Ground 1 (Trade Mark Not Distinctive as at Application Date)
104 At [82]-[88] above, I have explained the way in which the respondent put this ground.
105 Under s 41(2) of the Act, a mandatory ground of rejection of the registration of a trade mark is that 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 (defined as "designated goods or services") from the goods or services of other persons. This question must be decided in the present case as at 22 March 1988. It is, of course, retrospectively hypothetical. The first task which the Registrar would have had to undertake in considering this question in respect of the applicant's BSS trade mark would have been to determine the extent to which the applicant's BSS trade mark was inherently adapted to distinguish its BSS balanced salt solution from the goods of other persons as at that date. If, after considering that matter, the Registrar was unable to decide whether the applicant's BSS trade mark was capable of distinguishing its BSS balanced salt solution from the goods of other persons, then the provisions of subs (5) and subs (6) of s 41 would have come into play.
106 It was common ground between the parties that the relevant principle governing inherent adaptability was that stated by Kitto J in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514 where, after discussing the well-known observations of Lord Parker of Waddington in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 at 634-635, his Honour said:
… the question whether a mark is 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
107 These remarks of Kitto J were made in respect of the 1955 Act. However, the Full Court of this Court has taken the same approach to the question of inherent adaptability for the purposes of s 41(3) of the Act (see Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 at [47]-[49] (pp 510-511) (per French J), at [80]-[100] (pp 518-522) (per Lindgren J) and at [145]-[148] (pp 532-533) (per Stone J); and Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 at [36] (pp 517-518) (per Gyles J) and at [125] (p 539) (per Allsop J)).
108 The respondent submitted that the question for present purposes was whether other traders might have wanted to use the letters "BSS" as signifying the product known as "balanced salt solution", absent improper motive. This question, so it was submitted, is to be considered absent the registration of the applicant's BSS trade mark and is a largely hypothetical inquiry, although it may be informed by what traders have, in fact, done.
109 There is no doubt that, as at 22 March 1988, other traders in the relevant trade might have wanted to use the words "balanced salt solution" to describe that class of sterile ophthalmic irrigating solutions which broadly comprised the constituents set out at [30] above. Those words are ordinary English words. They constitute the generic name for the relevant product. They are descriptive of the relevant product.
110 Further, the letters "bss" can appropriately be described as an abbreviation for "balanced salt solution".
111 But the present question is: Would the relevant traders want to use the acronym (absent improper motive) as distinct from the full expression, "balanced salt solution"?
112 An anterior question is: Did the letters "bss" have a particular signification which was generally understood as at 22 March 1988 in the relevant trade and was that signification as an acronym for "balanced salt solution"? In other words, were those letters used as a descriptive acronym for "balanced salt solution"?
113 No trader in the relevant trade in Australia (other than the respondent in respect of one container of its AQSIA™ brand of balanced salt solution) has sought to use the letters "bss" in respect of its balanced salt solution product. To the contrary, with the exception of the respondent, all of those traders have respected the applicant's BSS trade mark.
114 Further, all traders have had a perfectly efficacious and acceptable alternative description available to them viz "balanced salt solution".
115 The respondent submitted that:
(a) Nothing could be more apt to describe the product known as "balanced salt solution" than the letters "bss";
(b) Assistance in deciding the question is provided by the geographical name cases (see, for example, Clark Equipment Company 111 CLR 511; and Chancellor, Masters and Scholars of the University of Oxford (t/as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1);
(c) There was evidence of actual use constituted by the publications tendered by the respondent which demonstrated that persons operating in the relevant trade used the letters "bss" to signify "balanced salt solution" both generically and in a trade mark sense; and
(d) A mark constituted by a combination of letters will often not be inherently adapted for trade mark use (see W & G Du Cros Ltd [1913] AC at 635-636).
116 Only one journal article tendered by the respondent was published in Australia prior to 22 March 1988 (Exhibit SS-4 to Ms Stubbs' first affidavit). The only references to "bss" in that article were as follows: "balanced salt solution (BSS Alcon)". This journal article does not support the respondent's case on inherent adaptability of the letters "bss". It supports the contrary position.
117 The general submissions captured in subpar (b) and subpar (d) of [115] above do not assist much in resolving the present question. And, whilst the submission made in subpar (a) might well be correct if the letters "bss" were generally understood as at 22 March 1988 in the relevant trade in Australia as ordinarily descriptively signifying "balanced salt solution", the evidence before me does not support the proposition that they were so understood. Indeed, it is worth noting that the extracts from dictionaries tendered by the respondent, and rejected by me, suggest that, at various times overseas, the letters "bss" could signify all manner of things.
118 It is now clear that, as far as the Registrar of Trade marks is concerned, trade marks consisting of three or more letters are inherently capable of distinguishing the owner's goods from those of others. The mere fact that the trade mark consists of a combination of letters is not sufficient to raise any presumption or bias in favour of a conclusion that such trade marks are not inherently adapted to distinguish the applicant's goods from those of other persons. This approach reflects the difference in language between the relevant provisions of the 1955 Act which required that the trade mark had to be distinctive and s 41 of the Act which requires that it be "capable of distinguishing".
119 In Air Express International (Australia) Pty Ltd v Australian European Insurance (Brokers) Pty Ltd (1999) 49 IPR 435, in dismissing opposition to an application for registration of the letters "AEI" and a logo comprised of those letters in a stylised format, the Deputy Registrar of Trade Marks said (at 439-440):
The question of trade marks consisting of three letters has long been an issue for the registrar. Under the old law, the Trade Marks Act 1955 (Cth), where it was a question of whether a trade mark was distinctive, three letter marks were, in the main, treated as not prima facie qualified for registration. This view was in line with Lord Parker's dictum that "initials are even less adapted for trade mark purposes than names": Re W & G du Cros Ltd's Application (1913) 30 RPC 660 at 672. Under the old legislation, it was the registrar's practice, prima facie, to accept three letter marks only if the letters formed a pronounceable word. The test under the new law, however, is not whether the trade mark is distinctive, but whether it is capable of distinguishing. The registrar, to this end, has adopted a new practice based on an assessment of the likelihood of others' needs to use letters, particularly as initials. It is useful for me to quote from the Trade Marks Office Draft Manual of Practice and Procedure at 22.9.