Samuel Taylor Pty Ltd v Registrar of Trade Marks [1959] HCA 69; (1959) 102 CLR 650 (17 December 1959)

HIGH COURT OF AUSTRALIA

SAMUEL TAYLOR PTY. LTD. v. THE REGISTRAR OF TRADE MARKS [1959] HCA 69; (1959) 102 CLR 650

Trade Mark

High Court of Australia
McTiernan(1), Taylor(1) and Windeyer(1) JJ.

CATCHWORDS

Trade Mark - Registration - Conditional on disclaimer - Words "Pressure Pak" - No right to exclusive use - Descriptive - Non-distinctive - Discretion of Registrar and of Court - Trade Marks Act 1905-1948, ss. 16, 24, 35, 47, 53A.

HEARING

Sydney, 1959, November 17, 18, 19, 20; December 17. 17:12:1959
APPEAL from the Deputy Registrar of Trade Marks.

DECISION

December 17.
THE COURT delivered the following written judgment:-
McTIERNAN, TAYLOR AND WINDEYER JJ. This is an appeal from the refusal of the Trade Marks Act 1905-1948 for the registration of a trade mark in class 2 in respect of "insecticides". The mark in respect of which registration was sought consists of the word "Mortein" in bold lettering above the words, in smaller letters, "Pressure Pak" all of which are superimposed upon a series of lines and a geometrical figure of no particular significance. The application was lodged on or about 28th August 1953 and it was refused, ultimately, on 2nd September 1958. In the meantime, on 7th July 1955, it had been the subject of a report by an examiner who, inter alia, reported that "The applicant should disclaim any right to the exclusive use of the words 'Pressure Pack'" (sic.). A number of extensions of time were granted in order to afford an opportunity to the appellant of dealing with this requisition but after further representations had been made the Deputy Registrar, on 31st July 1958, published an interim decision. In the course of his reasons he discussed the merits of the application and then announced that he would refuse the application unless the appellant should, within twenty-one days from the lastmentioned date, apply to endorse the application with a disclaimer reading "Registration of this trade mark shall give no right to the exclusive use of the words 'Pressure Pak'". Thereafter the appellant intimated that it was not prepared to have its application so endorsed and, as already appears, it was rejected on 2nd September 1958. (at p655)

2. It should be mentioned that the appellant is the proprietor of the registered trade mark "Mortein" and it has for many years used this mark in relation to its insecticide. In these circumstances, there is no suggestion that the mark of which registration is sought is not, in its entirety, distinctive of the appellant's goods and it has been made clear to us that the Deputy Registrar is still prepared to accept the application if the appellant agrees to an endorsement in the terms specified. On the other hand, the appellant, though it has resisted the imposition of such a condition, has indicated that it will agree to the condition if we should hold that it is not entitled to unconditional registration. The problem, therefore, for our consideration is whether s. 24 of the Act has any application in the circumstances of the case and, if so, whether the discretion given by that section to require a disclaimer was properly exercised. (at p655)

3. This problem cannot be resolved without giving some attention to the form in which, at the time of the application, it was proposed that the appellant's insecticide should be marketed. Until 1953 the appellant marketed its "Mortein" in bottles or metal containers from which it could be decanted for use in a fine spray. But in 1950 it became interested in a method, then comparatively new, of dispensing insecticides and other liquid products as aerosols. This method of dispensing, it is said, had been invented and patented by the Department of Agriculture of the United States of America and in the year lastmentioned the appellant despatched its managing director to the United States in order to examine this comparatively new development. The word "aerosol", it seems, properly means a suspension of solid or liquid particles in air or gas. But it has come into commercial use to describe a substance packed in a container from which it can be ejected in the form of an aerosol. That being so aerosol insecticides are said to consist of a concentrated liquid insecticide in solution in a liquefied gas in a container fitted with a spraying device. The spraying device consists of a valve at or towards the top of the container which is capable of being opened and closed at will and of a stand-pipe which leads therefrom towards the bottom of the container. In preparing the insecticide for marketing purposes in such containers alternative methods of filling may be employed. They may be filled by means of "pressurized equipment" or the concentrated insecticide and a propellant gas in a liquefied state may be poured into the container at a temperature well below freezing point. In the latter case the valve or spraying device complete with the stand-pipe is placed in position in the opening in the top of the container after it has been substantially filled and then the container is sealed. The liquefied gas within the container has the characteristic of vaporizing at normal atmospheric temperatures and, accordingly, under normal conditions some part of the liquefied gas will vaporize and fill the head space above the liquid with gas thereby creating pressure within the container. When the valve is opened the pressure of the gas causes the solution to rise up the stand-pipe and then to move through a metering orifice into an expansion chamber and thence through the valve to the atmosphere. As the solution leaves the spraying device at normal atmospheric pressure and temperature such liquefied gas as is present in the solution ejected instantly expands from a liquid into a gas and is said to blast the active ingredients in the insecticide into minute particules. More shortly "aerosol packaging" is described in the matter before us in the following way: "Aerosol packaging is based on the use of propellant gases for automatic dispensing of the product in the container. Therefore, the product in an aerosol container is not pure, but is mixed with refrigerated liquefied gases. One part of the propellant remains liquid and mixes with the product to be dispensed; the other part is in gaseous form and fills the head space of the container. It is this gas which starts the propelling action of the liquid as soon as the valve located on the top of the container is opened. After the gas has been released with a part of the product, the propellant in liquid form instantly becomes a gas and continues the atomizing action as long as the valve remains open". (at p656)

4. The appellant actually commenced to market its insecticide for use as an aerosol in September 1953. In preparing its product for the market it has used the cold filling method which, it seems, was well-known at the date of the application among manufacturers of like products and other liquids which might suitably be dispensed in the form of aerosols. (at p657)

5. From what has been said it is apparent that, although at the time when the appellant sought registration of the mark in question it had used the mark "Mortein" extensively, it had never used the expression "Pressure Pak" in relation to any of its products. But the evidence shows that after making the application it commenced to use that expression in association with the word "Mortein" and later, in 1955, in association with "Deodorizer", "Air-O- Zone", "Gossamer Hair Spray" and others of its products. In effect, it is claimed that "Pressure Pak" has been so extensively and exclusively used and publicized in relation to the appellant's goods that it has since the date of the application come to denote its goods and no other. Whether this is so or not is, however, not a matter with which we need concern ourselves for if the application is to succeed it must appear that the appellant had a right to registration at the time when the application was made. We should add that it was not suggested upon the appeal that, if as the result of such user "Pressure Pak" has now acquired a secondary meaning distinctive of the appellant's goods, this circumstance alone entitles the appellant to unconditional registration though some such suggestion does appear to have been made to the Registrar. But it was contended that we should examine the nature and legal consequences of the user for the purpose of determining whether at the date when the application was made the expression "Pressure Pak" was, within the meaning of s. 16(2) of the Act, "adapted to distinguish" the appellant's goods. There may, of course, be something to be said for the proposition that proof that a particular expression has assumed a secondary and distinctive meaning affords some indication that, initially; the expression had a capacity to become distinctive. But when it is seen that during the protracted pendency of the application "Pressure Pak" was not used alone in relation to the appellant's goods but only as part of a combination of words such as "Mortein Pressure Pak" it is difficult to see how the critical words could have acquired a distinctiveness of their own. Particularly is this so when it is remembered that these combinations of words were used in the course of the appellant's trade during a period when it was known that there was pending an application for registration of a trade mark which included the words in question. Nor should it be forgotten that when it becomes necessary to determine whether a particular expression is distinctive of, or, adapted to distinguish, a trader's goods the enquiry is essentially concerned with the inherent capacity or adaptability of the expression to distinguish or to become distinctive so that evidence of user such as was adduced in this case can be of little help if the expression itself is truly descriptive: see Yorkshire Copper Works Ltd's Application for a Trade Mark (1953) 71 RPC 150 and Eclipse Sleep Products Inc. v. The Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300, at pp 310, 313, 322 . (at p658)

6. It is, of course, not disputed that the words "Pressure Pak" are within par. (a) of s. 24(1) and it is asserted against the appellant that they are also within par. (b) of that sub-section as being of "a non-distinctive character". But in either case the material question is whether we ought to hold that they are words "to the exclusive use of which" the appellant was not, at the relevant time, entitled, and in pursuing this inquiry it is of first rate importance to consider how far, if at all, the words are words of description. To this problem the appellant makes alternative approaches. First of all it says that "Pressure Pak" is in no way descriptive of the goods in relation to which registration of the mark in question was sought, i.e., insecticides. Alternatively, it asserts that if the fact that "Pressure Pak" is in a sense descriptive of its goods in the form in which they are sold to the public militates against its application, yet, nevertheless, we should hold that that expression was, within the meaning of s. 16(2) adapted to distinguish its goods and that it was, therefore, registrable. (at p658)

7. We think that the first of these contentions pays no attention to the fact that at the time when the appellant's application was made aerosol packaging was known and used to provide an integer constituted by the receptacle and its contents together. Together they constitute the "pack" or "Pak". The container was not merely a receptacle in which the goods might be kept until a more convenient or more adaptable instrument for their use could be found. "To the aerosol packager, the pressurized container is more than just a package that is rapidly ascending the scale of consumer popularity; it is actually a new horizon, a new dimension in packaging and merchandizing" (Modern Packaging Encyclopedia Issue for 1957). It is a "pressurized push-button dispensing container". Other descriptions of this form of packing, some with similar extravagences of phraseology and commercial jargon, appear in the material before us. It is unnecessary to repeat them all here. One which was published before the appellant's application uses the term "pressure package" many times and the term "pressure-packs" once in connexion with a "mothproofing spray" (Modern Packaging, January 1953, p. 90). And another article in the same journal in May 1954, p. 117 states that "Pushbutton containers have carried a large volume of chemical products into the main stream of self service - both in chain and independents' outlets" (meaning shops). "Certainly insecticide aerosols and other pressure-packaged products are increasingly well represented in food drug and variety outlets". The important thing for present purposes is, of course, that it is apparent that the container is useless without its appropriate contents. Without them it is not a "pressurized container" or a "pressurized push-button dispenser" or indeed a "Pressure Pak"; nothing is gained by mis-spelling the word "pack". That being so it is, we think, apparent that the critical words are immediately and directly descriptive of insecticides, or indeed other liquids, when sold in such a form and the only distinctive character which they have so far as the appellant's goods are concerned lies in the fact that they distinguish its insecticide when prepared for use in an aerosol container from its insecticide when sold in the older forms of containers. In our opinion, the words "Pressure Pak" denote that the insecticide is contained in the receptacle under pressure and quite clearly proclaims that it will be ejected when the valve provided is opened. To us this is a direct and immediate reference to some character or quality of the contents of the container including the insecticide and, accordingly, to "the goods" within the meaning of s. 16(1)(d) (cf. In the Matter of Chappie Ltd.'s Application for a Trade Mark (1957) RPC 455 . (at p659)

8. The immediately foregoing observations are also, we think, fatal to the appellant's second contention. In examining that contention we are immediately taken back to the provisions of s. 16(1)(d) and required to consider whether the goods contain "no direct reference to the character or quality of the goods", or whether they might otherwise under par. (e) of that sub-section achieve registration as another "distinctive mark". On this point we were pressed with an observation of Lloyd-Jacob J. in Colgate Palmolive Co.'s Application for the Registration of a Trade Mark (1957) RPC 25 where his Lordship observed that "The question whether a word is or is not capable of becoming distinctive . . . is a question of fact and is not determined by its being or not being descriptive" (1957) RPC, at p 30 . (at p659)

9. But as Viscount Simonds said in Yorkshire Copper Works Ltd.'s Application for a Trade Mark (1953) 71 RPC 150 : "the more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them" (1953) 71 RPC, at p 154 and the same view was taken by this Court in Eclipse Sleep Products Inc. v. Registrar of Trade Marks (1957) 99 CLR, at pp 310, 313, 322 . In our view the words "Pressure Pak" have not only a direct reference to some character or quality of the goods but constitute, exclusively, a description of the attributes we have mentioned. That being so we find ourselves unable to see how the words could qualify as registrable pursuant to either par. (d) or par. (e) of s. 16(1). (at p660)

10. The remaining question is whether, in these circumstances, the Deputy Registrar should have required the appellant, as a condition of registration, to disclaim any exclusive right to the use of these words. Mr. Wallace stressed that the power under s. 24 is discretionary and asserted that the discretion should not have been exercised adversely to his client unless it appeared that unconditional registration would have resulted in injustice to other manufacturers. But the arguments advanced on this branch of the case were, in substance, the same as those which were rejected by this Court in Eclipse Sleep Products Inc. v. The Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300 . The principles upon which the discretion given by s. 24 is exercisable were fully discussed in that case and it is unnecessary for us to add anything to what was then said. It is sufficient for us to say that the application to this case of the principles then enunciated makes it only too clear that no grounds appear upon which it would be proper for us to interfere with the decision of the Deputy Registrar. Accordingly we must affirm his refusal to accept the application unless the appellant agrees to endorse upon its application a disclaimer in the terms already specified. (at p660)

ORDER

Affirm the refusal of the Deputy Registrar to accept Application No. 115,325, dated the 28th August 1953, unless the applicant Samuel Taylor Pty. Ltd. agrees to endorse thereon the following disclaimer "Registration of this trade mark shall give the applicant no right to the exclusive use of the words 'Pressure Pak'". Direct the Deputy Registrar to accept the application provided this condition is fulfilled. Appellant to pay the costs of the Registrar of this appeal.