Colgate-Palmolive Company v SmithKline Beecham Plc

[2001] ATMO 62

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Oppositions by Colgate-Palmolive Company to registration of trade mark applications 720492, 720493, 720494 (all in classes 3, 5, 10, 21, 30) - AQUAFRESH TRIPLE PROTECTION AND DEVICE, AQUAFRESH AND DEVICE, AND AQUAFRESH MILD 'N MINTY AND DEVICE- in the name of SmithKline Beecham Plc.

Background
The Beecham Group Plc of Four New Horizons Court, Harlequin Avenue, Brentford, Middlesex in the United Kingdom (the applicant) filed trade mark applications 720492, 720493 and 720494 on 28 October 1996.  The applications were accepted for registration on 2 September 1998 and advertised in the Official Journal on 17 September 1998.  The accepted marks are as follows:

The goods specified for registration in respect of each application are:

Class 3:          Non-medicated toilet preparations, dentrifrices, mouth washes

Class 5:          Pharmaceutical and medicinal preparations and substances for human use

Class 10:        Dental floss

Class 21:        Toothbrushes

Class 30:        Confectionery, lozenges

In early 1998, the applications were transferred from the Beecham Group Plc to SmithKline Beecham Plc. 

Notices of Opposition in relation to each application were filed by Colgate-Palmolive Company (the opponent) on 9 December 1998.  Each notice set out the following grounds of opposition:

1. The trade mark is not capable of distinguishing the applicant's goods and/or services for which registration is sought from the goods or services of other persons.

2. Use of the trade mark in relation to the goods and/or services for which registration is sought would be likely to deceive or confuse, because of some connotation that the mark or sign contains.

3. The trade mark sought to be registered is substantially identical with or deceptively similar to a trade mark registered by another person in respect of similar goods/services or closely related goods/services.

4. The trade mark sought to be registered is substantially identical with or deceptively similar to a trade mark whose registration is sought by another person and the priority date of the applicant's trade mark in respect of the applicant's goods and/or services is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods/services or closely related goods/services.

5. The applicant is not the owner of the trade mark in respect of the goods and/or services for which registration is sought.

6. The applicant does not intend to use or authorise the use of the trade mark in relation to the goods and/or services specified in the application.

7. In respect of the goods (dentrifrices) the trade mark is substantially identical with or deceptively similar to, a trade mark that, before the priority date for registration of the first-mentioned trade mark in respect of those goods and services, had acquired a reputation in Australia and because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.

The Evidence
The opponent was granted a number of extensions of time to serve and file evidence in support.  However, on 6 November 2000, the opponent notified the Trade Marks Office (TMO) that it did not intend to seek any further extensions of time nor file any evidence in support. On 15 February 2001, the applicant served a notice of intention not to rely on evidence in answer pursuant to Regulation 5.11(1).  As a result, no evidence was filed by either party. 

On 22 February 2001, the parties were advised by the TMO of their right to request a hearing of the matter within one month, or, failing the receipt of such a request, the matter would be set down for a decision on the written record.  Neither party requested a hearing.  Accordingly, the matter was referred to me as a Delegate of the Registrar of Trade Marks for a decision on the written record.

In deciding the matter, and in the absence of any evidence from the parties, I have taken into account the various trade mark applications, the clear reports of the examiners and the notices of opposition.

Findings
Ground 1 - Trade mark not capable of distinguishing the applicant's goods
Section 41 of the Trade Marks Act 1995, so far as it is relevant, reads:

s41(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.

(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.

...

Sections 41(4) through (6) are relevant only where the proposed marks do not have the requisite inherent adaptation. For the reasons set out below, I am satisfied that the marks do have the necessary inherent adaptation, and therefore, the balance of Section 41 is not relevant to these proceedings. This is in line with the decision of Branson J in Blount Inc v The Registrar of Trade Marks 40 IPR 498 at 504-505 (the blount case) where she discussed the process of determining whether a trade mark is capable of distinguishing the applicant's goods or services from those of other traders:

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.

Branson J's reasoning was adopted by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) AIPC 91-539 - the cranberry classic case.

In determining whether the applied for marks have the requisite degree of inherent adaptation to distinguish, I have taken into account the long line of authorities on the point, including the comments of Wilcox J in the cranberry classic case where he referred to Kitto J's directives in the michigan case[1].  At paragraphs 22-23, Wilcox J says:

[1] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514

[Kitto J] said the question whether a mark is inherently adapted to distinguish must:

"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 the words forming part f the common heritage for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

This test was cited with approval by Gibbs J in Burger King Corporation v Registrar of Trade Marks[2].  In F H Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited[3] the Full High Court was concerned with an application for registration of the word "Barrier" in relation to skin protection creams. Kitto J (with whom Barwick CJ and Windeyer J agreed) said at 555:

[2] (1973) 128 CLR 417 at 425

[3] (1965) 112 CLR 537

"... the question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods."

There is an equally long line of authority which confirms Wilcox J's first comments, above,  that when assessing whether other traders are likely to desire to use the proposed marks, one must determine whether the proposed marks are merely laudative, descriptive or otherwise fall into the ordinary language that other traders may wish to apply to their goods.  Here, while each of the words "Aquafresh", "Mild 'n Minty" or "Triple Protection" or a picture of a striped nurdle of toothpaste may, on their own, be either descriptive of products or be items that other traders may wish to apply to their own goods in similar classes, this is not enough.  The proposed marks must be assessed as a whole, rather than by each of their constituent elements - Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 and Diamond T Motor Car Co's Appn (1921) 38 RPC 373 at 380-381. Similarly, the marks cannot be dissected into their potentially non-distinctive elements in order to support an argument that, as a result, the mark as a whole cannot acquire the requisite distinctiveness: Diamond T Motor Car Co's Appn, supra, at 380-381.

In the circumstances, I am satisfied that there is sufficient getup in each of the marks as a whole to ensure that other traders, operating with only proper motive, would have no cause to use the complete marks as they have been applied for. 

For these reasons, and in line with the decision of Branson J in blount where she says at 504-505:

... 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 ...

I am satisfied that the applied for marks are both inherently adapted and, on that basis, capable of distinguishing the applicant's goods from those of other traders. 

Therefore, each of the trade marks are capable of distinguishing the applicant's goods and/or services for which registration is sought from the goods or services of other persons and this ground of opposition must fail.

Ground 2 - Deception or Confusion because of connotation in the mark
I have been shown no evidence which indicates to me that a connotation arises in the marks.  Therefore, it falls to me to ascertain, from my own personal knowledge and perception, whether a connotation arises from the applied for marks.  Personally, I see no connotation which arises in the marks, apart from those of a descriptive nature.  There is no evidence before me that the proposed products do not comply with the descriptions "Triple Protection" or "Mild 'n Minty".  Accordingly, I cannot be reasonably satisfied that there is any connotation in the mark which would cause the trade marks to be deceptive or confusing.

Grounds 3 through 7
As I have said, no evidence has been placed before me at all.  Accordingly, I am unable to find that any of the remaining grounds of opposition are made out.  Specifically, in relation to Grounds 3, 4 and 7, I have been shown no evidence of other trade marks that could be substantially identical or deceptively similar to the subject trade marks.  In this regard, and with a mind to public interests, I note that I have assessed the contents of the TMO examination files and am satisfied that there is no material on those files which incline me to come to a different decision.  In relation to Grounds 5 and 6, I have been shown no evidence which indicates to me that the applicant does not own the trade marks nor that the applicant does not intend to use the applied for marks as trade marks. 

Conclusion

Having come to the conclusion that that the applications satisfy Section 41 (2) and (3) and that there are no other grounds for rejecting the applications, I direct that, subject to payment of the required fees and the expiry of any appeal period, the application may proceed to registration.

Costs
No submissions were made regarding costs and therefore, I make no order. 

Geoff Purvis-Smith
Hearing Officer
16 July 2001