29.4. Descriptions of goods/services

A term within a trade mark describing particular goods/services will not trigger section 43 as long as those goods/services are covered by the specification. For example:

immediate danger of consumers being deceived or misled. There is no need for an examiner to request the specification be restricted to meat free snack foods or to require an endorsement restricting the specification of goods when the trade mark is in use.

If, however, there is a connotation present within the trade mark that is directly contradicted by the specification, there is a high likelihood of consumers being deceived or confused. The connotation of the trade mark would mislead consumers into buying something other than what the label suggests is in the package, and so a section 43 ground for rejection would be appropriate. For example:

When considering trade marks that include a clear connotation, the concept that this connotation would be understood as a fanciful or unrealistic description can also be taken into account. See Mount Everest Mineral Water Limited v Himalayan Spring Mineral Water [2010] ATMO 85 (at 15). This concept also considers the likely expectations and level of awareness of the ordinary consumer of the goods/services. Per Scotch Whisky Association v De Witt [2007] FCA 1649 (at 61):

a label indicating bourbon, bourbon whiskey and/or made in the USA clearly connote an origin of a place other than Scotland. Labels indicating ‘Tennessee Whiskey’ again connotes an origin in a place other than Scotland. For a mark to be rejected under s 43 there must be a ‘real tangible danger of deception or confusion’. That exceptionally stupid or careless consumers might be confused does not suffice.