Registrar of Trade Marks v Muller

This is an appeal pursuant to a grant by this Court of special leave from a judgment of the Supreme Court of Victoria (Fullagar J.) allowing an appeal from the refusal of the Registrar of Trade Marks to register as a trade mark the word " less " in respect of "pharmaceutical products".

Registration was sought in Pt A of the register upon the ground that the word " less " fell within s. 24 (1) (d) of the Trade Marks Act 1955, as amended ("the Act").

A trade mark is registrable in Part A of the Register if it contains or consists of -

(d) a word not having direct reference to the character or quality of the goods in respect of which registration is sought and not being, according to its ordinary meaning, a geographical name or a surname.

The Registrar rejected the application. First, he was of the opinion that "in respect of some preparations the mark less would indicate to possible purchasers that the product contains less of some particular ingredient or that less of that material is required to achieve an effective result for the purpose required. We think that more likely to be the impression if the preparation is known to contain ingredients which in excess can be harmful or if the preparation in normal dosage has undesirable side effects".

On the other hand, Fullagar J. felt that the word " less " carried no clear meaning at all and thus could not refer directly to the character or quality of any substance.

The question whether words have a direct reference to the character or quality of goods is in our opinion to be answered by applying the test posed by Dixon C.J. in Mark Foy's Ltd. v. Davies Coop. & Co. Ltd. ("the Tub Happy Case") [1] . The Chief Justice said: "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." Kitto J., though dissenting, applied a similar test when he said [2] : "One has to look at the words as they would present themselves to the persons who are to look at them and form an opinion as to what they connote".

1. (1956) 95 C.L.R. 190, at p. 195. 2. (1956) 95 C.L.R., at p. 207.

As we shall see, his Honour's remarks reflect the comments of Lord Hanworth M.R. in In re Keystone Knitting Mills Ltd.'s Trade Mark [3] . What must be regarded is the application of the word " less " to the goods in connexion with which it is sought to be registered. The question is therefore whether in phrases such as " less analgesic" or " less aspirin", " less " refers directly to the character or quality of the pharmaceutical product with which it is paired.

It seems to us that when it is so linked, " less " does convey something about the character or quality of the product. Admittedly, an additional word such as "used" or "requiring" has to be inserted into the phrase for the meaning to be clear and grammatically complete. But this is no different from "charm" in relation to "hosiery" (Keystone ) or "health" in relation to "cocoa" (Thorne & Co. Ltd. v. Sandow [4] ), which were held to have a direct reference to the character or quality of the goods and where link words would have been necessary to make the meaning perfectly clear. Indeed, Lord Hanworth M.R. said in Keystone [5] : "one has to look at the word which is registered, not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and to form an opinion as to what it connotes."

1. (1912) 29 R.P.C. 440. 2. (1928) 45 R.P.C., at p. 426.

Whilst not required to be totally explicit, the reference must be "sufficiently tangible to amount to a direct reference to the character or quality of the goods", in the words of Dixon C.J. in the Tub Happy Case [6] . On which side of the line a case falls is a question to be judged on the individual facts and little can be gained from a detailed examination of previous cases.

However, much argument centred on the Tub Happy Case. There, the phrase "tub happy" was a coined term which at most suggested that the clothes were quite happy in a washing machine. By a process of extrapolation this suggestion could be understood as a reference to the quality of the clothes. Here, " less " is a well-known word which has an immediate and easily recognizable meaning. When linked to pharmaceutical products where the quantity and concentration of active ingredients is an important, if not critical, factor, the word makes reference to the character or quality of the product because it will be understood by the public as a representation about its ingredients or its strength. So clearly does this connotation emerge that we have no hesitation in regarding the reference to character or quality as one which is "direct".

This conclusion also draws support from the consideration, now well settled, that in dealing with cases of this kind the court should attach great weight to the opinion of the Registrar: Eclipse Sleep Products Inc. v. Registrar of Trade Marks [7] ; Joseph Bancroft & Sons Co. v. Registrar of Trade Marks [8] .

1. (1957) 99 C.L.R. 300, at pp. 321-322. 2. (1957) 99 C.L.R. 453, at p. 457.

A second reason given in support of the Registrar's decision to dismiss the application was rejected by Fullagar J. It was that a mark is required to be "distinctive" in addition to satisfying the requirements in s. 24 (1) (a) or (b) or (c) or (d) of the Act.

A trade mark is not distinctive of the goods of a person "unless it is adapted to distinguish goods with which that person is or may be connected in the course of trade from goods in respect of which no such connexion subsists" (s. 26 (1)). 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" (s. 26 (2)).

A distinctive mark is registrable in Pt A and in Pt B. Subject to the operation of s. 24 (1) (d), the question now under consideration, a mark which is not distinctive is not registrable in Pt A. Such a mark is registrable in Pt B if it is capable of becoming distinctive of goods in respect of which registration is sought and with which the applicant is or may be connected in the course of trade (s. 25 (1)).

A mark may be "adapted to distinguish", and therefore may be distinctive in the relevant sense in three ways: (1) it may be "inherently adapted so to distinguish"; (2) it may be "adapted to distinguish" by reason of a combination of inherent adaption and use or other circumstances; and (3) it may, being "capable of becoming distinctive", become "adapted to distinguish" by reason of extensive use or other circumstances. In any event the mark is or becomes registrable in Pt A. But if the mark is not "adapted to distinguish" and is merely "capable of becoming distinctive", then it is registrable only in Pt B. The scheme of registration is in these respects similar to that introduced in the United Kingdom by the Trade Marks Act, 1919 and subsequently by the Trade Marks Act, 1938. The language of the 1938 United Kingdom Act draws a distinction between the expression "adapted to distinguish" which bears the meaning it has in the 1955 Australian Act and "capable of distinguishing" which is defined by s. 10 of the 1938 Act so as to take account both of inherent capability and capability arising from use and other circumstances. The expression "capable of becoming distinctive" is not defined at all by the 1955 Australian Act.

Such are the elements in the scheme of registration in Pts A and B of the register that it is difficult to resist the conclusion that distinctiveness of a mark is an essential qualification for registration in Pt A. First, marks which fall within pars. (a), (b), (c) and (e) of s. 24 (1) are of their nature or by virtue of their very description distinctive. Although the only place in which the word "distinctive" occurs in s. 24 (1) is in par. (e), s. 26 (1) refers to distinctiveness for the purposes of the Act generally and s. 24 (2) demonstrates that distinctiveness is a critical consideration in the case of names, signatures or words not falling within pars. (a) to (d) inclusive - see In the matter of the Registered Trade Mark Silk (1947), Official Journal of Patents, Trade Marks and Designs, vol. 35, 2232, at p. 2233.

In that case Williams J., on appeal from the Registrar, when considering s. 16 (1) (e) of the Trade Marks Act 1905-1936 (the counterpart of s. 24 (1) (e) of the present Act), said at p. 2233: "The reference in s. 16 (1) (e) to any other distinctive mark implies, what is implicit in the general law of trade marks, that all trade marks to be registrable must have the overriding qualifications of being adapted to distinguish the goods of the proprietor of the trade mark from those of other persons." His Honour was, of course, speaking of the Australian statute as it stood before provision was made for the registration in Pt B of marks which are not distinctive but are capable of becoming distinctive. However, his Honour's comment holds good for marks registrable in Pt A of the register.

On the other hand, in the case of Joseph Bancroft [9] this Court (Williams, Kitto and Taylor JJ.) had before it a contention that "even if the words were prima facie registrable because they complied with s. 16 (1) (d)" [of the 1905 Act, equivalent to s. 24 (1) (d) of the present Act], "they were nevertheless not adapted to distinguish the goods of the applicant from those of other persons and that the registrar has a discretion not to register a proposed trade mark even though it contains one of the essential particulars set out in pars. (a), (b), (c) and (d) of s. 16 (1) of the Act if he is of opinion that it is still not distinctive." [10] .

1. (1957) 99 C.L.R. 453. 2. (1957) 99 C.L.R., at p. 457.

In the result, in a joint judgment, their Honours did not deal with the argument, saying [11] :

It is unnecessary to decide whether a proposed trade mark which consists simply of one of the essential particulars prescribed by pars. (a), (b), (c) or (d) of s. 16 (1) of the Trade Marks Act and is not obnoxious to s. 25 or s. 114 of that Act can still be objectionable on some other ground; one ground of objection suggested by Mr. Ellicott being that it is nevertheless not adapted to distinguish the applicant's goods from those of other persons. It is difficult to see how such an objection could be raised except under ss. 25 and 114 of the Act but, assuming that it could, it would not appear to derive support from anything before the Court in the present case. Three observations may be made about this case: the first is that the trade mark in question, "Miss America", was found by the Court to qualify for registration pursuant to s. 16 (1) (d) as not directly referring to the character or quality of the goods; secondly, it would appear to us to be an expression which was inherently adapted to distinguish; and finally, the attention of the Court does not appear to have been drawn to the decision of Williams J. in Silk , to which we have referred, a decision which was given in 1947 but not reported until 1965, despite a specific question asked by Williams J. of counsel for the Registrar to which the decision in Silk was directly relevant. His Honour asked counsel for the Registrar [12] "Is there any case where the word being within s. 16 (1) (d) registration has been refused on the ground that being a pseudonym they might nevertheless be not adapted to distinguish?" In these circumstances, we do not think that much can be made of the Court's tentative reaction to a submission with which it was not required to deal. 1. (1957) 99 C.L.R., at pp. 460-461. 2. (1957) 99 C.L.R., at p. 455.

The introduction of the provisions relating to Pt B did not disturb the effect of the provisions relating to registration of marks which are adapted to distinguish in the relevant sense, marks which are now registrable in Pt A. The new provisions merely build on the old system of registration, thereby creating a new system in which distinctive marks are registrable in Pt A and Pt B and marks which are not distinctive, but are merely capable of becoming distinctive, are registrable in Pt B only. For the Act to provide that a non-distinctive mark is registrable in Pt A, though it falls within par. (d) of s. 24 (1), would be to contradict the general pattern which is otherwise discernible in the legislative scheme of registration.

In a practical sense the question whether a non-distinctive mark could be registered in Pt A by virtue of par. (d) largely depends upon the operation to be given to the expression "not having direct reference to the character or quality of the goods". If these words are construed and applied so as to connote that which is distinctive, as we think they should be, the problem disappears. A non-distinctive mark is then not eligible for registration by virtue of par. (d). This is the conclusion which Tomlin J. reached in In re Fanfold Ltd.'s Application [13] in relation to s. 9 of the Trade Marks Act, 1905 U.K., as amended. His view was upheld on appeal by Lord Hanworth M.R. [14] and in our opinion it was correct.

1. (1928) 45 R.P.C. 199, at pp. 203-204. 2. (1928) 45 R.P.C. 325, at pp. 330-331.