Campbell Soup Company v Heinz Company Australia Limited
[2015] ATMO 73
•17 August 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Campbell Soup Company to registration of trade mark application 1511565 (29) - SOUP OF THE DAY - filed in the name of H.J. Heinz Company Australia Limited.
| Delegate: | Heath Wilson |
| Representation: | Opponent: Cate Nagy of King & Wood Mallesons. Applicant: Ben Fitzpatrick of Counsel instructed by Griffith Hack. |
| Decision: | 2015 ATMO 73 Opposition under section 52 of the Trade Marks Act 1995 – grounds of opposition pursued under sections 41, 58, 60 and 42(b) of the Act - 41(5) applicable – trade mark refused registration. |
Background
On 30 August 2012, H.J. Heinz Company Australia Limited (‘the Applicant’) applied to register a trade mark, the current details of which are extracted below:
Trade Mark no: 1511565
Trade Mark: SOUP OF THE DAY (‘the Trade Mark’)
Specification of Goods:
Class 29: Soups, broths and broth concentrates, consommes and soup preparations, all of the aforementioned being shelf stable, packages and canned
(‘the designated goods’)
The Trade Mark was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and a ground for rejection was raised under section 41(5)[1]. After the Applicant provided submissions in support of acceptance and agreed to qualify its goods as “all of the aforementioned being shelf stable, packages and canned” the Trade Mark was accepted and the advertisement of that acceptance appeared in the Australian Official Journal of Trade Marks on 9 January 2014.
[1] Section 41 of the Act as it stood prior to amendments to that section brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012. (Schedule 6, Item 113). Unless otherwise indicated, all references to section 41 in this decision are to the section as it stood prior to the amendments.
During the ensuing opposition period, a notice of intention to oppose the registration of the Trade Mark was filed by Campbell Soup Company (‘the Opponent’). The statement of grounds and particulars that followed listed opposition grounds under sections 41, 58, 60 and 42(b) of the Act. After the Applicant indicated its intention to defend the trade mark application, evidence was filed by both parties, as set out below:
Evidence in Support
Statutory Declaration of Kate Dalwood (Marketing Manager – Campbell’s Real Stock at Arnott’s Biscuits Limited) made 30 July 2014 with Exhibits 1 to 11.
Statutory Declaration of Anna Rosalind Patricia Spies (Solicitor at King & Wood Mallesons) made 25 July 2014 with Exhibits 1 to 7.
Evidence in Answer
Statutory Declaration of Tanya Vaysman (Senior Corporate Counsel of the Opponent) made 30 October 2014 with Annexures 1 to 26.
Following completion of the evidence stages, the hearing of the opposition was scheduled for 22 May 2015 in Canberra. The matter was allocated to me as a delegate of the Registrar of Trade Marks. I subsequently made directions before the hearing for the filing of written summary of argument with which both parties complied. The Opponent’s submissions confirmed that it was relying on all the grounds of opposition it had particularized earlier.
I heard the opposition on the scheduled date. Cate Nagy of King & Wood Mallesons appeared on behalf of the Opponent. Ben Fitzpatrick of Counsel (instructed by Griffith Hack) appeared on the Applicant’s behalf.
Grounds and Onus
The rights of the parties are to be determined as at the date of application[2] which is generally the filing date.[3] The Opponent bears the onus of establishing a ground of opposition.[4] The standard of proof is the balance of probabilities.[5]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[3] See sections 6, 12 and 72 of the Act for exceptions to this general statement.
[4] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32].
[5] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
At the hearing, Ms Nagy stated that the ground of opposition under section 41 of the Act was the primary ground being pursued. If that ground were unsuccessful the grounds under sections 58, 60 and 42(b) were argued in the alternative. The main argument was essentially that the expression ‘Soup of the Day’ is descriptive and should be free for other traders to use in relation to the designated goods. However, if I were not satisfied in that regard, then Ms Nagy argued that it is the Opponent in any event that has the earlier use of the expression as a trade mark in the Australian marketplace (and should succeed under section 58) and/or has the earlier reputation in its own trade mark amongst a significant number of Australian consumers such that the use of the Trade Mark would be likely to deceive or cause confusion (and therefore should be successful under section 60). The Opponent also argued that the use of the Trade Mark would be contrary to law (section 42(b)), specifically section 18 of the Australian Consumer Law.[6]
[6] Schedule 2 to the Competition and Consumer Act 2010 (Cth).
Discussion
At the time the opposed trade mark application was filed[7], the relevant provisions of section 41 of the Act provided:
[7] As to the applicable date of the 2013 amendments to s 41, see the comments of Delegate Lyons in Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50 at [10]-[15].
41Trade mark not distinguishing applicant’s goods or services
(1)…
(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:For goods of a person and services of a person see 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:For goods of a person and services of a person see 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).
Under section 41 the Opponent bears the onus of satisfying the Registrar that the Trade Mark is not capable of distinguishing the designated goods. However, if the Opponent can satisfy me that the Trade Mark is not sufficiently inherently adapted to distinguish the designated goods or is not to any extent adapted to distinguish, the onus shifts to the Applicant. Under section 41(5) the Registrar must be “satisfied” that the Trade Mark does or will distinguish and section 41(6) requires the Applicant to “establish” the trade mark does in fact distinguish as at the filing date.
Ms Nagy argued that the Trade Mark was not to any extent inherently adapted to distinguish the designated goods from those of other persons. That being so, she argued any use of the Trade Mark before 30 August 2012 (‘the filing date’) by the Applicant is minimal and section 41(6)(a) is not applicable in this case. Further, it was submitted that in the event the Registrar determines the Trade Mark is to some extent inherently adapted to distinguish, the Applicant’s level and manner of use would nevertheless be insufficient to satisfy the provisions of s41(5)(b) of the Act.
‘Inherently Adapted to Distinguish the Designated Goods’
With regard to determining whether a trade mark is adapted to distinguish, in Clark Equipment Co v Registrar of Trade Marks[8](‘Clark Equipment’) Kitto J said:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.
…
[T]he question whether a mark is adapted to distinguish 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.
[8] (1964) 111 CLR 511 at 514; [1965] ALR 344 (at 346).
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[9] (‘Cantarella’) confirmed that the test for inherent adaptation to distinguish set out in Clark Equipment remains appropriate.
[9] [2014] HCA 48; (2014) 109 IPR 154.
Mr Fitzpatrick firstly argued that the majority findings in Cantarella are authority for the proposition that, if a trade mark is not a ‘direct reference’ in relation to the designated goods then it must, prima facie, be inherently adapted to distinguish those goods. He secondly proposed that it would be impermissible in the assessment under section 41(3) to take into account goods that are similar to those for which registration is being sought.
I will comment further on the purported effects of Cantarella as submitted by Mr Fitzpatrick, but I firstly note the following comments of Middleton J in the recent case of Verrocchi v Direct Chemist Outlet Pty Ltd[10] (‘Verrocchi’):
The proper test for assessing the inherent capacity of the registered trade mark to distinguish the designated services for the purposes of s 41(3) still remains that articulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 at [59] recently endorsed this test, and in so doing made the following observations:
The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from [Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 (‘Du Cros’)]... is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.
Consideration needs to be given as to the degree of inherent adaptability to distinguish so as to determine whether sections 41(3), 41(5) or 41(6) of the TM Act apply and then, consideration needs to be given to any use made prior to the filing date of the registered mark. [Emphasis added.]
[10] Verrocchi v Direct Chemist Outlet Pty Ltd [2015] FCA 234 at [103]-[104] (emphasis added).
Verrocchi did not concern words or expressions in a foreign language as Cantarella did, but rather concerned a slogan signifying a geographical location, price and nature of the business. It confirms (if confirmation were needed) that the comments made by the High Court in Cantarella are applicable generally to trade marks assessed under section 41 (that is, are not limited to trade marks consisting of or containing a foreign word). Having said that, the consideration of the “ordinary signification” of any words (English or foreign) is not only whether it has "direct" reference to the character and quality of goods. It also may include (for example) whether the word is a laudatory epithet or a geographical name, or a surname, or it has lost its distinctiveness, or it never had the requisite distinctiveness to start with.[11]
[11] See Cantarella (supra) at [71].
I also note that the majority in Cantarella held [at 59] that when the ‘other traders’ test from Du Cros is applied (other than to geographical names or surnames) then goods which are the same or similar to the designated goods are taken into account. However, it must be noted that the use of the expression ‘similar goods’ in the Clark Equipment test had a different meaning under the 1955 Act and should not be equated with the definition in section 14 of the 1995 Act.
‘A Direct Reference to the Goods’
The first proposition by Mr Fitzpatrick requires consideration of the meaning of a ‘direct reference’ to the character or quality of the goods as it is used in trade mark law. ‘Direct reference’ in section 24(1)(d) of the Trade Marks Act 1955 meant apt for normal description. The meaning of the words ‘direct reference’ as they appeared in s 16(1)(d) of the 1905 Act, were considered in Mark Foy's Ltd v Davies Coop & Co Ltd.[12] That case made it clear that one should not embark on a search for meaning because to do so would indicate that the “words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods”. The words must convey a meaning or idea sufficiently tangible to amount to a ‘direct reference’. This does not mean that only those words which are the actual name of the product or services may lack inherent adaption under section 41, but the word/expression must have a sufficiently tangible idea or meaning in Australia. The subsequent test is whether other persons will think of the word and wish to use it relation to the same or similar goods.
[12] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 at 194.
The majority in Cantarella considered trade marks at both ends of the spectrum; those which were considered to convey an allusive, covert or metaphorical meaning (e.g. ‘TUB HAPPY’) and those which were considered to be directly descriptive of the goods (e.g. ‘Rohoe’).
A ‘direct reference’ to the goods therefore has particular historical meaning and is but one aspect of determining the ordinary signification of words. For example, words that are laudatory epithets, geographical names, surnames or they may have lost distinctiveness, may not be a direct reference to the goods but may nevertheless attract a ground for rejection under section 41. I note in Cantarella the comments in the dissenting judgement of Gageler J[13]:
What is significant for present purposes is that a conclusion, based on the application of the Tub Happy test, that a word does not have direct reference to the character or quality of goods or services, is not itself a conclusion that the word is inherently adapted to distinguish the goods or services of the applicant from the goods or services of other persons.
[13] Cantarella (supra) at [98].
I do not agree with (and do not understand the majority judgment in Cantarella to be authority for) a general proposition that words which lack a ‘direct’ reference to the goods are therefore prima facie inherently adapted to distinguish. I turn now to the second main aspect of the Applicant’s argument.
‘Similar’ Goods
The test for ‘inherent adaptation to distinguish’ in Clark Equipment (extracted earlier in this decision) refers to other persons who “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”. Mr Fitzpatrick argued that the mention of ‘similar’ goods in the test in Clark Equipment should be understood in context and highlighted the following comments from the majority in Cantarella at [70]:
[W]hether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods which the proposed trade mark is to be applied.
And at [39] discussing the “Orlwoola”[14] decision:
In drawing their conclusions in respect of the three trade marks under consideration, their Lordships indicated that the determination of whether a word has “direct reference” to goods (prima facie precluding a monopoly of its use) depends critically on the goods themselves, because a word containing a direct reference to goods in one trade may not convey any such direct reference to goods in another trade. An example given later was the use of the words “North Pole” for bananas.
[14] Orlwoola Case [1910] 1 Ch 310 at 144 per Cozens-Hardy MR.
Mr Fitzpatrick also pointed out the wording of section 41 of the Act where ‘designated goods’ are defined as the ‘goods… in respect of which the trade mark is sought to be registered.’ The above comments highlight that an initial consideration of the ‘ordinary signification’ of the trade mark takes into account the goods on which the trade mark is to be applied.
However, when deciding whether ‘other traders’ might legitimately desire to use it, one must consider that question in relation to goods similar to the designated goods. I note that the consideration of ‘similar goods’[15] in relation to the legitimate desire of other traders to use a word (or shape) has been applied consistently in previous decisions from the courts[16] and it was reinforced in Cantarella at [59]:
When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. [Emphasis added in bold]
[15] The word ‘similar’ in this context should not be equated with its ordinary definition rather than the definition in section 14 of the Act.
[16] See, for example, Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494; [2002] AIPC 91-817; 56 IPR 30 at [145]; and Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 at [52].
As a result, the ‘other traders’ test applied to the current matter takes into account goods similar to the designated goods: Soups, broths and broth concentrates, consommes and soup preparations, all of the aforementioned being shelf stable, packages and canned.
Application of the Clark Equipment Test
Ms Nagy argued that the ‘ordinary signification’ of the Trade Mark is that it describes a “soup [that] is intended or can be consumed on a specific day, and has a clear association with fresh taste or café quality soup”. While the onus is on the Opponent to establish a prima facie ground of opposition under section 41, I note that the examiner had similarly described the ground with particular emphasis on the soups being produced or intended for a specific day.
Mr Fitzpatrick argued that it was extremely unlikely that a consumer would enter a supermarket, see the expression ‘Soup of the Day’ on “shelf stable, packages and canned soup” and believe that they must consume the soup on that particular day. That is not the appropriate consideration. Rather, it is whether those who purchase, consume or trade in soup would understand the ‘ordinary signification’ of the Trade Mark and legitimately desire to use it.
I am satisfied that the ordinary signification of the expression ‘Soup of the Day’ is that of freshly made soup offered for sale by a café/restaurant on a particular day. I am aware that it is derived from the French expression ‘Soupe du jour’.[17] It is clearly not an invented expression, but one which conveys a meaning sufficiently tangible to be a reference to the character or quality of the goods. It describes a particular type of soup and, in doing so, creates a suggestion as to its quality.
[17] See The Macquarie Dictionary Online. © Macquarie Dictionary Publishers Pty Ltd (2015):
soupe du jour
/sup də ˈʒʊə/ (say soohp duh 'zhoouh)
noun the variety of soup being served in a restaurant on a particular day.
[French: soup of the day]
The expression “Soup of the Day” could also be described as intended to evoke a particular feeling or mental attitude.[18] That idea in the current context is intended to conjure up images of freshly made high quality soup served hot from a café or restaurant. However, this association with freshly made quality soup would not be sufficient by itself to find that the trade mark lacks inherent adaption to distinguish. That alone, as Mr Fitzpatrick submitted, would only be at most a “covert and skillful allusion” or “cloudy suggestion.”[19]
[18] See Wella AG v Registrar of Trade Marks (1996) 33 IPR 374 (“Perfectly You”).
[19] See Mark Foy's Ltd v Davies Coop & Co Ltd ("Tub Happy case") [1956] HCA 41; (1956) 95 CLR 190 (at p201).
As I have said, the Trade Mark has a specific meaning. The expression has an ordinary signification which is that of a particular soup served on a particular day. Turning to the second limb of the Clark Equipment test, I must consider whether other persons might legitimately need to use the Trade Mark in respect of similar goods.[20]
[20] See Cantarella at [71].
The Opponent has provided evidence of use of the expression by others, mainly in relation to soups made fresh daily in restaurants. Within the evidence, the search results reveal the following examples: “What’s the Soup of the Day?”; “Soup of the Day and Daily Special”, “What Soup is it Today? Find out today’s soup of the day at…”, “Freshly House made Soup of the Day”, “Soup of the Day served with house made Sourdough Bread.”[21] Most of the examples are referring to café and restaurant services and a particular soup (s) offered each day at those establishments. Other use is that of the Applicant.
[21] Declaration of Ann Spies, exhibits 3 and 4.
The initial report from the examiner provided:
Your trade mark consists of the words SOUP OF THE DAY.
This indicates that the goods you have claimed are or are related to a soup product produced or specially intended for a particular day. I have attached some of my research indicating widespread use of this phrase to this report.
Other traders should be able to and are currently using SOUP OF THE DAY in connection with goods or services similar to yours.
As I noted earlier, in response to that report the Applicant amended the specification of goods to:
Soups, broths and broth concentrates, consommés and soup preparations, all of the aforementioned being shelf stable, packages and canned.
I have affirmed that the consideration of whether other traders will legitimately desire to use the Trade Mark encompasses such use in relation to goods similar to the designated goods. A restriction to a specification of goods is ineffectual if the goods remaining in the specification are similar to those goods for which a ground for rejection under section 41 is applicable. In the current matter, I find that “Soups, broths and broth concentrates, consommés and soup preparations, all of the aforementioned being shelf stable, packages and canned” are closely similar (to the extent that they are the same kind of thing) to other soups which are not shelf stable, in packages or canned. In fact, a fresh homemade style soup may be packaged for the consumer and arguably still fall within the amended specification.
Thus, I am satisfied that the Trade Mark is one that other persons (acting without improper motive) will legitimately desire to use in relation to the goods. The Trade Mark is to some extent inherently adapted to distinguish the designated goods from the goods similar to those of other persons. Accordingly, I will now turn to consider the Applicant’s evidence under section 41(5) in order to determine whether the Trade Mark “does or will distinguish the designated goods”.
The Applicant’s Evidence of Use
The declaration of Tanya Vaysman indicates that shortly before filing the application, in July 2012, the Applicant’s ‘Soup of the Day’ concepts and artwork designs were being tested on consumers and market researchers in Australia. The Trade Mark was subsequently chosen by the Applicant in August 2012. Around this time, the Applicant also presented this ‘sub-brand’ of its product to Woolworths and Coles head offices. As a consequence, the majority of any evidence of use of the Trade Mark occurs after the priority date.
The wording of section 41(5) of the Act makes it clear that use or intended use of the trade mark may be considered under this provision. The question before me is whether the Trade Mark does or will distinguish the Applicant’s goods from the goods of other persons.
The Applicant conducted extensive consumer research into the Trade Mark in November 2012 and has since sold a substantial amount of a soup product in Australia via major supermarket chains. Rather than the amount of soup product sold with reference to the Trade Mark after the priority date, the nature and context of the Trade Mark use is paramount in this matter. The Applicant’s pouch soup sold under the Trade Mark is not fresh (i.e. made that day), but it has a particular shelf life. An example of the Applicant’s product packaging incorporating the Trade Mark can be seen below:
The nature of the Applicant’s labelling reinforces connotations with a café/restaurant ‘soup of the day’. This is due to the font presented in the fashion of a temporary chalkboard menu often seen outside such establishments. The advertising material in the Applicant’s evidence (billboards, point-of-sale material) shows that, in other instances, use of the Trade Mark is accompanied with the tagline “Café Taste: Captured Fresh in Foil”. Such use affirms the ordinary signification of the expression rather than presenting as a badge of origin.
In relation to the appearance of the Trade Mark in conjunction with the brand ‘HEINZ’, Mr Fitzpatrick conceded that the Trade Mark is used as a sub-brand. However, he also pointed out the fact that the Trade Mark appears in close proximity to the well-known ‘HEINZ’ trade mark does not preclude use of the expression ‘Soup of the Day’ as a trade mark. In the case of Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors[22] Allsop J held there was trade mark use, and in relation to other marks on the packaging said:
It is not to the point, with respect, to say that because another part of the label (the white section with "Budejovicky Budvar") is the obvious and important brand, that another part of the label cannot act to distinguish the goods. The "branding function" if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant "brand" is of relevance to the assessment of what would be taken to be the effect of the balance of the label.
[22] Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390; 56 IPR 182 at [191].
It is true that a trade mark may serve a descriptive function and at the same time function as a badge of origin,[23] and the aforementioned use clearly has a descriptive element. The expression ‘Soup of the Day’ in the above example is mainly performing the function of informing the consumer as to the contents of the pouch. If the Trade Mark were functioning solely as a badge of origin, one could infer that the contents of the pouch is soup from the picture itself, but there would usually be some other descriptor necessary on the front of the packaging (such as ‘reheatable soup’ for instance). The fact that there is not, on the evidence before me, affects the weight I can attribute to the evidence of use for the purposes of assessing the ability of the Trade Mark to distinguish the designated goods.
[23] See Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874.
The Applicant’s evidence contains a dossier for the television show “The Celebrity Apprentice” stating that one of the requirements for participants in the television show was to “always use the brand name in full” [24] as seen below:
ü Heinz Soup of the Day
û Soup of the Day
[24] Vaysman declaration (Annexure 21).
In a general sense, I am not suggesting that the emphasis on the entire expression ‘Heinz Soup of the Day’ rather than the ‘Soup of the Day’ necessarily means all the examples provided are not use of the Trade Mark. Nevertheless, examples (such as the instructions provided in the above dossier) dilute the Applicant’s use of the Trade Mark when considered in context.
Taken the Applicant’s evidence in its entirety, I am not satisfied that the nature or duration of the use demonstrated is sufficient to find that the Trade Mark does or will distinguish the designated goods from those of other persons. Section 41(5)(c), rather than s 41(5)(b), is accordingly applicable.
The Opponent has established a ground of opposition. The remaining grounds of opposition need not be addressed. In the event of an appeal from this decision to a prescribed court, the other grounds of opposition under the Act would be available to the Opponent.
Decision
At the date the opposition proceedings commenced, section 55 of the Act relevantly provided:
55Decision
(1)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.
Note:For limitations see section 6.
I refuse to register trade mark application 1511565.
Costs
In opposition matters, an award of costs usually follows the event. I award costs against the Applicant in line with the amounts allowed under Schedule 8 of the Trade Marks Regulations 1995.
Heath Wilson
Hearings Officer
Trade Marks Hearings
17 August 2015
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