Grolsch N.V., Re

[1991] ATMO 11

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application No. A434605 in the Name of GROLSCH N.V.

In this matter GROLSCHE BIERBROUWERIJ N.V., whose name was subsequently altered to GROLSCH N.V., "the applicant", a company organized and existing under the laws of the Kingdom of the Netherlands, located at 2, Fazanstraat, Enschede, the Netherlands, applied to register the device shown below for "beers" in class 32:

This applicaton is in Part A of the Register and was lodged on 14 October 1985.     At examination of the application the examiner objected to registrability of the mark in terms of paragraph 24(1)(e) of the Act on the grounds that the mark contained or consisted of a non-distinctive representation of the goods for which registration is claimed and was not

adapted to distinguish such goods from similar goods of other traders who are equally entitled to use such a representation.  In rebuttal the applicant submitted that the subject mark was a line drawing of a bottle which was distinctive of the
applicant's goods and registrable as a trade mark in line with the decision Re The Coca-Cola Company 6 IPR 275. Accordingly, the applicant was prepared to define the scope of the registration as a line drawing and consented to a disclaimer of a device of a bottle per se. It also directed the examiner's attention to two Part B registrations in the United Kingdom for similar bottle devices. The examiner replied, however, that the line drawing in the case of the Coca-Cola Company's bottle was established to be distinctive by evidence of use, while the subject mark merely consisted of a non-distinctive device and no evidence had been presented as to the mark's distinctiveness. Subsequently, the applicant lodged a Statutory Declaration from Wolter F.F. van Verschuer, general counsel for the applicant concerning use of the mark and copies of registrations in the United Kingdom, United States of America and Denmark. On inspecting this evidence the examiner reported that the illustrations of the mark in use did not depict the subject mark and suggested that the registrability aspect of the mark be discussed at a hearing. Consequently, the attorneys for the applicant requested a hearing of the matter.
         The hearing was conducted before me on 29 October 1990 with the applicant being represented by Mr Ken Niblett of Spruson & Ferguson, patent and trade mark attorneys of Sydney.
         At the outset Mr Niblett referred to the Coca-Cola case, supra, reminding me first that the applicant had proposed an endorsement on a line drawing and lodged evidence of use of the mark and second that similar marks had been accepted in Part B in the United Kingdom.  He pointed out that the applicant was seeking registration of a line drawing, being a combination of elements which contribute to distinctiveness of the mark, the distinctiveness residing in a slight concavity in the body of the bottle, the two-step shoulders of a particularly unusual configuration and the swing-top porcelain stopper.  In Mr Niblett's opinion, the totality of these elements creates a distinctive container, which is clearly recognized as the product of the applicant even without a label or any other distinguishing feature.  In support Mr Niblett referred to an article 'Specialty Beers' published in 'Vive la Cuisine', a copy of which is annexed to the Statutory Declaration by Mr van Verschuer.
         Turning to the reputation of the mark in Australia, Mr Niblett noted that the use which commenced at about the time of filing this application shows a distinct rise in sales of the product from 1985 to 1988.  It must be borne in mind, he added, that the applicant's goods are for a specialized market so that the impact of the bottle on beer drinkers is the factor to be considered.  Mr Niblett also indicated that the applicant would amend the application to Part B of the Register if I decided the mark was not suitable for registration in Part A.
         For a mark to be registrable in Part A of the Register it must qualify for registration in terms of sub-section 24(1) of the Act or under the provisions of sub-sections 24(2) or 26(2) by acquiring distinctiveness through use of the mark.  In order to proceed to registration in Part A a mark must be distinctive, i.e. adapted to distinguish the goods of the proprietor from the same or similar goods of other traders.
         To determine whether or not a mark is adapted to distinguish it is necessary to apply to the subject mark the now well established test of ascertaining whether it is one which other traders are likely to require to use, without improper motive, in the normal course of their business activities in relation to the same or similar goods (see Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511).
         The issue concerning registrability of the mark in Part B of the Register depends on deciding whether the mark will at some time in future satisfy the requirements of sub-section 26(2) either by inherent distinctiveness or by a combination of inherent adaptability and distinctiveness in fact (see Burger King Corporation v The Registrar of Trade Marks [1973] 128 CLR 417).
         In advancing his arguments Mr Niblett placed great emphasis on the submission that the trade mark consisted of a line drawing of the bottle device and that the applicant proposed to clarify this by an endorsement expressed as:

"The trade mark consists of a line drawing of a bottle characterised by an upper section having two

shoulders leading up to the neck to which a cap or closure may be affixed and slightly a concaved body which is smooth apart from the imprint of two uncompleted ovals."

Whilst I acknowledge that line drawings of bottles depicting uncommon or unique shapes of such bottles would be allowed registration in Part A as distinctive marks, subject to appropriate endorsements, and in this regard my attention has been directed to acceptances of applications Nos A474572 and A474573 advertised in the Official Journal of Trade Marks of 8 November 1990, I view the mark in question as a representation of an ordinary bottle device comprising features which taken together fail to establish the distinctiveness of the mark as a whole.  The concaves in the body of the bottle are hardly noticeable, the blank oval shapes and two shoulders are common features found in bottles.  The only somewhat unusual particular appears in the closure device consisting of a swing-top stopper, but even if rather rare nowadays this device is not novel, having been in common use as a drink bottle closure in the past.  Moreover, merely because such closures have fallen out of fashion is no reason to assume that they will remain so.  If these stoppers have market appeal, then it is likely that other traders, without improper motive, may well decide to adopt them.
         I find therefore that the device under consideration is not so "sufficiently 'unique' that other traders will not be likely to want to use a similar device in the bona fide [promotion] of their own products", and it is not "so striking as to impress and be recalled as something more than a mere representation of the goods" (Australian Trade Mark Law and Practice by D.R. Shanahan, p.95).  Being of such nature the mark fails to qualify for registration as a distinctive mark.
         Turning to the evidence in support of this application, as I noted above, the declarant Mr van Verschuer holds the position of general counsel of the applicant.  The sales value of beers from the first use of the mark in Australia are indicated as:

1985     $AU     35,600.00

1986            408,456.00

1987            974,825.00

1988          1,160,843.00
         The advertising and promotional expenses since 1987 have been estimated to amount to $14,920.00, and under exhibit "A" the declarant has annexed copies of advertisements, promotional material and publicity illustrating the mark in use.
         The sales figures indicate progressive increase of the beers' popularity, but the extent to which the product has achieved reputation and recognition of the mark throughout the country is impossible to assess due to the absence of any supporting declarations from members in the relevant trade.
         On perusing the samples of the subject mark in use, I have ascertained that its use does not correspond with the representation of the mark of this application, as the examiner had pointed out in a report.  Exhibit "A" shows labels around the neck of the bottle displaying the word GROLSCH with other matter and embossed devices in the ovals of the bottle.  Some depicted bottles also bear, above an oval shape, what appears to be the word GROLSCH in an embossed form.  It is noted that the word GROLSCH and/or the devices in the ovals appear in the marks of registrations in the United Kingdom, United States of America and Denmark.
         Since the applicant cannot establish distinctiveness of the mark before the date of the application, having used the mark in Australia only since its lodgment, progress of this mark may be considered only in terms of section 25 as a mark capable of becoming distinctive.  Bearing in mind the principles enunciated in the Clark Equipment and Burger King cases, supra, as well as my earlier observations concerning the inherently non-distinctive nature of the applicant's bottle device mark, I believe the amount of use demonstrated for the period from 1985 to 1988 is insufficient to conclude that the mark has been rendered distinctive in fact of the applicant's goods.
         The mark of the present application may be distinguished from the Coca-Cola Company's bottle device, which succeeded in the Court of Appeal in the United Kingdom on the ground of acquired distinctiveness of the line drawing of the bottle's shape, as stated by Lawton L.J. in Coca-Cola Trade Marks [1986] RPC 421, at p.444:

"The evidence clearly establishes that the applicant's unusual shaped bottles distinguished the beverage in them from similar beverages produced by others.  They have served their purpose in the United Kingdom for about 60 years.  If any competitor sold his beverage in bottles closely resembling the applicants', his conduct would amount to passing off.  It follows, first, that no other trader could have a legitimate reason for using bottles of this shape and secondly, that the shape of the bottle distinguished the applicant's goods for the purpose of the 1938 Act. ... If the shape of the bottle is distinctive, as I adjudge it is, a line drawing of that shape is also likely to be distinctive.  It is more than a line drawing of a basic bottle shape as the judge held it was."

Viewed in light of these criteria, the bottle device under consideration is not unusual, it has been used in Australia only five years, there is no evidence of reputation sufficient to support a passing off action, other traders may well have a reason for adopting functional features of its design, the applicant has failed to establish that the shape of the bottle distinguishes its goods and the evidence of the mark in use does not show anywhere use of a line drawing of the mark.
         I find therefore that the applicant's mark fails to qualify in terms of section 25 of the Act.  Consequently, the mark is not registrable in either Part A or Part B of the Register, and I refuse the application.

(V. ZARS)
Senior Examiner
25 January 1991