Discount Drug Stores Pty Ltd
[2014] ATMO 66
•22 July 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1569888 (35, 44) - COLOURS ORANGE AND PURPLE - in the name of Discount Drug Stores Pty Ltd.
| Delegate: | Hearing Officer: Nicole Worth |
| Representation: | Applicant: Blake Knowles of Cullens Patent |
| Decision: | 2014 ATMO 66 Section 33 ex parte proceedings: section 41 – trade mark not sufficiently inherently adapted to distinguish – use does not show sign has acquired distinctiveness as a trade mark – application rejected. |
Background
This matter is pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’). On 13 July 2013 Discount Drug Stores Pty Ltd (‘the Applicant’) applied to register as a trade mark shades of the colours purple and orange. The details of the application are as follows:
Trade Mark: (‘the Trade Mark’)
Application No.: 1569888
Services:Class 35: Pharmacy retail and wholesale services; pharmacy advertising, marketing, advisory, administrative, consultancy, management, organization and promotion services; pharmacy franchising services
Class 44: Pharmacy dispensary services; pharmacy information and advice services; pharmacy naturopath, weight reduction and make-up services
(‘the Services’)Endorsement: The Trade Mark is a colour mark. It consists of the colour(s) PURPLE (Pantone 2612) and ORANGE (Pantone 1505) as applied to the attached representations, used in combination as shown in the representation(s) attached to the application form.[1]
[1] Only one representation is attached to the application form.
The application was examined as required by section 31 of the Act. A ground for rejecting the Trade Mark was raised under subsection 41(4)[2] on the basis that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the designated services from the goods or services of other persons. A further objection was raised on the basis that the graphical representation of the Trade Mark and the textual description of it (customarily shown as an ‘endorsement’ in the Australian database of trade marks ‘ATMOSS’) do not clearly define its nature nor how it will be used in respect of the services specified in the application.
[2] That is, subsection 41(4) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into force on 15 April 2013.
The Applicant did not respond to the examination report but rather requested that the matter be heard. As a delegate of the Registrar of Trade Marks I heard the Applicant’s submissions in Canberra on 29 April 2014. The Applicant was represented by John King-Scott and Blake Knowles of Cullens Patent and Trade Mark Attorneys, who made oral and written submissions on the Applicant’s behalf.
Evidence
Prior to entering into a discussion of the evidence tendered in support of the application, I mention that the Applicant has previously applied for registration of the Trade Mark and filed evidence of use in the prosecution of those applications. That evidence, from late 2012, is relied upon in these proceedings and is supplemented by a declaration of John King-Scott. Accordingly the evidence in this matter comprises:
· A statutory declaration of John Cameron Clark, Managing Director of the Applicant, with exhibits JCC-1 to JCC-18, made 8 November 2012.
· A declaration of John Daniel King-Scott, attorney with Cullens Patent and Trade Mark Attorneys, with exhibit 1, made 22 April 2014.
The Applicant commenced operations in 2001 with a single pharmacy in Sunnybank, Queensland. Another four stores[3] opened in Queensland over the next four years. Then in 2006 operations expanded significantly with 22 stores opening, the majority of which were in Queensland but with some expansion into other states. Over the years 2007 to 2010 further stores opened with greater numbers in states other than Queensland, such that as at the date of Mr Clark’s declaration there were approximately 51 stores in Queensland, 15 in New South Wales, 11 in Victoria, 6 in Western Australia, 4 in Tasmania and 2 in South Australia[4], and a declared total of more than 100 franchised pharmacies in all states (although not apparently in the territories). The franchise network generates significant annual turnover and franchise income, and has expended significant amounts in promotion of “its DISCOUNT DRUG STORES brand including the marketing of the purple and orange colours”.
[3] The declarant, Mr Clark, appears to use “pharmacy” and “store” interchangeably and so in this decision I do as well.
[4] Determined from exhibit JCC-2.
It is declared that the Applicant has used the colours purple and orange since 2001 in the get up within its pharmacies and in all advertising and promotional material. It describes its “brand persona” as including the words DISCOUNT DRUG STORES, the composite trade mark DISCOUNT DRUG STORES with a device of capsules and an incomplete tablet in a box (which I take to be the trade mark shown below, registered in the name of the Applicant and featuring in the evidence of use), and the use of the colours purple and orange, all being components which may be used individually or collectively.
Exhibited are numerous examples purportedly showing the use of the orange and purple combination as a trade mark. These include:
· print material such as catalogues and calendars, and advertisements printed in 3rd party publications,
· photographs of signage, banners, shop fit-outs and staff uniforms,
· a corporate wardrobe catalogue,
· branded stationery and a ‘stationery buying guide’ from the provider of the stationery,
· print outs from the Applicant’s web pages,
· copies of television commercials which appear to have been shot in one of the Applicant’s stores,
· copies of radio advertisements which do not refer to the colours but make reference to the Applicant’s website, whereby the Applicant submits the listener is exposed to the colours should they then go to that website,
· Brochures for the Applicant’s annual conference, to which franchisees and their staff are invited.
Under the heading “Quality Control” it is declared that each pharmacy “has to conform to the Discount Drug Stores’ quality control specifications which include use of the colour mark”. The referred-to quality control specifications are not in evidence, although it is declared that the Applicant developed and uses its own offshoot company (named Coast2Coast Projects) to manage and implement the fit-out or renovation of franchisees’ premises, thus maintaining control over the use of the colour mark. Also under the heading “Quality Control” is reference to the Applicant’s annual national conference for franchisees, held since 2008. A representative from each store is required to attend, as per the “Discount Drug Stores operations manual” (not in evidence), and “the meetings focus on business growth and development with a heavy focus on marketing and corporate branding compliance”.
Section 41
Section 41 of the Act relevantly provides:
41 Trade mark not distinguishing applicant’s goods or services
(1)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 (the designated goods or services) from the goods or services of other persons.
…
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a) 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; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
…
(5)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.
…
As stated previously section 41 of the Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) and those amendments came into force on 15 April 2013. A so-called ‘presumption of registrability’ is embodied in section 33 of the Act, under which the Registrar must accept an application for registration of a trade mark unless satisfied there are grounds for rejecting it. Nonetheless, under the previous form of section 41 if the Registrar was not satisfied that a trade mark was inherently adapted to distinguish, then rather than applying the presumption of registrability he or she was required to follow the decision making process under the former subsections 41(5) and/or 41(6)[5]. Those subsections effectively shifted the onus to an applicant. To that end, section 41 was amended
to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41…The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.[6]
[5] Per Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) FCR 50.
[6] Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, p 146.
Accordingly, I am not entitled to reject the Trade Mark unless satisfied that the Trade Mark is not inherently adapted to distinguish and the use of it has not rendered, or will not render it, distinctive (whether that use is considered by itself, as is the case for trade marks under section 41(3), or considered in combination with a degree of inherent capacity to distinguish, as is the case for trade marks under section 41(4)).[7]
Reasons
[7] I note also that the amendments have not changed the relevant standard. As stated in the Explanatory Memorandum referred to above, “…it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities”, p 146.
Trade Mark Description
Vital also to the question of distinctiveness is the definition given to the Trade Mark by the textual description. It is established that the description of a trade mark forms part of its representation[8], and accordingly defines the scope of any monopoly afforded by registration. The representation must be sufficiently clear so that other traders consulting the Register of Trade Marks would be able to ascertain that which is not available for them to use.
[8] Woolworths Limited v BP plc (No 2) [2006] FCAFC 132.
As applied for the scope of the Trade Mark is very broad being any use, in respect of the Services, of the specified colours in combination. During these proceedings the Applicant also expressed a willingness to further define the scope of the registration, and proposed the following alternative description:
The trade mark consists of the colours PURPLE (Pantone 2612) and ORANGE (Pantone 1505) shown in the attached representations, used in any combination ranging from 20% PURPLE and 80% ORANGE through to 20% ORANGE and 80% PURPLE, on banners, signs, walls and counters in retail stores, on staff uniforms, and on promotional and advertising material.
In the end I have not found it necessary to formulate a more precise description of the Trade Mark because, as will be seen, I am not satisfied that the evidence of use indicates that the Trade Mark distinguishes the Services (or, on the basis of the evidence before me, that it will). Whilst I acknowledge that some commentary on an acceptable description could be of some use, I do not wish to unnecessarily constrain the Applicant in any future applications for the Trade Mark by stating here what would or would not be acceptable. Nonetheless I will note that the broader the scope of a trade mark found to be lack inherent adaptation to distinguish, the more difficulty likely to be faced by an applicant attempting to achieve its registration.
Inherent distinctiveness
The Act explicitly recognises that colours are registrable[9], and it has been judicially recognised that non-traditional trade marks (such as colours, shapes, sounds or scents) are to be treated in the same way as any other trade mark[10].
[9] Section 17 of the Act defines a trade mark and refers to it as a sign, and Section 6 defines a sign as including colour (by itself or in combination with words, devices, shapes and so on).
[10] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 at [146]; BP plc v Woolworths Limited [2004] FCA 1362 at [16] (followed by the Full Federal Court in Woolworths Limited v BP plc (No 2), supra, who overturned the decision but did not disagree on this point).
The accepted test for determining the inherent adaptation of a trade mark to distinguish the goods or services of its owner from the goods or services of other traders is
…whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some nearly resembling it, upon or in connexion with their own goods.[11]
[11] Registrar of Trade Marks v W&G Du Cros Ltd (1913) AC 624, cited in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55.
Additionally, considerations specifically relevant to colour trade marks were articulated in Philmac Pty Ltd v Registrar of Trade Marks (‘Philmac’)[12] including whether a colour denotes a meaning (such as hot, cold, environmentalism or feminity), whether a colour has some practical utility (such as for visibility, heat absorption, light reflection or camouflage), or whether a colour was a naturally occurring result of the manufacturing process.
[12] [2002] FCA 1551.
Applying these to the Trade Mark, the question is whether other traders are likely to desire to use these shades of purple and orange in combination (or shades which nearly resemble them, in combination) in respect of the Services without improper motive – a consideration which is informed by the factors articulated in Philmac. Additionally, as pointed out by the Applicant, colour cannot be ‘applied’ directly to a service (as it can to a good) and so the consideration is framed in terms of use ‘in relation to a service’ such as in advertising material, shop fit-out and uniforms.
I do not consider that the combination of colours before me possesses any of the properties articulated in Philmac. Nor do I consider it devoid of inherent adaptation to distinguish because the combination of colours is not commonly used and is somewhat arbitrary, in that it does not appear to have been adopted because it conveys any commonly understood meaning or evokes any feeling commonly associated with the particular colours chosen.
Nevertheless, I am not satisfied that other traders would only be improperly motivated were they to desire to use the same colour combination or one nearly resembling it. Firstly many, if not most, shop fit-outs have a degree of aesthetic or ornamental function and traders will often choose combinations of colours that are visually arresting in order to catch the eye of the consumer, whether or not that combination is pleasing or appealing (and in fact a particularly jarring combination may be more effective in attracting notice than a harmonious one). The same may be said of uniforms, advertising material, signage and any other indicia a trader may utilise.
Secondly it appears that other traders in Australia are using similar colour combinations, although not in respect of the Services. Two examples include Battery World and Aussie Home Loans, both of which have fitted out their stores with purple and gold fascias, signage and fittings. Despite their use being in respect of services unrelated to those at issue here, I consider it an indication that other traders may well adopt a similar colour scheme because they consider it visually arresting.
A further concern is that the relative ratios of the colours comprising the Trade Mark are very broad. Other traders that have adopted one of them as a predominant colour (such as Shaver Shop which sells a number of the same type of goods as the Applicant and has adopted orange as its store livery) may be precluded from using the other colour, even if that use be incidental or as an accent.
Accordingly, I consider that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish and so the combined effect of the evidence of use and the inherent adaptation of the Trade Mark must be taken into account, per section 41(4) of the Act.
Evidence of use
In terms of quantity, the evidence is relatively extensive. However it also reveals that the Applicant uses a number of shades of purple and orange (discussed further below) as part of its overall get-up, which includes extensive use of the DISCOUNT DRUG STORE name and device. The Registrar is therefore in the difficult position of having to assess acquired distinctiveness of the colours from evidence that shows them always to be used with other indicia that identify the Applicant.
The evidence also shows inconsistency in the shades of the purple and orange used and does not establish that compliance with the colour scheme is required of franchise stores, nor how many stores across the franchise are actually using the colours to the extent of the examples in the evidence.
Turning firstly to the inconsistency of the shades of colours used, I note that variations in colour can occur according to different printers used to print catalogues, or different computer monitors used to view material. Nonetheless I am not satisfied that all of the variation in the material before me is due solely to printers and/or monitors, especially since some of those variations occur within the same document, photograph or web page.
The shades of orange used in catalogues, in-store and upon the Applicant’s website vary from gold to a colour akin to mango to a vibrant orange. The shades of purple vary from a dark blue or indigo to a greyish purple to a shade with distinctly more red or pink in it. It can be seen that some of the catalogues contain more than one shade within the same publication, where the device is represented in a colour that is almost dark blue or indigo but the tag lines and words are represented in a more red-ish or pink-ish purple. Upon the following page are several images taken from the evidence illustrating this variation.
The same variation appears to occur in-store (see image below) where portions of the walls appear to be coloured indigo and orange, whilst the signage is a different shade of purple (and also features white, not merely as a ‘default’ colour but as a significant element of the logo).
The consistency of the application of the colour scheme across the franchise stores is difficult to determine. The Applicant states that each pharmacy in its network has to conform to its “quality control specifications” (not in evidence) which include the use of the colour mark, and that the Applicant has developed its own offshoot company to manage and implement the fit-out of stores. The difficulty with these statements is that they do not provide sufficient information to determine (a) whether each of the franchise stores are fitted out in the manner indicated above, described as “representative of the interior of a typical [pharmacy]”, (b) when stores were fitted out (in order to ascertain for how long, and across how many stores, the colours have been used in this manner), and (c) when the off shoot company was formed to deal with the implementation of store fit outs (which could indicate when such fit outs became extensive, across sufficiently numerous stores to warrant the establishment of this separate entity).
A number of pictures, usually of staff in the interior of the Applicant’s stores, appear through the evidence, and as stated previously a number of television commercials appear to have been shot in-store. They give some indication that at least a number of stores are fitted out in a consistent manner, however they are not numerous (I estimate that they may represent 10 or so stores) and many are undated.
Consistency in the application of colour assists the consuming public to see colours as a badge of origin, rather than merely as colours associated with a brand. In Woolworths Limited v BP plc (No 2)[13] the Full Court considered closely the consistency of re-branding BP service stations under “Project Horizon” and noted the importance of BP’s visual standards manuals “in showing how BP consistently used various colours in its get up”. Additionally in Woolworths Limited v BP plc[14] the delegate noted that it was unsurprising BP was unable to provide convincing evidence that it had educated its customers to identify a green strip light as a trade mark, given it was an optional feature appearing on less than 20% of its service station canopies.
[13] [2006] FCAFC 132, which although addressing section 41(6) of the Act (prior to the amendments of 15 April 2013) contains several considerations relevant to the assessment of evidence adduced to show acquired distinctiveness of colour trade marks.
[14] [2013] ATMO 61.
I am not satisfied, on the evidence before me, that the shades of purple and orange applied for have been used consistently across the Applicant’s franchise, such that consumers would identify the Applicant’s stores by the colours applied for, absent the DISCOUNT DRUG STORES name or associated device. Similarly, I am not satisfied that the source of the advertising material would be discerned solely from the colours they incorporate. Not only do the shades of colour vary but their layout varies significantly, ranging from predominantly grey-ish purple to predominatly gold or vibrant orange. Nor do I infer from the extensive examples of coloured catalogues that the stores themselves would be identified by the colours used in the catalogues.
The Applicant submits that the Registrar has set an unreasonably high bar for it to achieve registration of the Trade Mark, commenting that too precise a description would render registration of a colour trade mark in respect of services pointless and is not required in law, and it is commercially unrealistic to be able to produce evidence which shows use of the colours, as a trade mark, in isolation.
With regard to the second point, I acknowledge that it is a commercial reality that multiple trade marks are often used together. This may result in the sort of “limping trade mark” referred to in Philips Electronics BV v Remington Consumer Products[15], which I consider is the case here. I note also that market surveys may comprise direct evidence of consumer appreciation of a trade mark, but that none has been conducted to support the Applicant’s assertions.
[15] [1998] RPC 283.
In regard to the first point, I repeat the words of Woolworth’s representative Mr. Burley, in the application for special leave to appeal to the High Court, commenting upon the difficulty of including the word “predominant” in the description of the trade mark:
…these are the words of the applicant’s own choosing in one way or another and if they chose to try and cover a very broad field with multiple colours and multiple potentials, then the corollary of that is that it will be harder for them to establish validity of that particular broad application.[16]
[16] BP plc v Woolworths Limited [2007] HCATrans 249 (25 May 2007).
In all, I am not satisfied that the Trade Mark is sufficiently inherently adapted to distinguish. When considered in combination with the evidence of the Applicant’s use of colours, I am not satisfied that the Applicant uses those colours to the extent, or with the consistency, that consumers identify them as a badge of origin, separate from the other indicia used by the Applicant in relation to the Services.
Decision
Section 33 of the Act provides:
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.Note: For this Act see section 6.
…
(3) If the Registrar is satisfied that:(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.Note: For this Act see section 6.
I have found, on the basis of the combined effect of the inherent adaptation of the Trade Mark and the use made of it thus far, that the Trade Mark does not (and, on the evidence before me, will not) distinguish the Applicant’s services from those of others. I accordingly refuse to register trade mark application number 1569888. If, however, the Registrar is served with a notice of appeal within one month from the date of this decision I direct that the disposition of the application be in accordance with the Court’s direction or order.
Nicole Worth
Hearing Officer
Trade Marks Hearings
22 July 2014
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