Burger King Corporation v Registrar of Trade Marks

FACTUAL BACKGROUND Since the 1950s the applicant, and its related companies, have sold chainsaw accessories, workshop equipment and hand tools bearing the trade mark "OREGON". The applicant and its related companies are the registered proprietors in about fifty countries of the trade mark "OREGON" or the trade mark "OREGON" plus an oval device (ie the trade mark). The applicant started selling "OREGON" products in Australia some time before 1960, through its subsidiary Omark Australia Limited ("Omark"). From that time until early 1991, Omark and the applicant advertised "OREGON" products in Australia. Much of the advertising appeared in relevant industry and trade publications. The expenditure by the applicant on the advertising of "OREGON" products world wide and within Australia was disclosed to the Court and to the respondent on a confidential basis. It is not necessary for the level of such expenditure to be identified in these reasons other than to note that such expenditure was substantial. Since March 1991 Husqvarna Pty Ltd ("Husqvarna") has been the Australian distributor for the applicant, distributing the applicant's range of hand tools and power tool accessories bearing the trade mark. The applicant's products bearing the trade mark are now sold by more than 1,500 retailers throughout Australia. Since 1991 Husqvarna and the applicant have advertised and promoted "OREGON" products in Australia. Large numbers of product categories and price lists have been distributed to retailers, government and local government bodies and to households. Merchandise having the label "OREGON" has been given away as promotional items. The "OREGON" products have been advertised in magazines, local newspapers and in the Sydney and Melbourne Yellow Pages respectively. REASONS OF THE DELEGATE OF THE REGISTRAR The reasons for decision of the delegate of the Registrar of Trade Marks ("the delegate") are published as (1997) AIPC 91-331.

After referring to subsections 41(2) and 41(3) of the Act the delegate said: "Registrability of the applicant's mark will therefore depend upon deciding the question of whether other traders in the ordinary course of their business and without improper motive are likely to wish to use the mark, or a mark nearly resembling it, upon or in connection with their own goods (see Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511). I must consider then the extent to which the subject marks are adapted to distinguish the designated goods from those of other traders." The delegate went on to note that Oregon is a state on the Pacific coast, north of California, in the United States of America. She further noted that forest-products manufacturing, such as lumber, plywood and hardboard, pulp and paper, ranks as the state of Oregon's leading industry, and that instrument making is one of its main industries. The delegate concluded that in such circumstances, it is highly likely that the word "Oregon" would be required by other manufacturers of goods of a similar kind to those of the applicant so as to indicate the origin of those goods. She consequently concluded that applicant's trade mark was not capable of distinguishing the goods in respect of which the applicant sought its registration, and that s 33(1) of the Act in such circumstances compelled rejection of the application before her. CONSIDERATION The concept of a trade mark is well known. Section 17 of the Act defines a trade mark as follows: "A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person." Crucial to the concept of a trade mark is its capacity to distinguish the goods or services of one person from the goods or services of another. Under the Act, it is sufficient in this regard for the trade mark to be "capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered" (s 41(2)). The test under the 1955 Act was more demanding. Section 26 of the 1955 Act, so far as is here relevant, provided as follows: "26 (1) For the purposes of this Act, a trade mark is not distinctive of the goods or services of a person unless it is adapted to distinguish goods or services with which that person is or may be connected in the course of trade from goods or services in respect of which no such connexion subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions or limitations. (2) In determining whether a trade mark is distinctive, regard may be had to the extent to which: (a) the trade mark is inherently adapted so to distinguish; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish." Gibbs J pointed out in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 426 that: "The effect of s 26(2) is that the two factors mentioned must both be weighed but the authorities show that the primary inquiry is whether the word is inherently adapted to distinguish the goods in respect of which registration is sought..." In Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514, Kitto J put the test under the 1955 Act as follows: "[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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it." Under the 1955 Act it was established that certain marks could never be regarded as entitled to registration even though they were, as a matter of fact, plainly distinctive of the applicant's goods (Clark Equipment Company v Registrar of Trade Marks at 515-516; British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 305). It was accepted by both sides before me that Parliament, by enacting the current Act, intended to effect a change in the trade mark law concerning distinctiveness. That this was the intention of Parliament is confirmed by reference to the report of the working party to review the trade marks legislation ("the Working Party"): Recommended Changes to the Australian Trade Marks Legislation, AGPS, July 1992 ("the Report"). The second reading speech in the Senate for the Trade Marks Bill 1995 discloses that the Bill was intended to implement all of the recommendations in the Report other than three recommendations that have no present relevance. At p 41 of the Report the following passage appears: "... it is presently possible to establish that a mark is distinctive in fact and yet it will be held in law to be not registrable, as there is a requirement that a mark possess some degree, however small, of inherent adaptedness to distinguish. Marks falling into this category are typically geographical names and laudatory or descriptive words, and therefore likely to be used by other traders in the legitimate description of their goods or services. Once a particular trader can show, for example, that a word is distinctive in fact of his products, then it should not legitimately be used as a trade mark by a competitor. A competitor should, however, be entitled to make bona fide use of the word in its descriptive sense." The applicant further placed reliance on s 33 of the Act which has, in effect, altered the burden of proof generally so far as acceptance of applications is concerned. Section 33(1) provides that the Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or that there are grounds for rejecting it. The 1955 Act, by s 44, required the Registrar to accept the application only if satisfied that there was no lawful ground of objection to it. The terms of s 33(1) of the Act are presumably intended to reflect the recommendation of the Working Party that the Act "should be expressed in terms which make it clear that there is to be a presumption of registrability when examining an application for registration" (p 42 of the Report). However, by reason of the terms of s 41 of the Act, it is doubtful that s 33(1) can have any practical effect so far as the specific question of capacity to distinguish is concerned. Each of s 33(1) and s 41 involves the concept of the Registrar being "satisfied". Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not. 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)). The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken 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, is able to answer positively 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, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so "establish" by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons. It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant's goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above. I turn to the nature of the hearing before the Court. Section 35 of the Act provides as follows: "35 The applicant may appeal to the Federal Court against a decision of the Registrar: (a) to accept the application subject to conditions or limitations; or (b) to reject the application." Section 197 of the Act specifies the powers of the Court on an appeal pursuant to s 35. So far as is here relevant, s 197 provides as follows: "197 On hearing an appeal against a decision ... of the Registrar, the Federal Court may do any one or more of the following: (a) admit further evidence orally, or on affidavit or otherwise; (b) permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar; (c) order an issue of fact to be tried as it directs; (d) affirm, reverse or vary the Registrar's decision ...; (e) give any judgment, or make any order, that, in all the circumstances, it thinks fit; (f) order a party to pay costs to another party." Neither the Act nor the 1955 Act contains a provision in terms similar to s 44(2) of the Trade Marks Act 1905 (Cth) which provided that on an appeal "[t]he court shall hear the applicant and the opponent, and determine whether the application ought to be refused or ought to be granted with or without any modifications or conditions." It was the provisions of s 44(2) of the 1905 Act on which the High Court placed reliance in Jafferjee v Scarlett (1937) 57 CLR 115 in concluding that it was the duty of the Court on an appeal to decide the matter as on an original application, and not merely to decide whether the decision of the Registrar could be supported. Nonetheless, I accept the contention of both parties that it is for the Court to determine, on the material before it, whether the applicant's application to register its trade mark should be accepted or rejected. Section 197 of the Act, like s 115A of the 1955 Act, discloses, in my view, a clear intention that the established practice of an appeal of this kind being conducted as a rehearing is to be maintained. Schedule 1 of the Trade Marks Regulations 1995divides goods and services respectively into classes for the purposes of the current Act. The applicant seeks registration of its trade mark in respect of certain goods in classes 7 and 8. By application no. 598116 it seeks registration in respect of the following goods in class 7: "Machine and machine tools including saws, chainsaws and parts and accessories therefor in this class." By application no. 598117 it seeks registration in respect of the following goods in class 8: "Hand tools and implements in this class including saws and saw blades."

It is not suggested on behalf of the Registrar that either of the applications was not made in accordance with the Act, or that there was any ground for rejecting either application other than the ground provided for by s 41(2). I am therefore required, first, to take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons (s 41(3)). In doing so it is necessary for me to bear in mind that the word "Oregon" is the name of a state of the United States of America, and also the common name in Australia for timber from a Douglas fir. The notion of a trade mark being inherently adapted to distinguish the designated goods was of primary significance under the 1955 Act. There is no reason to think that the phrase "inherently adapted to distinguish the designated goods from the goods of other persons" appearing in s 41(3) of the Act is not intended to be understood in the light of decisions under the 1955 Act, and comparable United Kingdom legislation which includes references to inherent adaptability. In the Clark Equipment Co. Case at 514, Kitto J explained that the basic reason for the frequent refusal to register as a trade mark a word of prima facie geographic significance was the requirement 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 actuated by proper motives might want to use the word in a manner which would impinge a registered trade mark granted in respect of it. His Honour went on at 515 to observe: "The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods;..." See also the discussion of the notion of "inherently adapted to distinguish" in Oxford University Press v Registrar of Trade Marks (1990) 17 IPR 509. The applicant's trade mark is not a "fancy name" as that expression was used by Kitto J in the Clark Equipment Co. Case. An example there given by his Honour at 515 of a "fancy name" was "North Pole" used in connection with bananas. In Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285, Kitto J was required to consider "a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter "Y" is common to both, the whole being enclosed within a circle." His Honour said of this cross device that it: "...merely provides a fancy method of presenting the name 'Bayer', and it has no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as 'Bayer'. It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which ... 'would strike the eye and fix in the recollection.'" On appeal to the Full Court of the High Court, Taylor and Owen JJ expressly agreed with the above approach of Kitto J to the Bayer cross device. No member of the Court criticised his Honour's approach. By analogy, it seems to me that I must conclude that the particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient to take the applicant's trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber. I find that the applicant's trade mark is not inherently adapted to distinguish the designated goods from the goods of another person. I therefore turn to consider s 41(6) of the Act. The question to be considered under s 41(6) is whether the applicant has established that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, namely 15 March 1993, it does distinguish the designated goods as being those of the applicant. The above question is, in my view, entirely one of fact. It does not involve consideration of the question whether the word "Oregon" is one "which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods" (see F.H. Faulding & Co. Ltd. v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555 per Kitto J with the concurrence of Barwick CJ and Windeyer J). Such question is concerned with the issue of whether a word is adapted to distinguish one trader's goods from the goods of all others, not with the issue of whether the trade mark does in fact distinguish one trader's goods from the goods of all others (Oxford University Press v Registrar of Trade Marks per Gummow J at 525). As Gummow J pointed out in the Oxford University Press Case at 525-526, the concept of adaption to distinguish, as reflected in s 26 of the 1955 Act, looks forward to the consequences of a grant of registration. His Honour there observed: "The concept, central to s 26, of adaption to distinguish, is less difficult to grasp once it is appreciated that the statute is looking forward to the consequences of a grant of registration. The point was made by Isaacs J, with reference to s 16(3) of the 1905 Act, in Thomson v B. Seppelt & Sons Ltd (1925) 37 CLR 305 at 312: 'To be "distinctive" [the mark] must comply with the statutory definition of distinctiveness in [s 16(2)], namely it must be 'adapted to distinguish the goods of the proprietor of the trade mark from those of other persons'. The statutory intention looks wholly to the future, and seeks to know 'what will be the effect of the mark after registration?' Is it adapted in future trade to distinguish the proprietor's goods from those of other persons? That, however, does not mean 'is the word adapted to acquire distinctiveness?' but 'is the word instantly adapted to distinguish the proprietor's goods in his future trade?'... That must in all fairness be so, because otherwise it would be enlisting registration itself as an aid in making a mark actually distinctive, and so preventing partly by statutory assistance other traders from using the mark if they so desired: see Lord Parker's judgment in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC at 634. In determining that question [s 16(3)] allows the past effect of actual user to be taken into consideration as an aid in determining the present adaptability of the mark to serve as a distinguishing symbol in the future. But that is the sole function of the past user.'" The concept of adaption to distinguish, which was, as Gummow J pointed out in the Oxford University Press Case, central to s 26 of the 1955 Act, is not reflected in s 41 of the Act. Section 41 is concerned with capacity to distinguish. As s 41(6)(a) makes plain, a trade mark which is not to any extent inherently adapted to distinguish may nonetheless be treated under the Act as capable of distinguishing if, by reason of past use, it does in fact distinguish. The Act appears plainly to disclose an intention that it should no longer be the case that a trade mark which is "100 per cent distinctive in fact" should not be able to achieve registration (as to the expression "100 per cent distinctive in fact" see the Oxford University Press Case per Lockhart J at 511 and Gummow J at 523). This conclusion is confirmed by recommendation 4B of the report of the Working Party: "Inherent distinctiveness, or acquired distinctiveness or a combination of both, should establish that a mark is capable of distinguishing the specified goods or services, and justify registration."

I turn to consider the evidence by which the applicant has sought to establish that, because of the extent to which it had used the trade mark before the filing date of each application, it does distinguish the designated goods as being those of the applicant. The applicant placed before the Court evidence of use of the trade mark "OREGON" in Australia in respect of its goods since before 1960, and the composite trade mark reproduced near the beginning of these reasons (ie the trade mark), since mid-1978. It also placed before the Court evidence of considerable promotion in Australia of its goods and the trade mark since 1979. Jacobs J observed, no doubt accurately, in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 286 and 302, that evidence of promotion and use does not, without more, demonstrate distinctiveness. Nonetheless, common sense suggests that significant promotion and use of a trade mark amongst people concerned with the relevant market will have a tendency to enhance, rather than diminish, the trade mark's capacity to distinguish the goods in respect of which it is used from the goods of others. Certainly, the absence of evidence of promotion and use is likely to assume significance where distinctiveness resulting from use is in issue. In addition to evidence of promotion and use, the applicant placed before the Court affidavit evidence from consumers, wholesalers and retailers of its goods. None of this evidence was challenged by the respondent. The overall impact of this evidence, in my view, is that persons concerned with relatively small-scale power cutting equipment, such as chainsaws, brush cutters, circular saws, lawn mowers, etc, associate the word "Oregon" in relation to such equipment with a particular range of chainsaw chains, bars and other chainsaw accessories. It was pointed out by the respondent that a significant number of the deponents to such affidavits have stated that they associate the word "Oregon" in relation to mechanised equipment with chainsaw chains, bars and accessories, but they have not expressly stated that they understand such products to come from a particular trade source. However, if each of the affidavits is read as a whole, it is, in my view, clear that the deponent does identify "Oregon" as a range or brand of products of a particular supplier. The respondent contended that, since the deponents to such affidavits were drawn from a pool of persons with a direct or indirect trade association with the applicant, the weight of the evidence was limited. There is some merit in this contention. However, several of the deponents state that, in effect, in their experience, consumers generally in the relevant industry use the word "Oregon" to refer to a particular range of products. It is not, in my view, necessary as a matter of law for a statistically sound market survey to be undertaken before it can be established that a trade mark does distinguish an applicant's goods from the goods of another person. In each case the evidence relied on by the applicant is to be evaluated in the light of any evidence tending to the contrary effect and having regard to the evidence which the applicant might reasonably be expected to be able to obtain in all the circumstances of the case. I find that the applicant has established that, because of the extent to which it has used the trade mark before the filing date of each application, the trade mark does distinguish certain goods of the applicant from the goods of other persons. The trade mark is thus taken to be capable of distinguishing such goods from the goods of other persons (s 41(6)(a)). In respect of such goods, the applications are thus not to be rejected pursuant to s 41(2) of the Act. However, I am of the view that the applications may be drawn too widely. I will hear counsel further in this regard and on the question of costs. I certify that this and the preceding seventeen (17) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Branson.

Solicitor for the Respondent: Australian Government Solicitor