FEDERAL COURT OF AUSTRALIA

Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756

ON APPEAL FROM THE REGISTRAR OF TRADE MARKS

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The decision of the delegate of the Registrar of Trade Marks dated 21 March 2014 be affirmed.

3.    Trade Mark Application No 1504875 not proceed to acceptance unless it is amended by deleting the specification of goods in Class 31.

4.    The appellant make any request in writing to the Registrar of Trade Marks for an amendment in accordance with Order 3 by 4.00 pm on 7 August 2015.

5.    The appellant pay the respondent’s costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ON APPEAL FROM THE REGISTRAR OF TRADE MARKS

REASONS FOR JUDGMENT

1    This is an appeal from a decision of a delegate of the Registrar of Trade Marks given on 21 March 2014 by which trade mark application no. 1504875 (the application) was rejected under s 33(3) of the Trade Marks Act 1995 (Cth) (the Act or, when required for clarity, the Trade Marks Act).

2    The application, which was filed on 26 July 2012 (the filing date), is for the sign SIR WALTER in respect of goods and services in a number of classes, including Class 31. I will use the block letters notation to refer to the sign for which registration is sought.

3    In the course of examination, a number of grounds for rejecting the application were raised. All grounds but one were resolved. The unresolved ground related to goods in Class 31 specified as "Turf grass” and the application of s 41 of the Act. The examiner considered that SIR WALTER was not inherently adapted to distinguish these goods from the goods of other persons, with the consequence that, to this extent, the application fell to be considered under s 41(6) of the Act. So considered, the examiner was not satisfied by the submissions and evidence of use provided by the appellant that, before the filing date, the mark distinguished these goods as being those of the appellant. The examiner, therefore, maintained this ground for rejecting the application.

4    The appellant was heard on this question: see s 33(4). However, following the hearing, a delegate of the Registrar (the delegate and the Registrar, respectively) was not satisfied that the remaining ground of rejection raised by the examiner had been overcome. As the appellant was not prepared to amend its application by deleting Class 31 from its specification, the delegate rejected the application in its entirety.

5    It is to be noted that, during the course of examination, the appellant indicated its preparedness to amend the description of the Class 31 goods to read:

Buffalo grass of the ‘Sir Walter’ variety (as lodged with the Registrar of Plant Breeder’s Rights (ref: certificate no. 1028), being part of the genus Stenotaphrum and a member of the species Secundatum.

6    When hearing the appellant, the delegate proceeded on the basis that the goods in Class 31 for which registration was sought were those covered by the amended description.

7    The sole question on this appeal is whether the appellant’s application to register the sign SIR WALTER as a trade mark in respect of the Class 31 goods, as taken to have been amended (the designated goods), should be rejected having regard to s 41(3), s 41(5) and s 41(6) of the Act, considered separately.

THE DESIGNATED GOODS: the plant breeder’s right

8    The appellant was incorporated in 1992 and became the successor of a business, originally commenced in 1978, that was concerned with growing and supplying turf for residential and commercial purposes on a wholesale and retail basis. Since 2003, the appellant has also supplied and sold, directly and through authorised retailers, lawn-related products, including fertilisers and pest control products.

9    In 1995, the appellant developed a new variety of buffalo grass. This development was largely undertaken by one of its directors, Brent Redman. The other director is Mr Redman’s wife. They are also the appellant’s only shareholders.

10    Sir Walter is a plant variety of the secundatum species in the Stenotaphrum genus. It is a variety of soft leaf buffalo grass. It is not a plant species that is different from other buffalo grass. Mr Redman gave evidence that he chose the name Sir Walter for the grass. He said that Sir Walter is fairly described as a premium lawn turf.

11    On 30 September 1996, the applicant applied under the Plant Breeder’s Rights Act 1994 (Cth) (the PBR Act) for a plant breeder’s right (PBR) in respect of Sir Walter grass. On 1 November 1996, provisional protection was granted. On 27 March 1998, a PBR was granted. The PBR is for a fixed term (s 22(2)(b) of the PBR Act) that expires on 27 March 2018. The term is not renewable.

12    For the purposes of the PBR Act, a plant variety is defined as:

… a plant grouping (including a hybrid):

(a)     that is contained within a single botanical taxon of the lowest known rank; and

(b)     that can be defined by the expression of the characteristics resulting from the genotype of each individual within that plant grouping; and

(c)     that can be distinguished from any other plant grouping by the expression of at least one of those characteristics; and

(d)     that can be considered as a functional unit because of its suitability for being propagated unchanged.

Note:     Plant groupings for the purposes of this definition include genetically modified plant groupings. See section 6.

13    Under s 11 of the PBR Act, a PBR in a plant variety, such as Sir Walter, is the exclusive right to do, or to license another person to do, the following acts in relation to propagating material of the variety:

    produce or reproduce the material;

    condition the material for the purpose of propagation;

    offer the material for sale;

    sell the material;

    import the material;

    export the material; and

    stock the material for the above purposes.

14    The PBR Act defines “propagating material” in relation to a plant of a particular plant variety as:

… any part or product from which, whether alone or in combination with other parts or products of that plant, another plant with the same essential characteristics can be produced.

15    The PBR Act qualifies a PBR in a number of ways: see, for example, s 16, 17, 18, 19 and 23. It is not necessary, for the purpose of these reasons, to describe these qualifications.

16    The name of the plant variety must be set out in the application for the PBR: s 26(2)(f). This name must comply with the stipulations of s 27 of the PBR Act. In this connection, a name must be a word or words, whether invented or not. The name can include a figure or figures, and a letter or letters that do not constitute a word: s 27(4). The name must also comply with the International Code of Botanical Nomenclature and subsidiary codes: s 27(6). Once a PBR is granted, the name of the variety must be entered on the Register of Plant Varieties kept under s 61 of the PBR Act: s 46(1)(b). Here, the name that has been entered is its given name, Sir Walter. It is the official name of the variety. The Sir Walter variety has no other name.

17    There are various prohibitions in the PBR Act in respect of name selection. These are set out in s 27(5) and s 27(7) of the PBR Act.

18    Section 27(5) enacts a particular prohibition. It provides, relevantly:

A name … in respect of a plant variety must not:

…

(e)    be or include a trade mark that is registered, or whose registration is being sought, under the Trade Marks Act 1995 , in respect of live plants, plant cells and plant tissues.

19    This provision appears to recognise that, while the rights associated with a registered trade mark are potentially of indefinite duration, a PBR is a qualified right having a fixed term. It appears to give voice to a policy that, in relation to propagating material of a particular plant variety, activities falling outside a PBR, or activities carried on after the term of a PBR has expired, involving use of the plant variety name should not be impeded by the monopoly rights granted under the Trade Marks Act with respect to trade marks. That said, there is nothing in the Trade Marks Act itself which provides that the name of plant variety for which a PBR exists cannot be registered as a trade mark. Registrability under the Trade Marks Act is to be determined by its provisions directed to that question.

The designated goods: Sales

20    Mr Redman gave evidence that the appellant has used SIR WALTER in relation to its trade in Sir Walter grass since 1996. He also said that, since November 1996, the gross income received by the appellant from its direct wholesale and retail sales of Sir Walter grass exceeds $16 million. I infer that these sales commenced after provisional protection for Sir Walter grass was granted under the PBR Act.

21    Mr Redman said that the appellant grows and cultivates extensive quantities of Sir Walter grass at its turf supply and landscaping facility at Bolwarra in New South Wales. The appellant does not supply seeds of this grass, only planting stock in the form of vegetative material to its licensed growers, and rolls of Sir Walter turf to wholesale and retail customers in all Australian states and territories.

22    As at the filing date, the appellant had 68 authorised licensees (also referred to as licensed growers) throughout Australia. These relationships are governed by written agreements. The planting stock is propagated by the licensees and sold by them pursuant to the terms of the written agreements.

23    The appellant also has reseller arrangements with selected retailers, wholesalers and landscapers. These arrangements are also governed by written agreements, which authorise the reseller to use certain intellectual property belonging to the appellant and to promote and market Sir Walter grass “to bona fide end consumers”, and growers and other resellers licensed by the appellant.

RELEVANT PRINCIPLES

24    The present appeal concerns the application of s 41 of the Act in the form it took before the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth). In that form, s 41 of the Act provided:

41 Trade mark not distinguishing applicant’s goods or services

(1)    For the purpose 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.

Note 1:    For applicant and predecessor in title see section 6.

Note 2:    If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2)    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 (designated goods or services) from the goods or services of other persons.

Note:    For goods of a person and services of a person see section 6.

(3)    In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)    Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)    If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)    the Registrar is to consider whether, because of the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)    any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)    if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)    if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:    For goods of a person and services of a person see section 6.

Note 2:    Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)    If the Registrar finds that 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, the following provisions apply:

(a)    if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)    in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:    Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:    Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

25    The appellant’s case is that SIR WALTER is, to some extent, inherently adapted to distinguish the designated goods, and thus registrable as a trade mark for this reason alone. Alternatively, the appellant says that SIR WALTER is registrable under s 41(5) or s 41(6).

26    Sections 41(5) and 41(6) of the Act are directed to different scenarios according to which a decision is to be made as to whether a trade mark is capable of distinguishing the trade mark applicant’s goods or services. If the trade mark is not so capable, the application for registration must be rejected: s 41(2).

27    Section 41(5) proceeds on the basis that the trade mark is to some extent inherently adapted to distinguish the goods or services of the trade mark applicant, but the Registrar is unable to decide, on that basis alone, whether the trade mark is, in fact, capable of distinguishing those goods or services in that way. Thus, attention is directed also to the use, or intended use, of the trade mark by the trade mark applicant and “any other circumstances”. It is the combined effect of these considerations which must then be considered in order to come to a view as to whether the mark does or will, as a matter of fact, distinguish the trade mark applicant’s goods or services from those of other persons. If the combined effect is that the trade mark does or will distinguish the trade mark applicant’s goods or services, the trade mark is taken to be capable of distinguishing those goods or services from the goods or services of other persons.

28    In Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511, I summarised (at [11]) the notion of inherent adaptation in the following way:

[11]    What does it mean to say that a trade mark is inherently adapted to distinguish the goods or services of one person from the goods or services of another? The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade.

29    In Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, Kitto J said (at 513-514):

The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd.; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by 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.

(Citations omitted.)

30    In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 315 ALR 4, the majority in the High Court traced the history of “distinctiveness” and “inherent adaptation” as notions employed in trade mark legislation in Australia and the United Kingdom. Their Honours said (at [44]):

[44]    The requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business … and from the wider point of view of the public … has been applied to words proposed as trade marks for at least a century, irrespective of whether the words are English or foreign. The requirement has been adopted in numerous decisions of this court dealing with words as trade marks under the 1905 Act and the 1955 Act. Those decisions show that assessing the distinctiveness of a word commonly calls for an inquiry into the word’s ordinary signification and whether or not it has acquired a secondary meaning.

    (Citations omitted.)

31    In Apple, I referred (at [16]) to the fact that the descriptive capacity of words and their capability to distinguish the goods or services of one person from those of others will vary, depending on occasion and circumstance. One important circumstance in the present case is the fact that Sir Walter is the name of the very grass variety for which registration of SIR WALTER is sought in Class 31.

32    In Apple, I also emphasised (at [18]) that the registrability of a mark must be assessed by reference to the nature of the mark itself. The sign here is simply SIR WALTER. Should the application proceed to registration, the appellant will be entitled to a monopoly in the use of those words as a trade mark, in whatever form those words might be rendered in respect of the designated goods. To adapt what I said in Apple to the present case: in that form of the mark, the monopoly conferred by registration would extend to the name Sir Walter rendered in either a stylised or plain form, with or without capitalisation or partial capitalisation and whether or not, in that rendering, device elements are used.

33    Section 41(6) proceeds on the basis that the trade mark is not to any extent inherently adapted to distinguish the goods or services in respect of which registration is sought. Attention is then directed to the extent of the trade mark applicant’s use of the trade mark before the filing date of the application. If the trade mark applicant establishes that, by that use, the trade mark does, as a matter of fact, distinguish the goods or services as being those of the trade mark applicant, the trade mark is, once again, taken to be capable of distinguishing those goods or services from the goods or services of other persons.

34    Mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. In British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, Jacob J observed (at 302):

I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd. in the Privy Council and the United Kingdom case The Shredded Wheat Co. Ltd. v. Kellogg Co. of Great Britain Ltd. in the House of Lords. In the former case Lord Russell said.

“A word or words to be really distinctive of a person’s goods must generally speaking be incapable of application to the goods of anyone else.”

It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.

(Citations omitted.)

35    Further, factual distinctiveness is not established by showing no more than that members of the trade and the public recognise an association between the sign and the trade mark applicant: Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97 at [117]; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 at [95]; Apple Inc v Registrar of Trade Marks (2014) 109 IPR 187 at [224]-[231]; Unilever plc’s Trade Mark Applications [2003] RPC 35 at [32]-[33].

36    There are two further matters to be noted.

37    First, s 41(5) and s 41(6) are alternatives in the sense that, if the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the goods or services for which registration is sought from the goods or services of other persons, the inquiry to be conducted is that prescribed by s 41(5). The occasion for conducting an inquiry under s 41(6) does not arise. On the other hand, if the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish, the inquiry to be conducted is that prescribed by s 41(6). The occasion for conducting an inquiry under s 41(5) does not arise. Much depends therefore on the initial finding concerning the extent, if any, to which the trade mark is inherently adapted to distinguish in the relevant sense.

38    Secondly, the factual inquiry under each scenario differs as to the period under investigation. Section 41(6) is concerned only with the applicant’s use in the period up to the filing date of the application for registration. The inquiry is not forward-looking. Section 41(5), on the other hand, looks at the state of affairs as at the filing date and, to the extent necessary, contemplates what the future position will be if that is not already evident.

39    This point is of particular importance in the present case when considering the evidence. The evidence includes the appellant’s promotional activities both before and after the filing date. Only the evidence of those activities before the filing date is relevant to an inquiry conducted under s 41(6).

THE DELEGATE’S DECISION

40    The delegate reasoned that, given that Sir Walter is the name of a particular variety of buffalo grass, and given that the appellant’s application for registration in Class 31 is for that grass, SIR WALTER entirely lacks inherent adaptation to distinguish those goods from the goods of other traders. Thus, s 41(5) is unavailable to the appellant and the application falls for consideration under s 41(6).

41    The delegate considered the special circumstance that, because of the appellant’s PBR registration, other traders at that time were not able to trade in Sir Walter grass. He noted, however, that they would be able to do so once the registration expires. The delegate concluded that the period of delay did not affect the assessment of the distinctiveness of SIR WALTER as a trade mark.

42    The delegate considered the evidence before him which showed that the name SIR WALTER had been used in connection with the Class 31 goods. The delegate noted, however, that SIR WALTER had been used with “other material”, most usually the device element of a mounted knight (the knight device). The delegate gave, as a typical example, the depiction set out in the schedule to these reasons.

43    The delegate found that when SIR WALTER was not used with the knight device, or other trade mark material, the use was most often, but not always, descriptive use. He noted the use of SIR WALTER alongside other varieties of grass and considered that such use served to emphasise the descriptive nature of SIR WALTER even when used with the knight device. Although the appellant had coined the name Sir Walter for its grass and had shown significant use of the name by itself and through licensees, it was apt to be the name of the grass, not a trade mark. The delegate was not satisfied that the appellant had established that, before the filing date of the application, SIR WALTER distinguished the appellant’s goods in Class 31 as its goods. He decided to reject the application if it were not amended to delete the Class 31 goods.

Inherent adaptation

44    In my assessment, the sign SIR WALTER is not to any extent inherently adapted to distinguish the designated goods as the appellant’s goods.

45    The matter can be assessed by adapting Kitto J’s question in Clark Equipment to the facts of the present case: Would traders of buffalo grass of the Sir Walter variety, in the exercise of the common right of the public to make honest use of words for the sake of the signification which they ordinarily possess, think of the sign SIR WALTER and want to use it in connection with the designated goods?

46    The answer to that question is, undoubtedly, “yes”. Sir Walter is the name of the plant variety that constitutes the very thing—“Buffalo grass of the ‘Sir Walter’ variety (as lodged with the Registrar of Plant Breeder's Rights (ref: certificate no. 1028), being part of the genus Stenotaphrum and a member of the species Secundatum”—for which trade mark registration is sought.

47    As such, SIR WALTER denotes the Sir Walter plant variety of buffalo grass with its particular characteristics and attributes. It is not adapted to distinguish one trader’s goods (here, Sir Walter grass) from the goods (again, Sir Walter grass) of other traders.

48    The appellant sought to argue otherwise. In its written submissions, the appellant submitted that the evidence establishes that SIR WALTER is not used as a mere description of a product (being, in its submission, buffalo grass) but as a sign with a secondary meaning that differs from the sign’s descriptive meaning. It submitted that SIR WALTER identifies a premium form of soft leaf buffalo grass, supplied by or on behalf of the appellant subject to the quality controls it imposes. The appellant also submitted that most members of the public would not even be aware that Sir Walter is the name of a plant variety distinct from the name of a soft leaf buffalo grass associated with, and supplied by, the appellant.

49    To the extent that these submissions are directed to the question of whether SIR WALTER is inherently adapted to distinguish, I do not accept them. To the extent that these submissions are directed to the inquiries arising under s 41(5) and s 41(6) of the Act, I will leave my consideration of them to later sections of these reasons, particularly as to whether, at the filing date, SIR WALTER had developed a secondary meaning.

50    In relation to the present question, I do not accept that, at the filing date, the appellant used SIR WALTER for soft leaf buffalo grass generally. First, there is no evidence that the appellant supplied, or authorised the supply of, buffalo grass of another variety called Sir Walter. In his affidavit, Mr Redman was at pains to stress “the significant research and qualitative steps” involved in the development and continuing propagation of the Sir Walter variety. I am satisfied that Mr Redman was not simply talking about soft leaf buffalo grass in general. He was talking specifically about the Sir Walter variety, and nothing else. Further in this connection, the appellant’s written agreements with licensed growers and its written agreements with resellers refer to the appellant’s PBR. The agreements concern “the Product” which, in each case, is identified as: Stenotaphrum Secundatum, “SIR WALTER” Buffalo. There is no evidence in this appeal of the appellant exercising quality control for buffalo grass generally or, indeed, for any turf other than turf comprising the Sir Walter grass.

51    Further, in his evidence Mr Redman directed attention to steps taken by the appellant to protect its rights. Mr Redman specifically referred to the decision of this Court in Buchanan Turf Supplies Pty Ltd v Premier Turf Supplies Pty Ltd [2003] FCA 230. However, in that case, the appellant obtained relief on the basis that the (then) respondent had wrongly represented itself as an authorised supplier of Sir Walter grass and had wrongly supplied other buffalo grass as the Sir Walter variety. If anything, the findings in that case support the conclusion that SIR WALTER is to be taken as denoting a particular grass variety—here, the designated goods.

52    Further, there is no direct evidence as to what “most members of the public” think when they see the name Sir Walter. I would not assume—and do not infer from the evidence—that members of the public are not aware that, when used in relation to grass, the name Sir Walter is a particular variety of buffalo grass. Indeed, the appellant’s promotional activities, which I discuss below, would suggest the contrary.

53    The appellant specifically addressed the question posed in Clark Equipment and submitted that, if the appellant were to achieve registration of SIR WALTER as a trade mark in relation to the designated goods, there is nothing to prevent any third party from using the name Sir Walter descriptively after the expiration of the appellant’s PBR. This, however, is not the test. A mark is registrable according to the requirements of the Act. The present question is whether SIR WALTER, considered in relation to the designated goods, is to some extent inherently adapted to distinguish the appellant’s goods from the goods of others, not whether there are possible ways in which others can use SIR WALTER without infringement, should the sign be registered as a trade mark.

54    In this connection, the appellant also submitted that other traders could simply refer to the designated goods as “buffalo grass” or “premium buffalo grass” with their own accompanying trade marks, without any need (or, indeed, desire) to refer to the goods as Sir Walter. However, whether or not this is so is really beside the point. The issue is one concerning the nature of a trade mark applicant’s entitlement. A person is not entitled to appropriate for its own use words taken from the common stock of language when others may wish, without improper motive, to use those words to designate their own goods or services. This general principle must, of course, be seen in the context of the particular requirements for registrability contained in the Act. The Act recognises, for example, that where factual distinctiveness can be established with respect to a particular sign, including a name or word, then registration of the sign as a trade mark is possible. But putting such circumstances aside for later consideration, a trade mark applicant’s entitlement to obtain registration for a particular sign does not rest on whether there is a surplus of other signs that other persons can use for their own goods or services.

55    Here, the appellant developed a new thing—a new variety of buffalo grass having particular characteristics—which it called Sir Walter. Sir Walter is the given and proper name for the new variety. It has no other name. In this way, the name Sir Walter must be taken to be part of the common stock of language that denotes this particular variety of grass. In a way, the present case provides an example of the developing use and adaptation of language to describe new things: see Apple at [16]. When used in connection with the relevant goods, the name Sir Walter is no less the descriptor of the new variety because it might be possible to describe Sir Walter grass using other words. I am satisfied that, in the normal course of events, other traders would wish to use the name Sir Walter for the grass, for no reason other than the obvious one: Sir Walter is the grass’ given name and accepted official designation.

56    The appellant also submitted that the degree of likelihood that other traders might wish to use the name Sir Walter is reduced by the circumstance that it holds a PBR for the variety. The appellant submitted that no other trader can properly apply that name to any other varietal whilst that right is held: see, in that connection, s 53(1)(c) of the PBR Act. But, here, the question is not whether other traders can properly apply the name Sir Walter to other varieties of grass. The question is whether other traders would wish to use the name Sir Walter for this particular variety of grass, without improper motive. As I have stated, I am satisfied that they would. The fact that the appellant currently holds a PBR in respect of Sir Walter grass does not alter that fact. It is noteworthy that the appellant has entered into numerous commercial arrangements with growers and resellers in relation to the supply of Sir Walter grass. One reason for this must be that these growers and resellers can see commercial advantage in trading in Sir Walter grass. For this reason, I have no hesitation in concluding that, absent the appellant’s PBR, which is of limited duration, other persons would wish to trade in Sir Walter grass using its given and official name.

57    The conclusion I have reached on this question is consistent with the reasoning and findings in other cases.

58    In Re Wheatcroft Brothers Limited’s Trade Marks [1954] Ch 210, the question was whether certain trade marks had been properly registered. The respondent in that case had obtained registration of certain new rose varieties with the National Rose Society (the society). These varieties were registered under certain names for which the respondent subsequently obtained trade mark registrations. The applicants in that case sought rectification of the trade marks register by removal of the marks. One of the grounds was that the marks lacked distinctiveness. The application for rectification was successful. Lloyd-Jacob J said (at 220-221):

In the light of the evidence before me, it is clear that at the respective dates of application for each of these marks, the respondents intended only to use each mark in relation to one variety of rose, which variety as they well knew and intended either was or would be characterized by the same name recorded in the register of the society. Had the application form accurately reflected these intentions the registrar could not have regarded the mark proposed as inferentially distinctive. An intention to use the mark as the name of a variety appears to be wholly inconsistent with a bona fide intention to use it as signifying a connexion in the course of trade with the supplier, for which purpose it must necessarily be capable of differentiating between examples of the same variety coming from differing trade sources.

If the question be posed: was the name intended for use to distinguish rose trees of the respondents’ growing from rose trees of the same variety grown by others, or was it intended for use to distinguish one variety introduced by the respondents from the generality of roses, there can be only one answer, for the inevitable consequence of registration with the society was to give the name a variety status. The evidence which establishes this is not questioned, and the desire of the respondents to prevent other rose growers from offering supplies of any of these new varieties save under specific authorization, even if successful, would not affect the intention to use as such, but would merely condition the circumstances in which roses so named were dealt with in commerce.

Once the respondents decided to invite the society to accept any particular name as an identification of the variety to which it was applied, they put it out of their power to intend the name only to identify such instances of the variety as they themselves had raised. If they can contrive some manner of monopolizing the production of a particular variety, it is true that the variety name will not fall to be used save upon their products. This possibility, although it might conceivably permit the respondents to create and acquire a secondary meaning for the original variety name, would certainly not justify a registration granted without evidence of distinctiveness.

59    In Heritage Seeds Pty Ltd [2007] ATMO 4, the trade mark applicant sought to register the sign PLUS AR1 in Class 31 for “[r]ye grass seeds and grain for agricultural purposes”. A PBR had been granted in respect of a fungal endophyte named AR1 which offered grass plants a measure of protection from predators whilst minimising toxicity to livestock. The opportunity to choose a ryegrass pasture which did not have the potential to cause livestock illness or to restrict livestock growth was beneficial for the pastoral industry. The question was whether the combination of the word “plus” and the registered PBR name AR1 had the capacity to distinguish within the meaning of s 41(2) of the Act.

60    A delegate of the Registrar said (at [19]):

[19]    The letter/numeral combination AR1 is the name of a specific living organism. The name is registered under Australian law, by a party other than the applicant. The accepted name of such an organism, whether registered under some form of plant breeder’s or variety rights law, whether generally accepted in the relevant trade or by the buying public, describes the organism. It thus has no inherent adaptation to distinguish one trader’s goods from those of another, in respect of the organism itself or its host plants. Whether a trade mark incorporating such a term will have sufficient adaptation to distinguish will depend on the other material incorporated within it.

61    The delegate continued (at [20]):

[20]    In this case, the additional material consists of the word PLUS. The combination, in use on the goods claimed, refers to rye grass plus the specific endophyte known as AR1. I am satisfied that the proposed trade mark is a term which other traders are likely to desire to use in connection with their goods. Other people selling ryegrass seed who wish to sell varieties with the addition of this particular endophyte are likely to need to say they are selling “ryegrass variety X plus AR1”. This kind of use does not amount to trade mark use, but is descriptive use. Descriptive use does not serve to distinguish the applicant’s goods from those of other traders. The trade mark is therefore caught by the provisions of subsection 41(5).

62    Implicit in the delegate’s reasons is the finding that the sign was to some extent inherently adapted to distinguish because it did not consist solely of the name AR1. However, the delegate found that s 41(5) could not be satisfied because the trade mark applicant’s own use of the sign was essentially descriptive. The application was rejected.

63    In Re SFR Holdings Inc (2013) 103 IPR 190, the trade mark applicant sought to register the sign SEADWARF Paspalum SDX-1 in Class 31 for “[n]atural turf, reinforced turf, turf grasses, turf seedlings, grass seeds; all being plants or plant material of the variety SDX-1 of the genus Paspalum”. The applicant had obtained a PBR for the plant variety named SDX-1, with the word SeaDwarfTM designated as a trade reference. A delegate of the Registrar observed (at [23]) that the sign for which registration was sought could only be seen as a description of the goods nominated in the specification. In that connection, the delegate said:

Technically, the trade mark is severely lacking in, if not completely devoid of, inherent adaptation to distinguish.

64    Later, the delegate concluded (at [32]):

[32]    The primary descriptive meaning of the trade mark is that of a particular kind of Paspalum grass. It has no secondary meaning, and is not capable of developing any secondary meaning. The whole purpose behind the genesis of the trade mark is to identify the grass which the applicant has developed and intends to market in Australia. Given that the trade mark is clearly composed of a registered variety name, the trade name for the same plant (recorded on the PBR register) and the name of the genus of grass in respect of which the two previously mentioned names are to be applied, the combination of words serves a single purpose and that is to define exactly which grass the name refers to. It can have no other purpose. As such, it is a mere description of the relevant goods, it has no inherent adaptation to distinguish those goods and thus the provisions of section 41(6) apply.

65    In Mastronardi Produce Ltd v Registrar of Trade Marks (2014) 318 ALR 249, the trade mark applicant sought to register the sign ZIMA in Class 31 for “tomatoes”. A delegate of the Registrar found that the sign was a reference to a single kind of tomato plant and its fruit, and lacked any inherent adaptation to distinguish. However, in the appeal to this Court under s 35(b) of the Act, unchallenged evidence was adduced that ZIMA did not refer to—and was not used by suppliers, retailers and consumers as—a variety of tomato. It was a name coined by the trade mark applicant which it used in relation to the golden grape tomatoes (also known as “sweet orange grape tomatoes” and “ golden snacking tomatoes”) it supplied. In these circumstances, Gordon J concluded (at [45]) that it was unlikely that other persons, trading in tomatoes and being actuated only by proper motives, would think of the sign ZIMA and want to use it in connection with tomatoes.

66    It can be seen that the decision in Mastronardi Produce is distinguishable from the present case on the facts. The sign ZIMA was not the name of the tomatoes. The trade mark applicant was using and proposing to use the sign ZIMA to distinguish its golden grape tomatoes from those supplied by other traders. The evidence established that, in fact, the trade mark applicant was using six different seeds to produce six varieties of golden grape tomato, although in Australia, at the time of the hearing, only one seed was being used to produce tomatoes to which the sign was being applied, with the other varieties being “trialled”. In Mastronardi Produce, the evidence showed that the sign was functioning or capable of functioning as a trade mark.

67    Finally, I should record that the appellant placed emphasis on the presumption of registrability in s 33(1) of the Act. While I accept that s 33(1) has a role to play in determinations under s 41(3) of the Act (see Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 at [22]; Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56-58; Chocolaterie Guylian (2009) 180 FCR 60 at [20]-[21]; Apple at [27]-[31]), I do not think that there is any doubt about the lack of inherent adaptation of SIR WALTER in respect of the designated goods which would result in the presumption working advantageously for the appellant in the present case.

68    It follows from my conclusion that SIR WALTER is not registrable for the designated goods by reason alone of s 41(3). It also follows that s 41(5) is not available to the appellant. The question then becomes whether, under s 41(6), the appellant has established that, because of the extent to which it has used SIR WALTER before the filing date, the sign does distinguish the designated goods as being its goods and not those of others seeking to supply the same goods.

Factual distinctiveness

The evidence on appeal

69    The evidence of use of SIR WALTER consists of two affidavits made by Mr Redman, and a large number of tendered documents, including electronic files containing a number of television commercials, and physical exhibits. As I have noted (at [39]), the evidence deals with the appellant’s promotional activities both before and after the filing date. In many cases, the evidence simply does not permit a finding to be made as to when the activity occurred. I have not taken into account promotional activities that have not been shown by the appellant to have occurred before the filing date.

70    Broadly speaking, the evidence of use covers the following:

    Television advertising campaigns;

    Radio advertising;

    Print media promotion;

    Promotions involving vehicles, aircraft and road signage;

    Promotion using websites;

    Promotions in telephone directories;

    Promotions at retail outlets and nurseries; and

    Lawn-related products.

71    I will deal with the evidence according to these categories. However, before doing so, I will make a brief comment about how SIR WALTER is used (in the sense of depicted) in the various advertisements exemplified in the evidence.

How the sign SIR WALTER is used

72    Mr Redman gave evidence that, in its promotional activities from about 2002 onwards, the appellant has in many, but not all, cases used SIR WALTER in conjunction with the knight device. The knight device is shown, variously, with the mounted knight facing to the left or facing to the right. Nothing turns on those variations in orientation. The knight device is, itself, a registered trade mark (trade mark no. 882781), which has been registered with effect from 18 July 2001.

73    The evidence shows that when the sign SIR WALTER was used with the knight device before the filing date, it almost invariably appeared within inverted commas. I am satisfied that, to the trade and the public, this would have suggested that SIR WALTER was being used in some special way. The name, so rendered, was also used—again, almost invariably—with the phrase PREMIUM LAWN TURF, which appeared immediately under that rendering. When I refer to the use of SIR WALTER with the knight device, I refer to SIR WALTER represented in this particular way with these additional elements, as exemplified in the schedule to these reasons.

74    I should also record that, in most cases, SIR WALTER and its accompanying phrase were placed below the knight device. In a number of cases they were placed next to the knight device. Once again, nothing turns on these variations.

75    An important question is, when used with the knight device in the ways described, what did SIR WALTER convey to members of the trade and the public at the filing date? I will return to that question.

Television advertising campaigns

76    Before the filing date, the appellant conducted television campaigns using SIR WALTER. Typically, these campaigns were conducted on the Channel 7 and Channel 9 networks and their affiliated regional stations. The commercials were directed to audiences in Sydney, Melbourne, Brisbane, Adelaide and Perth, and in regional markets in New South Wales, Queensland and Western Australia. The commercials that were used in these campaigns were given titles in the evidence.

77    The “True Blue Aussie Lawn” commercial ran in 2005. The “Lawn Carpet” and “Lawn Picture” commercials ran in 2007. The “Lawn Fruits”, “Lawn Kransky”, “Lawn Furballs”, “Lawn Rocks”, “Lawn Spike”, “The Real Turf” and “Stump Removal” commercials ran in 2009. The “Biggest Buffalo” commercial ran from February to March 2012.

78    It is not practicable for me to describe each commercial in detail. However, each is humorous in content and many are based on the theme that Australian males have pride in their lawns. SIR WALTER is used in the voice-over and, visually, with the knight device at the end of each commercial.

79    A number of the commercials gave “Sir Walter lawn care tips” (“Lawn Fruits”, “Lawn Kransky”, “Lawn Furballs”, “Lawn Rocks”, “Lawn Spike”, “The Real Turf” and “Stump Removal”. In a number of cases, the tip referred to a characteristic of the lawn: it is weed-tolerant (“Lawn Fruits”), “dog-friendly” (“Lawn Kransky”), “very hardy” (“Lawn Fur-balls”) and “soft to touch” (“Stump Removal”).

80    In “Lawn Spike”, viewers were told:

Your average Sir Walter lawn absorbs more carbon and generates more oxygen than the world’s largest tree.

81    In “The Real Turf”, viewers were told:

You can’t always spot an imitation. Take lawns – there’s only one genuine Sir Walter. That’s why you will find over 24 million metres of it Australia wide.

82    In all these commercials, the presenter’s use of SIR WALTER was a direct reference to the Sir Walter grass itself.

83    In “True Blue Aussie Lawn”, viewers were told:

There’s only one true blue Aussie lawn that needs very little care to keep it looking great, all year round – Sir Walter – Australia’s go anywhere, grow anywhere premium turf.

84    In “Lawn Carpet” and “Lawn Picture”, viewers were told:

Aussies who love their lawn, love Sir Walter.

85    In these commercials, the use of SIR WALTER in the voice-over was, once again, a direct reference to the Sir Walter grass itself.

86    In “Biggest Buffalo”, viewers were told:

If you’re after a big landscaping feature there’s several options available to you, but the biggest improvement you can make to your home is to stick a buffalo in your yard, not just any buffalo – Australia’s biggest buffalo – Sir Walter.

Install a new Sir Walter lawn like 300,000 other Aussies have, and we’ll throw in Australia’s definitive guide to lawn care free.

Sir Walter – Australia’s number 1 buffalo lawn.

87    Once again, the presenter’s use of SIR WALTER was a direct reference to the Sir Walter grass itself. Exceptionally in the “Biggest Buffalo” commercial, when SIR WALTER was used with the knight device, it was not shown within inverted commas. Also, the words under SIR WALTER were BUFFALO LAWN, thus designating a lawn of Sir Walter buffalo grass.

88    There were a number of other television commercials in evidence. These related to campaigns conducted after the filing date and are not relevant to the s 41(6) inquiry. Mr Redman also gave evidence about sponsorship of the “Crack A Fatty” segment on Channel 9’s The Footy Show. However, no example of use was provided in respect of that sponsorship.

Radio advertising

89    The appellant conducted radio advertising campaigns in 2005, 2009 and 2010. There are four radio commercials in evidence. One commercial was about “Lawn Lovers” hose-on spray packs. Listeners were told that these “are available now from your nearest Sir Walter outlet”. This commercial appears to have been broadcast in about December 2010. There are two examples which appear to have been broadcast in about January 2009.

90    One of these commercial contains the following statements:

You know, there’s nothing quite as rewarding as coming home to a brilliant looking lawn.

The kids will love it, you’ll love it and the environment will love it too. Did you know that the average Sir Walter home lawn processes more carbon - and generates more oxygen - than the world’s largest tree?

See… a Sir Walter lawn is greener than you think!

For more Sir Walter lawn care tips – Visit Loveyourlawn.com.au

91    This commercial clearly used SIR WALTER to refer to a lawn of Sir Walter grass.

92    The other commercial contains the following statements:

Ever walked around your neighbourhood and seen some neighbours with amazing looking lawns?

It’s not as difficult as you may think… and the good people at Sir Walter have helped me out. Visit ‘loveyourlawn.com.au’ – I’ve made a whole series of handy webisodes showing you how to enjoy an incredible looking lawn.

That’s www.loveyourlawn.com.au

93    This commercial did not directly refer to a lawn of Sir Walter grass and advised, more generally, on the availability of tips for lawn care.

94    Finally, there is a commercial which appears to have been broadcast in January 2005. It refers to Sir Walter Premium Lawn Turf and contains the following statement:

Sir Walter… Australia’s go anywhere, grow anywhere Premium Turf.

95    Once again, this is a distinct reference to turf made of Sir Walter grass.

96    Mr Redman gave evidence that a radio promotion featuring the Sir Walter name was conducted in association with radio station 6PR in Perth in 2006/2007. No examples of this use were given. Mr Redman also gave evidence of radio advertising after the filing date. This advertising is not relevant to the s 41(6) inquiry.

Print media promotion

97    In the period 2005 to 2006, the appellant placed advertisements in a number of magazines and newspapers. In the examples given, SIR WALTER was used with the knight device. The accompanying text in each case makes clear that SIR WALTER was referring to the Sir Walter grass and its desirable characteristics.

98    In one example, the accompanying text stated:

“Sir Walter” is a remarkable Australian breakthrough in family lawn turf. It’s the very latest of the new generation soft buffaloes. Yet in spite of this it’s tough and durable. You see, it wasn’t just bred for softness, it was bred for active families as well, even the dog. “Sir Walter’s” unique Aussie heritage has endowered it with some other special qualities. It not only thrives in full sun, it’s great in substantial shade. It’s low maintenance, needs less water, and has a natural ability to discourage weeds, pests and disease.

(Errors in original.)

99    In another example, the accompanying text stated:

Does your lawn have patchy shade areas or burnt sun spots? Sir Walter Premium Lawn Turf is sun and shade tolerant and needs very little care to keep it looking great, all-year-’round.

Developed right here in Australia to handle our unforgiving climate, Sir Walter is uniquely soft textured yet super strong. It’s also traffic resistant, fungus resistant and maintains its vibrant emerald green colour in a variety of light and temperature conditions. That’s why so many gardening and lifestyle shows recommend Sir Walter.

Sir Walter even comes with its own numbered Certificate of Authenticity, so you can be assured you’re buying the best lawn in the street.

100    In a further example, the accompanying text stated:

Trouble-free. Beautiful. Lush. They’re not our words, these are words that happy customers use to describe their Sir Walter lawns. If you want the best all-purpose lawn for our tough Aussie climate, there’s only one choice.

Promotions involving vehicles, aircraft and road signage

101    Since about 1997 to date, SIR WALTER has been used on the sides of trucks and vehicles owned and operated by the appellant and on the sides of vehicles of various licensees. I cannot tell from the evidence which of the examples, if any, are referable only to the period that post-dates the filing date.

102    Almost all the examples given appear to have been use of SIR WALTER with the knight device. In one example, the use was in relation to lawn care products, rather than in relation to the designated goods. In another example, the use included reference to the attributes of the turf product, thereby containing a direct reference to the Sir Walter grass.

103    SIR WALTER was used in signage on metropolitan buses in Sydney, Melbourne, Brisbane, Adelaide and Perth in the period 2002 to 2003. The use was with the knight device in association with the questions “Want drought tolerant grass?”, “Want low maintenance grass?” and “Want shade tolerant grass?”. These questions referred to characteristics of the Sir Walter grass. I am satisfied that, more likely than not, the use of SIR WALTER in this way would have been understood by the trade and the public as a reference to a particular kind of grass having desirable characteristics, and hence a direct reference to Sir Walter grass itself.

104    Since about 2003 to date, SIR WALTER has been used on road signage, near the appellant’s Bolwarra farm and near its licensees’ turf farms. The use was of SIR WALTER with the knight device in conjunction with the words “Less water… more lawn”. Once again, I am satisfied that, more likely than not, this use of SIR WALTER would have been understood as a reference to a particular kind of grass having desirable characteristics, and hence a direct reference to Sir Walter grass itself. Another example is given as at 2014 and is clearly not relevant to the present inquiry.

105    Mr Redman produced a copy of a photograph taken by him in 2009 of a banner drawn by a helicopter in which SIR WALTER appears within inverted commas next to the knight device. The banner also contained reference to the website loveyourlawn.com.au. This use is, at best, equivocal.

Promotion using websites

106    SIR WALTER was used on the appellant’s website and on the websites of some of its licensees before the filing date. The only examples in evidence before the filing date were screenshots taken as at 14 December 2007, 13 October 2009 and 31 May 2012. These uses are of SIR WALTER with the knight device in conjunction with accompanying text.

107    The example as at 14 December 2007 included the following text:

“Sir Walter” Premium lawn turf

Sir Walter Premium Lawn Turf is a superior quality soft buffalo grass giving unmatched performance for Australian conditions. Here you can find out all there is to know about this ideal, low maintenance lawn called ‘Sir Walter’.

Sir Walter was developed by Brent Redman of the Hunter Valley in the mid 1990’s with the Australian climate and lifestyle in mind. He bred Sir Walter turf tough - and that means a drought resistant lawn that’s easy on the upkeep.

Needing less watering and spraying, Sir Walter stands out from the competition with its resilience and softness, not just throughout the harsh Australian summer, but also during winter as well. An all year round grass that looks good and costs you less time - what more could you ask for in a turf?

(Emphasis in original.)

108    The example as at 31 May 2012 included the following text:

Sir Walter Turf was cultivated as a tough turf specifically for the harsh Australian environment.

A low maintenance grass, Sir Walter lawns are soft underfoot and incredibly easy to maintain.

109    These uses of SIR WALTER were a direct reference to Sir Walter grass itself.

Promotions in telephone directories

110    Mr Redman provided examples of the use of SIR WALTER in printed and online versions of the Yellow Pages telephone directory. The examples of the online entries can be put to one side because they clearly post-date the filing date. In a number of instances, the examples given in the printed versions of the directory do not bear a date. These examples included SIR WALTER used alone (as a name) and in conjunction with the knight device. Sometimes both uses appeared in the same promotional material. Sometimes SIR WALTER was used as part of a web address.

111    When used alone as a name, the sign was overwhelmingly a direct reference to a particular variety of buffalo grass. For example, SIR WALTER was shown as referring to a particular variety of buffalo grass with other identified varieties of buffalo grass. The examples also included, in a number of cases, reference to other turf, such as turf comprised of couch and kikuyu.

112    When SIR WALTER was used with the knight device, the use was also overwhelmingly a direct reference to a particular kind of turf. In one example where SIR WALTER was used with the knight device, the accompanying text in the material describes the product as:

The Australian Born

Premium Lawn Turf that’s

Greener Than Green

Tougher Than Tough

Softer Than Soft

Less Maintenance

113    In another example, the accompanying text included:

AUSSIE BORN BUFFALO        

softer • tougher • greener

less maintenance

114    In a further example, the accompanying text included:

Buchanan Turf Supplies is the birthplace of ‘Sir Walter’, Australia’s go anywhere, grow anywhere Premium Turf. From farm fresh turf supply or complete lawn renovations & installations, Buchanan Turf is your No 1 choice. For more information, visit www.buchananturf.com.au or for a free quote call us on 1300 850 556

(Emphasis in original.)

115    In the example immediately above, the material also identified the particular qualities of SIR WALTER, such as its drought-tolerance, salt-tolerance, its need for only low maintenance, its soft texture, its tolerance to full sun and shade, and its ability to self-repair.

Promotions at retail outlets and nurseries

116    Mr Redman provided examples of promotional and marketing material relating to the use of SIR WALTER at approximately 187 retail nurseries throughout Australia. Mr Redman said that this use was controlled by the written agreements to which I have referred. In most examples, SIR WALTER was used with the knight device. There are, however, other uses.

117    Mr Redman said that the examples given concern the period 2003 to date. Part of this period clearly post-dates the filing date. I cannot tell from the evidence which examples, if any, fall outside the relevant period. But, even so, the use of SIR WALTER in these examples was, once again, overwhelmingly a direct reference to the Sir Walter grass itself.

118    In one example, the promotional material stated:

Although water restrictions have us all pretty-well hanging up the hose, if you’ve laid a Sir Walter Premium Lawn, your yard needn’t suffer. Of all lawn varieties, Sir Walter is the best suited to Australia’s year-round conditions. Not surprising, when you consider it was discovered occurring naturally in Australia and cultivated for its many unique qualities. Drought resistant, Sir Walter requires minimal watering after it’s established and doesn’t go purple in winter. Compared with other grasses you’ll find Sir Walter is:

•    Drought resistant        •    Extremely hardy

•    Fungus resistant        •    Greener for longer

•    Shade resistant        •    Pet resistant

•    Self repairing        •    Soft textured

Because Sir Walter is the Australian Premium Lawn Turf uniquely suited to Australian conditions, it comes with a Certificate of Authenticity.

(Emphasis in original.)

119    In another example, the promotional material stated:

Sir Walter Premium Lawn Turf can be grown and supplied by a select group of expert turf producers, each fully licensed and committed to delivering the best quality turf with customer service second to none.

To ensure you receive only the best in both your premium turf and expert advise, insist on seeing our ‘Certificate of Authenticity’ issued with every delivery of genuine Sir Walter Premium Lawn Turf. This ensures you receive the best quality turf in the peak of condition. No surprises, no imitations, no problems.

120    In another example, a table was provided which rated “how well Sir Walter performs against several other turf varieties”. The other “varieties” were identified as couch, kikuyu, tall fescue and Queensland blue couch.

Lawn-related products

121    Mr Redman gave evidence that, in about 2005/2006, he identified a potential market for fertilisers and pest-control products targeted at “all buffalo grass breeds”, not just Sir Walter grass. From about 2006 onwards, the appellant supplied lawn-related products, including fertiliser, weed, and pesticide products, using SIR WALTER. Mr Redman acknowledged that, in the period 2006 to 2008, this use included reference to buffalo grass somewhat more prominently than in later versions of the packaging. However, even in relation to some products available as at the filing date, I note that the words BUFFALO LAWN were used in association with SIR WALTER in such a way that the combination could readily be taken as reading “SIR WALTER BUFFALO LAWN”.

122    I refer, for example, to the pest control and weed control products produced by Amgrow for the appellant. In my view, the real likelihood is that many members of the trade and the public would have understood this packaging as representing that the product was one for use on Sir Walter grass, rather than more generally for buffalo grass, as Mr Redman suggested. However, even if members of the trade and the public would have understood the packaging as representing that the product was suitable for buffalo grass generally, the clear message is that the product was particularly suitable for use on Sir Walter grass.

123    Mr Redman also gave evidence that the appellant had endorsed other products by authorising the use of the knight device with the words PROUDLY SPONSORED BY SIR WALTER. These words appeared in a roundel surrounding the knight device (the endorsement logo). Having considered the examples given in evidence, it seems to me that, more likely than not, members of the trade and the public would have understood the endorsement logo as signifying that the product was suitable for use on Sir Walter grass and on other types and varieties of grass.

124    Mr Redman gave evidence about sales of fertiliser and some other products using SIR WALTER in various periods, not all before the filing date. Some of the examples given in evidence were of “SIR WALTER” Fertiliser. Most of the examples given in evidence were of third party products. Generally speaking, these products bore the endorsement logo.

125    The appellant placed emphasis on the evidence about lawn-related products. It submitted that this evidence assisted in finding that SIR WALTER acted as a trade mark when used in connection with buffalo lawn turf. The appellant submitted that, by the use of SIR WALTER in relation to fertilisers, herbicides and pest-control products since 2006, consumers may be taken to be familiar with SIR WALTER functioning, and being recognised as, a trade mark.

126    The evidence also includes examples of SIR WALTER used with the knight device on promotional items, namely a sun hat, a portable coffee thermos, a mouse pad with calculator, a ‘stubbie holder’ with artificial grass effect, a pen with USB stick, and post-it notes.

Consideration

127    In the present case, the inquiry posed in s 41(6) is whether the use of SIR WALTER on which the appellant relies, establishes that, at the filing date, SIR WALTER distinguished the designated goods as being those of the appellant.

128    Section 41(6) recognises that a sign may be descriptive but still distinctive. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297, Middleton J observed (at [60]) that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive. His Honour quoted the following observations of Lockhart J in Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 335-336:

The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re application of H N Brock & Co Ltd, for a trade mark (“Osowoolo”) and trade marks (“Orlwoola”) (1909) 26 RPC 683, 850, 854 (the Orlwoola case) and Re application of Joseph Crosfield & Sons Ltd to register a trade mark (“Perfection”) (1909) 26 RPC 837 (the Perfection case).

If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.

A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (supra) (at 857-858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.

Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the [identity] of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, par 25.8.

129    The evidence reveals three broad forms of use of SIR WALTER before the filing date. First, there was use in writing and by spoken word (in the television and radio commercials) of SIR WALTER by itself, as a name. Secondly, there was use of SIR WALTER with the knight device, as I have described at [73]-[74]. Thirdly, there was use of SIR WALTER as part of the endorsement logo.

130    As to SIR WALTER by itself, the evidence shows, overwhelmingly, an unequivocal use of SIR WALTER to designate a particular thing—the Sir Walter grass—not use of SIR WALTER as a mark for distinguishing the appellant’s Sir Walter grass from other traders’ Sir Walter grass.

131    As to SIR WALTER used with the knight device, it is necessary to evaluate, as at the filing date, the function that SIR WALTER performed as an element in that particular rendering. In this connection, it is important to understand that the mark applied for is not the combination of SIR WALTER with the knight device. The application is for SIR WALTER simpliciter. The combination of SIR WALTER with the knight device is just one of the possible ways in which SIR WALTER can be used: see at [32]. Thus, in the context of s 41(6), it is not enough for the appellant to establish that, at the filing date, SIR WALTER with the knight device distinguished the designated goods as the appellant’s goods. The appellant must establish that, at the filing date, SIR WALTER by itself functioned in that way, without the distinguishing effect, if any, of other elements of this particular combination.

132    As I have noted (at [73]), in this particular combination, the evidence shows that SIR WALTER was almost invariably rendered within inverted commas, suggesting that SIR WALTER was being referred to in some special way. The appellant submitted that this feature of the rendering of SIR WALTER strongly points to trade mark use, rather than merely descriptive use. In my view, however, this particular aspect of the rendering of SIR WALTER is equally capable of indicating the descriptive use of SIR WALTER—that is, to refer to a particular thing. Thus, in the present case, the context in which this particular form of SIR WALTER was used before the filing date is important because it helps to inform how SIR WALTER in that particular rendering would have been understood by the trade and the public at that time.

133    In this connection, the evidence shows many instances of this particular use in conjunction with accompanying text or spoken words. This text and these words, as I have said, overwhelmingly show the unequivocal use of SIR WALTER to designate the Sir Walter variety grass, not use of SIR WALTER as a mark for distinguishing the appellant’s Sir Walter grass from other traders’ Sir Walter grass. Thus, in my view, in those cases, SIR WALTER, when used with the knight device, would also have been understood by the trade and the public as designating Sir Walter grass, not as a trade source of Sir Walter grass distinguished from other trade sources for that grass. This would have been the special significance attributed to the inverted commas—to show that SIR WALTER was designating a particular grass variety, consistently with what readers or viewers were being told. I think that the words PREMIUM LAWN TURF appearing under SIR WALTER would have reinforced that understanding, the word “turf” signifying no more than that the composition of the turf was Sir Walter grass. There are also uses of SIR WALTER with the knight device which, considered in isolation, simply do not indicate one way or the other how SIR WALTER in that combination would have been understood. However, when considered in the context of the appellant’s overall promotional activities, the likelihood is that members of the trade and of the public would also have understood that SIR WALTER, in these instances of use, as referring to the Sir Walter grass, not as a trade source for Sir Walter grass distinguished from other trade sources for that grass.

134    As to the endorsement logo, the same considerations apply. It is necessary to evaluate, as at the filing date, the function that SIR WALTER performed as an element in that particular rendering. I am not persuaded that, at the filing date, SIR WALTER as an element of the endorsement logo functioned in any way materially differently to the two uses of SIR WALTER discussed above. As I have found, the real likelihood is that, at the filing date, those who saw the endorsement logo in the way used in the evidence would have understood it as signifying that the endorsed product was suitable for use on Sir Walter grass, even though the endorsed product might also have had a more general use on other grass types or varieties.

135    Having regard to all the evidence placed before the Court on this question, I am not satisfied that the appellant has established that, at the filing date, SIR WALTER distinguished the designated goods as being those of the appellant. It follows that, in accordance with s 41(6)(b), SIR WALTER must be taken to be not capable of distinguishing the designated goods from the goods of other persons.

DISPOSITION

136    The appeal should be dismissed and the decision of the delegate should be affirmed. The application should not proceed to acceptance unless the specification is amended by deleting reference to the Class 31 goods. The appellant should pay the Registrar’s costs.

Associate:

Dated:    24 July 2015

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