The Australian Trade Marks Office (ATMO) has found that “Uncanned” is inherently adapted to distinguish the provision of information on food and food production.
An objection that a trade mark cannot be registered on the ground that it is not capable of distinguishing an applicant’s goods or services from the goods or services or other persons may be overcome by argument. However, it is becoming increasingly difficult to persuade an Examiner by argumentation alone, regardless of the merit of the case. It can be frustrating and costly to move an Examiner from their opinion that a trade mark is allegedly descriptive, particularly if the Examiner does not apply the law correctly but is unwilling to accept this point. Although such an objection may be overcome by supplying evidence of use (in applicable circumstances), this avenue may not be available as the trade mark may not be in use or there may not be sufficient use at the time of filing.
The decision in Campbell Soup Company  ATMO 84 is a useful example of the approach that Examiners should take when considering whether a trade mark is descriptive of the claimed goods and/or services, for example, whether the trade mark is inherently adapted to distinguish.
The Applicant applied for the trade mark UNCANNED (word only) in respect of provision of information on food and food production, including via a website in Class 43.
The Examiner issued three adverse reports. Perhaps sensing that the Examiner had become intransigent, the Applicant requested an ex parte hearing. The essence of the Examiner’s objection is stated succinctly in the first adverse report:
Your trade mark is, or has as its main feature, UNCANNED
This indicates that your services, being the provision of information on food and food production, are about food which is not canned.
Other traders should be able to use UNCANNED in connection with goods or services similar to yours.
The test applied by the Hearings Officer to assess distinctiveness is set down by the High Court in Cantarella Bros v Modena Trading  HCA 48 (‘Cantarella’). The Cantarella test is a two-step process:
- determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods, then
- consider the likelihood of the sign being needed by other traders.
When considering ordinary signification of the sign, the Hearings Officer made plain that the assessment must be the ordinary signification if the sign was to be used in connection with the relevant goods and/or services, not something else.
The Hearings Officer performed a de novo assessment of the ordinary signification of the term UNCANNED for goods in the form of foodstuffs and information, and the Applicant’s services as set out above.
The Applicant made submissions that, as a starting point, the term “uncanned” has no natural meaning and is an invented word, which of course weighs against an allegation of descriptiveness.
The Hearings Officer stated that the absence of this term from the Macquarie Dictionary is not sufficient to find in favour of the term being invented. Although the term “uncanned” is not present in the Macquarie Dictionary, the Hearings Officer referred to meanings for the adjective “canned”, and “un” is a prefix meaning “not”. Moreover, in determining what is the ordinary signification of UNCANNED, the Examiner conducted internet research and, amongst other things, a search using the term “uncanned”, which yielded 39 500 results. The Examiner also relied upon a definition from the Collins online dictionary of “uncanned” meaning “not canned”. This evidence and the Macquarie dictionary analysis set out above satisfied the Hearings Officer that “uncanned” is not an invented word and has a “readily apparent meaning when used in connection with goods that are typically stored in cans, such as foodstuffs.”
The Hearings Officer conceded that the term is unnatural and is unlikely to be ordinarily used to describe foodstuffs not in cans.
By using the same type of approach of dictionary definitions and internet research, the Hearings Officer found that “uncanned” when used in connection with the good of information has a readily apparent meaning of information that is not prepared in advance. However, an internet search for “uncanned information” returned two irrelevant results. This led to a conclusion that “uncanned” has no ordinary signification in respect of information.
In the present case, the determination of ordinary signification does not rest ultimately with the goods of foodstuffs and information. The question of ordinary signification lies with the claimed services. This enquiry commenced with consideration of the ordinary signification of “canned” in respect of services generally. Internet research supported a conclusion that “canned” has an ordinary signification in relation to information services (a standard service rather than a bespoke service), and it follows that “uncanned” may have a readily apparent meaning in connection with various types of services. However, an internet search using the term “uncanned services” yielded “a single, uninstructive result”. Moreover, the Examiner’s research failed to indicate that “uncanned” is used ordinarily in connection with the claimed services, or any services for that matter.
The Hearings Officer concluded that the awkward nature of the term and the lack of its use suggest that “uncanned” has no ordinary signification to those who will purchase the Applicant’s services. The Hearings Officer also held that it is unlikely that other traders would need to use “uncanned” in connection with the claimed services. The mark was held to be inherently adapted to distinguish the Applicant’s services and accordingly, the application was accepted.
This decision highlights the potential value of cutting one’s losses with a recalcitrant Examiner and requesting a hearing to when examination becomes difficult, particularly in borderline cases. The decision also provides a roadmap for assessing ordinary signification of a sign, to be applied by Examiners and Applicants alike.