A decision that should give companies “paws” to reflect before attempting to trade mark an “everyday” image.
In a 2020 decision, an application by pet care company, Mars Incorporated (“Mars”) to register the image of a reclining cat in respect of their cat food and litter products was rejected by delegate of the Registrar.
The trade mark in question (left) “is a photographic depiction of Russian Blue breed of cat. The cat is lying on its left-hand side with only its front legs visible and front paws crossed. The cat’s head is slightly raised so that the cat, whose eyes are central and prominent in the image, looks straight ahead at the viewer.”
In response to the initial application, the delegate rejected the claim under Section 41(4) of the Trade Marks Act, finding that the “trade mark is not prima facie capable of distinguishing the goods claimed in Class 31. This is because images of cats are commonly used in connection with pet food and animal litter, particularly those goods intended for cats.”
Consequently, the delegate held that consumers were not likely to associate the trade mark with the particular trade source, and that the mark was therefore not capable of distinguishing the goods in question from those of other traders.
Following the submission of a response from Mars, a second examination was issued. This examination maintained the initial ground for rejection. Mars made no further response, instead exercising its right to be heard at the Registrar of Trade Marks.
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The delegate affirmed the presumption of registrability, noted that the application should be accepted “unless the Registrar is satisfied that grounds exist for rejecting the application”, and laid out the grounds in Section 41 of the Trade Marks Act under which an application could be rejected.
Section 41 of the Act provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
- the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
- the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
- the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
- the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
- the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
- the use, or intended use, of the trade mark by the applicant;
- any other circumstances.
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Inherent adaptation to distinguish
The delegate affirmed that in order to determine whether there was a ground for rejection under Section 41, the key assessment is the extent of the trade mark’s inherent adaptation to distinguish the applicant’s goods from the goods of other traders.
he went on to cite Kitto J in Clark Equipment Co v Registrar of Trade Marks , who stated that inherent adaptation to distinguish was to be assessed:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
The delegate also outlined the two-step test for distinctiveness laid out in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd . In this case the court stated that “The first step requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the services to which the proposed trade mark is to be applied. The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar services.”
Mars contended that its reclining cat trade mark was in fact inherently adapted, because it was “sufficiently stylised or otherwise distinctive”, in accordance with judgments in several cases including Boccaccio Pty td v Hardy Wine Company Ltd .
Mars also contended that there were significant variations of cat images available to other traders not only because of the 71 breeds listed as in existence by the International Cat Association, but also “the vast number of domestic short or long haired cat types which are not breeds”, as well as the huge array of possible cat poses that other traders might depict.
However, the delegate was not persuaded, noting that “the number of variations of cats used in the trade does not mitigate the ordinary signification conveyed by a photographic image of a cat in respect of the Goods being that the goods are for cats.”
Further, upon undertaking internet searches, the delegate found a range of depictions of cats used by other traders (including cats of the same or a similar breed to the applicant’s Russian Blue), pictured in the same pose as the cat in the applicant’s image.
Images of similar cat images from the delegates internet searches.
The delegate thus found that, “It follows that the depiction of a Russian Blue breed of cat in a pose lying down with front paws crossed, the subject of the Trade Mark, or any grey cat in a similar pose that might be deceptively similar, applied to the cat foodstuffs and litter is, in my opinion, a depiction that another trader in the same class of goods might legitimately desire to use. Consequently, I find that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Goods and as such falls within the category set out under s 41(4) of the Act.”
Marks that are considered to have some degree of inherent adaption (but which are insufficiently distinguishable) are considered to lack the necessary features to fall within the scope of distinctiveness. That is, they are not sufficiently capable of being recognised due to lack of distinctive character. In many cases, the Registrar will make such an evaluation depending on where the mark falls within the “distinctiveness spectrum”. At one end the question is whether the mark is borderline distinctive, at the other, the question is whether it significantly lacks distinctive character.
Evidence of acquired distinctiveness
While the applicant was unable to establish inherent adaptation to distinguish the goods in question, Mars went on to argue that the trade mark had acquired distinctiveness.
In support of this contention, Mars submitted information and evidence on the development of the trade mark. Throughout 2015 and 2016, the company had undergone a significant “brand refresh”. As part of this process, Mars commissioned a specialist design and marketing agency to develop the cat design. The agency identified the particular breed, and nominated the precise “hero” pose (lying down with front paws crossed), “because it would resonate emotionally and be quite distinctive and therefore memorable.”
Mars also claimed that the trade mark had been in use consistently in product graphics and in communications for the products in question since 2015.
However, in the absence of evidence of such use (or of intended use), the delegate ultimately found that the information regarding the development of the trade mark was insufficient to establish the trade made had acquired distinctiveness. For this reason, the trade mark was again rejected. Had evidence been submitted which sufficiently demonstrated consistent, the outcome may have been different.
Just as with common usage terms, this case is a reminder that when it comes to depictions of common items, you might have to fight like cat and dog to achieve protection.
Just as with common usage terms, this case is a reminder that when it comes to depictions of common items, the courts can oftentimes be “scaredy cats” when it comes to granting IP protection.
Just as with common usage terms, this case is a reminder that when it comes to depictions of common items, without clear evidence of acquired distinctiveness, you may not be the cat that got the canary.
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