Aldi Foods Pty Ltd v Moroccanoil Israel Ltd
[2015] ATMO 97
•9 October 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Aldi Foods Pty Ltd to registration of trade mark application 1463962 - MOROCCANOIL - filed in the name of Moroccanoil Israel Ltd.
| Delegate: | Bianca Irgang |
| Representation: | Opponent: Mr Blake Knowles of Cullens Patent and Trade Mark Attorneys Applicant: Mr Julian Cooke of Ashurst |
| Decision: | 2015 ATMO 97 Section 52 opposition: section 41(6) established for all goods – applicant’s evidence insufficient. |
Background
Moroccanoil Israel Ltd (‘the applicant’), filed trade mark application number 1463962 on 7 December 2011 in class 3 of the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark: MOROCCANOIL (the “Trade Mark”)
Trade mark application: 1463962
Filing Date: 7 December 2011
Specification: Class 3: Hair care products, including oil, mask, moisture cream, curly hair moisture cream, curly hair mask, curly and damaged hair mask, argan and saffron shampoo, hair loss shampoo, dandruff shampoo, dry hair shampoo, gel, mousse, conditioner, hair spray
Endorsements: Provisions of subsection 41(6) applied.
Hereafter I refer to the goods covered by the trade mark applications as ‘hair care products’.
The application was accepted for possible registration and the official notice of acceptance was published in the the Australian Official Journal of Trade Marks on 18 October 2012. Subsequently Aldi Foods Pty Ltd (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to registration of the application. Thereafter the opponent and applicant served and filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 12 August 2014. The opponent was represented by Mr Blake Knowles of Cullens Patent and Trade Mark Attorneys. The applicant was represented by Mr Julian Cooke of Ashurst. Both parties made oral and written submissions.
Following the hearing the parties requested a suspension of the proceedings for a year in order to engage in negotiations. It appears those negotiations were unsuccessful and it is now appropriate for me to issue my decision on the matter.
Grounds of Opposition
The Notice nominated most of the grounds available under the Trade Marks Act 1995 (‘the Act’) to oppose registration. However, only the ground under section 41 was pursued at the hearing. The onus is upon the opponent to establish its ground of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].
[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599
[2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]
Evidence
The evidence of the parties consists of the following declarations:
Evidence in Support
Blake David Knowles (the ‘Knowles 1 declaration’) dated 28 June 2013 and exhibits BK-1 to BK-18;
Deborah Heng (the ‘Heng declaration’) dated 9 July 2013 and exhibits DH-1 to DH-9; and
Evidence in Answer
Amy Denise Reynolds dated 7 November 2013 and Annexure ADR-1 (which is a copy of the statutory declaration of Haim Lampert ‘Lampert 1 declaration’ dated 18 June 2012 accompanied by its annexures A to N); and
Haim Lampert (the ‘Lampert 2 declaration’) dated 28 October and Annexures A to H (annexure H being a report made by Adam Kilgarriff accompanied by Annexures I to S).
Evidence in Reply
Blake David Knowles (the ‘Knowles 2 declaration’) dated 15 January 2014 and exhibits BK-1 to BK-13.
Discussion
Section 41 - Trade mark not distinguishing applicant’s goods or services
At the time of filing section 41 provided:
41 Trade mark not distinguishing applicant’s goods or services
(1) 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.
Note 1: Forapplicantand predecessor in titlesee 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: Forgoods of a personand services of a personsee 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: Forgoods of a personand services of a personsee 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).
Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. Therefore, the opponent must establish that the applicant’s trade mark is not capable of distinguishing the goods in question. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired or will acquire capacity to distinguish the goods through its use in trade, or whether due to other circumstances the trade mark does or will distinguish the goods.
The application of the provisions of section 41 of the Act, as it stood when the application was filed, was discussed in detail by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “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”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) 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; or
(c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).
The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken 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, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so “establish” by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.
It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant’s goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.
My consideration starts with subsection 41(3) – it is a consideration of 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.
In Clark Equipment Company v Registrar of Trade Marks[3], Kitto J put the test under the 1955 Act as follows:
“[T]he 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
[3] [1964] HCA 55; (1964) 111 CLR 511 at 514
The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[4](‘Cantarella’) noted the followed part of Kitto J’s test:
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
[4] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.
Considering this passage the High Court explained that the inherent adaptation of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods[5]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade mark to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[6]. A trade mark that has an obscure reference to the applicant’s goods is not a word or phrase that is likely to be understood by others as a description/direct reference.
[5] Cantarella at [28], [30] per French CJ, Grennan and Kiefel JJ
[6] Cantarella at [73] per French CJ, Hayne, Hayne, Crennan and Kiefel JJ
Superimposed on this test for inherent adaptability is the so-called ‘presumption of registrability’ (which was formulated under the Trade Marks Act 1995), whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it.
The applicant’s submissions on the section 41 ground of opposition focus on the following key areas:
That the Trade Mark is an invented word, has never before been used as an identifier for hair care products and is inherently adapted to distinguish those products;
No trader without any improper motives has used the Trade Mark or any similar trade mark in respect of hair care products;
The Trade Mark must be assessed as a whole and “Moroccan Oil” and “Moroccan Argan Oil” do not constitute the Trade Mark;
The use of “Morocco” in the Trade Mark does not render the Trade Mark incapable of being inherently able to distinguish the hair care products because there is no geographical connotation in the Trade Mark.
Mr Knowles, representative for the opponent, submitted that I should find the Trade Mark when used in relation to hair care products to be purely descriptive of those goods. He said that the opponent’s evidence showed many traders used the expression MOROCCAN OIL in the ordinary course of trade in these goods and that the act of joining the words together did not make the Trade Mark capable of distinguishing.
Mr Cook, the applicant’s representative, submitted that the Trade Mark is a coined phrase and has no meaning. The Lampert 1 declaration outlines how the applicant became established in the hair product business. According to Mr Lampert the applicant’s co-founder Carmen Tal was traveling in Israel when she experienced an oil treatment for her hair and that it was decided by Ms Tal and a group of other people to develop and perfect an oil treatment formula for hair. According to Lampert 2 the Trade Mark was coined by Carmen Tal in late 2006 to early 2007 by conjoining the words “Moroccan” and “Oil” and that the Trade Mark has no specific meaning.
A consideration of the Trade Mark shows that it is for the expression MOROCCANOIL in plain text. The applicant’s submission is that the Trade Mark must be considered as a whole being the conjoined term “MOROCCANOIL” rather than “MOROCCAN OIL”. The applicant has submitted that the Trade Mark is a coined phrase. However, it does not necessarily follow that an ordinary combination of two common words without a specific dictionary definition constitutes a “coined phrase” or for that reason constitutes a ‘covert’ or ‘skillful allusion’ to the designated goods.[7]
[7] See Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 (at p201).
I turn to the decision in Richard Jelacic v Leafguard Gutter Systems Inc[8] where the Delegate stated at [13]:
The fact that the words LEAF and GUARD are conjoined in the opposed trade mark, does not alter my consideration under section 41, as it is only a minor alteration.
[8] [2010] ATMO 20 (9 March 2010)
I believe that the above case is analogous to the one before me. The fact that the words “Moroccan” and “Oil” have been conjoined to make the Trade Mark does not alter my consideration under section 41 as it is only a minor alteration. When the expression MOROCCANOIL is read or pronounced it becomes clear the Trade Mark consists of the two words MOROCCAN and OIL. It is unlikely to be pronounced as anything but MOROCCAN OIL.
The opponent has asserted that Moroccan oil is a generic term used to describe an ingredient of hair care products to those Australian consumers purchasing those goods, Moroccan oil being an alternative name for argan oil. The applicant has submitted that the oil from the argan tree is not generally known as “Moroccan oil” as the argan tree is also cultivated in other countries including Israel. In regards to this, I refer to the decision in Moroccanoil Israel Ltd v Karan Gogna[9] where the Delegate stated:
Argan oil, as defined in the Macquarie Dictionary[10] is:
[T]he oil from the seed of the tree Argania spinosa, now growing only in semidesert soil in Morocco; used in cooking, cosmetics, and medicine.
Also, Moroccan oil.
I further note that Wikipedia[11] defines Argan Oil as:
[A] plant oil produced from the kernels of the argan tree (Argania spinosa L.), endemic to Morocco, that is valued for its nutritive, cosmetic and numerous medicinal properties. It is also known in cosmetic use as Moroccan oil. [emphasis added]
[9] [2013] ATMO 62 (12 August 2013) at 46
[10] The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd (2013)
[11] >
To quote directly from the advertisement in annexure A accompanying Lampert 1:
“We include our signature argan oil in all our products. A remarkable gift from nature found growing only in Southwest Morocco…”
This promotion by the applicant of its hair care products containing argan oil from Morocco, as well as the common descriptions in Wikipedia and the Macquarie Dictionary from 2013, belie the applicant’s submissions and further emphasize the origin of the oil and the descriptive meaning of the Trade Mark when applied to the relevant goods. I also note from the internet searches in the opponent’s evidence that a common interpretation of the meaning of ‘Moroccan oil’ is that it is another name for argan oil and is made from the kernels of the argan tree fruit that grows almost exclusively in Morocco. Apparently the fatty acids in Moroccan oil make it an excellent moisturizer that can improve the appearance of dry hair and skin and add shine to hair. Due to these properties, Moroccan oil has become a well-known beauty and hair care product.
Considering the goods claimed in the specification I am satisfied that the Trade Mark is indicative of the fact that the specified hair care products feature Moroccan oil which is understood by the average Australian consumer to be synonymous with argan oil when applied to hair care products. I believe that the Trade Mark is a term which is relatively straightforward, easily defined and well understood by the Australian consumers of hair care products. More than that, I find that other traders trading in the same goods are likely to think of this expression and want to use it without improper motive.
Having taken into account the presumption of registrability, I am nevertheless satisfied that the applicant’s Trade Mark has no inherent adaptation to distinguish and does not satisfy subsection 41(3) of the Act. However, the establishing of a section 41 ground of opposition need not be fatal to the application. Section 41(6) provides for the registration of trade marks that have no inherent adaptation to distinguish where it can be shown that due to the ‘extent’ that the applicant used the Trade Mark before the filing date the Trade Mark did, at the filing date, distinguish the designated goods as being those of the applicant. Therefore, I must consider the evidence of use of the trade mark before the filing date.
Application of section 41(6)
The applicant’s Trade Mark is a conjoining of two words and this matter is ultimately one of whether or not the Trade Mark is acting, in its own right, as a badge of origin for the applicant when applied to its hair care products.
In the Lampert 1 declaration and supported by the accompanying annexure “A” which is a copy of a letter stating “MOROCCANOIL has landed in Australia”, Mr Lampert states that the applicant commenced trade in Australia of its hair care products under the Trade Mark in September 2009. The Lampert 2 declaration indicates that the Trade Mark has been used in the marketplace since 2007, however, this refers to when the applicant commenced trading in Canada and the United States. The evidence currently before me shows that the applicant has extensively used its various MOROCCANOIL trade marks (the subjects of trade mark registration nos. 1221017 and 1375954) in the USA and internationally. Lampert 1 lists the international sales figures of the applicant’s hair care products and these figures are very considerable. However, it remains to be seen whether 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 as being those of the applicant.
Lampert 1 asserts that the applicant has extensively used the Trade Mark in Australia since September 2009 when it was launched at the Four Seasons Hotel in Sydney. Paragraph 20 of Lampert 1 contains a table with the approximate total annual sales for the applicant’s hair care products sold under the Trade Mark in Australia for the financial years 2009/2010, 2010/2011 and 2011/2012. These sales figures start modestly but grow steadily. I note that the applicant’s advertising expenditure in Australia for the same period of time is very modest.
The earliest advertisements of the applicant’s hair care products under the Trade Mark appear to be for the Australian launch of the product on 29 September 2009. The product advertised is a hair oil treatment. The photographs in Annexure C accompanying Lampert 1 are of various hair care products bearing the applicant’s MOROCCANOIL logos and are undated. It is unclear from the applicant’s evidence exactly when this wider selection of hair care products was made available and sold in the Australian marketplace. However, I note that Annexure E provides a number of examples of dated media coverage advertisements, press releases and articles of which one states that the applicant will be expanding its product range in Australia in 2010 although when in 2010 is not specified. All in all, I believe that a consideration of the applicant’s evidence establishes that the applicant has traded in the expanded hair care products in its specification for a little under two years before the priority date. I also accept that the applicant traded in hair oil in Australia for a little over two years.
Considering the evidence of use put forward by the applicant, I note that the vast majority of the evidence demonstrates use of the following MOROCCANOIL logos:
(Trade Mark registration no. 1221017)
(Trade Mark registration no. 1375954)
The use of the applied for Trade Mark, however, is limited. The examples of the applicant’s use of the Trade Mark are often seen in close conjunction with the above logos or other words. It appears that when the Trade Mark is being used and recognized as being in relation to the applicant’s hair care products it is used in close conjunction to the applicant’s MOROCCANOIL logos with the striking get-up of a bright blue/aqua label with a large gold M. When not used in close association with the stylized logos, the applicant’s evidence demonstrates that Moroccan oil is often used descriptively and in one case, in relation to the brand Pantene®.
The advertisements put forward by the applicant in Annexure E accompanying Lampert 1 are littered with articles which make statements about how the Australian public and/or publishers are using or perceiving the applicant’s Trade Mark in relation to hair care products:
…Over 2000 guests witnessed co-founder of Moroccanoil and executive vice president… (INSTYLE Hairdressing, 1.12.2009)
…“We will also have a deluxe Moroccan oil treatment that protects your hair from the sun and also conserve the colour…” (Bankstown Canterbuy Torch, 2.12.2009)
…Rockin’ Moroccan…It’s time you checked out the latest A-List hair repair treatment – Moroccan Argan oil… (OK, 1.12.2010)
..“Katy Perry and Taylor Swift are going crazy for Moroccan Oil…” (OK, 22.2.2010)
Jessica Biel praises Moroccan oil for ‘perking up hair’… Jessica Biel says she perks up her hair using Moroccan oil...(Belfast Telegraph, UK, January 2011)
…Another big fave, when it comes to looking after your locks is Moroccan Oil with many saying it keep summer-trashed hair looking moist and feeling fresh while there is some great buzz about a new range of Pantene hair products… (Rouge, 1.2. 2011)
Use as a business name or descriptive use is not use as a trade mark. I consider the decision of Jacob J in British Sugar Plc v James Robertson & Sons Ltd[12] where he stated:
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.
[12] [1996] RPC 281
Justice Jacob then went on to say the following:
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.
The applicant’s evidence is simply insufficient to show that its Trade Mark is being used to distinguish its goods. There is no reason that applicant cannot use one, two or several trade marks together in its advertising or on its packaging. However, the advertisements, promotions and press releases show what Jacob J described in Phillips Electronics NV v Remington Consumer Products Ltd[13] as a ‘limping mark’; that is, the trade mark mostly accompanied by the well known MOROCCANOIL logos. I refer in particular to Annexure F accompanying the Lampert 1 declaration which contains copies of press releases from the applicant. I note the press release dated 6 February 2009 which states:
How to Spot Genuine MOROCCANOIL At A Glance
To ensure that salons and consumers are purchasing and retailing true Moroccanoil, Ofer advises, “Look for the bright turquoise label with the large copper “M” in the Moroccanoil logo. It’s the only genuine Moroccanoil.”
[13] (1997) 40 IPR 279
I further note from the 6 February 2009 press release that the applicant is clearly attempting to educate distributors, salon owners and consumers that “Moroccanoil is our trademark name and not a generic product category”. Other copies of press releases within annexure F also make reference to how consumers can identify the applicant’s products by the bright turquoise blue label with large copper M in the Moroccanoil logo rather than the Trade Mark solus. This indicates that the applicant’s Trade Mark solus is not acting as a badge of origin for the applicant in the marketplace.
The applicant has referred me to the report of Adam Kilgarriff accompanied by Annexures I to S. Dr Kilgarriff has twenty years experience working in the field of dictionaries and dictionary making and I do not doubt his qualifications. The applicant submits that the report demonstrates that the Trade Mark is distinctive, that the majority of cases of the Trade Mark being used on the internet are in relation to the applicant and that the Trade Mark is associated predominantly with the applicant. I note the opinion of Dr Kilgarriff that the majority of the use of the Trade Mark or words Moroccan oil came about after the applicant commenced trading in its hair care products.
Dr Kilgarriff considered the instances of MOROCCANOIL and MOROCCAN OIL on the internet from 2012 using enTenTen12[14]. I note that the enTenTen12 corpus[15] was collected in 2012 so most material will have been written or published around that time or a little earlier. This makes it likely the majority of the information collected and assessed was after the priority date of the Trade Mark, so it has very limited weight in my considerations. However, I have considered the results and note that a considerable number of generic or compositional uses of the Trade Mark are to be found along with a considerable number of instances of usage which do not have enough evidence to catagorise as being in relation to the applicant, generic or compositional, cooking or spam. The instances of use in relation to the applicant are difficult for me to consider because I am unclear how the Trade Mark may have been used or if it was used (as most of the applicant’s evidence demonstrates) almost exclusively in close conjunction with the applicant’s striking MOROCCANOIL logos.
[14] enTenTen12 is a corpus of 11.2 billion English words with material gathered from the web using standard web-crawling techniques.
[15] A large and structured set of texts
I consider, from what it demonstrated in the evidence before me, that the applicant’s use of the Trade Mark in conjunction with the applicant’s MOROCCANOIL logos and identifiers shows that the Trade Mark does not on its own distinguish the applicant. Nor does the evidence provided sufficiently demonstrate that the Trade Mark has acquired a meaning related to the applicant which overshadows the common meaning attributed to it by Australian consumers in the marketplace. The applicant’s evidence does not satisfy me that the Trade Mark did at the filing date distinguish the goods of the applicant from the similar goods of other traders. I therefore take the trade mark to be not capable of distinguishing the goods of the applicant.
Decision
At the relevant time section 55 of the Act provided:
Decision
Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 41. Accordingly, I refuse to register trade mark application 1463962.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
9 October 2015
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