Re Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks [1988] FCA 259 (26 July 1988)

FEDERAL COURT OF AUSTRALIA

Re: ADVANCED HAIR STUDIO OF AMERICA PTY. LTD.
And: REGISTRAR OF TRADE MARKS
No. VG123 of 1988
Trade Marks

COURT

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Bowen C.J.(1), Woodward(1) and Lockhart(1) JJ.

CATCHWORDS

Trade Marks - appeal from refusal to register trade mark in Part A of Register - whether "Hairfusion" an invented word - whether "Hairfusion" has a direct reference to the nature or quality of the services offered - distinctiveness of trade mark primarily question of fact

Trade Marks Act 1955 ss.24(1)(c), (d), (e)

HEARING

MELBOURNE
26:7:1988

Counsel for Appellant: Mr D. Shavin

Instructed by: H.L. Yuncken & Yuncken

Counsel for Respondent: Mr A. Pagone

Instructed by: Australian Government Solicitor

ORDER

The appeal be dismissed with costs.

Note: Settlement and entry of orders is dealt with in Order
36 of the Federal Court Rules.

DECISION

This is an appeal from the Victorian Supreme Court exercising federal jurisdiction under the Trade Marks Act 1955 (Cth) ("the Act"). In his judgment of 11 March 1988 King J. dismissed an appeal pursuant to s.46 of the Act from a decision of the Senior Assistant Registrar of Trademarks refusing to register a mark in Class 42 Part A or Part B of the Register.

2. The appellant, Advanced Hair Studio of America Pty Ltd ("Advanced Hair Studio"), seeks to register the word "HAIRFUSION" as a trademark in Class 42 of the Register in respect of hair dressing and styling services in connection with the fixing of hair pieces to the heads of human beings. An application for registration No. 334870 dated 2 July 1979 was refused by the Senior Assistant Registrar on 19 March 1982 following objections to registration raised by the Examiner of Trade Marks. The Senior Assistant Registrar considered the application under both Parts A and B of the Register, but the appeal to the Supreme Court was conducted as an appeal against the Part A refusal alone and has proceeded on that basis in this Court.

3. The claim for registration of "HAIRFUSION" was advanced below and before us on three alternative grounds found in s.24 of the Act. That section provides, in part:

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

...

(c) an invented word;

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

(e) any other distinctive mark."

4. Advanced Hair Studio has, since 6 December 1976, offered to the public through various hair studios a service for fixing hair pieces to the hair of human beings. The method for affixing the hair pieces is the subject of Letters Patent No. 495,956, application for which was lodged on 20 April 1977 and accepted on 7 September 1978. As described by the learned trial Judge, the service involves "locating groups of strands of natural hair so as to extend through apertures in a hair piece, knotting adjacent groups of strands together, applying a bonding agent to the said knots and allowing this bonding agent to set in order to prevent the strands from unbinding, the bonding agent being capable, when set, of preventing the strands from unbinding when exposed to the normal activities of the wearer, including exposure to water and the effects of exercise. The bonding agent retains this capability until treated with a release agent to which it is susceptible." The process has to be repeated at regular intervals as the user's hair grows.

5. Substantial sums of money were expended on advertising this service under the title "HAIRFUSION" in the period leading up to the time of the application for registration of the trade mark. The retail value to the appellant of the service was also considerable.

6. The trial Judge in dismissing the appeal from the decision of the Senior Assistant Registrar, held that "HAIRFUSION": (1) was not an invented word; (2) did directly refer to the character or quality of the services in respect of which registration is sought; and (3) was not distinctive. We shall examine the correctness of each of these findings in turn.

An invented word

7. Section 24(1) of the Act makes an "invented word" registrable in Part A of the Register. The term "invented word" is not defined in the Act. Counsel for the appellant placed emphasis on the fact that "HAIRFUSION" was a coined word, and hence, he argued, an invented word. However the mere fact that a word is newly coined, i.e. that the particular array of letters has not previously been used to constitute a word, is not sufficient to establish its character as an invented word.

8. In Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited (the "Rohoe" Case) [1946] HCA 15; (1946) 72 CLR 175 there was unanimity on the appropriate principle to be applied, though division on its applicability to the word "Rohoe" there under consideration. In addition to its being newly coined Dixon J. said, at 181:

"The materials from which such a word has been
fashioned cannot be neglected and if it is
compounded of elements of which the source is
manifest and the intended meaning is transparent,
it becomes a question whether there is anything
more than a colourable attempt at reproducing some
of the sounds and all the sense of an expression
belonging to common speech."

9. Reference was made by five of the members of the bench to Lord Parker's dictum in the "Diabolo" Case, Philipart v William Whiteley Limited (1908) 2 Ch 274 at 279, that the new word "must be such as not to convey any meaning, or at any rate any obvious meaning, to ordinary Englishmen": see Latham C.J. at 179, Rich J. at 179, Dixon J. at 182-3, McTiernan J. at 185-6 and Williams J. at 187. Attention was also drawn to dicta in the speeches of Lords Herschell, Macnaghten and Shand in the "Solio" Case, The Eastman Photographic Materials Company Limited v The Comptroller-General of Patents, Designs, and Trade Marks (1898) AC 571. Lord Herschell said, at 581: "An invented word is allowed to be registered as a trade-mark, not as a reward of merit, but because its registration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases". His Lordship went on to say: "I do not think the combination of two English words is an invented word, even although the combination may not have been in use before ..." (see also Lord Shand, at 585, to the same effect). Lord Macnaghten, in agreeing, cautioned that, "I do not think that it is necessary that it (the word) should be wholly meaningless" (at 583). See also Kimberley-Clark Corporation v The Registrar of Trade Marks [1963] HCA 38; (1963) 109 CLR 526 per McTiernan J. at 527.

10. In order to qualify as an invented word under para. 24(1)(c) of the Act, a word must be both newly coined and (to adapt Lord Parker's dictum) convey no obvious meaning to ordinary Australians. The word "HAIRFUSION" fails the second limb of this test, being obviously composed of the elements "hair" and "fusion" and conveying the meaning of the fusion, mixing, integration or joining of hair.

Direct reference to the nature or quality of the services.

11. To be registrable under para. 24(1)(d) of the Act a word must not have direct reference to the character or quality of the services in respect of which registration is sought. The trial Judge approached this question by considering the evidence of dictionaries and witnesses on the meaning of the word "fusion" before concluding that the appellant's method of fixing hair pieces achieved "a degree of security and permanence which may be said to be analogous ... with that achieved by fusion strictly so called". In its strictest sense fusion involves a blending of elements, for example by melting or the application of heat.

12. Counsel for the appellant relied upon the reasoning of Dixon C.J. in the "Tub Happy" Case, Mark Foy's Limited v Davies Coop and Company Limited [1956] HCA 41; (1956) 95 CLR 190, at 194, to challenge the trial Judge's approach. In that case Dixon C.J. said:

"Once, however, the question is asked what do the
words mean and there is started a search for a
meaning, a process of analysis and of reasoning by
exclusion of alternatives is begun. No doubt such a
search may, without any sacrifice of logic, end in
construing the words as meaning that the garments
will emerge happily from the washtub. But if they
are so interpreted, the interpretation is chiefly
the consequence of failure to find another meaning.
I venture to think, however, that a man, or for
that matter a woman, hearing for the first time the
words used in combination and in connection with
cotton garments, would not so understand the words
at once. Certainly such a person would not so
understand them intuitively and without stopping to
reflect and ask himself or herself what meaning the
words could really possess."

13. These words were said to be equally applicable to the term "HAIRFUSION". It is important to bear in mind, however, observations by Dixon J. in the "Rohoe" Case, (above), where at 184 he said:

"But the meaning of all words is governed by their
context and how words are understood depends upon
the universe of discourse. Here the scope of the
use of the word is settled by the application for
registration, which is in respect of cultivating
implements."

14. In this case the "universe of discourse" is hair dressing and styling services. In reaching his conclusion as to the meaning of "HAIRFUSION" the trial Judge had regard to this context. He considered that the words clearly conveyed to the public "the suggestion that the connection between hair piece and hair is so secure and permanent that it is as if they were fused together".

15. As Dixon C.J. said in the "Tub Happy" Case, (above), at 195:

"The test must lie in the probability of ordinary
persons understanding the words, in their
application to the goods (or, in this case,
services), as describing or indicating or calling
to mind either their nature or some attribute they
possess."

Kitto J., though in dissent, applied a similar test at 207:

"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."

See also The Registrar of Trade Marks v Muller [1980] HCA 35; (1980) 144 C.L.R. 37 where the High Court (Stephen, Mason, Murphy, Aickin and Wilson JJ.) approved, at 40, the test posed by Dixon C.J. and Kitto J. in the "Tub Happy" Case. This was the test applied by the trial Judge.

16. Counsel for the appellant advanced a number of arguments intended to show that his Honour had been led into error in this case.

17. It was noted, first, that this was an application for a trade mark in respect of services, not goods. Counsel argued that whether or not "HAIRFUSION" described the result of the services, i.e. the hair piece affixed to the hair, it did not describe the process by which this was achieved. We think this point is misconceived. If the result of the service may be said to be described by "HAIRFUSION", then equally the service itself has the character or quality of "fusing" hair. Of course some terms apt to describe the product of a service may not be descriptive of the service itself, but that is not so in this case.

18. Secondly, counsel argued that the appellant's procedure did not literally result in a fusion, i.e. a melding or blending of the strands of hair into a single entity, but led rather to a "bonding" of the hair. Thus "fusion" did not accurately describe the process at all. However, we agree with the trial Judge that in everyday usage the word "fusion" often lacks this precise meaning and connotes rather the idea of permanence and security. It might also be borne in mind that if this argument were right, and the term did not describe the process, it would run the risk of being deceptive or misleading and thus of offending against consumer protection legislation.

19. Finally, it was contended that, while "HAIRFUSION" alluded to the characteristics of security and permanence in the service, it did not amount to a direct reference to them. The presence of the adjective "direct" in para. 24(1)(d) is explained in the "Tub Happy" Case (above) by Dixon C.J., at 195 as being intended:

"to check the tendency which had been disclosed by
certain decisions to find a sufficient reference to
the character or quality of goods in expressions
from which it could only be spelled out".

Williams J. gave a similar explanation at 199.

20. As Lord Macnaghten said in the Solio Case (above), at 583, a mark "may contain a covert and skilful allusion to the character or quality of the goods ... a meaning is wrapped up in them if you can only find it out."

21. It is a question of degree in every case whether a mark trespasses across the line between an indirect and a direct reference to character or quality, as the division of opinion in the Tub Happy Case illustrates. That case involved the term "happy" which the majority felt to be such a vague and emotive word, containing merely a "cloudy suggestion" of meaning rather than a "definite or actual" meaning, as to deprive "tub happy" of any direct reference. The same could not be said in this case of "HAIRFUSION". While "fusion" is far from precise, it is not so vague as to lack a definite meaning. In the result we agree with the trial Judge that "HAIRFUSION" has a direct reference to the character or quality of the services.

22. A short comment might be added regarding the ascertainment of the meaning of ordinary English words. Both sides in this case called witnesses with academic expertise in the English language on the question of the meaning of "fusion". Objection was taken in the notice of appeal to the description of one of the respondent's witnesses as an expert, although the point was not pressed before us. It should be remembered, as the trial Judge correctly observed: "It is for the Court in the light of the evidence to make up its own mind on the meaning of the word "hairfusion" in common usage." See Burger King Corporation v The Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 421-422 per Gibbs J.

Distinctiveness

23. Para. 24(1)(e) of the Act makes "any other distinctive mark" registrable. Sub-section 24(2) requires such distinctiveness to be shown by evidence. Sub-section 26(1) provides:

"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 persons is or may be
connected in the course of trade from goods or
services in respect of which no such connexion
subsists ..."

Sub-section 26(2) provides:

"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."

24. The trial Judge was not satisfied on the evidence before him that the appellant had discharged the onus placed on it by sub-s.24(2) to show that the mark was distinctive. Our attention was drawn to a passage in the judgment where it was said that, in view of the descriptiveness of the term "HAIRFUSION", his Honour could not be satisfied that the mark had become distinctive of the appellant. Reference was made by counsel for the appellant to In the Matter of an Application by J. & P. Coats Ltd (1936) 53 RPC 355, where Lord Wright M.R. emphasized, at 378-379, that the descriptiveness of a mark would not prevent it from becoming distinctive. We do not think the trial Judge would have disagreed; he was noting that a descriptive mark will normally take a longer period to become distinctive than a non-descriptive mark.

25. The question of distinctiveness is primarily one of fact for the trial Judge. We are not persuaded that his Honour erred in holding that "HAIRFUSION" had not become distinctive of the appellant's services before the application date.

26. In the result, we are of the opinion that the appeal should be dismissed with costs.