In the first application of the High Court’s decision in Cantarella Bros v Modena Trading  HCA 48 (Cantarella) by the Federal Court, Justice Middleton has found that the trade mark depicted below, which was registered in respect of “Retailing, online retailing and mail ordering services; all relating to pharmacies” in class 35 and “Medical, hygienic, beauty care services all relating to pharmacies; all of the foregoing being pharmacy advisory and pharmacy dispensary services” in class 44 is invalid.
The trade mark was registered without limitation as to colour and was therefore registered for all colours: s 70 TMA.
The owners of the mark accepted that it was only to some extent adapted to distinguish the relevant services. Sub-sections (5) and (6) of the former s 41 of the TMA were therefore applicable.
On the question of inherent adaptation, Middleton J cited the question posed by Stone J in Kenman Kandy
…the question is whether if the [appellant’s mark] were to be registered as a trade mark, other persons trading in [the same market] and ‘being actuated only by proper motives’ would think of this [mark, or a sign that is substantially identical with, or deceptively similar to, the mark] and want to use it in connection with their goods in any manner that would infringe the appellant’s trade mark.
His Honour pointed out that Justice Stone then articulated a “subsidiary and difficult question” when the mark “has associations that deprive it of the inherent capacity to distinguish.”
In this case, the three dominant words AUSTRALIA’S CHEAPEST CHEMIST signify geographic location, price and nature of the business, respectively. His Honour considered that these words, considered either separately or combined, did not have the required distinctiveness. The addition of the prefix “Is this?” did not assist. His Honour concluded therefore that the trade mark was not at all inherently adapted to distinguish. This conclusion sits comfortably with the High Court’s view, expressed in Cantarella, that words having a “direct reference” to the relevant goods or services are “prima facie not registrable”.
Section 41(6) was therefore applicable and his Honour found that the mark was not distinctive in fact as at the filing date.
The registration of the mark was therefore invalid.
Although Cantarella was referred to by his Honour in setting out the principles relevant to the question of inherent adaptation to distinguish, he did not refer to it again in the context of application to the facts in the case. This is unusual but is perhaps explicable on the basis thatCantarella was decided after Middleton J had reserved and, in any event, his Honour was of the view that “the proper test for assessing the inherent capacity of the registered trade mark … still remains that articulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511″ and that the High Court in Cantarella had “recently endorsed this test.”
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