Effem Foods v Nestle SA - [2008] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Societe des Produits Nestle SA to registration of trade mark application 932937(31) - PURPLE COLOUR - filed in the name of Effem Foods Pty Ltd.

Delegate:

Terry Williams

Representation:

Opponent: Margaret Shearer, Banki Haddock Fiora, solicitors

Applicant: Ron Webb, Senior Counsel, instructed by Baker & McKenzie, solicitors

Decision:

2008 ATMO 55

S 52 opposition: grounds under s 41 and 62(b) established. Registration refused

Background

Effem Foods Pty Ltd filed application 932937 on 4 November 2002, for the registration of the colour purple “as exemplified” by a particular variant thereof. Description of colours is fraught, but it might be said that the particular colour is a pink purple or that it would be seen by some as resembling crimson. I attach a sample, provided to me in electronic form by the applicant, but I would caution all readers of this decision to allow for the possible vagaries introduced by electronic rendition and by the settings and technical limitations of their own computer monitors[1].

[1] To my own eye, the rendition above is slightly more pink than the one appended to the application form.

The application has been examined at the Trade Marks Office and accepted for possible registration in respect of “foodstuffs for domestic pets and additives for such foodstuffs”.
Registration of the application, however, is opposed by Societe des Produits Nestle SA (“the opponent”). The parties have followed the process set out in the regulations for the serving and filing of evidence to support their respective positions. Ultimately, under section 55 of the Trade Marks Act 1995 (“the Act”), the Registrar of Trade Marks is required to decide whether to register the application. I heard the parties, and what follows is my decision, made under delegation from the registrar.
At the hearing of this matter, Margaret Shearer, solicitor, of the firm Banki Haddock Fiora, solicitors, appeared for the opponent. The applicant was represented by Ron Webb, Senior Counsel, instructed by Baker & McKenzie, solicitors.

Grounds considered

It will be most efficient if I matrix the evidence of the parties against the relevant issues. To better understand these and to give some further detail to the application it will be convenient to look, firstly, at the history of the application.

History

As filed, the application consisted of a sample of a particular colour of purple affixed to the application form, which was endorsed:
The trade mark consists of the colour PURPLE as exemplified in the representation attached to the application form.
Following an ex parte hearing into the acceptance of the application in the face of objection by an examiner of trade marks, the application was accepted with an endorsement that reads:
The trade mark is the colour PURPLE (CMYK: cyan 40%, magenta 100%) as shown in the representation attached to the application.

Section 41 - trade mark capable of distinguishing?

Ms Shearer’s primary ground of opposition is that the trade mark is not capable of distinguishing in terms of s 41. The terms of that provision are well understood. Its action, in the pre-amendment form that is relevant to this matter, was reviewed by Branson J in Blount Inc v The Registrar of Trade Marks (1998) 40 IPR 498. The matters for my decision in the present case were summarised by the Full Court of the Federal Court in Woolworths Ltd v BP Plc (No 2), (2006) 70 IPR 25 as follows:
… the registrar must consider whether the mark is inherently adapted to distinguish the applicant’s goods or services (s 41(3)). If it is not, the registrar must then decide whether the mark is to “some extent inherently adapted to distinguish” those goods and services, and, if it is, whether its “use or intended use” will distinguish the applicant’s goods or services: s 41(5). If neither s 41(3) nor (5) is satisfied, the registrar must apply s 41(6), which is in the following terms:
(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.

I will deal with those matters as follows.

Inherent adaptation to distinguish is a long-standing feature of the law of trade marks, conveniently defined in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (MICHIGAN) and F H Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited [1964] HCA 38; 112 CLR 537 (BARRIER). Mr Webb argued that the colour the applicant seeks to register is unusual, and in fact distinctive, by which he referred to the evidence that it is a not a standard colour within the Pantone system from which colours within the graphic arts are normally drawn. It was, he said, an “invented” colour. He noted also evidence from the applicant to the effect that it is a colour that is difficult to reproduce accurately. Thus, he argued that it was prima facie unlikely to be adopted by another trader acting honestly. His view of the evidence was that, even since the time the applicant had adopted this colour as its trade mark, no other trader in pet food has used any sort of purple as the dominant colour of its packaging.
In short, he argued that the spectrum poses a “legion” of colour choices for honest traders, and that there was thus a basis to conclude both that the trade mark is inherently adapted to distinguish and that, by virtue of this and the evidence of usage, the trade mark was capable of distinguishing in terms of s 41(5).
Does a single colour have any inherent adaptation whatsoever? There is evidence that colour is important to traders in pet food and that it is used for eye-catching effect. Indeed, common sense would suggest that such a finding was the norm in goods as diverse as toothpaste and plastic wrap. Here, there is evidence that others have used, in one way or another, colours that are not unlike that now in suit as prominent features of their labeling and packaging.
There have been acceptances at the Trade Marks Office under s 41(5) in relation to more obscure shades of lilac and magenta. The case law since then is not overly clear. Terracotta, in respect of plastic irrigation fittings, was described in Philmac Pty Ltd v Registrar of Trade Marks[2] at 67 as being an “obvious and apt choice for those goods”, and therefore Mansfield J found that “another honest trader might also legitimately desire to apply the colour to the same class of goods”.
[2] 2002 FCA 1551, 56 IPR 452.
“The same applies here”, Ms Shearer asserted. This is not absolutely so, in my view, since there is no clear evidence that this shade of purple in particular is an obvious and apt choice. On the other hand, there is evidence (the Grant declaration) which states that the colour purple is “needed and frequently used simply because it is an appealing and attractive colour that contrasts with and complements other colours”. This general claim is probably equally true of many other colours. None the less, it interlocks with the fact that there are, in evidence, usages of colours that are arguably deceptively similar to the applicant’s. I will come, below, to Mr Webb’s criticisms of what that usage might establish at the detail level. For purposes of the present issue, however, these things, together, suggest to me that this particular colour is not at all inherently adapted to distinguish. The application presently in suit must therefore be assessed against the test posited by s 41(6).
As to this, the decision in BP, supra, dissects the matter as follows, approving the analysis in Philmac:
… for the purposes of applying s 41(6) to a colour mark two issues needed to be addressed. The first is whether the use of the colour in the manner described in the application has, prior to the date of the application, constituted use of the colour as a trade mark. The second issue is whether the trade mark applied for does in fact distinguish the applicant’s products, having regard to evidence concerning the actual use of the colour as a trade mark. We agree with that approach. Thus, s 41(6) requires specific consideration of the extent to which BP has used each of the marks applied for as a trade mark before the date of filing and whether that use was sufficient to distinguish the designated goods and services as being those of BP: Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 60, 40 IPR 498 at 507; [1998] FCA 440.
The court stressed that there were two strands to the analysis. The first of these, usage as a trade mark, is something the court addressed earlier in the decision, at 77 and omitting the extensive list of authorities:
Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin: see…
For her part, Ms Shearer argued strongly that the use to which Mr Webb referred was not, in fact, use of a trade mark. She stressed that the use of this colour came about only because of a plan to modernise the look of the WHISKAS packaging, forced on the Australian division by edict of head office. Moreover, she noted that the use on the packaging was always associated with the trade mark WHISKAS and with a red mask device. In fairness to Ms Shearer, she also noted that part of the plan involved use of the colour for the entire background of the packaging, simply to achieve a blocking effect on shelves. This intention, in my own view, could hardly have been inconsistent with the applicant’s intention to allow colour to identify its products. Ms Shearer pointed quite correctly to the difficulty in isolating any single instance of the use of the applicant’s colour, in isolation, as a trade mark in relation to the sale of cat food. She noted the decision of Heerey J in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) (2006) 229 ALR 136 at 82 - 87. I agree that the applicant’s case in this matter is also not helped by the fact that the colour in question is always found within a complex structure that was noted, by Heerey J, as being the brand architecture of the applicant’s suite of trade marks.
Mr Webb countered that the thrust of the applicant’s marketing, from the time that it adopted the relevant colour for its packaging of cat food, was to establish purple as a trade mark. At the time of introduction, all of the product in the old packaging had been withdrawn and the new packaging was given full impact on the shelves. The evidence showed, he argued, that there had been extensive use and promotion of the applicant’s trade mark prior to the priority date. I think he is at least partly correct. It may well be that the the public has come to understand that, to a degree, the relevant colour may denote the applicant.
As to the second strand, Mr Webb stressed the history of the matters set out in the evidence in answer to the opposition. The thrust of the applicant’s marketing, from the time that it adopted the relevant colour for its packaging of cat food, was to ensure that the colour in question distinguished the applicant’s goods. Mr Webb argued that the television advertising, which peaked in 2000, was a one-off phenomenon, not needing to be sustained because the newly-adopted colour had been put into the public consciousness as a badge of origin. As Mr Webb put it, the evidence of Ms Steele and Mr Durrant, on behalf of the applicant, shows that the advertising was conducted at very substantial levels to very great effect. The (confidential) figures in relation to media spending in 2000 show that there was a large increase in the total. The figures show a substantial increase in WHISKAS market share through to the priority date which, he said, was reflective of the advertising and its impact. The manner of use of the purple, for example, in the television commercials of 2001 and 2002 showed, he argued, that the marketers recognised that the colour was already established with a trade mark significance by then. Consistently, he noted the mask device to which Ms Shearer referred had itself started to be rendered in purple before the priority date, although the change was not completed at that time.
Mr Durrant, an executive of the opponent’s advertising agency, has declared that by November 2002 he was creating television commercials which were premised on his opinion that the mark functioned as a badge of origin. Similarly, Dr Downes' expert opinion is that the colour probably functions as a trade mark given the manner in which it was introduced and promoted. The evidence of Mr Sheehan, an executive from Woolworths with relevant responsibility since before the priority date, is that, to his observation, the mark functions as a "badge of origin".
Mr Webb submitted that, where such an expert as Mr Durrant actually conducts his business on the basis of such an opinion, a court will be reluctant to take a different view. That may be so. Had Mr Durrant had the benefit of the opponent’s submissions, and the evidence before me, I would give his evidence greater weight. However, while I find his evidence convincing, his opinion cannot, in isolation, substitute for my own evaluation of the question under s 41(6).
I understand that, as Mr Webb argued, the applicant was not in the difficult position of the applicant in BP or Cadbury, both supra. It did not have to change a long-standing public perception (Cadbury) or overcome the weight of past usage of with another colour in addition to the one now sought to be registered (BP). Even so, the facts are against it.
I accept that the applicant has educated the public that, to a degree, the colour purple may denote the applicant. This does not mean that there is anything as gross, in its promotions from 2000 onward, as an explicit message, “this shade of purple has been adopted by Effem Foods to denote a connection in the course of trade between it and catfood promoted by reference to that colour”. It is hard to imagine that this would ever be a major element of a mass-market advertising campaign and I cannot think that its absence is crucial. Even so, it is hard to view the applicant’s evidence without gaining the impression that “this shade of purple has something to do with WHISKAS.” There is an underlying pattern of the use of that colour in close association with the WHISKAS trade mark. With that as a starting point, there is simply too much gratuitous use of the particular colour within the advertisements. By the time of the Bridget Jones-inspired commercials of 2002 matters had advanced to the point that the trade mark WHISKAS was introduced only towards the end of the 30 second commercial[3]. Consumers would, I am satisfied, have got the message. The applicant has carefully embroidered the theme that started with advertisements such as “cats prefer purple” as part of a broader strategy to use purple as an identifier.
[3] Strictly, a sharp-eyed viewer might have made out the word WHISKAS on a purple cat food bowl at an earlier point. However, the subservience of the word to the colour speaks volumes.
But, to come to the point, the extent of that education is limited and the scope of the application is broad. In my view, the extent to which the public recognizes purple as a trade mark of the applicant remains limited. This shortcoming means that the trade mark does not always distinguish the applicant’s goods from those of other traders.
It is, I think, one thing to agree that the public may locate packets of WHISKAS cat food by reference to a solid block of purple on the shelves of a supermarket. And similarly for the gratuitous use of purple in things such as the “World’s richest bungy jump” promotion (exhibit RAS-30). The list is long and the applicant has been thorough, for all that the period of use on which it relies is brief.
Even so, it would be another thing entirely to say that the public would expect that the usage of the relevant colour, in some unspecified degree, in a range of ordinary contexts, would denote the applicant. The evidence negates any belief that a label featuring the relevant colour and either bearing a trade mark that was not WHISKAS, or bearing a generic description such as “cat food”, would denote, to the ordinary consumer, a connection with the applicant. The applicant’s claim is broad: it asserts that any relevant usage of the colour it has selected would suggest a trade source. The opponent’s evidence undermines that proposition.
The applicant itself (Armstrong declaration) has brought into evidence many instances of other traders using, presently, the relevant colour, or one similar to it, for the labels of their cat food. There is similar but much more extensive material from the opponent, to which I will come in due course. The applicant’s evidence was brought in to show that, where others use similar colours, it is not for the entire of the package, a perfectly correct observation.
Helpfully, Ms Shearer tabulated what she asserted were the relevant usages found by the opponent in relation to dog and cat foods. I set these out as tabulated, though I do so without denigration of the criticisms which Mr Webb put forward:
EUKANUBA
Use of a colour that Ms Shearer called fuschia on whole range of cat and dog food products – use in consistent strip and side panel and on website:
first use 1995 (Lloyd declaration at paragraph 17)
sales figures from 2003 (Grant declaration; exhibit DG-1)
samples (Andean second declaration; exhibits KMA-3 to KMA-5)
website’s homepage found at (Andean second declaration; exhibits KMA-9 and KMA-11)
ONE
Use of a pinky purple colour on majority of surface of packaging on whole range of dog food (cf blue on majority of surface of packaging for whole range of cat food)
use since at least 1998 (Grant declaration at paragraph 62 and 65)
sales figures from 2002+ (Grant declaration; exhibit DG-26)
samples (Grant declaration; exhibit DG-23 to DG-25) (Armstrong declaration; exhibit SA-11)
IAMS:
sales figures from 2003 (Grant declaration at paragraph 21; exhibit DG-1)
June catalogue for Petbarn using similar colour exhibited (Andean first declaration at paragraph 4; exhibit KMA-2)
website material exhibited from the Australian IAMS website’s homepage (Andean second declaration at paragraph 15; exhibit KMA-6)
Lilac: used for kitten range
samples/use (Henderson declaration at paragraph 3; exhibit SEH1)(Armstrong declaration; exhibit SA-3)
Purple-pink: used for mature and senior cats
samples/use (Henderson declaration at paragraph 3; exhibit SEH-1) (Armstrong declaration; exhibit SA-3)
(Same colour range use flows through dog products. ie lilac for puppies and purple-pink for mature dogs)
COLES DOG TREATS & LOVITT’S RIPPER TREATS
Use on entire range of both products – especially Lovitt’s (Shearer declaration at paragraph 7; exhibit MCS-3) (at date of purchase on 19 November 2006)
ROYAL CANIN
Use on range of special needs (Armstrong declaration at paragraph 22; exhibit SA-6)

VARIETAL USE - used on a product within a range

INNOVA (dogs): (Andean first declaration at paragraph 6; exhibit KMA-3)
DINE (cats) (Andean first declaration at paragraph 8; exhibit KMA-4) (Armstrong declaration; exhibit SA-2)
SNAPPY TOM (cats) (Andean first declaration at paragraph 8; exhibit KMA-4) (Armstrong declaration; exhibit SA-8)
PETS OWN (cats/dogs) (Andean first declaration at paragraph 8; exhibit KMA-4) (Armstrong declaration; exhibit SA-5)
OPTIMIUM (cats/dogs) (Andean first declaration at paragraph 8; exhibit KMA-4) (Armstrong declaration; exhibit SA-4)
NATURE’S GIFT (dogs) (Andean first declaration at paragraph 8; exhibit KMA-4)
MY DOG (dogs) (Andean first declaration at paragraph 8; exhibit KMA-4)
SELECT (cats) (Henderson declaration at paragraph 6; exhibit SEH-2) (Armstrong declaration; exhibit SA-7)
NUTRIENCE (dogs) (Henderson declaration at paragraph 3; exhibit SEH-1)
PEDIGREE (dogs) (Henderson declaration at paragraph 3; exhibit SEH-1, Shearer declaration at paragraph 12; exhibit MCS-5)
SCIENCE DIET (dogs) (Henderson declaration at paragraph 3; exhibit SEH-1)
SUPERCOAT (dogs) (Henderson declaration at paragraph 3; exhibit SEH-1)
FANCY FEAST RANGE (cats) (including FANCY FEAST ROYALE and FANCY FEAST GOURMET) (Grant declaration at paragraphs 35-47; exhibits 8-14) (Armstrong declaration; exhibit SA-9)
FRISKIES (cats) (Grant declaration at paragraphs 48 to 56; exhibits DG-15 to DG-19) (Armstrong declaration; exhibit SA-10)
ONE (cats) (Grant declaration at paragraphs 61 to 72; exhibits DG-23 to DG-31) (Armstrong declaration; exhibit SA-11)
PURINA BAC’N STRIPS (dogs) (Grant declaration at paragraphs 25 to 30; exhibits DG-2 to DG-5)
PURINA BUSY BONE (dogs) (Grant declaration at paragraphs 31 to34; exhibits DG-6 and DG-7)
LUCKY DOG (dogs) (Grant declaration at paragraphs 57 to 60; exhibits DG-20 to DG-22)
PROPLAN (dogs) (Grant declaration at paragraphs 73 to 77; exhibits DG- 32 to DG-34) (Armstrong declaration; exhibit SA-12)

It might well be argued, as Mr Webb did, that most of those usages are post-filing. Perhaps so, but having had the opportunity to compare what the applicant has done, and on which it wishes to rely, with the usages of other traders, I think his argument must fail. Firstly, some of the usages in evidence are pre-filing but also, as Ms Shearer argued, it is unlikely that the remainder have all sprung up overnight.
Before going further, I note that the applicant has only ever used the colour in question in relation to cat food. It has at no stage used the trade mark on food for pets such as rabbits, goldfish, birds or even dogs. Mr Webb did not expressly concede that the acceptance in relation to any broader range of goods than catfood was unjustified. However, in the light of the usage, by others, in relation to dog food, I think it would not be remotely tenable, now, to say that the applicant’s trade mark distinguished goods upon which it has never been used, from those of others.
Mr Webb was critical of the weight that could be given to the Grant and Lloyd declarations which figure largely in Ms Shearer’s submission as above. I think, however, that this criticism, while based on matters of fact, is overall unjustified. It is true that, until about 2004, Mr Grant was employed by the opponent in Switzerland, not Australia. However, he has made his declaration based on his own knowledge and on material available to him, and I accept and give full weight to his evidence as to facts that would reasonably be within that scope.
Similarly, Mr Lloyd joined Nestle as a corporate counsel in 2004, but I will accept both his veracity on factual matters and that these matters would be within his field of expertise. The evidentiary weight of Mr Lloyd’s statements about the use of a pinky-purple colour in relation to EUKANUBA pet food may still be slight. Mr Lloyd simply says that he “has been informed” that this usage has been extant since 1995. Ms Andean’s declaration supports 2003 or earlier. I think it is reasonable to take the hearsay evidence of Mr Lloyd as at least strongly suggestive of the fact on which the opponent relies. That “suggestive” evidence would have been easily countered by the applicant. In the lack of any such countering evidence, the statement appears reasonable. I think I should take it at the same weight as any other unchallenged and reasonable statement.
There is, with usage of colour as a trade mark perhaps more so than with word marks, no magic talisman by which trade mark usage can be readily distinguished from non-trade mark usage. It may be that this distinction is not critical, since the test under s 41(6) has its focus on use of the trade mark by the applicant to distinguish “the designated goods or services as being those of the applicant”. Thus, cases such as MICHIGAN, supra, and Burger King Corp v Registrar of Trade Marks (WHOPPER), (1973) 128 CLR 417, 1A IPR 504 have a focus on the non-trade mark use, by others, of those words.
Thus, while I accept Mr Webb’s point that, in particular, the usage of purple in conjunction with the FANCY FEAST trade mark has been to indicate varieties (originally two sorts of tuna, and variously on chicken hearts and so forth) within the range, it does not carry the day. That usage is just as relevant as others within the trade and must be looked at as part of the question of fact under s 41(6). The fact is that other traders are, and quite probably were, using relevant signs either randomly or to indicate variously the variety of food in question (tuna, etc) or the range of animal for which the food was suited (puppy, mature cat etc).
Mr Webb relied on the decision of Lindgren J in Kenman, supra. He noted that Lindgren J had considered the possibility of innocent use by third parties, and had said, at 95:
In my opinion, contrary to the submission of counsel for the Registrar, Faulding, Eutectic and TGI Friday's, like Clark Equipment itself, do not go so far as to suggest that the likelihood of any kind of innocent use at all, including innocent non-trade mark use, by other traders of the mark sought to be registered or of a mark substantially identical or deceptively similar to it, will prevent it from being inherently adapted to distinguish.
That may be so, but the judgment does not establish that all kinds of innocent use must be disregarded.
The test for determining whether the proposed mark has the requisite degree of inherent adaptation to distinguish was confirmed by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (CRANBERRY CLASSIC) wherein he referred to Kitto J's directives in MICHIGAN. At paragraphs 22-23: [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 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 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, WHOPPER. However, in Faulding, supra, the High Court was concerned with an application for expungement of the word "Barrier" in relation to skin protection creams. Kitto J acknowledged that the use made by the defendant “in describing its cream as Barrier Cream the defendant was using the word Barrier as a reference to the character or quality of its cream and that the word Barrier can be regarded as a correct description of the creams". Kitto J (with whom Barwick CJ and Windeyer J agreed) said at 555 that the prospect of “adjectival” use was also relevant, and defined the test as follows:
... 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.
As to this, I will simply adopt the analysis of Hearing Officer Purvis-Smith in Wattyl Australia Limited v Orica Australia Pty Limited [2003] ATMO 7
… Orica submits that the Clark Equipment test is clear in establishing that only non-descriptive, infringing use should be taken into account. In other words, the only use to be considered is that which would lead another trader into conflict with the applied-for trade mark - for instance by using the relevant expression to give the false impression that its goods were in some way sourced from or associated with the applicant. Use of the expression in a purely descriptive sense would not, in Orica's submission, lead to an infringement of the applied for trade mark, and therefore, is not to be taken into account in applying the Clark Equipment test.
Wattyl submits that Orica's submission is flawed in a number of respects, most particularly with regard to the application of the test to descriptive use. I am minded to agree with the tenor of Wattyl's submission on this point. My reasons for this are as follows.
Firstly, Kitto J did not apply the test in the way Orica suggests. In Clark Equipment, when finding that the geographic name "Michigan" did not have the requisite present or future capacity to distinguish, his Honour stated:
[515] The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if the goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods...
and
[516] But even allowing for the cumulative effect of these considerations it seems to me impossible to conclude that there is no likelihood of other traders, in the [517] ordinary course of their businesses and without any desire to get for themselves a benefit from the appellant's reputation, wishing in advertisements and otherwise to describe (e.g.) their power cranes from Michigan as Michigan power cranes. They may well wish by such means to take legitimate advantage of a reputation which they believe or hope that the State of Michigan possesses among Australians for the quality of its manufacturing products, and it would be contrary to fundamental principle to grant a registration which would have the effect of denying them the right to do so by using the name of the State. It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as "made in Michigan" or in some other ways indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business. [emphasis added]
His Honour makes no mention of a need to show that the use would amount to an infringement. On the contrary, the decision was based on the aptness or appropriateness of the use of the expression "Michigan" to describe the geographic source of goods or allude to some quality or attribute that the goods possess. The fact that such use might or might not have been an infringement of the then appellant's trade mark was irrelevant at this stage of the inquiry.
In Faulding, which was decided a year after Clark Equipment and notwithstanding an obvious similarity in the language used in the tests, Kitto J chose to omit any reference to infringement. Instead, His Honour again relied on apt descriptiveness, and confirmed that, at this stage of the test, the legality of use is not to be taken into account. He stated:
[556] The conclusion seems inevitable that at least by the year of the initial registration of the appellant's trade mark (1943) the word Barrier had caught on as a word peculiarly apt, according to its ordinary signification, for descriptive use in connexion with skin protective creams, so that any trader in such creams would be very likely indeed, in the ordinary course of business and without any improper motive, to desire to use the word in order to distinguish such creams in general from creams intended for other purposes. We have not to inquire, on this aspect of the case, whether or not the respondent began its use of the word with a view to appropriating to itself some of the goodwill which the [557] appellant had built up for its own product. What matters is that at all material times the word has had such a place in the vocabulary of persons concerned with skin protective creams that according to the principle which must be applied under the Trade Marks Acts the appellant cannot be allowed a monopoly of its use in connexion with such creams. [emphasis added]
Subsequent case law confirms the approach. In Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, Gibbs J found that other traders were likely to want to use the expression "Whopper" to describe the size of their goods. In Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579, 589, Wilcox J found that the expression "Cranberry Classic" was to be assessed in light of the likelihood that other traders "might well wish to use the laudatory word 'Classic' in conjunction with the identification of the juice used in their product" as a means of describing the nature and quality of the juice. In Blount Inc v Registrar of Trade Marks (1998) 40 IPR 298, Branson J found a trade mark incorporating the word "Oregon" and an oval device was insufficiently inherently distinctive to give the word "Oregon" a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber. Finally, in Philmac supra, Mansfield J concentrated on the extent to which the coloured insert to an agricultural pipe fitting might have inter alia, a descriptive/ornamental function.
Beyond this, Mr Webb also argued that the colour used in conjunction with the trade mark EUKANUBA is not deceptively similar[4] to that adopted by the applicant. It was therefore, he said, irrelevant to the question under s 41(6). While I will have to revert to this matter again below, in connection with the opponent’s other grounds, I will for the moment put the matter thus: even if I accept that the colour used in conjunction with the EUKANUBA trade mark is not deceptively similar to that of the applicant, it remains a similar colour in use by another trader for its own legitimate purposes. The relevance of that fact to the question under s 41(6) would not be diminished by the finding on the narrower question under s 10, though I give the usage in question only the weight appropriate to one among many.
[4] See section 10: “For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.”
In broad, the evidence negates the claim that, at the filing date, usages such as have been made in association with EUKANUBA, FANCY FEAST and others would denote the applicant. The fact that other traders are, and were, using somewhat similar colours for significant parts of the labeling of their products would militate, strongly, against the applicant’s claim that the colour did in fact distinguish their usage to the exclusion of others. With that new material before me, and in the lack of convincing survey material about public perceptions, I am no longer satisfied that the trade mark is capable of distinguishing. The opponent has established the ground of opposition under s 41

Section 62(a) – amended contrary to the Act?

This ground is as follows:
62. The registration of a trade mark may be opposed on any of the following grounds:
(a) that the application, or a document filed in support of the application, was amended contrary to this Act;
Ms Shearer argued that the colour of the sample in the application in question is probably not what “an interested trader, who wished to gain an understanding of the register”[5] would understand from the word “purple” which she noted was in upper case, for apparent emphasis. She argued that where, as here, an initial endorsement was clear, it would have a decisive effect on the trade mark, defining it. She argued, from this, that the change to the endorsement would establish the opponent’s ground under s 62(a): that the application was amended contrary to this Act.
[5] BP, supra
Her argument also has a pincer action. She argued that the original application was invalid, irremediably failing to satisfy regs 4.2(b), 4.3(7) and 4.3(10), and effectively a non-event, beyond the redemption of any subsequent amendment. The provisions to which she referred are some of the filing requirements, and I set the relevant portion of reg 4.2:
4.2 (1) To be taken to be filed, an application for registration of a trade mark that is in an approved form must:
(a) state that the application is for registration of the trade mark, or contain a clear indication to that effect; and
(b) include a representation of the trade mark that is sufficient to identify the trade mark; and
(c) specify the goods and/or services in relation to which the application is made; and
(d) include sufficient information to enable the Registrar to establish the identity of the applicant; and
(e) contain sufficient information to enable the Registrar to contact the applicant.
(2)   If an application does not meet a requirement set out in paragraph (1) (a), (b), (c) or (d), the Registrar must give to the applicant written notice of the requirement.
(3)   If the applicant meets the requirement within a period of 2 months from the date of the notice, the application is taken to be filed on the day on which the requirement is met.
(4)   If the applicant does not meet the requirement within that period, the application is taken not to have been filed.

Regulation 4.3, leaving aside the portions that relate to size of the representation, trade marks that are three-dimensional or in non-roman characters, or to a series of marks, reads as follows
4.3 (7)   If a trade mark for which registration is sought contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration of the trade mark must include a concise and accurate description of the trade mark.
(8)   If the Registrar reasonably believes that the description or representation of a trade mark in an application for registration of the trade mark does not:
(a)    demonstrate the nature of the trade mark sufficiently; or
(b)    show each feature of the trade mark sufficiently;
to permit proper examination of the trade mark, the Registrar may require the applicant to give to the Registrar:
(c)    a description, or further description, of the trade mark; and
(d)    a specimen of the trade mark.
(10)   The representation of a trade mark in an application for registration of the trade mark must be of a kind and quality that:
(a)    ensures that the features of the trade mark will be preserved in the course of time; and
(b)    is suitable for reproduction.
These things govern the actions of the Trade Marks Office in receiving the application for filing. I think Mr Webb was correct when he argued that the endorsement is not decisive in this case. As he argued, both it and the sample jointly define the trade mark for which registration was sought. Neither one of them is decisive to the exclusion of the other. As he also argued, the endorsement compels any interested observer to have regard to the colour swatch.

The endorsement, on its face, says that the appended sample is an example of the colour purple. Ms Shearer made a valid point when she said that the detail of the swatch appended to the application form is not readily accessible. The trade marks image viewer that is a feature of the Australian Trade Marks Office Searching Service, for instance, will unhelpfully tell any user nothing but that “the trade mark is as described in the endorsement”. No depiction of the trade mark is available. None the less, for all that the Trade Marks Office has not made it easy for any interested trader to know the exact detail of the trade mark sought to be registered, that detail is available if a specific enquiry is made.
I accept that many interested persons would not persevere, and that some of them might find the detail of the purple in question surprising. For all that this is so, it cannot be said that the endorsement rules out a trade mark of the colour shown in the sample that is attached to the application form. As Ms Shearer argued, there are probably people who would appreciate that there is a colour called fuschia, along with others like grape, indigo and burgundy. Such people might go further and believe that the applicant’s trade mark is perhaps better defined as crimson, fuschia, or some other colour, than as purple, and that the colour comprising the applicant’s trade mark is, as Ms Shearer argued, beyond the borderline of those that can be called purple. It may be, given this uncertainty, that the Trade Marks Office has erred in its duty under s 30 to publish the details of the application since the details as published might tend to mislead a person who made a less than determined inquiry.
I believe, beyond these failings, that this office erred when it accepted the application for filing. The particulars, as stated, do not define the trade mark at all. They are an ambit claim for a segment of the colour spectrum “exemplified” by what I think some people would regard as an unusual shade of purple. Even so, no failing is attributable to the applicant. Moreover, the Trade Marks Office has, in accepting the application for filing in terms of reg 4.2, already exercised the discretion involved. Whatever might be said by the Trade Marks Office on the position of the colour sought to be registered, either within or without the spectrum of colours that are purple, has already been said, once and for all. The application was deemed filed and allocated a priority date accordingly. I do not think that I have the power, now, to overturn that decision.
Ms Shearer was also critical of the durability (reg 4.3(10)) of the sample as provided. She may well be right, in the sense that fading over time is inevitable unless I assume that the sample provided is of archival quality. None the less, amendment of the endorsement so as to refer to the CMYK formula has probably mitigated that initial failing.
Finally, Ms Shearer argued that the application was defective in that it did not describe how the trade mark was to be used. This argument is a long bow. The regulations do not require that the manner of use of any trade mark must, of necessity, be described. During examination, or in the opposition forum, it may assist an applicant to describe the manner of use, for example, in order to match the scope of the application to the usages wherein the trade mark is said, by the applicant, to be capable of distinguishing. But there is no imperative to do so.
Overalll, whatever might have been said of the application at the time of filing, outstanding issues have been completed or made good. Ms Shearer’s contention that that the filing was (and remains) invalid is not now supportable. Was, then, the amendment that was made after filing an impermissible one?

A permissible amendment?

Amendment of the endorsement is within the scope of s 65, which relevantly specifies[6]:
An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted”.
[6] This was s65(5) of the pre-amendment provision but the same item is now 65(7).
The nub of Ms Shearer’s argument is that the application was amended to match the colour of the swatch, taking it beyond the scope of the specified “purple”. Were it not for the original endorsement, this issue would be a live one. However, I am satisfied that the colour shown on the application was, just barely, purple. I reach that conclusion with some hesitancy because (in the lack of evidence on the point) I think that colour analysis is a less than exact art, far from a science, and highly subjective. There are (Brennan declaration) many sorts of purple. There is, on this uncertain question, no evidence about perception, by people in general, of the scope of purple. Ms Shearer, at the hearing, argued that there was a discordance between the endorsement and the colour swatch. I am able only to approach the matter as I see it, and it seems to me that the colour sought to be registered is within the scope of the original endorsement, although perhaps barely so.
Ms Shearer argued that, because the public would not have been aware of the colour of the originally-attached swatch, the amendment was not allowable. The only allowable amendment, she said, would have been to bring the scope of the application into line with what might be called ordinary purple, as per the endorsement. I cannot agree. The purple knowable from the face of the application was the colour of the swatch. It is no doubt unfortunate that most interested traders would not have able to see this swatch. That failing is attributable entirely to the Trade Marks Office in not fully publishing the details of the application as required in s 30, for technical reasons that were to do with the black-and-white capture of application details. I cannot see how the technical limitations at that time on the publication of trade marks in colour for the purposes of s 30 can impact on the scope of allowable amendments under s 65.
It follows that the subsequent amendment simply narrowed the focus of the application, reducing it from a claim for all purples, of all shades and hues, to just the one, the purple originally cited as an example. Given the unfortunate decision to accept the application as a valid filing in the first place, the amendment was necessary to properly define the trade mark more precisely. It simply narrowed the scope of the colour specified. No contravention of s 65(5) is involved and the ground of opposition under s 62(a) has not been established.

Section 62(b)

This ground is often nominated but rarely established. It reads as follows:
62. The registration of a trade mark may be opposed on any of the following grounds:
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
Note: For file see section 6.
Ms Shearer argued that the material put to the hearing officer at the time of the acceptance of the application was the false basis of the decision to accept the application. She stipulated that the original false statements in the Steele declaration were not made with the intention of deceiving, but that this, inadvertently, had been the effect. She also pointed to what she said were misleading submissions in the attorney’s submissions to the examiner of trade marks.
I turn to her listing of the impugned material:
- (in the applicant’s attorney’s submissions), it is stated that prior to the Applicant’s adoption of the Colour Purple, “colour had not been presented and promoted as having trade mark significance” in the pet food market;
- (in the applicant’s attorneys submissions), it is stated that other manufacturers of pet food or pet care products do not have a competitive need to use the Colour Purple, or indeed any other particular colour, to identify their goods, and that for many years traders have seen no commercial need to adopt a particular colour as distinctive of their brand of pet food products;
- (in paragraphs 14 and 15 of the first Steele declaration), it is stated that “at the time of adoption of the Colour Purple trade mark by the Applicant, neither the colour nor any other shade of purple was used by any other cat food manufacturer in Australia”, and that “no other pet food manufacturer currently used the colour purple as the dominant colour indicating its brand of pet food”;
- (in paragraph 51 of the Downes declaration), it is stated that from the declarant’s observations, “no other cat food product makes such prominent use of any single colour as a predominant aspect of its packaging”; and
- (in paragraphs 6 and 7 of the declaration of Ricky John Sheehan), it is stated that the declarant is not aware of any other manufacturers using the colour purple as a trade mark in connection with the Applicant’s range of products, and that to the declarant’s knowledge “no other range of petcare products uses the same or any similar colour purple to the same extent as the WHISKAS product range, or in order to distinguish a brand”.
Let me set the attorney’s submissions aside. There is no evidence that the hearing officer accepted any non-declaratory material as being persuasive evidence of fact, or gave significant weight to the assertions in accepting the application. Those submissions took their force from the material to which they referred.
Ms Shearer submitted, even so, that these statements, when taken together, gave the hearing officer an unrealistic impression of the state of the market at the time the applicant commenced use of the colour in question. The truth, she said, was that purple was commonly used by pet food manufacturers and was to be regarded as an appropriate colour for use on pet food, either in relation to whole ranges or varieties within the ranges. She noted the material in the Grant declaration, to which I have already referred, to the effect the opponent’s ONE range of pet food was launched in 1998 and the colour purple had been used as the predominant packaging colour of the dog food range since then.
Mr Webb conceded that the evidence may show pre-filing evidence of purple in relation to dog food. However, he argued that there was evidence, in a later declaration, that Ms Steele was unaware of the matter in question when she made her original declaration, so that her statement was not rendered false. This, I think, is extreme. Ms Steele is in a responsible position with the applicant, and considerable resources are at her disposal. Her standing is not that of a disinterested bystander giving evidence about his or her perceptions of how things are in the marketplace. She is a protagonist, as an officer of the applicant, and made a solemn declaration that “Based on my conversations with the applicant’s sales associates and my own investigations in supermarkets and other retail stores, no other manufacturer currently uses the colour purple as the dominant colour indicating its brand of pet food”. That is simply not true in relation to dry dog food, which is a line sold also through veterinarians and specialist stores.
Ms Shearer went on to note the colour used on packaging of the EUKANUBA range of pet food in Australia since at least 1995, well before the Applicant commenced its own use. Again, this contrasts with the statement “neither this colour nor any other shade of purple was used by any other cat food manufacturer in Australia.
I find it vastly unlikely that Ms Steele’s enquiries, had they been adequate, would have failed to unearth this fact. But, be that as it may, Mr Webb, at the hearing, repeatedly distinguished the colour used with the EUKANUBA trade mark from that used by the applicant. He may well be right, and perhaps if I was to construe Ms Steele’s words on a narrow basis there is no mis-statement. But that that in turn raises the prospect of the deliberately artful choice of words. Ms Steele has, apparently through inadvertence or through an inexplicably poor choice of description, declared to facts that are not true, and that were in all probability material in the decision to accept the application.
It will not be necessary to consider the circumstances of the making of the Downes and Sheehan declarations. They merely support Ms Steele, who provided the leading declaration. As to this, I think that it is appropriate for an applicant to deal with the Registrar’s delegates in full accuracy, in order that, if nothing else, proceedings like the present may be avoided where possible. Mr Webb noted at the hearing that the applicant had not canvassed an acceptance for goods any broader than “food stuffs (sic) for cats and kittens”. None the less, the acceptance ensued, and I believe this can only have been on the strength of the picture painted, no doubt innocently, but none the less inaccurately, by the applicant. This motivates me to find this ground of opposition established.

Remaining grounds

Briefly, Ms Shearer maintained that the applicant had, in terms of s 59, no intention to use the relevant colour as a trade mark, authorize the use of it, or assign the trade mark to another for use by that other. She based this on her view that the applicant, having been forced to update its packaging by its overseas head office, had at no stage used the colour as an indication of origin and had not, at the outset, any such intention. It follows from my comments in relation to s 41 that I disagree with her on that point. Such a finding disposes of the s 59 ground.
She argued, too, that the applicant was not the owner of the trade mark (s 58) because of the earlier use of a relevant colour as a trade mark, in conjunction with the trade mark EUKANUBA. There are a number of issues under s 58, which may be the subject of future argument at the Trade Marks Office. I will therefore leave several key questions unresolved here. However, one necessary ingredient in any s 58 conflict, if the opponent is to succeed, is that the competing trade marks be substantially identical when assessed on the appropriate, side by side, basis, see Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd ( 1994) 120 ALR 495.
Ms Shearer based her argument on the vagaries of colour reproduction introduced by colour copiers and scanners. However, and unlike the applicant’s trade mark, there is no evidence that the colour used with EUKANUBA is prone to such colour shifts. As shown in the evidence, it is not substantially identical with the applicant’s trade mark as sought to be registered. This ground is therefore not established.
Finally, Ms Shearer argued that the use of the trade mark by the applicant, within at least some of the range of options which registration of the application in its present broad form would allow, would be likely to deceive or cause confusion. Since I have already found that there are two grounds of opposition established, I think it might be better to leave that issue for future debate.

Conclusion

The opponent has established grounds of opposition under sections 41 and 65(2). I refuse to register the application. I direct that the applicant pay the opponent’s costs subject to the limit in the official scale.

Terry Williams

Hearing Officer

Trade Marks Hearings

30 June 2008