA AKTIENGESELLSCHAFT
Applicant
AND:THE REGISTRAR OF TRADE MARKS
Respondent
CORAM:Lehane J
PLACE:Sydney
DATE:22 December 1995
MINUTE OF ORDERS
THE COURT ORDERS THAT:
The applicant's appeal be allowed.
The Registrar accept the applicant's trade mark application number 583779 pursuant to s 44 of the Trade Marks Act 1955 as an application for a trade mark satisfying the provisions of s 24 of that Act.
There be no order as to costs.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY )
GENERAL DIVISION ) No. NG575 of 1995
BETWEEN:WELLA AKTIENGESELLSCHAFT
Applicant
AND:THE REGISTRAR OF TRADE MARKS
Respondent
CORAM:Lehane J
PLACE:Sydney
DATE:22 December 1995
REASONS FOR JUDGMENT
LEHANE J: This is an appeal from a decision of the Deputy Registrar of Trade Marks, as delegate of the Registrar, refusing an application for registration of a trade mark. The application was for registration of a mark comprising the words PERFECTLY YOU; registration was sought in relation to the goods in the International Class 3. Those goods comprise:
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 Deputy Registrar held that PERFECTLY YOU was apt for normal description of Class 3 goods and that consequently it failed the tests for Part A under s 24(1) of
the Trade Marks Act 1955, and for Part B under s 25. Hence her decision to refuse registration.
The appeal was heard during vacation because the applicant asserts, and the respondent accepts, that if the applicant is entitled to registration of the mark but does not achieve it before 1 January 1996, when the Trade Marks Act 1995 will take effect, the applicant will be substantially prejudiced. For the same reason, having come to a clear conclusion, I am giving my decision now rather than take the time necessary to prepare fuller and more considered reasons.
The applicant contended that the mark was registrable in Part A of the Register on the basis that it was a distinctive mark falling within s 24(1)(d), that is a word not having direct reference to the character or quality of the goods in respect of which registration is sought. In the alternative, the applicant submitted that the mark was registrable in Part B of the Register; and he read affidavit evidence going to the question of distinctiveness and particularly, as counsel for the applicant put it, whether the mark or anything like it was one which other traders were clamouring (or perhaps might be expected to wish) to use.
The argument concentrated on whether the mark met the test in s 24(1)(d) for registrability in Part A. The applicant submitted that the mark does not refer, and certainly does not refer directly, to the character or quality of the goods in
respect of which registration is sought. The respondent contended that, at least when used in respect of most of the goods listed in Class 3 after "abrasive preparations", the mark does directly refer, possibly to their character, certainly to their quality. On this issue counsel agreed, hardly surprisingly, that the tests to be applied were to be found in the decision of the High Court in Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 191. Counsel referred me to several well‑known passages both in the two majority judgments and in the dissenting judgment of Kitto J. It will suffice for present purposes to quote only a few of the passages in the judgments to which I was referred.
Dixon CJ, at 194, said:
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. A word or words are often employed for no purpose but to evoke in the reader or bearer some feeling, some mood, some mental attitude. This is true of much advertising, which common experience shows to be full of meaningless but emotive expressions supposedly capable of inducing a generally favourable inclination in the almost subconscious thought of the passing auditor or hasty reader. Words put forward as trade marks are very likely indeed to be chosen in the same way.
The mark with which the case was concerned was, of course, "Tub Happy", used in relation to cotton garments. Dixon CJ said of that mark, at 195:
I cannot think that the words now in question go further than, if as far as, suggesting in a vague and indefinable way a gladsome carelessness à propos
of the tub. They may have an emotive tendency, but they do not appear to me to convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods.
Williams J said, at 201:
Like so many expressions used in advertisements no definite or actual meaning seems to belong to the combination "Tub Happy". There is a cloudy suggestion only about it that all will be well in a wash tub but that is all. The attitude of mind of those who glance at such advertisements may be affected favourably by some sort of vague association of ideas but it falls a long way short of conveying any meaning to them. To say that articles of clothing are tub happy is in the ordinary use of English meaningless. The words contain at most a "covert and skilful allusion" to the quality of washability which is characteristic of articles of clothing made of some kinds of material including cotton. At most they create an impression that this is what they are intended to convey. 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". No doubt the words are intended to "contain a meaning - a meaning is wrapped up in them if you can only find it out."; see the speech of Lord Macnaghten in the Solio Case(2). And it may not be hard to find out that meaning but the words do not refer in any ordinary sense, laudatory or otherwise, to any character or quality of articles of clothing, still less do they do so directly.
With that by way of background, I can turn to the mark with which this case is concerned. "PERFECTLY YOU" differs from "Tub Happy" in the sense that, unlike "Tub Happy", "PERFECTLY YOU" is a phrase which has some currency in ordinary usage and in some contexts has an accepted meaning. I was referred to the definition of "you", used adjectively, in the Oxford English Dictionary as "expressive of or suited to your taste, personality, etc." "PERFECTLY", counsel for the applicant assured me, is what grammarians call a "maximiser". Whether that is so or not, there is not much room for doubt about what it means as an adverb modifying the adjective "you". It is more or less synonymous with "completely" or "exactly", so that the phrase might be taken to mean "exactly expressive of, or suited to, your taste or personality".
I do not think there was any serious dispute about that meaning of the phrase, at least in certain contexts. It was substantially on the basis of that meaning that the Deputy Registrar held that "PERFECTLY YOU", when applied for example to shampoo, directly referred to its character or quality as a laudatory phrase which "proclaims to the public that these goods will suit them perfectly". Counsel for the respondent supported the Deputy Registrar's decision substantially on the same basis.
I recognise that the decision of the Registrar, or his delegate, in a case such as this must be given great weight: Registrar of Trade Marks v Muller (1980) 31 ALR 177 at 180. I think, however, that the difficulty with the conclusion of the Deputy Registrar, and with the argument of counsel for the respondent, is that both proceed on an assumption that because the phrase has a particular meaning in particular contexts it carries that meaning into the present context so as to convey to those who will see it a particular message as to the character or quality of, principally, products designed for looking after hair.
I think, with respect, that the assumption is unfounded. If one looks at the examples given in the Oxford English Dictionary of the adjectival use of the word "you", what is immediately apparent is that it is used to describe a relationship between a particular
person and a particular object - in some of the examples given, a translation, a literary work or a boudoir. That accords, I think, with the common understanding of the adjectival use of the word "you". To take an example which played some part in the argument, it might be said to someone that a particular garment is "exactly you": that is, exactly the sort of garment that "you", given his or her personality, might be expected to wear. Once that is seen, it becomes apparent, I think, that it cannot be said that the mark "PERFECTLY YOU", applied to a range of cosmetics and hair care products behind a shop counter, means that each of those products is ideally expressive of or suited to the taste or personality of each of a heterogeneous group of shoppers standing before it.
It follows, in my view, that to apply the mark "PERFECTLY YOU" to the goods to which the application relates is, as counsel for the applicant put it, to say nothing tangible about their character at all. In this respect, the case may be a stronger one than Mark Foy's or than, for example, Kolotex Glo Australia Pty Ltd v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1. It is less difficult, I think, to see in those cases than in this a reference, at least covert, to a particular characteristic of the goods in relation to which the marks were used.
Is, then, the mark "PERFECTLY YOU" to be regarded as a "mere laudatory epithet" describing in a laudatory sense, like "charm" or "perfection", the character or quality of the goods (Mark Foy's at 200; in Re: Keystone Knitting Mills Ltd's Application (1928) 45 RPC 421; in Re: Joseph Crosfield & Sons, Limited [1910] 1 Ch 130 at
143)? The Deputy Registrar appears to have thought so (see her reasons at page 4) but again I respectfully disagree. An adjectival "you" on its own would, I think, by no means be seen as unambiguously laudatory; and I do not think that the ambiguity is by any means eliminated by the addition of the adverb "perfectly".
In short, I think the phrase "PERFECTLY YOU", whatever meaning it might have in other contexts, when applied to the goods with which this application is concerned, has precisely the characteristics described by Dixon CJ in the first of the passages which I have cited: it is, in that context, a use of words which is purely emotive; an employment of words for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude. I cannot see that, applied to those goods, it is anything other than a meaningless but emotive expression "capable of inducing a generally favourable inclination in the almost subconscious thought of the passing auditor or hasty reader".
For those reasons, I think the mark consists of words of the kind which s 24(1)(d) describes. I do not think it was suggested that, if I came to that conclusion, the mark should for any other reason be regarded as not registrable in Part A. I can see no such reason. There is, therefore, no need for me to consider the separate issues argued in relation to registrability in Part B.
Accordingly, I allow the appeal and order that the Registrar accept that the applicant's trade mark application number 583779 pursuant to s 44 as an application
for a trade mark satisfying the provisions of s 24 of the Trade Marks Act. Counsel for the respondent submitted that, if I came to that conclusion, I should nevertheless not require the Registrar to pay the applicant's costs and counsel for the applicant did not oppose that submission. I think it is right and accordingly I make no order as to costs.
I certify that this and the preceding 7 pages are a true copy of the Reasons for Judgment of the Honourable Justice Lehane.
Associate:
Dated: 22 December 1995
Heard: 21 December 1995
Place: Sydney
Decision: 22 December 1995
Appearances: Mr R J Ellicott QC instructed by Blake Dawson Waldron appeared for the applicant.
Mr D K Catterns QC instructed by the Australian Government Solicitor appeared for the respondent.
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