Kimberley-Clark Corporation v Registrar of Trade Marks [1963] HCA 38; (1963) 109 CLR 526 (3 October 1963)

HIGH COURT OF AUSTRALIA

KIMBERLEY-CLARK CORPORATION v. REGISTRAR OF TRADE MARKS [1963] HCA 38; (1963) 109 CLR 526

Trade Mark

High Court of Australia
McTiernan J.(1)

CATCHWORDS

Trade Mark - Registration - "POP-UP" - Distinctiveness - Capable of becoming distinctive - Reference to character of goods - Trade Marks Act 1955-1958 (Cth), ss. 25 (1), 26 (1) (2).

HEARING

Sydney, 1962, September 5; 1963 September 18; October 3. 3:10:1963
APPEAL under s. 46 of the Trade Marks Act 1955-1958 (Cth).

DECISION

1963, October 3.
McTIERNAN J. delivered the following written judgment:-
This is an appeal from the refusal of the Assistant Registrar of Trade Marks of a trade mark of which it claims to be proprietor. The representation of the trade mark in the application is a printed compound word "POP-UP". It is an application to register it as a trade mark in Part B of the Register of Trade Marks in respect of absorbent paper tissue. The appellant uses and intends to use this word as a trade mark on cartons containing absorbent tissue paper in which such goods are distributed in the course of trade. Samples of such cartons are in evidence. The word "POP-UP" is printed on the outside of the cartons. The setting in which the word is used indicates to the reader that the word relates to the mode of dispensing or distributing the portions of paper tissue enclosed by the carton. An inscription on one of the cartons is "Pop-up Tissues". If the portion of tissue paper on top of the package in each package is pulled out, the next portion under it comes up suddenly and is ready to be withdrawn. The pieces of tissue in the package pop up suddenly. The Examiner under the Trade Marks Act 1955- 1958 who reported upon the application stated that the method of packaging absorbent papers used by the appellant to enable them to pop up in turn is used by other manufacturers. The Examiner's statement is adopted by the Assistant Registrar in his decision and it was not the subject of challenge before me. In order to be registrable in Part B a trade mark requires to be distinctive of the applicant's goods in respect of which registration is sought or, if not distinctive of them, the trade mark must be capable of becoming distinctive of them. There is nothing before me which could support the appellant's claim that the word "POP-UP" is distinctive of the appellant's absorbent paper tissue, in other words, that it conveys that the absorbent paper packaged in any of the cartons of the type before me is the appellant's absorbent paper tissue. It seems to me that the word on the cartons distinctive of the appellant's paper tissue is "Kleenex". Mr. Bannon for the appellant fell back on the proposition that the compound word was capable of becoming distinctive of the appellant's absorbent paper tissue. The Assistant Registrar also rejected the proposition that the word "POP-UP" was of itself capable of becoming distinctive of the appellant's paper tissue. Exercising my own mind on this question I cannot accept this proposition of the appellant. There is nothing before me to support such a sanguine idea in relation to the word "POP-UP" that it is capable of becoming distinctive within the meaning of the Act of absorbent tissue paper with which the appellant is connected in the course of trade. The trade mark of which registration is sought is not, of course an invented word. It consists of two words which are in the dictionary and is a grammatical combination of them. Used together they mean to appear or come suddenly. The trade mark is essentially descriptive of absorbent paper tissue packaged in the manner exemplified by the exhibits in Court. Folded and packaged in that manner the pieces of tissue paper pop up in the process of being dispensed. No contention was made before me that the appellant uses or intends to use the trade mark in connexion with absorbent paper tissue which is not so arranged that it pops up. If used in connexion with such goods the trade mark would be obviously misleading. In my opinion the registration of the trade mark, "POP-UP", in connexion with the contents of a package of absorbent paper tissue in which the goods are so folded that they pop up individually in the course of being dispensed is precluded by ss. 25(1) and 26(1) and (2) of the Act. I think that the trade mark is not merely allusory but has a direct reference to an important characteristic of the goods. The closest analogy in the cases cited in argument is, in my view, In the Matter of an Application by Colgate & Co. for the Registration of a Trade Mark (1913) 30 RPC 262 . The ratio of that decision is adverse to the present application. In the re-argument of the appeal Mr. Bannon relied strongly on In re an Application by Dunlop Rubber Co. Ltd. (1942) 59 RPC 134 . I am unable to agree that there is anything in that decision which should lead me to the conclusion that the Assistant Registrar was wrong in refusing to accept the application for registration in the present case. In my opinion the appeal should be dismissed and it is proper to order that the costs of the respondent of the appeal be paid by the appellant. (at p528)

ORDER

Appeal dismissed with costs.