TRADE MARKS ACT 1995 DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS Re: Opposition by Mount

Everest Mineral Water Limited to registration of trade mark application 1261293 (32) - HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS - filed in the name of Himalayan Spring Mineral Water Pty Ltd.
Heath Wilson Opponent: Davies Collison Cave, Patent and Trade Mark Attorneys - No appearance at the Hearing. Applicant: Self represented at the Hearing. 2010 ATMO 85 Section 52: Ground under section 43 of the Trade Marks Act 1995 established in principle connotation in the trade mark endorsement applied to the trade mark application No award of costs.

DELEGATE: REPRESENTATION:

DECISION:

B ackg ro und 1. On 5 September 2008, Himalayan Spring Mineral Water Pty Ltd (the applicant) applied to register the trade mark HIMALAYAN SPRING MINERAL WATER BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS for Mineral water in Class 32. 2. Following its acceptance by IP Australia for possible registration, the application was opposed on 22 April 2009 by Mount Everest Mineral Water Limited (the opponent) via a notice of opposition nominating most available grounds under the Trade Marks Act 1995 (the Act). The opponent was granted four extensions of time (and was refused on the fifth request making its sixth request for an extension redundant), but did not provide any evidence in support of the opposition. The applicant, (at that time represented by Griffith Hack, Patent & Trade Mark Attorneys) elected not to provide any evidence in answer.

2 3. Prior to the hearing the opponent indicated, via its written submissions, that it would only be pressing the ground of opposition under section 43 of the Act. After the applicant provided its written submissions in response, I heard this matter as a Delegate of the Registrar of Trade Marks in Melbourne on 5 August 2010. The opponent elected not to appear at the hearing and the director of the applicant Mr. Woolhouse, appeared in person (the applicant no longer being legally represented). O nus a nd R easo ns 4. In opposition proceedings before the Registrar, the opponent bears the onus of establishing a ground of opposition stated in the notice on the balance of probabilities.1 My reasoning in this matter is made on that basis. As it was the sole ground pursued by the opponent, I will only address section 43 and I find that the remaining nominated grounds of opposition have not been established by the opponent. 5. Section 43 of the Act provides as follows: Section 43: Trade mark likely to deceive or cause confusion An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion. 6. The opponent made the submission that the applicants trade mark contains two inherent connotations that would be likely to deceive or cause confusion if used on the relevant goods in Australia. The first alleged connotation goes to the geographic origin of the goods, specifically that the applicants mineral water will be bottled in, or sourced from the Himalayas, Nepal. The second alleged connotation concerns the nature of the applicants product namely, that it will be bottled in circumstances involving the vibrational chanting of Tibetan monks. A connotation 7. To establish a ground of opposition under section 43, there must be an inherent connotation within the trade mark which is likely to deceive or cause confusion. The
Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].
1

3 comments of Justice Gyles in Pfizer Products Inc v Karam2 outlined the history of section 43 of the Act, stating that: Section 43 does not have a long pedigree. It was enacted pursuant to Australias obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS and the 1992 Working Party Report led to a 1994 Bill containing the following cl 42(2): An application for the registration of a trade mark in respect of particular goods or services must be rejected if the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion regarding: (a) the nature, quality, origin, intended purpose, or some other characteristic, of the goods or services; or (b) any connection or relationship that they may have with any particular person. That Bill was enacted but never came into force. In the 1995 Bill (and Act) cl 42(2) of the 1994 Bill was replaced by what is now s 43 of the 1995 Act. The Explanatory Memorandum stated that cl 43 provides: That an application for registration must be rejected if the trade mark ... because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods or services. [Emphasis added] It seems that the final form of s 43 is a wider version of the earlier clause with a similar purpose. Connotation is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question 8. Placing particular emphasis on a strict dictionary definition of the word connotation may have the effect that if trade marks consisted only of obvious or primary meanings (i.e. not secondary or implied) these would not amount to connotations and would therefore fail the threshold test. Under such an interpretation, an opposition under section 43 would fail, despite the use of the trade mark being likely to deceive or cause confusion in the Australian marketplace.

Pfizer Products Inc v Karam (2006) 70 IPR 599 (at [52 -53]).

4 9. However, it is clear from the Explanatory Memorandum and the 1994 Bill referred to above that this was not the intention of the section at the time it was introduced. A direct expression may, (if not technically a connotation), still amount to a signification inherent to the trade mark. Therefore, if a trade mark consists of a direct statement that the goods will originate from a particular region or outlines the nature of the goods, and there is scope within the goods/services for that statement to be misdescriptive, confusion will result. The intention for section 43 to also cover misdescriptive trade marks has its roots in the provisions of the 1905 Act, as stated in Re Orlwoola Trade Mark 3 where Cozens-Hardy MR decided: If the goods are wholly made of wool the words are the natural and almost necessary description of them. If they are not made wholly of wool it is a misdescription which is so certain to deceive that its use can hardly be otherwise than fraudulent. In either case the words are utterly unfit for registration as a trade mark. 10. Almost eighty years later, in relation to section 28(a) of the Trade Marks Act 1955 4, the trade mark BUBBLE UP & DEVICE was also held by King J to be misdescriptive if it was applied to non-aerated beverages in class 32.5 While not explicitly clarified in more recent Hearings decisions on section 43, it appears that a similar reasoning has been applied in Westchester Media Company, L.P v Australian Polo Magazine Pty Ltd6 where the delegate commented that she would have found magazines bearing the trade mark POLO Magazine which did not contain material on the game of Polo to be misleading to the purchasing public. Another potentially descriptive trade mark was considered in Effem Foods Pty Ltd v Star-Kist Foods, Inc 7 where the delegate noted that: the term "meaty bone" is a powerful description and, conversely, potentially misdescriptive where the goods are not meaty bones. 11. In Scotch Whisky Association v De Witt,8 Sundberg J found (my emphasis added): Where goods are denoted as being from a particular country, this constitutes another factor that reduces the possibility of confusion: Greens Application (1946) 64 RPC 14. [61] Both involved and uninvolved purchasers of bourbon and scotch whisky products will inspect labels and see that the product is in fact bourbon, made in the USA
Re Orlwoola Trade Mark (1909) 26 RPC 850 (CA UK) at 860. The predecessor to section 43 of the Trade Marks Act 1995. 5 Seven-Up Co v Bubble Up Co Inc (1987) 9 IPR 259. 6 Westchester Media Company, L.P v Australian Polo Magazine Pty Ltd [2000] ATMO 100 7 Effem Foods Pty Ltd v Star-Kist Foods, Inc (2000) 50 IPR 121 8 Scotch Whisky Association v De Witt (2007) 74 IPR 382 at [60] (Glenn Oaks)
4 3

5 or the states Kentucky or Tennessee. A label indicating bourbon, bourbon whiskey and/or made in the USA clearly connote an origin of a place other than Scotland. Labels indicating Tennessee Whiskey again connotes an origin in a place other than Scotland. For a mark to be rejected under s 43 there must be a real tangible danger of deception or confusion. That exceptionally stupid or careless consumers might be confused does not suffice. 12. While the above comments must be viewed in the context of a disputed Scottish connotation in the Glenn Oaks trade mark, it is clear from the above extract that Sundberg J is using connotation in the broadest sense. If connotation under section 43 only concerns secondary or implied meanings, a label comprising a clear statement of geographic origin such as Made in the USA or Tennessee Whisky would technically denote a place of origin, not connote it. So, while the definition of the word connotation is clear, its application to section 43 (under certain circumstances) is less so. 13. Given the initial intention of the section and the current approach of IP Australia9, I find that section 43 is intended to cover circumstances including the opposed application. An interpretation or explanation of the above approach to the section is that potential consumers would firstly (and primarily) view the words HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS as a trade mark that denotes a connection between the applicant and its mineral water products. Accordingly, the denotation is firstly as a trade mark of the applicant, despite any descriptive matter contained within. The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the goods. It does not follow that all trade marks containing descriptive matter would attract a section 43 objection. Only if there is a real and tangible danger that the consumers expectations may turn out to be false and result in confusion, would section 43 be triggered. Likely to deceive or cause confusion 14. As addressed above, if a trade mark contains a description of the goods, deception or confusion is likely to result if the trade mark is used for goods which are not of that
9

See Part 29.5.2 of the Trade Marks Office Manual of Practice & Procedure and Hearings decisions on section 43 previously referred to.

6 description.10 In addition, a trade mark which includes a place name may cause confusion depending on the nature of the product. The current trade mark includes both a description of the goods and an indication of the products geographical origin. 15. If the trade mark contains a fanciful description of the goods11, it may be unlikely to deceive or cause confusion if the consumer would recognize it as fanciful and would not reasonably expect the product to actually feature the marketed qualities. In the current matter, while the qualities promoted by applicants trade mark are uncommon or unusual, I am not of the view that they are fanciful. There is a real likelihood that the ordinary consumer would expect the mineral water to be bottled/sourced from Nepal in the Himalayas. 16. The High Court in Radio Corp Pty Ltd v Disney,12 commented that a trade mark should not be registered if it involves a misleading allusion or a suggestion of that which is not strictly true. However, in the context of the application of section 43 under the 1995 Act, the decisions of Aktion Zahnfreundlich v Suntory Limited (1998) 42 IPR 593 and Effem Foods (supra) indicate that any relevant connotation must be more than a mere allusion or suggestion to offend the section. 17. No evidence has been provided by the opponent to establish the existence of any connotations or meanings in the trade mark;13 however such a requirement in these circumstances is unnecessary. I am satisfied that clear unambiguous meanings can be derived from the words HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS. 18. The opponents case is built on the premise that one or both of these connotations are false in relation to the applicants trade mark, placing particular emphasis on the unlikely nature of the second connotation (i.e. the use of vibrational chanting of Tibetan monks). I find that there are connotations contained within the trade mark which would be likely to deceive or cause confusion if they were, in fact, false.

Westchester Media Co, LP v Australian Polo Magazine Pty Ltd (op.cit). Effem Foods Pty Ltd v Star-Kist Foods Inc (supra). 12 Radio Corp Pty Ltd v Disney (1937) 57 CLR 448 at 453. 13 As was required in Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428 [at 110] per Bennett J.
11

10

7 19. While no evidence has been produced by the applicant, Mr. Woolhouse asserted that both of the above meanings derived from the trade mark are, in fact, true. The applicant asserted via its written and oral submissions that the applicants product is bottled in the Himalayas of Nepal. I note that this assertion is reinforced by a statement to that effect appearing on the applicants website

www.himalayanspringmineralwater.com.au. Although the applicant did not serve and file evidence of the content of its website, it is open to me to take this information into account as regulation 21.15 (8) of the Trade Marks Regulations 1995 provides that in hearings before the Registrar: The Registrar is not bound by the rules of evidence but may inform himself or herself on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate. 20. In addition, the applicant submitted that a Tibetan monk is present at the beginning of the process to perform a Truesol or purification blessing and a recording of Tibetan monks chanting is then played throughout the products entire bottling process. This method of processing is also mentioned on the applicants website. 21. Considering the above factors in the context of the claimed goods, I find that both connotations have the potential to cause confusion. To avoid a trade mark being used in a misdescriptive (and therefore deceptive or confusing) manner under section 43, it is common for the Registrar to apply an endorsement to the trade mark applying a

8 condition on its use on the goods claimed.14 This proposal was put to Mr. Woolhouse at the hearing, and he raised no objection to the application of an endorsement. To

14

See Federation of the Swiss Watch Industry F.H. v K-Swiss Inc [2009] ATMO 78; Aventis Pharma

TRADE MARKS ACT 1995 DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

9 HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS

Trade Marks Act 1995 established in principle connotation in the trade mark endorsement applied to the trade mark application No award of costs.

B a ck g r o u n d 1. On 5 September 2008, Himalayan Spring Mineral Water Pty Ltd (the applicant) applied to register the trade mark HIMALAYAN SPRING MINERAL WATER BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS for Mineral water in Class 32. 2. Following its acceptance by IP Australia for possible registration, the application was opposed on 22 April 2009 by Mount Everest Mineral Water Limited (the opponent) via a notice of opposition nominating most available grounds under the Trade Marks Act 1995 (the Act). The opponent was granted four extensions of time (and was refused on the fifth request making its sixth request for an extension redundant), but did not provide any evidence in support of the opposition. The applicant, (at that time represented by Griffith Hack, Patent & Trade Mark Attorneys) elected not to provide any evidence in answer.
SA v Alphapharm Pty Ltd [2005] ATMO 15.

$ ) 65 #  4  43 210 #(

DECISION:

Applicant: 2010 ATMO 85

'&% $   " )( '&% $  # "" !       

DELEGATE: REPRESENTATION:

Heath Wilson Opponent:

10 obviate the likelihood of deception or confusion resulting from the direct meanings in the applicants trade mark, I find it necessary for a condition of registration to be applied to the opposed application. Therefore, on its face, the ground of opposition under section 43 of the Act has been partially established by the opponent. D e cis io n Section 55: Decision (1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide: (a) to refuse to register the trade mark; or (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.

22. The ground of opposition under section 43 of the Act has been established to a certain extent. In order to eliminate the likelihood of confusion resulting from the use of the trade mark, I will apply the following endorsement to the trade mark application under section 55(1)(b) as a condition of registration: It is a condition of registration that the trade mark will only be used on mineral water bottled in the Himalayas, and which is bottled accompanied by the sound of chanting Tibetan monks. 23. The trade mark application may proceed to registration with the above condition one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time I direct that registration shall not occur until the appeal has been decided or discontinued. C o s ts 24. Both parties have requested an award of costs in this matter. The opponent has partially established a ground of opposition under section 43 requiring the above endorsement. However, taking into account the manner in which this opposition has been conducted by the opponent, especially in relation to the number of extension of time requests for evidence after which no evidence was forthcoming, I find it appropriate for each party to bear its own costs of these proceedings.

11

Heath Wilson Hearing Officer Trade Marks Hearings 6 September 2010