Kraft Food Australia Pty Ltd v Mars Australia Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kraft Foods Australia Pty Ltd to registration of trade mark application 1275278(30) - FREE BARS - filed in the name of Mars Australia Pty Ltd.

Delegate: Iain Thompson

Representation: Opponent: Christian Dimitriadis of Counsel instructed by Griffith Hack
Applicant: written submissions by Baker & McKenzie

Decision: 2012 ATMO 51
s52 opposition: s41 – FREE BARS a term used in the promotion of chocolate bars: trade mark not to any extent adapted to distinguish, registration refused.
Background

In these proceedings under the Trade Marks Act 1995 (‘the Act’) Mars Australia Pty Ltd (‘the applicant’) has applied to register a trade mark current details of which appear below:
Application No:         1275278
Priority Date:             3 December 2008
Goods:Class 30: Rice, pasta; cereals and cereal preparations; tea, coffee, cocoa; coffee essences, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; bubble gum and chewing gum; pastries, cakes, biscuits, ices, ice cream, ice cream products, frozen confections, frozen desserts, mousses, sorbets (ices); bread; pastry; sweet spreads, savoury spreads, snack foods, fruit bars, muesli bars, prepared meals, sweet pies, chocolate, chocolates, chocolate products, sauces including toppings for ice cream and desserts; pizzas, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressings; mayonnaise; dips; all included in this class.
Trade Mark:               FREE BARS
The application was examined in compliance with section 31 of the Act and advertised as accepted on 2 April 2009 in the Australian Official Journal of Trade Marks. On 1 July 2009 Kraft Foods Australia Pty Ltd (‘the opponent’) served and filed Notice of Opposition (‘the notice’) to the registration of the FREE BARS trade mark (‘the opposed trade mark’). The notice includes the main ground under section 41 which was, inter alia, subsequently argued at a hearing. For the sake of completeness, I find that the grounds in the notice other that that under section 41 have not been established.
The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 20 April 2012. Christian Dimitriadis of Counsel instructed by Chris Sgourakis of Griffith Hack represented the opponent and provided a written summary of the opponent’s submissions. The applicant relied on written submissions by its solicitors, Baker & McKenzie.
The evidence
The parties served and filed evidence in support, evidence in answer and evidence in reply.
The evidence on which the opponent relies is statutory declarations by:
·     Chris Sgourakis dated 12 October 2009 (1) and 26 May 2011 (2);
·     Jacqueline Moutsias dated 5 October 2009;
·     Michael Busuttil dated 27 April 2010; and
·     Michael Napolitano dated 31 May 2011.
The evidence on which the applicant relies is a statutory declaration by:
· Anne Browne dated 27 January 2011.
There is additional evidentiary material from the applicant consequent to a Notice to Produce issued by the Registrar at the behest of the opponent (‘the NTP material’).
Overview
Mr Sgourakis is a trade marks attorney and principal at Griffith Hack. In his first declaration, he annexes documents obtained from the Trade Marks Office in relation to the application,[1] as well as pictures of “FREE BARS” trade promotions conducted by the applicant.[2] In his second declaration, he annexes website material which shows use of the expression “FREE BARS” and similar expressions.[3]
[1] Sgourakis (1) 12.10.09, Annex CS-1.
[2] Sgourakis (1) 12.10.09, Annex CS-2 and Annex CS-3.
[3] Sgourakis (2) 26.05.11, para 3; Annex A-Q.
Ms Moutsias is a research consultant with Moutsias Managements Services Pty Ltd. She addresses the nature of the marketing and trade promotions carried on by the applicant. Exhibited to her declaration are copies of in-store advertisements, receipts and wrappers from various stores attended by her between 23 June 2009 and 7 July 2009.[4]
[4] Moutsias 25.10.09, paras 4(a)-(f); Annex JM-2 to JM-13.
Mr Busuttil is the General Manager Marketing for the opponent in Australia and New Zealand. He addresses marketing and trade promotions conducted in the confectionery and snack foods market, which have included the expression “FREE BAR” used by the opponent and other traders.[5] He annexes examples of that and similar expressions being used.[6]
[5] Busuttil 27.04.10, paras 5-6.
[6] Busuttil 27.04.10, Annex 1-7.
Mr Napolitano is Group Account Director of George Patterson Y&R, an advertising agency that looks after many accounts including that of the opponent. He provides an independent expert viewpoint in relation to “FREE BAR” promotions conducted by the opponent and others,[7] as well as the prevalence and effectiveness of “free bar” promotions generally in the confectionery and snack foods industry.[8]
[7] Napolitano 31.05.11, Annex MN-1, MN-2.
[8] Napolitano 31.05.11, paras 8-11.
Ms Anne Nicole Browne is Regional Marketing Properties Coordinator for the Mars Group of Companies and works within Baker & McKenzie. She provides evidence of use of the opposed trade mark in connection with trade promotions run by the applicant.[9]
[9] Browne 27.01.11.
Onus
The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities. See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.
Section 41
Section 41 of the Act provides:
41Trade mark not distinguishing applicant’s goods or services
(1)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.
Note 1:For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
Branson J considered the operation of section 41 in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241 (‘Blount’) where she said:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (“the designated goods or services”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).
The initial consideration under section 41 is thus under subsection 41(3) and an assessment of “the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons.”
In Blount, Branson J endorsed the test for inherent adaptation adopted by Kitto J in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (‘Clark’) at 514, where His Honour put it as follows:
“[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”
In these considerations, nothing turns on the fact that much of the evidence relates to the use of the expression FREE BAR, rather than FREE BARS; indeed, neither party made submission concerning this issue. I note that the test in Clark refers to use, “in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it” and that it is apparent that the use of the trade mark FREE BAR should infringe the putative registration of the trade mark FREE BARS as the two are substantially identical.
The opponent’s hypothesis is that the expression FREE BARS “is descriptive and incapable of distinguishing the applicants’ goods from those of the opponent and other traders.” In particular, claims the opponent, those words are descriptive of trade promotions in which traders offer free confectionery bars as part of a campaign designed to promote and encourage consumers to purchase such products, and directly descriptive of the free confectionery bars offered as part of such promotions. Promotions of this type, submitted Mr Dimitriadis, have been commonplace in the field of confectionery and related fields for many years.
The applicant, for its part, submits that the opposed trade mark was rightly accepted for registration as being capable of distinguishing the goods of the applicant in respect of which the trade marks are sought to be registered from the goods of other persons (s.41(2)). The application further submits that words or phrases which have a descriptive capacity can nevertheless have some inherent adaptation to distinguish. As Finn J observed in Austereo Pty Ltd v DMG Radio [2004] FCA 968 209 ALR 93; (2004) 61 IPR 257; [2004] AIPC 92-016 at paragraph 83:
Nonetheless words which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish.[10]
[10] I note that not all trade marks which have some degree of inherent adaptation to distinguish are immediately acceptable in terms of subsection 41(2) since the operation of section 41 makes it clear that some trade marks which have a slight degree of inherent adaptation must be considered under subsection 41(5).
Before further discussing the parties’ opposing contentions, is convenient to discuss Mr Dimitriadis’s submission that the opposed trade mark lacks inherent adaptation because it is “descriptive”. Descriptiveness is but one of the reasons that a trade mark might lack inherent adaptation; an instance of a trade mark which is not in any way descriptive of goods yet lacks any inherent capacity to distinguish in respect of consumer goods is the expression SALE PRICE. The putative trade mark SALE PRICE is one which reveals no information whatsoever about the character or quality of any particular goods yet is almost universally used by traders of consumer goods to attract customers and thus lacks any inherent adaptation to distinguish. As observed by Bennett J in Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 at [27]:
I accept that the trade mark is not descriptive of the goods to which it is applied and does not indicate a characteristic of them. GO ON... can be viewed as an exhortation, not describing the goods at all but an emotive direction to do something or take action and, as used by Nestlé, to taste ice cream. As Dixon CJ explained in Mark Foy’s Limited v Davies Coop and Company Limited [1956] HCA 41; (1956) 95 CLR 190 at 194 (‘the Tub Happy Case’) :
‘Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.’
However, the fact that the trade mark is not descriptive of the goods does not mean that it has an inherent capacity to distinguish.

The parties’ arguments may be tested by reference to the evidence.
Mr Napolitano explains from [6] of his declaration:
To my knowledge, the biggest companies and advertisers of products in the bars segment in Australia are Cadbury (now Kraft Foods), Nestle and Mars. Each of those companies owns multiple well-known bar brands, such as:
Cadbury: CHERRY RIPE, BOOST, PICNIC, DAIRY MILK, CRUNCHIE, TIME OUT, TWIRL, FLAKE
Mars:MARS, SNICKERS, BOUNTY, TWIX, DOVE
Nestle:KIT KAT, AERO, CRUNCH, MILO, VIOLET CRUMBLE
The promotions for bars by these companies usually follow typical forms and are cyclical. Where a company is launching a new bar brand, or is launching a variant of an established brand, an intensive advertising campaign is conducted to support the new brand or new variant. For an established brand, the company may conduct periodic advertising aimed at raising the profile of the brand and giving it a sales boost. Another important form of advertising bars during a year is free bar promotions, where, for example, a company offers (for a limited time) two bars for the price of one, a free bar if you fill-in an online coupon, or a competition where you get a chance to win a free bar if you find a specially marked “winning” wrapper (which you would redeem for a free bar at the point of purchase or by sending the winning wrapper to the company). To avoid marketplace confusion, the major companies try to avoid running free bar competitions at the same time as their competitors.
Typically, free bar promotions involve the use by the advertiser of the words FREE BARS, or a variant such as FREE CRUNCHIE BARS. In many cases, these words are used as the most prominent promotional slogan or phrase, or as one of the prominent slogans or phrases, in the advertising and promotional material for the campaign. In other cases, the words appear in the body of text of such material as part of the description of what is being offered. In addition, in my experience, such promotions are generally referred to by those in the advertising field and by confectionery companies as free bar promotions. I have been aware of free bar promotions for many years (since well before 2008) and my comments in this declaration reflect my observations and experience across the whole of that period.
Mr Busittil states similarly. He says at [7] and [12] of his declaration:
In my experience, words such as “free bar(s)” are commonly used by food and confectionery traders in Australia in trade promotions and competitions. In particular, the words “free bar(s)” are used in trade promotions to indicate that consumers are being offered a bar of the product for free (ie. two bars for the price of one), or that they can win a free (zero cost) confectionery bar (for example by redeeming a winning coupon or by entering a competition). In my view, I believe that consumers naturally understand that the words “free bar(s)” indicate that they can receive, or can win, bars of the confectionery products at no cost, ie for free.
In 2004, Cadbury ran its “GO ANOTHER CADBURY” promotion where it was advertised that “1 in 5 Wins A FREE BAR”. This promotion was run from 18 April 2004 to 11 July 2004. Consumers would simply purchase a promotional marked Cadbury bar from participating outlets and check to see if they won a free bar of chocolate. For this promotion, over 12,000,000 specially marked instant win products were produced and distributed, and 2,400,000 free bars were available to be won (being in excess of $3,600,000 in retail value). The promotion was supported by approximately $1,000,000 of advertising, including printed point of sale materials and a two week television advertising campaign commencing 2 May 2004. I attach at Annexure 7 details of the 2004 “GO ANOTHER CADBURY” promotion, the terms and conditions for the promotion as well as some of the promotional materials used.
The observations of Mr Busittil and Mr Napolitano are corroborated by the supporting materials attached to their declarations. The use of the words FREE BARS in materials other than those of the applicant is exemplified by the following graphics (shown in reduced size) from a 2009 Cadbury in the evidence of Mr Napolitano:
(‘Cadbury 1’)
(‘Cadbury 2)
As well as occurring in the heading of Cadbury 2, the expression FREE BAR occurs in the text and on the candy bars which are pictured. Further examples from a promotion of the opponent in 2004 occur in the evidence of Mr Busuttil:

(‘Cadbury 3’)
Each of the candy bars depicted in Cadbury 3 carries the words FREE BAR.
(‘Cadbury 4’)
Each of the candy bars depicted in Cadbury 3 and 4 bears the words FREE BAR.
The applicant, however, submits that the above examples:
… are of descriptive use of the term free and/or bar, including use of the term “1 in 5 Wins a free bar” in connection with the Opponent’s “Score a Freebie” promotion.
Other than samples of use by the Applicant, the opponent’s evidence does not include samples of use of the term “free bars” as a trade mark. Registration of the phrase FREE BARS would not prevent other traders making legitimate use of the component parts of the mark in such descriptive ways. There is an infinite number of ways that a trader could convey a similar message in a sign that could function as a trade mark, such as the opponent’s own choice of the phrase “Score a Freebie”, without reproducing the Applicant’s mark.
However, this submission misstates the test for inherent adaptation in a trade mark: the test is not whether other traders have used the phrase FREE BARS as a trade mark, the test in Clark is, rather, whether other traders will need (without improper motive) to use the trade mark for the sake only of its ordinary meaning. To go down the track of considering whether another trader has used the opposed trade mark as a trade mark is to bring under consideration the inchoate rights of a particular trader rather the public interests of all traders to use the opposed trade mark for the sake only of its ordinary signification.
Further, considerations of whether there are other, or more obvious, words to use in respect of a ‘give away’ promotion are not factors which immediately go to the prima facie inherent adaptation of the words under consideration – these factors are to my mind ones which go to the consideration of whether the trade mark has some slight degree of inherent adaptation, or completely lacks inherent adaptation, and thus ought to be respectively considered under either of subsections 41(5) or (6). The inherent adaptation to distinguish of particular words arises out of a consideration of the nature of those words themselves rather than from a comparison of the words under consideration to other words. As I observed in Paige Stainless Pty Ltd v Aco Polycrete Pty Ltd [2011] ATMO 87 at [42]:
For example, if the goods were ‘prepared foods’ and the proposed trade mark was the word SOUP, it is no answer to an allegation of a lack of any inherent adaptation in the proposed trade mark SOUP to state that there are other words such as ‘potage’ or ‘broth’ or ‘chowder’ that other traders might remain free to use in respect of their similar goods. The inherent nature of the word SOUP (considered in relation to the goods ‘prepared foods’) does not change only because there are alternative words available for other traders to use in respect of their similar ‘prepared foods’.
In short, these particular submissions refer to considerations which occur after the assessment in terms of subsection 41(3) has concluded that the trade mark must be rejected in terms of subsection 41(2) but before any decision has been reached as to whether that rejection is in terms of subsection 41(5) or (6). To act otherwise as suggested by these particular submissions would have the effect that the regime imposed by section 41, in particular subsections 41(3) and (2), would be disregarded.
I conclude that evidence shows that the expression FREE BAR(S) has been used by at least the opponent for the sake only of its ordinary meaning before the priority date of the opposed application in order to promote the goods by ‘giving away’ a candy bar which is redeemed by customers who find a winning message on the inside of the wrappers within which the goods are sold. I also note that the expression FREE BARS is placed before the public on the goods, in point of sale promotional material and in television commercials, several of which are in evidence both as ‘screen shots’ and on DVD.
In consideration of whether the opposed trade mark has some slight inherent adaptation and thus may be considered under subsection 41(5), I consider that the evidence of Mr Napolitano has particular weight. Mr Napolitano states at [9] of his declaration:
In my experience, free bar promotions are very common means of advertising and promoting sales of chocolate bars. I am aware that each of Cadbury (Kraft Foods), Nestle and Mars have, over the years, carried out such free bar promotions as part of their annual advertising cycles. Whenever one of the large companies runs a free bar promotion, I have personally become aware of a “buzz” and “talk” of the promotion around my workplace and circle of acquaintances.
While Mr Napolitano does not go as far as stating that the expression FREE BARS is common to the trade, it is obviously one which has been freely used in the past by all three major players in the market in relation to similar goods and the promotion thereof. I thus consider that the opposed trade mark is one which ought to be considered under subsection 41(6) of the Act.
Section 41(6)
Under subsection 41(6) the question which must be addressed is whether, because of 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. That is, whether because of the applicant’s use of the opposed trade mark it has come to denote only the goods of the applicant: in other words, has the applicant’s use of the oppose trade mark been such that it has, in the context of the trade, shed its ordinary meaning and adopted a secondary meaning as signifying only the goods of the applicant?
The question is to be considered by reference to the use of the opposed trade mark by the applicant before the priority date.[11] I am hampered in my discussion of the use of the opposed trade mark by the applicant in that at least some of the relevant uses of the opposed trade mark exhibited to Ms Browne’s declaration are within Exhibit ANB-1 for which confidentiality is claimed. Those confidential uses of the trade mark within Exhibit ANB-1 date from the year 2003 and are not consistent with the uses shown within ANB-3 which are apparently later; however no date is attributed to those usages within Exhibit ANB-3 by Ms Browne.
[11] See, for example, Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 at [233]
Ms Browne also provides details of expenditure on advertising under the opposed trade mark for its promotional campaigns within each of the years 2007 to 2010 inclusive. The expenditure details are within confidential Exhibit ANB-2 and so I merely note that the expenditure is significant. However, Ms Browne does not supply details of revenue under the opposed trade mark.
I also note that there are no materials provided by the applicant which show the uses of the opposed trade mark attributable to each of the years to which the advertising figures within confidential Exhibit ANB-2 relate.
Examples of the use of the opposed trade mark within Exhibit ANB-3 to Ms Browne’s declaration (for which confidentiality is not claimed) appear to reflect the use of the opposed trade mark reported by the search consultant Ms Moutsias after the priority date.[12] I infer that the mode of use of the opposed trade mark altered between the mode shown at Exhibit ANB-1 and that shown at ANB-3 although it is not clear when the change occurred (or, as I have said, when the use of the opposed trade mark shown at ANB-3 occurred). I also infer (owing to the similarity between the usages of the opposed trade mark within Exhibit ANB-3 and those in Ms Moutsias’s declaration) that the usages of the opposed trade mark exhibited to Ms Moutsias’s declaration are consistent with at least some of the usages made by the applicant before the priority date.
[12] I note also that the NTP material dating from immediately before the priority date is consistent with that within the Moutsias declaration.
In the advertising and promotional material within Exhibit ANB-3 of Ms Browne’s declaration the following appear:
(“Browne 1’)
The words appearing in Browne 1 underneath the words “1 IN 6 WINS INSTANTLY!” contain, inter alia, the explanation, “Average odds. Any 6 bars may not contain a free bar.”
(“Browne 2”)
The words appearing in Browne 2 underneath the words “1 IN 6 WINS INSTANTLY!” contain, inter alia, the explanation, “Average odds. Any 6 bars may not contain a free bar.”
Certain of the materials within Exhibit ANB-3 have the words, “Proprietary and Confidential Information for Mars, Inc. Internal Use Only.” appearing on them. However, the usages and message which appear on those materials “Average odds. Any 6 bars may not contain a free bar.” are consistent with those shown at Browne 1 and Browne 2.
In her declaration Ms Moutsias explains her research of the opposed trade mark. At [4] of her declaration she states:
On 19 June 2009, Chris Sgourakis of Griffith Hack, attorneys for Cadbury Pty Ltd, instructed me to conduct investigations into the use of the words FREE BARS by Mars Australia Pty Ltd. I attach at Annexure JM-1 a copy of Griffith Hack’s letter to MMS of 19 June 2009. In accordance with those instructions, I conducted the following investigations.
[Ms Moutsias details her investigations of which I include the following as being representative of her inquiries]
7- Eleven Riversdale Road CAMBERWELL
On attendance at this store, I saw several boxes of Mars Bars and Snickers Bars featuring the FREE BARS wrappers on a shelf at the end of an aisle, as well as Mars Bars and Snickers bars located in the confectionery aisle and at the front counter.
No FREE BARS posters were visible in the store, however there were quite a number of shelf tags positioned alongside these bars advertising an in-store deal for “Grab 2 for $4.50” and showing images of Mars and Snickers bars with the words FREE BARS. I attach a copy of this tag as Annexure JM-2.
I purchased two Mars bars and two Snickers bars at this store. I attach at Annexure JM-3 a copy of the invoices for these purchases. I attach at Annexure JM-4 a copy of the wrappers for the Mars bars and Snickers bars I purchased. Two of the wrappers I purchased were “winning” bars and I redeemed these wrappers for free bars at this store. I attach at Annexure JM-5 copies of the two free bars I was handed by the store attendant in return for the two winning wrappers I handed to the attendant.
Reduced sized copies of the Annexures referred to by Ms Moutsias are shown below:
Annexure JM-2
The symbol TM appears alongside the boxed words FREE BARS in the above representation.
Annexure JM-3
The symbol TM appears alongside the boxed words FREE BARS in the above representation. The words immediately below the trade marks MARS and SNICKERS in Annexure JM-3 include the words, “Average odds. Any 6 bars may not include a free bar.”
Annexure JM-4
The words on the right hand side of the boxed words TRY AGAIN in Annexure JM-4 read, “SORRY, YOU DON’T WIN A FREE BAR THIS TIME.”
Annexure JM-5
In Annexure JM-5, on the right hand side of the boxed word WINNER the words, inter alia, read, “TO RECEIVE YOUR FREE BAR, HAND OVER THIS WINNING WRAPPER …”
It is apparent from the exhibits to the Browne and Moutsias declarations that the applicant uses the words FREE BAR for the sake only of their ordinary meaning. Further, by using the words in expressions appearing on and within the packaging such as “to receive you free bar” and “you don’t win a free bar”, the applicant both affirms the words’ ordinary meaning and, by their proximity and association with the more dominant rendition of the opposed trade mark, emphasizes the ordinary meaning of that more dominant rendition and stresses that the words there are being used only for the sake of their ordinary meaning.
Use of a trade mark which lacks inherent distinctiveness, per se, neither by volume or duration, necessarily gives rise to acquired distinctiveness. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 Middleton J explained at [226]:
It is also important not to equate use with distinctiveness. The mere use of PERSIAN FETTA by Yarra Valley does not, of itself, establish that those words distinguish Yarra Valley’s cheese from the cheeses of other persons.
Justice Jacobs explained in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281:
There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example; no matter how much use a manufacturer made of the word “Soap” as an unsupported trade mark for soap the word would not be distinctive of his goods.
I consider that the opposed trade mark is in a similar situation to the postulated trade mark ‘SOAP’. It has been used only for the sake of its ordinary signification and while the applicant has claimed trade mark status for the expression FREE BARS on the goods, it has also used the words FREE BARS within the expressions “to receive you free bar” and “you don’t win a free bar”, on and within the packaging in such a manner as to vitiate any prospect that the trade mark could ever be distinctive of the goods or, more pertinently, actually distinguish the goods of the applicant at the priority date.
It follows that the opponent has established its opposition to the registration of the trade mark under section 41 of the Act.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
I refuse to register application 1275278.
Costs
The opponent requested its costs and I award these at the official scale against the applicant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
22 May 2012

[2012] ATMO 51

22 May 2012

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Costs

Statutory Construction

Delegate:	Iain Thompson
Representation:	Opponent: Christian Dimitriadis of Counsel instructed by Griffith Hack Applicant: written submissions by Baker & McKenzie
Decision:	2012 ATMO 51 s52 opposition: s41 – FREE BARS a term used in the promotion of chocolate bars: trade mark not to any extent adapted to distinguish, registration refused.