Mars Australia Pty Ltd ("Mars") applied to register the trade mark FREE BARS in Class 30 for confectionery and other goods.
The Application was accepted without an adverse report and then opposed by Kraft Food Australia Pty Ltd ("the Opponent").
A decision of Iain Thompson.
Is the trade mark FREE BARS capable of distinguishing the goods of Mars in Class 30 from other traders as required by Sec 41(2)?
FREE BARS is not to any extent inherently adapted to distinguish and the pre-filing date use of the mark is not sufficient to establish has that the mark does distinguish Mar's goods from those of other traders.
The Opponent bears the onus of establishing at least one ground of opposition on the balance of probabilities.
Hearing Officer relied on the interpretation of Sec 41 in Blount Inc v Registrar of Trade marks  FCA 440.
First question is the extent to which the mark is inherently adapted to distinguish. Sec 41(3). The Hearing Officer relied on the test in Clark Equipment.
The question whether a mark is adapted to distinguish is to 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.
- The mark is descriptive of trade promotions in which traders offer free confectionery bars to promote new or existing confectionery.
- Mr Busuttil, General Manager Marketing for the Opponent and Mr Napolitano Group Account Director of George Patterson, an advertising agency for the opponent, both put in evidence that it was common practice for manufacturers of confectionery to offer free product as a means of promoting a new or existing products and that these promotions involved descriptive use of FREE BARS.
- The Opponent put in evidence of its use of FREE BARS as a promotion for confectionery.
- A word or phrase which has a descriptive capacity can nevertheless have some inherent adaptation to distinguish. As Finn J observed in Austereo Pty Ltd v DMG Radio  FCA 968 209 ALR 93; (2004) 61 IPR 257;  AIPC 92-016 at paragraph 83:
Nonetheless words which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish.
- There is no evidence of use of FREE BARS as a trade mark other than by the Applicant.
- Registration of FREE BARS would not prevent others from using the infinite number of ways of conveying the same message as FREE BARS – "Score a Freebie" or "Give Away".
- The test for inherent adaptation is not whether other traders have used FREE BARS as a trade mark but rather whether other traders will need to use the trade mark for the sake only it its ordinary meaning.
- Whether there are other words that convey the same or similar message as FREE BARS is not relevant for the purpose of sec 41(3) – inherently adapted to distinguish. The test for "inherently adapted to distinguish" is determined by the nature of the words themselves rather than from a comparison to other words. There may be words that convey a similar message to "soup", such as "broth", but this does not mean that "soup" is "inherently adapted to distinguish".
- Whether there are other words that convey the same message as FREE BARS is relevant for determining whether the mark falls within Sec 41(5) or 41(6).
- FREE BARS has been used at least by the Opponent "according to its ordinary meaning" prior to the filing of the application by Mars. It is not therefore "inherently adapted to distinguish" as provided by Sec 41(3).
- The Opponent’s evidence shows that FREE BARS is freely used by the manufacturers of confectionery for promotional purposes. Sec 41(5) is not applicable.
- The Applicant's evidence of use does not establish that the mark distinguishes its goods from those of other traders. There was the Applicant's use of FREE BARS as a trade mark in evidence but also descriptive use such as "Any 6 bars may not contain a free bar" and "Sorry you didn't win a free bar this time".
The application was refused and costs awarded against the Applicant.