Beecham Group Plc v Colgate-Palmolive Company

[2001] ATMO 119

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,

WITH REASONS

Re:Opposition by BEECHAM GROUP PLC to registration of trade mark application 627162, 627163, 627164, 627165, 627166, 654795, 663643, 663644, 707231, 720396, 749582(3) - stripe devices- filed in the name of COLGATE-PALMOLIVE COMPANY.

Background

Colgate-Palmolive Company ("Colgate") has applied to register, as trade marks, 11 different  devices.  I have set out a table of the trade marks, with a simple word description of the colours of each.  In that table I have aimed to describe the colours in general terms.  The descriptions used are my own, and are subjective.  I have used terms such as "dark blue" or "mid-blue" simply to indicate that there are a number of variations of shade and hue in the Colgate applications.  Those colours are applied in different patterns, as shown on the application form in each case.  My attempt at a description is simply for the benefit of readers of this decision, on the pages of which the marks are all rendered in grey-scale tones.

Most of the trade marks are devices featuring a neatly-formed blob of toothpaste, all such blobs themselves featuring a different pattern of coloured stripes.  Application 654795 is an exception.  It consists of two brushstrokes, mid-tone blue-green, and white, with an underlying 3D shadow effect, all on a pale blue-green background.

The applications were filed, over time, in class 3 of the International (Nice) Classification of Goods and Services.  They were examined by the Trade Marks Office (TMO).  Each application was endorsed, when filed, with a limitation that makes it clear that the trade mark is rendered, and to be registered, in the particular shades and hues shown on the application form.

Ultimately, all of the applications were advertised as having been accepted for registration.  All now relate to goods that are typically specified as "dentifrices" or "toothpaste and mouthwash" or, at broadest, "oral care products in this class, including toothpaste and unmedicated mouthwash being goods included in class 3".   

Application	Trade Mark	Brief description	Priority date
627162	Striped mid-green on white	13/4/94
627163	Half light green, half white	13/4/94
627164	White stripes on green	13/4/94
627165	Layered, light blue above white above dark blue	13/4/94
627166	Layered, light green above white above mid blue	13/4/94
654795	Brushstrokes, mid tone blue-green, and white, with 3D shadow effect on pale blue-green background	2/3/95
663643	Layered, pale green above white above darker green	9/6/95
663644	Layered, blue on white	9/6/95
707231	Striped silver on white	23/4/96
720396	Layered pink on white on red	25/10/96
749582	Striped lighter and darker blue	26/11/97

As allowed by the legislation, registration of the applications has been opposed.  In the present matter, the opponent is Beecham Group plc ("Beecham").  Registration is also opposed by Unilever plc ("Unilever").  The Procter & Gamble Company opposes registration of the last three listed applications.  Those oppositions are separate, from each other and from the Beecham opposition, and will be dealt with in subsequent decisions as appropriate.

It is not at all unusual for more than one company or individual to separately oppose registration of a trade mark and I reject any inference that a multiplicity of oppositions is, in itself, a cause for any concern or added scrutiny.  I note that there is more than one opposition simply because this will, in the event that the present opposition fails, preclude registration.

Colgate, as I have said, has applied to register a large number of devices of blobs of different-patterned toothpaste.  It has, still pending, other applications subsequent to the ones now opposed, wherein the blobs of toothpaste feature speckles or dots (or, in two instances, neatly-rendered stars) either solus or added to the striping.  It is also an opponent, here and/or overseas, to the registration of comparable trade mark applications filed, inter alia, by Beecham and Unilever.  At the time of this decision, there were some 30 separate Australian applications, each including devices of striped or patterned blobs, filed by one or other of those firms, that had been accepted by the TMO and were progressing through the evidence stages of the opposition process.

So far as can be seen from the evidence, stripes such as appear in the devices in question are the sort of stripes that are applied to toothpaste when, at the time of extrusion from the tube, the outermost layer of the paste contacts segments of various colouring agents just inside the neck of the tube.  There is, at the present time, a practical constraint on the patterns that can be applied to toothpaste.  Spiralling patterns are not available, nor are rings of colour around the circumference of the blob.  Having said that, what is at issue here is not the registration of rights in the striping of toothpaste.  What is sought to be registered in each application, other than 654795, is the device of a particular, neatly-formed blob of a particularly-striped toothpaste, in specific colours.

Opposition Proceedings

The present matter concerns the oppositions initiated by Beecham.  Beecham has supported its case by filing and serving evidence in support of its opposition, as follows. 
Evidence in support

Declaration by	Dated	Annexures
Brett Lewis	26 June 1998	Exhibits A and B
Brett Lewis (Lewis 2)	20 July 2000	Exhibits BL1-BL5
Georgina Evans	17 July 2000	GE-1 and GE-2
Kevin Darke	24 July 2000	KD-1 to KD-12
Brett Lewis (Lewis 3)*	7 August 2000	Exhibits A and B
* This declaration is, strictly, part of the evidence in relation to application 749582 only.  However, the difference between it and the first Lewis declaration is, for present purposes, entirely immaterial.

The applicant, Colgate, has not served or filed any evidence in answer to the opposition, and both sides have requested the matter be heard.  At that hearing, Colgate did not appear, but relied on extensive written submissions prepared by Julia Baird of counsel, instructed by Gail Hill of the attorney firm of F. B. Rice and Co.  Beecham was represented in person by Brett Lewis, a Trade Mark attorney of the firm of Davies Collison Cave.

Issues and Decision

In its notices of opposition, Beecham has specified a wide range of grounds of opposition, all of them allowable under Part 5 of the Trade Marks Act 1995 (the Act).  However, at the hearing that finally resulted, Beecham has made it clear that it relies on three grounds; that the:

• trade marks sought to be registered are not capable of distinguishing, in terms of s 41 of the Act.

• applicant does not intend to use the marks

• trade marks are or may be deceptive in view of the apparent depiction of particular goods.

Because of this, Beecham argues that registration should be refused in all instances.

First ground:  Section 41

Turning to the first of these grounds, Mr Lewis noted the history of some of the opposed applications.  Specifically, he noted that applications 627165, 627166 and 663643 had all been the subject of an ex parte hearing. Hearing Officer Forno, deciding the matter at that time, was satisfied that, when limited to a specific pattern and colours, each trade mark was capable of distinguishing Colgate's goods.  Mr Lewis argued that, even though the decision of the Hearing Officer had been that the applications were all prima facie acceptable, I was required to carefully evaluate any argument to the contrary if it was raised in an opposition context.  I fully agree with this.  It is particularly appropriate here, given the history of the legislation and the evolution of the case law, to which I will come below.

A good starting point, therefore, is Mr Lewis's point that, in relation to s 41, there is no presumption of registrability.  Ms Baird, in her written submissions, argued that one does exist under s 33, and refers to Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 to prove it. She relies on the decision of French J who, at para 24, notes that the mandatory language of s 33 gives effect to the intention that there be such a presumption. An intention there certainly was - the second reading speech in Parliament when the legislation was introduced makes this clear. To quote:

The bill is expressed in terms that make it clear that there is to be a presumption of registrability when an application for registration is being examined by the Registrar of Trade Marks.  This means that if there is any doubt about whether a trade mark should be registered, that doubt will be resolved in favour of the applicant, rather than against the applicant as is now the case.

However, the presumption is not, in the light of Woolworths, supra, universally effective.  It does not run within s 41, a section with which French J was not concerned in Woolworths.  I think the situation is conveniently set out in Trade Mark Law in Australia, by Elkington, Hall and Kell, Butterworths, 2000.  The authors, on page 44, describe the balance between the terms of s 33 of the structure of s 41.  The latter was at issue in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498. The authors describe the resultant balance as follows:

...where the Act (as in s41 or 44(3)) requires the registrar to be satisfied that any matter has been demonstrated before the mark qualifies for acceptance, then the burden of satisfying the registrar remains on the applicant, and there is no presumption that it is satisfied.  But where the Act speaks not of the registrar being satisfied, but of an objective state of fact, (as in s 44(1) and (2)), the provisions in dispute in Woolworths, then the presumption does apply.

I would add, however, that the registrar's delegates are mindful of the intention of the legislation.  As I said in Blockbuster Entertainment Inc v Civic Video Pty Ltd [1999] ATMO 25, we strive, in responsibly applying the provisions of s 41, not to raise matters that are unreasonable, unnecessary or speculative. Matters that are reasonable, necessary and well-founded must, however, be faced. From that point there is a burden of proof upon the applicant.

Having said that, it is appropriate to turn to the structure and issues raised by s 41.  The provision itself, leaving aside some of the less relevant notes, reads:

Trade mark not distinguishing applicant's goods or services

41.(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:  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.
 (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.

(6) If the Registrar finds that the trade mark is not 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.

Senior Examiner Ryan, in other TMO decisions, has conveniently and succinctly paraphrased the issues that arise from this provision.  I adopt her words to set out the three conclusions that are open to me:

1. That the trade mark has sufficient inherent adaptation to distinguish to be capable of distinguishing.

2. That the trade mark has no inherent adaptation to distinguish.  The onus is then on the applicant to demonstrate to the Registrar's satisfaction that, at the filing date, the trade mark nevertheless distinguished the designated goods or services, by reason of use.  If this is demonstrated, the Registrar must find that the trade mark is capable of distinguishing in terms of s 41(6).

3. That the trade mark has some inherent adaptation to distinguish, but insufficient to be capable of distinguishing on that basis alone.  The onus is then on the applicant to demonstrate to the Registrar's satisfaction that, by the combination of the extent to which it is inherently adapted to distinguish, and/or the use or intended use of the trade mark by the applicant, and/or any other circumstances, the trade mark does or will distinguish the designated goods or services in terms of s 41(5). 

The first conclusion is the one previously drawn by Hearing Officer Forno in accepting applications 627165, 627166 and 663643 for possible registration.  Neither those, nor any of the other trade marks of which Beecham has opposed registration, have been shown to be in use.  Therefore, to reduce matters to their simplest, unless I come to the same conclusion as the Hearing Officer, it would follow that the opponent, addressing its onus under s 55, has successfully established a ground of opposition and that, because of this, I should refuse to register the application.

Mr Lewis drew my attention to the evidence, which includes his own declarations.  The evidence showed, to briefly summarise his argument, that it was by no means unusual for toothpaste to be striped in various ways.  Beecham does it, Colgate has filed many applications for trade marks, suggesting that it is intending to do it, and it has been done before now overseas, in a case in which Colgate opposed registration of a relevant device mark by Unilever.

Mr Lewis attacked the acceptance of the present trade marks as being out of step with the decisions in Re Notetry Limited, [1999] ATMO 24 and ReFlower Carpet Pty Ltd [2001] ATMO 35, and with Part 21 of the TMO Draft Manual of Practice and Procedure.  His primary argument was that, to decide if a trade mark is capable of distinguishing particular goods, I need to consider the likelihood that another trader would without improper motive choose similar colours to be applied to products.  This required me to assess, he argued, whether:

• there is a competitive need for the colour or colour combination within the particular market.

• the device is common to the trade.

• the trade mark is intended only as a badge of origin or whether it has another function (eg. decorative, utilitarian or functional).

• the device is a representation of the product itself.

Ms Baird, to forestall any adverse decision, made extensive written submission on the s 41 issue.  Much of her criticism of the opponent's evidence is valid.  It will be efficient if I leave the detail of the evidence to emerge in due course.  However, as to its trend, she argued that:

1. in large measure the declarations comprise merely submissions and argument, unsubstantiated and egregious assertions of mala fides and of monopolisation, which are inappropriate in this forum and in the mouth of a worldwide competitor should be accorded no weight;

2. much of the material sought to be relied upon dates from after the priority dates of the applications, is anecdotal and irrelevant;

3. the material includes examples of other applications filed by Colgate postdating the priority dates of the applications, undated and filed in other jurisdictions, put in evidence selectively, argumentatively and out of context.  Beecham's complaint appears to be that the filing of diverse applications, later in time and in other jurisdictions, is somehow conduct undeserving in relation to the subject applications.  ... the proper approach is to consider each of the applications on its own merits, in accordance with Australian trade mark law, as at its priority date.

Under these three headings, Ms Baird was critical of the statement, in Lewis 2, that it is "common for personal care products to include on the packaging a representation of the product contained within".  As Ms Baird argued, there is no evidence to show that this was so at the filing date.  She argued that a sufficiently stylised representation of the product in question can constitute a trade mark.  The question is: "is the level of stylisation sufficient?"  Ms Baird argued that the devices were more than simple depictions of blobs of toothpaste. 

I agree with Ms Baird that there is more to the matter than this.  It is obvious, as well as being in the evidence on which Mr Lewis relied, that traders in products for personal care frequently depict their particular goods on labels or on outer packaging.  The question is, is the relevant depiction of a particular blob of a specific, striped toothpaste capable, when used as a trade mark, of distinguishing Colgate's goods from those of others?

Ms Baird noted that there are many ways that a toothpaste may be striped and, being striped, formed into a blob.  It is said, in the Darke declaration, that the colours white, green, blue and red are common, as single colours, to the toothpaste trade.  In other words, as Mr Lewis noted, there is evidence that the colours of the stripes, or of the layers as the case may be, are all common to the trade, at least at the time of his declaration.  However, that evidence post-dates the filing of the opposed applications. 

I agree with Ms Baird that there may well be ways that a similarly striped toothpaste could be used that would not infringe a registration of a particular device in the name of Colgate, should I allow one to come into being.  She noted that the oil drop man did not infringe in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; similarly, re the trade mark ‘KETTLE’ and the descriptive use of that word in the phrase ‘double crunch kettle cooked potato chips’ on packets of crisps in Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 33 IPR 161.

I accept, therefore, that there may well be ways that a picture of a particular blob of striped toothpaste can lawfully be used by a competitor, for example descriptively or for purposes of "how-to-use" instruction.  Those ways are not at issue: what is critical in an infringement case is use as a trade mark, a badge of origin.  What is critical here, however, is whether the trade marks are capable of distinguishing Colgate's goods.

Ms Baird also argued that it is beside the point that Colgate may manufacture toothpaste with this or that precise combination of stripes, matching the stripes on the device in question.  I agree that this alone does not make the devices descriptive to a level that is relevant to s 41, since there is nothing in the evidence to suggest that the stripes are necessary in the first place.  They are, perhaps, simply a gratuitous novelty, an addition, not for any functional purpose.  The descriptiveness argument, taken to extremes, would hold that the device of a vulture was "descriptive" because it indicated that the toothpaste had, on the cap, a picture of such a bird.  In that limited sense the vulture device may be "descriptive" but it would be extreme to hold that it was not also capable of distinguishing for the purposes of s 41.

Colgate submits that the devices shown on the application forms "can and do" function as trade marks.  Section 17 provides that "a trade mark is a sign used, or intended to be used, to distinguish goods or services... (from those of others)".  Its terms are thus relevant.  I accept that the present devices can, in theory and to some degree, distinguish, as I will explain below.  As to "does", or even "will" do so, Mr Lewis argued that further analysis is required, because of matters that are now in evidence.

Ms Baird argued, as I have said, that the various devices are not descriptive of the goods, because of the number of possible options for colour, arrangement and proportioning of stripes.  Ms Baird was very critical of the relevance of evidence of the manufacture and sale of striped toothpastes by Beecham, and of the later applications by Colgate to register numerous other stripe devices as trade marks.  She argued that the fact that Colgate seeks to register many trade marks should not, in itself, make it harder to register any one of them.  Likewise, I agree that it may be misleading to look, out of context, at the arguments used, and the positions taken, under the different legislation in overseas jurisdictions.  There is some logic to Colgate seeking to register, here, a trade mark somewhat like the pattern applied to Unilever's SIGNAL toothpaste.  That matter resulted, in the United Kingdom, in an opposition case that was referred to recently in the Full Federal Court decision of Koninklijke Philips Electronics Nv v Remington Products Australia Pty Ltd, 48 IPR 257. The actual UK decisions are in evidence as part of the Evans declaration. It is a matter of record that, in the United Kingdom, Colgate argued vigorously, in opposition and on subsequent appeal, twice, that Unilever should not be allowed to register a device of a red and white striped blob of toothpaste, because, inter alia, it was not a trade mark.

Ms Baird noted that there is evidence that Beecham has offered for sale, in Australia, two different striped toothpastes since about 1990.  There is also undisputed evidence that, prior to this, there was on the market a two-striped product, aqua and white, marketed until at least the early 1980's.  While the evidence showing actual instances of the appearance of these pastes is itself subsequent to the filing date of the opposed applications, the facts declared to are undisputed and not susceptible to that criticism.

Ms Baird took issue with the evidence of Kevin Darke that "it is common in Australia for toothpaste manufacturers (meaning, Ms Baird suggests, principally Colgate and Beecham) to manufacture and market toothpastes in a variety of striped colour combinations".  Ms Baird argued that this evidence is unsatisfactory because Mr Darke has not been specific about what constitutes use sufficient to support the assertion it is ‘common in Australia’.  However, I do accept the central tenet of Mr Darke's thesis, that "striped toothpastes are not a recent phenomenon".  Exhibits KD-9, a video, and KD-6, a copy of the September 1996 edition of Choice magazine, bear this out.  Exhibit KD-9 shows that there have been television advertisements of toothpastes striped green and white; red, white and blue; and white with light and dark blue.  These advertisements were, in the first two instances, prior to October 1995 and, in the third, October 1997.

The strong point of Ms Baird's case is her comment that none of the Beecham toothpaste devices approximate those sought to be registered by Colgate.  Therefore, she says implicitly, since the number of possible devices incorporating stripes is limited only by human ingenuity, and since there is no apparent conflict in practice, Colgate's devices must be capable of distinguishing.  This is because, she says, none of the devices is the only device that a trader could use for the goods.  She argued this demonstrates, in the words of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514, that no other trader:

being actuated only by proper motives in the exercise of the common right of the public to make honest use of words (devices, in this case) forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word (device) and want to use it in connection with similar goods in any manner that would infringe a registered trade mark granted in respect of it. 

Here she went to the heart of s 41.  For my part, having heard the arguments of Mr Lewis and assessed the evidence in the light of the comments of the parties, I disagree with her conclusion and I do not agree that these trade marks, with the exception of 654795, are capable of distinguishing. 

There is evidence that there has been, in the relevant trade, a pattern over time of the use of stripes of particular colour combinations.  Colgate, in making the applications, asserts that it intends to use various devices of striped toothpaste as trade marks.  Therefore, unless the number of significant variations, by which I refer to meaningfully different patterns available to others, is reasonable, care is called for.  Potentially, if the number of such variations is not great, there is a rising likelihood that the sort of traders to whom Kitto J referred will want to use the pattern in question, or one significantly like it, as a trade mark.  In each instance, it will be a question of degree, taking the norms of the trade, and the options open to all traders, as background.

I do not say that the number of possible variations here is small.  However, on the other hand, some of the variations shown in the opposed applications, and others in the evidence, are relatively trifling.  Having looked at the manner in which the various stripe devices are arguably to be used, I very much doubt that much of the market would, without extensive promotion of the importance of the stripes or layers, be overly concerned about them.  I doubt that any significant number of people would notice if, for instance, a sixth silver stripe was to appear as part of the trade mark on a carton that now (hypothetically, since there is no evidence of use) displays trade mark 707231.  Similarly, if pink was substituted for red, or green for blue in any of the devices, I doubt that there would be much impact.  The variations are, on the face of the evidence, just what Choice and Ms Evans have referred to as gimmicks, the sort of thing that may be here today, gone tomorrow and have served no significant function in between.  Certainly, without evidence of use, and given the evidence of Beecham, I am far from convinced that they will be perceived by customers to have served any function as an identifier.

I do not say that any one of them is the only such device, or that they are ordinarily so used.  Here I quote the Note to s 41(6), said by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks, [2000] FCA 177, to fairly reflect the trend of relevant judicial authority. The striped devices here are not in the same league of commonality or predictability as the silver and yellow cases of vacuum cleaners (Re Notetry Limited, [1999] ATMO 24) or pink pots for roses (ReFlower Carpet Pty Ltd [2001] ATMO 35, to which Mr Lewis drew my attention.

I note Ms Baird's argument that Colgate's device marks have specific and striking features.  I note, conversely, that in the Darke declaration there is the following statement of opinion:

Highly stylised or otherwise distinctive toothpaste nurdles may be viewed by consumers as indicating not only the toothpaste type but also the manufacturer/brand of toothpaste.  In my opinion, the representation of toothpaste nurdles covered by the applications that are the subject of these proceedings are not sufficiently stylised or otherwise distinctive to be capable of performing a branding use.

Similarly, in Lewis 2, Brett Lewis has declared that, in his opinion, the devices are "ordinary representations of toothpaste nurdles as they are extruded from toothpaste tubes".  While I accept Ms Baird's caution that these statements, by Mr Darke and Mr Lewis, are simply ones of personal opinion, from sources that may be "self-serving", I think that they are highly apposite.  Mr Lewis, to judge from the photos exhibited to Lewis 2, has been unable to produce, using appropriate tubes of various toothpastes, blobs resembling the neat renditions of the shapes in question, particularly when it comes to the striping.  Thus, Mr Lewis is not correct when he declares the representations to be "ordinary".  However, I think this is something of a side issue:  Colgate's devices are not stylised representations of a blob of striped toothpaste so much as idealised representations.  The fact that they may be neater and more precise than can be replicated in use is not convincing. 

Similarly, I do not think there is much distinguishing ability in either the sausage-like end of any of Colgate's toothpaste blobs, or in the (arguable, but far from obvious) twist in the tail of some of them.  While I assess each trade mark as a whole, neither the neatness of the striping nor the shape of the blobs contributes significantly to any of the marks in terms of matters under s 41.  The stripes on the blobs are the key to the matter.

At hearing, Mr Lewis was critical also of the filing by Colgate of many more stripe applications, these nearly all incorporating sparkles or speckles, another 22 applications in total, all still under examination at the TMO.  This, Mr Lewis argued, was an attempt by Colgate to pre-empt other competitors and gain a monopoly on a substantial proportion of what I have already agreed can properly be described, as in the evidence, as "gimmicks".  However, I believe that the balance applied under s 41 will sufficiently protect the "great common" of gimmickry as much as it will the more familiar common of English words.

I think the proper question can be reformulated, in the light of the evidence, to this:  "Given that striping of toothpaste is known and by no means unusual, and not, anywhere in the evidence, shown to be serving as an identifier, is the device of a particular blob, bearing a particular pattern of stripes, capable of distinguishing Colgate's products?"

I do not, as I have said, suggest that the devices in question are entirely without inherent adaptation to distinguish.  There are, after all, many such combinations open to other traders, even though Colgate does appear to be attempting, right at this moment, to register all at once a fair proportion of them.  I accept that there is, in these devices, some measure of inherent adaptation.  None the less, I say that the evidence brought forward by Beecham is such as to show that the extent of inherent adaptation possessed by all of the trade marks in question, save 654795, is somewhat impaired.  I believe that I cannot say there is sufficient inherent adaptation in them, without convincing evidence of use, to allow me to be satisfied that the remainder are capable of distinguishing.

In what follows, it will be convenient to continue to exempt application 654795.  That trade mark involves two brushstrokes, mid tone blue-green and white in colour, with an apparent underlying shadow effect, on a pale blue-green background.  Rendered in black and white, it appears as follows:

Because, as a device, it is relatively unlike the various blobs that are the subject of the remaining oppositions, it is simply not amenable to the criticisms levelled at it in the notice of opposition and at the hearing. 

All of the other applications in question are new, apparently unused and of a type that, to some degree, may otherwise be wanted by other traders.  There is no high degree of this, as there are many such possible combinations.  None the less, if the function of s 41(5) is to protect the great common of such marks, what Colgate is about looks uncommonly like a pre-emptive claim.  This might suggest that not all of these marks are intended to be used, as Mr Lewis argued.  That is an argument that would, made in relation to any single application, require more support.  Even so, I think, when such a number of pending applications is involved, I am required to consider that circumstance, just as I am any of the other circumstances set out in s 41(5).  It is something that initially leans towards a finding that these trade mark applications are best dealt with under s 41(5) rather than s 41(3), and somewhat raises the onus on Colgate under the former subsection.

I therefore find that Beecham has established a ground of opposition under s 41 in relation to applications 627162, 627163, 627164, 627165, 627166, 663643, 663644, 707231, 720396 and 749582.

Second ground:  Section 59

The relevant legislation reads:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

Under that heading, Mr Lewis argued that the multiplicity of Colgate's applications dilutes the strength of each mark the subject of the opposed applications.  His submission, in other words, is that multiplicity, in itself, must cast some doubt on whether Colgate has the required intention to use under Section 27(1). 

He noted that paragraph 3 of Georgina Evans' declaration, with exhibit GE-1, provides details of Colgate's worldwide filing program.  I agree that this is extensive.  I also note that she states that "in view of the practicalities of manufacturing toothpaste, I believe that Colgate can have no intention of manufacturing encompassed (sic) by their trade mark applications."  She goes one to say that the filing program is simply an effort to monopolise the market for "coloured toothpastes and toothpastes incorporating marketing gimmicks such as speckles, stripes, stars and globules".

Mr Lewis also referred to his own evidence about the number of pending applications in addition to those currently under opposition.  I agree with Ms Baird at this point, to the effect that having a number of applications should not in itself complicate the registration of any of them by undermining, to a significant degree, the presumption that there is an intention to use it as a trade mark.  However, this case is far more complex than was envisaged in Aston v Harlee, 103 CLR 391 at 401. There it was suggested that a trader intending to use only two trade marks might be permitted to register three, notwithstanding that he had not decided which of the three he would use. Here, the only evidence impugns Colgate's intentions, on what appears to me to be a sound practical ground. Perhaps, despite the high number of trade marks involved in the present case, it would seem a relatively simple matter for a toothpaste manufacturer to use all or at least most of them. Perhaps the marks would not all be used concurrently. However, the evidence of Ms Evans, together with the high number of filings and with an absence of any evidence of use, is sufficient to put some onus on Colgate. It would have been an easy thing for Colgate to have explained itself, that being so, but it has not. I refuse, in the circumstances of this case, to engage in speculations on behalf of the applicant.

In the lack of any countering evidence at all from Colgate, I find that this ground has been established in so far as it applies to the devices of blobs of striped toothpaste.  However, Ms Evans has not addressed the potential inherent in the brushstroke mark.  That mark, application 654795, is a single application for a more abstract trade mark.  It is, at most, an allusion to the marketing gimmicks referred to by Ms Evans.  Therefore, in relation to application 654795 alone, no ground of opposition has been established.

Third ground:  Section 43

This provision reads:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Mr Lewis conceded that s 43 relates to the inherent nature of the mark itself, rather than a competing claim based on reputation.  It does not, on the authority of T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc, [2000] FCA 720, deal with connotations that arise from things external to the trade mark. Ms Baird's written submissions appear to have been framed partly as a reply to a broader reading of s 43 that is no longer tenable in oppositions before the registrar's delegates.

Under s 43, Mr Lewis argued that the marks are, inherently, representations of toothpaste and are misdescriptive for other goods.  With the exception of application No. 654795, the goods covered by the opposed applications cover more than "toothpaste".  Applications 627162, 627163, 627164, 627165, 627166, 663643 and 663644 cover "dentifrices".  The Macquarie Dictionary defines "dentifrice" as "a powder, paste or other preparation for cleaning the teeth".  Mr Lewis argued that the goods covered by these applications should, at the very least, be restricted to "toothpaste". 

Similarly, he noted that 707231 covers "oral care products in this class, including toothpaste and unmedicated mouthwash being goods included in class 3", and that 720396 covers "toothpaste and mouthwash being goods included in class 3".  Mr Lewis argued that, to prevent any possible misdescription, both applications should be restricted to those that were pastes or in paste form. 

While clearly that argument does not extend to application 654795, which is already restricted to toothpaste, Mr Lewis went further.  He argued that all the marks are representations of toothpaste in particular colours and their use will be misdescriptive in relation to toothpastes in other colours.  This, of course, is the obverse side of his argument that the marks were descriptive of toothpastes that are produced in the colours in question.

Dealing with the "paste" aspect first, I note that the wording of s 43 requires me to exercise a judgement about the probability that deception or confusion will occur.  No ground of opposition is established unless I am satisfied that the use of the trade mark "would" be likely to deceive or cause confusion.  The test is a subjective one, on the balance of probabilities.

It is sufficient if I am satisfied that the trade mark is likely to be used, for any of the goods covered by the application, so as to give rise to the necessary magnitude, "a real tangible danger"[1], of deception or confusion.  In Registrar of Trade Marks v Woolworths, supra, French J said something of s 44 that is, with modification, applicable to s 43.  That was, deleting words that are inappropriate:

[1] Based originally on Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. A similar analysis applies where, as here, the onus is on an opponent to establish a ground of opposition.

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder .... It is enough if the ordinary person entertains a reasonable doubt.  

In a somewhat similar case, Colgate recently opposed the registration of applications 720492, 720493, 720494 in the name of SmithKline Beecham Plc[2].  The applications were to be registered for goods including "non-medicated toilet preparations".  Hearing Officer Purvis-Smith, when dealing with an argument that the words MILD 'N MINTY would be likely to deceive or cause confusion on toothpastes of other flavours, said simply:

[2] Colgate-Palmolive Company v SmithKline Beecham Plc [2001] ATMO 62 (16 July 2001)

There is no evidence before me that the proposed products do not comply with the descriptions "Triple Protection" or "Mild 'n Minty".

Obviously these terms are somewhat subjective.  Even so, the trade mark with which Mr Purvis-Smith was concerned would have been deceptive on goods that did not have at least some element of mint about their flavour.  Similarly, there are situations in which the current trade marks might, without some attention to detail, cause doubt or uncertainty.  However, I have no basis at all to assume that Colgate will allow such doubts or confusion to arise and they are, prima facie, less than reasonably likely.  Therefore, the usual levels of care and attention - though these are only those of the ordinary casual shopper - will preclude deception or confusion. 

The same conclusion applies to Mr Lewis's argument that a device of one particular pattern of toothpaste striping would be deceptive if applied to toothpastes striped in any other way.  I therefore decline to require any further restriction of the goods covered by the application.

Indeed, the registration process is not an ideal way of dealing with such concerns, if I had them.  The most I could do would be to impose, as a condition of registration, terms requiring attention to the details of packaging etc so as to prevent any significant level of deception or confusion.  The only result of this, in turn, would be to hold the registration open to rectification in the event of any possible future misuse, when the terms of s 88(2)(a) already expose it to such revocation if it is misused in that way.  In legislation that features a newly-created presumption of registrability, it would be wrong for me to impose such conditions arbitrarily.  Without more, to do so would be a poor exercise of the discretion I have under section 55.

Conclusion

Beecham has established grounds of opposition under s 41 and s 59 in relation to applications 627162, 627163, 627164, 627165, 627166, 663643, 663644, 707231, 720396 and 749582.  I therefore refuse to register those applications.  I direct that registration of application 654795, against which Beecham has been unsuccessful, not proceed until the opposition by Unilever has been decided or, perhaps, given the complex background of these cases, discontinued. 

At this stage, I make no award of costs.  I will deal with that matter separately.

Terry Williams
Hearing Officer
29 November 2001