Consideration
45 Expressions that are purely emotive may have an inherent adaptation to distinguish (Wella AG v Registrar of Trade Marks (1996) 33 IPR 374 per Lehane J). One question is whether the mark is free of associations or significations that prevent its inherent adaptation (Kenman Kandy at [146] - [146] per Stone J with whom French J agreed).
46 "Go on" is used and has been used as an exhortation by other traders. There was evidence of use by other traders of "Go on…indulge" or "Go on indulge" or "Go on - indulge" or "Go on, indulge yourself!" in relation to a variety of objects such as aromatherapy, biscuits, desserts and spa therapy. Other uses included "Go on, try it!" for a particular dessert and "Go on, treat yourself" for ice cream. That is, there were examples of use, after the application date, of variants of "Go on…" or "Go on" followed by a pause indicated by a comma or a dash, by a variety of traders for a variety of "indulgent" goods. Those uses were sometimes closely associated with other trade marks and sometimes used in descriptive passages removed from the trade mark.
47 Unilever prepared a schedule of extensive uses of "Go on" by other traders. Examples included; "Go on…give one a try" and "Go on, treat yourself today" (Kentucky Fried Chicken); "Go on…spoil yourself!" (Happy Snax and the AIDS Trust of Australia); "Go on…give in to temptation" (News Magazines Pty Limited's Donna Hay Magazine); "Go on…take it all off!" (the Leukaemia Foundation of Australia). There was also an audio example of Ernie Dingo for the National Tourism Initiative urging customers to "go on", try the promoted holiday.
48 Whenever "Go on" is used, the context is almost invariably connected with what may be called an indulgence. That is the way in which Nestlé has used "Go on". It is a common expression and may be an exhortation that other traders would wish to use. Examples of use by other traders of "Go on" (without the ellipsis) indicated non-distinctive use.
49 "Go on" is not an expression that was invented by Nestlé. In the Shorter Oxford English Dictionary, the relevant definition of "go on" is 'continue, persevere'. In the Macquarie Dictionary (Macquarie Dictionary, 3rd edn & rev, Macquarie Library Pty Ltd, Sydney, 2003 (1981)), it is 'to go ahead; proceed; continue'. It is and was prior to the registration date a commonly used expression in connection with a range of goods. It was generally used in connection with goods seen to be indulgent.
50 Other examples of use, prior to the date of registration included: "Go on, dare to try it" by Dairy Farmers in Australia on radio (23 February 1998) to promote flavoured milk; Ernie Dingo on radio, "Go on [pause] get out there [pause] see Australia" (21 November 2000, 28 March 2001 and 5 April 2001). International examples included: from New Zealand ("Go on indulge" for Griffins chocolate biscuits, 11 June 1997); from Canada ("As They Go On" for Levis 12 August 1997); and from the United Kingdom ("Go on. Go ahead. Give in" for United Biscuits).
51 As in Top Heavy, GO ON… is part of an exhortation to try the product and no more likely to be taken as distinguishing the goods than "indulge" or "treat yourself". The phrase "Go on" is a common English expression that other traders, without improper motive, would want to use in respect of their own goods for the signification the expression ordinarily possesses.
52 As Finn J said in Austereo at [48], the expression is not sufficiently adapted to distinguish Nestlé's goods as to justify it being characterised as, of itself, being inherently adapted to distinguish; 'it cannot "do the job" of distinguishing entirely on its own'. Subsequent use in conjunction with Nestlé and other Nestlé trade marks may have resulted in a capability to distinguish but that is, as it was in Austereo, insufficient to support an inference that the required capability existed at the priority date.
53 The decision in Cycling IS... is apposite. There was, as here, no claim to distinctiveness through prior use and the use of the expression was not unconventional. As in Top Heavy, there is no evidence that the phrase had acquired a secondary meaning. The expression is not a lexical invention and is an expression that others marketing indulgent products, like ice cream, might wish to use. As Mr Hobbs concluded in Cycling IS…, neither the nature of the expression nor its presentation are sufficiently striking to function as an indication of trade origin in relation to the specified goods.
54 The issue is not whether the trade mark is 'adapted to acquire distinctiveness' but rather 'is the trade mark instantly adapted to distinguish the proprietor's goods in his future trade?' (Thomson v B Seppelt & Sons Ltd (1925) 37 CLR 305 at 312 per Isaacs J as discussed in Oxford University Press v Registrar of Trade Marks (1990) 17 IPR 509 at 525 and Blount at 61). Section 41 of the Act is concerned with capacity to distinguish and the extent of that capacity. This was, as pointed out in Oxford (by Lockhart J at 514 and by Gummow J at 522-3), the approach taken by the High Court in Registrar of Trade Marks v Muller (1980) 144 CLR 37at 42. The distinction made was between "inherently adapted so to distinguish"; "adapted to distinguish" by reason of a combination of inherent adaptation and use or other circumstances; and "capable of becoming distinctive", becoming "adapted to distinguish" by reason of extensive use or other circumstances.
55 An inherent capacity to distinguish should exist as an intrinsic characteristic of the mark. It is not the same as acquired distinctiveness achieved through advertising and actual use. That is dealt with in s 41(6).
56 In British Sugar, Jacob J at 306 said, with respect to "devoid of any distinctive character", that 'the phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark?'. Stone J in Kenman Kandy at [145] observed that signs which are descriptive of the character or quality of the relevant goods cannot be inherently distinctive because the words have significations or associations that invite confusion. It is the absence of association and signification that accounts for signs and invented words being found to be inherently adapted to distinguish a trader's product (at [146]-[148]). The 'concept is negative not positive'.
57 This is not a case where, to paraphrase Kitto J in Clark Equipment at 513, a mark that seems unadapted for the purpose of signifying trade origin has come by actual use or special circumstances to be so closely associated with Nestlé's goods in the mind of the public that its apparently disqualifying signification is effectually obscured and distinctiveness in fact achieved. In such a case, the extent of inherent lack of adaptation is weighed against the degree of acquired distinctiveness in determining the question whether the mark is registrable as being adapted to distinguish the goods. The question also arises whether other persons are likely to want to use the mark, legitimately, in connection with goods for the sake of the signification that the words ordinarily possess. If the words of the trade mark fall into that latter category, the mark will not be adapted to distinguish although it may be distinctive as a common law mark (Oxford at 525).
58 In TGI Friday's, the Full Court at 368 distinguished between the expressions "TGI Friday" and "Thank God It's Friday", the latter being an expression regularly used in relation to and expressing notions of relaxation and refreshment (and, it can be deduced, not inherently adapted) and TGI Friday's which is not idiomatic English. The presence of the apostrophe to indicate the possessive form of Friday, Friday's, was sufficient to 'give the mark inherent distinctiveness'. Nestlé submits that the ellipsis in the trade mark is similarly sufficient. Nestlé submits that, in determining capacity to distinguish, expressions such as "Go On...", "Go On -", and "Go On" with no punctuation following, are separate and no notice should be taken of the desire of traders to use forms that differed from the trade mark. Similarly, it submits, use for different and well separated classes of goods should be disregarded.
59 Does the punctuation make a difference? Nestlé has used the ellipsis to create a pause in anticipation of the action the reader is being exhorted to undertake. The variants of "Go on" used by other traders prior to the registration date, frequently used punctuation such as a comma, a dash or an ellipsis following the words to indicate a pause. In each such case, with one exception, there was a punctuation mark or indication of a pause after the "go on", the same pause indicated by "…". There were numerous examples in evidence of use after the registration date of "go on" with different punctuation devices to indicate a pause including an advertisement for a Donna Hay Magazine, "go on…give in to temptation" that prompted a letter from Nestlé's solicitors. No distinction can be drawn aurally with the punctuation device of an ellipsis, a comma or a dash. For example, GO ON…, "Go On" and "Go On (pause)" are common English expressions that other traders would be likely, without improper motive to desire to use.
60 Continued registration of the trade mark would limit the rights of Unilever and other traders to use the phrase "Go on". It may also limit their right to use "Go on" with other punctuation that indicates a pause, as does an ellipsis, without fear of infringement. In this respect, aural representations of the trade mark in television or radio advertisements are relevant and the different devices indicate the same pause. Potential infringement by a mark substantially identical or deceptively similar to the trade mark is relevant to a consideration of inherent adaptation to distinguish (Kenman Kandy at [95] per Lindgren J and at 161 per Stone J).
61 The ellipsis does not provide a source of distinction. TGI Friday's does not stand for the general proposition that all grammatical differences are significant or sufficient to provide an inherent adaptation to distinguish (Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285), let alone where different forms of punctuation convey the same pause without a different meaning.
62 An ellipsis indicates an 'omission from a sentence of a word or words which would complete or clarify the construction'. The three dots do not indicate words necessary for an understanding of the phrase but simply make the complete syntactical construction. In Cycling Is… reference was made at [7] to an extract from "Mind The Stop. A Brief Guide to Punctuation with a Note on Proof-Correction" by G V Carey which noted that '"[t]hree full-stops in combination are used to mark the point where words are omitted in a quotation" and "[t]his symbol is also occasionally convenient in ordinary narration when something is left for the reader's imagination to supply"'.
63 The use of the ellipsis in GO ON… could be an indication that additional words or phrases are needed to complete the sentence. Those words may be supplied or used so that the missing words are to be completed by the reader/listener. This is in contrast, for example, to the expression "Go on!" which has a different meaning, 'an exclamation of astonishment verging on disbelief' (Macquarie Dictionary) and does not suggest the addition of words.
64 It is not suggested that the capital letters provide a source of distinctiveness.
65 The expression "GO ON…" is commonly understood, and would have been commonly understood as at the date of registration, as being the first part of a two part exhortation, linked by a "pause". Moreover, that interpretation accords with the Nestlé's intended meaning of those words and that punctuation. The use of one part of a phrase with variations does not necessarily render the constant part, GO ON… incapable of being a trade mark alone rather than as a composite phrase (cf blank space undertakings DR Shanahan, Australian Law of Trade Mark and Passing Off, 3rd edn, LBC (2003) at [10.35] - [10.40]).
66 Nestlé relies upon the availability of a multiplicity of tag lines to support the capacity of GO ON… to distinguish the goods. The second part of the expression, for which registration is not sought, is not defined or limited and could include, for example, "try it" or "buy this" as well as "indulge". The fact that the possible tag lines are not limited and that, as the evidence demonstrates, different tag lines have been used by other traders with a variety of goods, argues against such support. If the registered trade mark were, for example, "Go On…Indulge" or "Go On…Have a Drumstick" or "Go On…Go Fruity", each of which are used by Nestlé, it could be said that there was a greater extent to which each mark was inherently adapted to distinguish the designated goods. However, they are not the registered marks.