Minnesota Mining & Manufacturing Company

[2002] ATMO 8

TRADE MARKS ACT 1995

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

Re:Trade mark application number 744687(16) - THE COLOUR CANARY YELLOW- in the name of Minnesota Mining & Manufacturing Company.

Background

Minnesota Mining & Manufacturing Company ("3M"), a company organised and existing under the laws of the State of Delaware in the United States applied for registration of the above-mentioned colour mark on 23 September 1997.  The application was in the following terms:

The trade mark consists of the colour canary yellow applied to the whole of the visible surface of stationery notes.

The goods covered by the application are:

Class 16:Stationery notes containing adhesive on one side for attachment to a variety of surfaces.

In other words, the applicant has applied to register the colour canary yellow as it is applied to self-adhesive, removable stationery notes.  The applicant is the registered owner of the trade mark "Post-It" (856650) for stationery notes and other office related products.  During the course of this decision, the term "stick-on notes" will be used to describe the product in question.  The term "Post-It notes" will be used to describe the applicant's product. 

The application was duly examined by the Trade Marks Office (TMO) and the first report was issued on 22 December 1997. The report cited sections 41 and 44 of the Trade Marks Act 1995 (the Act) as grounds for rejection. On 20 December 2000, almost three years later after the first report issued, the applicant provided submissions in response. On the basis of these submissions, the s.44 ground was withdrawn by the TMO. However, the s.41 ground for rejection was re-affirmed on 9 January 2001.

The applicant's submissions dated 20 December 2000 relied on the following:

• the applicant had applied for a very precise shade of yellow - it was not seeking the spectrum of yellow colours;

• the applied-for trade mark possessed at least a minimal level of inherent adaptation to distinguish - therefore, the provisions of s.41(5) could be applied to allow in evidence of use and public education;

• this evidence, which took the form of survey results from Australia and the United States, showed that the public had been educated to the requisite degree in relation to the specific colour sought; and

• that there was no significant advantage, in terms of functionality, of the colour canary yellow over other any other colour used on stick-on notes.

The position of the TMO can be summarised as follows:

• the application was for the colour canary yellow;

• other manufacturers of stick-on notes would need to use canary yellow on their products;

• as such, the applied-for trade mark did not have the requisite inherent adaptation to distinguish and neither s.41(3) or s.41(5) could be applied;

• as a result, the provisions of s.41(6) were applied to the application;

• in order to satisfy s.41(6), the applicant would need to establish that as at the date of the application (23 September 1997), the trade mark had come to designate only the applicant's goods in the mind of the average consumer - in other words, the average consumer, when presented with a canary yellow stick-on note, would assume that the product was that of the applicant and no-one else;

• on the evidence provided, such a finding could not be made - the applied-for colour was not recognised as, nor operated as, a trade mark.

Without making further submissions, the applicant requested that the matter be set down for hearing.  Pursuant to that request, the matter came before me in Sydney on 22 October 2001.  The applicant was represented by Mr Trevor Stevens of Davies Collison Cave.

Evidence

During the course of examination and the hearing process, the following statutory declarations was relied upon by the applicant:

Name	Date	Exhibits
Thomas Percival Spencer	11 June 1999	TPS-A through TPS-C
Trevor Keith Stevens	20 December 2000	TKS-1 through TKS-4
Ronald Ian Klein	24 August 2001	RK-1 through RK-2
Thomas Percival Spencer	18 December 2001	TPS-1 through TPS-3

The declaration of Mr Stevens dated 20 December 2000 also included, as Exhibit TKS-3, material which had been used by the applicant in pursuing a similar trade mark application in the United States.  The material comprised:

Declaration by Arthur Fry dated 23 September 1999

Declaration by Errol Lynn Wilson dated 23 September 1999

Declaration by Robert W. Hoke II dated 23 September 1999

Declaration by William J Smith dated 20 September 1999

Declaration by Roy S Berns PhD dated 17 September 1999

The declaration of Dr Berns included his report on the functionality and characteristics of the applied for colour.

Mr Steven's declaration also included, as Exhibit TKS-4, results from a survey conducted into the Australian stationery market in mid-1999.

The declaration of Mr Klein included his report on a survey undertaken on behalf of the applicant in relation to the present trade mark application in late 2001.  Prior to the hearing, the applicant filed written submissions addressing this survey.  I have taken these submissions into account in reaching my decision.

At the hearing, the applicant also provided a schedule of overseas registrations for the relevant trade mark.  On 23 October 2001, the applicant provided copies of the relevant Certificates of Registration for each of these marks.

Subsequent to the hearing, on my request, the applicant also filed the second declaration of Mr Spencer.  The declaration was received by the TMO on 20 December 2001.  Notwithstanding its late filing, I have decided to take this material into account.  The material relates to the involvement of other producers of stick-on notes in the Australian market.

Findings

It is well established that in assessing colour marks, the following considerations are taken into account by the TMO:

1. the nature of the goods;

2. the market in which the goods are sold;

3. the particular colour for which registration is sought;

4. whether the colour serves a functional purpose in relation to the particular goods;

5. whether there is a competitive need to use the colour;

6. colours generally are not inherently adapted to distinguish as other traders have a legitimate expectation that they will be able to apply any colour they choose; and

7. in the absence of an inherent adaptation to distinguish, to what extent does the applied-for colour operate as a trade mark - ie. does the intended market associate the colour with the applicant?

These principles have been applied in cases such as Philmac Pty Limited's Application 796572 for the colour Terracotta (14 December 2000),  Flower Carpet Pty Limited's Application 761347 for the colour Pink (11 May 2001) and Veuve Clicquot Ponsardin, Maison Fondee En 1772's Application 704779 for the colour ORANGE (31 March 1999).

The first three considerations are self-explanatory in the present case.

In relation to the fourth and fifth considerations, I am satisfied that the evidence, particularly the report of Dr Berns, establishes that the applied-for colour possesses no real functional advantage over other colours.  His report confirms that there is no great advantage of the colour in terms of visibility or its ability to contrast with writing that it is applied to it.  Similarly, the evidence contained in the declaration of Mr William Smith indicates that, in the United States, there is no cost advantage in producing canary yellow paper.  In fact, that shade may cost more to produce than other colours.  The only reason for lower final costs is due to the volume of paper purchased by the applicant.  Mr Spencer confirms in his first declaration that the same applies to the Australian market.  Accordingly, there does not appear to be any functional reason why manufacturers would have a need to use canary yellow.  In terms of competitive need, it is fair to say that yellow pads have now become the most widely used form of stick-on notes.  There are other colours, however, the applicant's own figures show that 68% of their sales are for yellow (first Spencer declaration para 9).  There is no apparent reason why the same would not apply to the market overall.  Accordingly, yellow is a popular colour and a competitive need exists for other manufacturers to be able to produce yellow stick-on notes, if not canary yellow ones.  I will return to this distinction in due course.

In relation to the fifth and sixth considerations, I make the following findings. 

The applicant's submissions concentrated on s.41(6) and the comments of Justice Branson in Blount Inc v Registrar of Trade Marks 40 IPR 508 (oregon) in relation to that sub-section. In doing so, and notwithstanding its submissions at the examination stage, the applicant has effectively conceded that the applied-for mark does not have any inherent adaptation to distinguish as required by s.41(3). I believe that this is a fair concession to make. Even if the applicant had not taken this approach, there is nothing before me to indicate that the applied-for colour, of itself, has any ability to set the applicant's goods apart from the goods of others.  Rather, it is the colour, combined with the applicant's name and "Post-It" trade mark that sets the goods apart. For the purposes of a s.41(3) assessment, these supporting elements cannot be taken into account. The trade mark must stand on its own - Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 and British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 per Jacobs J. Further, I am not satisfied on the evidence before me that other traders are unlikely to desire to use what the applicant describes as canary yellow as a colour for their product - per Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 and more recently confirmed by Wilcox J in Ocean Spray Cranberries v Registrar of Trade Marks 47 IPR 579. Other traders have a legitimate expectation that they are entitled to use any colour and any shade of colour they choose, particularly in a market such as stationery supplies where colours are an important marketing and functional tool.

Accordingly, the applied for trade mark does not have the requisite inherent adaptation to distinguish to bring s.41(3) into effect.

In such circumstances, s.41(4) requires me to determine the application by applying ss.41(5) and/or 41(6) - per Branson J in oregon at 504-505. Section 41(5) is available where there is some inherent adaptation in the mark. Section 41(6) applies where there is no inherent adaptation, but where, due to the extent to which the applicant has used the trade mark before the filing date, the trade mark has now acquired its own distinctiveness.

In relation to s.41(5), I am not satisfied that there is any inherent adaptation in the mark.  In the present case, coloured paper products have been a common item for a substantial period of time.  Certainly, there were coloured paper products available at the date of the application.  The fact that the applicant's product also contained an innovative adhesive is not relevant to the inherent adaptation of the colour.  There appears to be nothing unusual or remarkable about the colour that the applicant chose for its original stick on notes.  Certainly, there is nothing in the evidence that tells me why yellow was chosen over any other product.  On the contrary, the evidence shows that canary yellow enjoys no real functional advantage of a variety of other colours.  It is in fact, more expensive to produce in smaller quantities.  Given the number and variety of coloured paper products, there is a competitive need for manufacturers to access and use the full spectrum of colours. 

Further, the trade mark has no inherent qualities or adaptations that would set it apart from other products.  I have already confirmed that extraneous attributes, such as a special adhesive, are not relevant to an inherent adaptation.  However, it is open to applicants to claim inherent adaptation in appropriate circumstances - for instance, where the "colour" sought is actually a combination of colours or has some sort of watermarking feature.  In the present case, the applied-for trade mark does not have any of these attributes. 

Accordingly, I am not satisfied that there is anything in the trade mark that, of itself, sets the applicant's goods apart from those of other manufacturers. 

However, such a trade mark may become capable of distinguishing the applicant's goods once consumers have become cognisant to the specific shade in which the applicant's goods are produced.  In the present case, such conscious awakening could not be the result of simply viewing the trade mark.  In other words, a consumer would not, at their first interaction with the yellow coloured stick-on notes of the applicant, recognise the colour yellow as a trade mark.  It would simply appear to be a part of the goods.  It is not until the owner starts promoting this colour as its trade mark that these perceptions would change.  The applied-for trade mark therefore fails the test stated by Jacob J in the British Sugar case (supra) at 306 where he asked:

"Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark?"

and must be regarded as not being, to any extent, adapted to distinguish. 

Therefore, I must turn to s.41(6) which does allow for evidence of past use, such as promotion, distribution and sales to be taken into account.   Branson J in oregon at 508-509 stated (emphasis added):

"The question to be considered under s.41(6) is whether the applicant has established 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 as being those of the applicant.

The above question is, in my view, entirely one of fact.  It does not involve consideration of the question whether the [trade mark] is one "which other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use upon or in connexion with their goods"...

The Act appears to plainly disclose an intention that it should no longer be the case that a trade mark which is not to any extent inherently adapted to distinguish may nonetheless be treated under the Act as capable of distinguishing if, by reason of past use, it does in fact distinguish.  The Act appears to plainly disclose an intention that it should no longer be the case that a trade mark which is "100% distinctive in fact" should not be able to achieve registration...

...

Jacobs J observed, no doubt accurately, in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 286 and 302, that evidence of promotion and use does not, without more, demonstrate distinctiveness.  Nonetheless, common sense suggests that significant promotion and use of a trade mark among people concerned with the relevant market will have a tendency to enhance, rather than diminish, the trade mark's capacity to distinguish the goods of in respect of which it is used from the goods of others.  Certainly, the absence of evidence of promotion and use is likely to assume significance where distinctiveness resulting from use is an issue.

...

[Her Honour then described the "overall impact" of the evidence presented in that case and found that the evidence of consumers, wholesalers and retailers of the goods in question demonstrated that the trade mark "Oregon" was used to refer to a range of products, rather than the geographic location.]

...

It is not, in my view necessary as a matter of law for a statistically sound market survey to be undertaken before it can be established that a trade mark does distinguish an applicant's goods from the goods of another person.  In each case the evidence relied on by the applicant is to be evaluated in the light of any evidence tending to the contrary effect and having regard to the evidence which the applicant might reasonably be expected to be able to obtain in all the circumstances of the case."

In the present case, the test is therefore whether, as at the date of application, consumers associated canary yellow stick-on notes with the applicant, to the exclusion of all other manufacturers.  However, this begs a second point - taking into account the fact that we are now some fours years beyond the date of application, what "standard" of evidence will be required to satisfy the test?  It must be acknowledged that it is a difficult matter for an applicant to obtain evidence addressing a consumer's past state of mind.  This is made even more difficult where time passes, and competitive products have come and gone from the relevant market.  Branson J addressed this to some extent in oregon where she was persuaded by the "overall impact" of the evidence.  In that case, Justice Branson had the advantage of being able to rely on affidavit evidence from a number of sources, which, although flawed, did give the overall impression that the applicant's trade mark was recognised by consumers and that they associated the goods to which it was applied with the applicant.  Similarly, in Veuve Clicquot Ponsardin, Maison Fondee En 1772's Application 704779 for the colour ORANGE, Hearing Officer Forno had the advantage of declarations made "by the impressive array of wine experts marshalled by the applicant who all identify the colour with the applicant's [applied for colour]".  In each case, the decision makers were able to get a "feel" for the market's perception of the specific trade mark at the relevant time.  In oregon, deponents were able to identify products by the name "Oregon".  In the colour orange, industry experts gave evidence that they identified the particular colour with the applicant.  Taking these decisions into account, and allowing for some difficulty in obtaining accurate past-opinion evidence, I nonetheless believe it is not unreasonable to expect the applicant to have provide evidence which addresses:

• the specific shade sought (canary yellow), as opposed to a generic, primary colour (yellow); and

• the relationship between the specific shade and the applicant's products, rather than stick-on notes generally.

With these factors in mind, I now turn to my application of the s.41(6) test.

A colour is fundamentally different to a word or graphical mark. Word marks will usually have visual and aural elements. Graphical marks will have the benefit of some get-up. It is the combination of these elements that will assist word and graphical marks in acquiring their distinctiveness. On the other hand, a colour mark, must rely solely on its appearance, with no other identifying features. Variations in word and graphical marks can easily set goods apart from each other. For instance, while trade marks may share a common element such as "cola", it will be the actual brand, logo and colouring of the can that will distinguish one product from another. If however, the cans were similar in colour, and bore no other indication of their source, a consumer might be understandably confused as to their source. In order for the consumer to differentiate between the products, the consumer would need to be educated as to the difference. This is the situation that presents itself now. Here, the applicant must show that the consumer, on looking at the applicant's products, will associate that product with the applicant and distinguish it from all other manufacturers. If they need to turn the product over to read the backing sheet which is likely to have the applicant's "Post-It" trade mark and device annexed to it in order to make this determination, then s.41(6) has not been satisfied.

The applicant states that during the period 1996 through 2001, other traders in Australia produced stick-on notes similar to the applicant's product (second Spencer declaration at para 3).  While the applicant's evidence does not disclose whether these notes were yellow, I believe that this is a reasonable conclusion to be drawn.  I do this on the basis of my own knowledge.  I am also willing to conclude that the stick-on notes were of a similar, if not identical shade.  This is confirmed to some degree by the applicant's evidence that it has now resolved a dispute with a rival manufacturer.  Under the terms of that agreement, the rival "has agreed to change the colour of its yellow sticky notes to a lighter shade of yellow clearly distinguishable from [the applicant's] canary yellow notes" (second Spencer declaration at para 6). 

In terms of its own history, Mr Spencer states that his company first used the yellow colouring on stationery notes in Australia in 1982.  Until 1996, the company offered the product in yellow only.  From that time, it has used a variety of colours.  As exhibits to his declaration, Mr Spencer provides a number of brochures and other advertising material.  One exhibit is the applicant's 1997-1998 product catalogue.  The relevant goods appear on a number of occasions in that catalogue, and are described as "yellow" - see for instance page 16 of the catalogue.  There is no mention of the applied-for trade mark "canary yellow".  The descriptions used in the catalogue, are therefore, of little use in educating the public.  In terms of the use of colour in the brochure, it appears, to my eyes at least, that the product described as yellow appears in different shades, even on the same page - again, see page 16.  The difference in shade is repeated in the other advertising and promotional material that is annexed to Mr Spencer's declaration. While I accept that the differences in shade are probably due to printing or photographic and lighting variations in the advertising material, and not the base product, they are unhelpful in establishing that the applicant is known for anything other than "yellow" in a generic sense.  Certainly, they do not assist me in finding that the applicant has taken successful steps to educate the public so that consumers differentiate the various shades.

However, the applicant also relies on two separate surveys. The first survey was conducted in July 1999 as part of a larger study. The second survey was conducted in August 2001. Both surveys were therefore conducted subsequent to the date of application. For s.41(6) purposes, it is past use which is relevant. Notwithstanding this, I am prepared to read the survey evidence in conjunction with historical evidence to ascertain the degree to which the applicant might establish its case as at the application date.

In relation to the July 1999, I note the following:

• 43% of business purchasers associated yellow coloured adhesive notepads with a particular brand or company;

• when asked what "brand or company", virtually all respondents indicated that they associated the product with the 3M or the term "post-it notes" - an answer of "post-it notes" was attributed to 3M without clarification - this presumed that respondents were referring to a manufacturer, rather than using the term as a generic descriptor;

• the respondents were then asked whether they were aware of any other brand using the colour yellow as a trade mark for similar goods.

Clearly, these were not the same questions. What may have occurred is that respondents, without realising the intention of the question, used the term "post-it notes" as a generic term. As such, their answers may have inadvertently been attributed to the applicant. For the purposes of s.41(6), such an attribution may not be reasonable. The survey does not demonstrate that consumers associated yellow coloured stick on notes with the applicant. Even less clear is whether consumers would associate the applied for trade mark with the applicant. At no stage during the survey was the time "canary yellow" used, nor were participants asked whether they thought there were various shades of yellow stick on notes.

The second survey, conducted in August 2001 provided the following results:

• when asked which colour they associated with "sticky notes", 80% of consumers and 90% of business buyers said "Yellow"; and

• when were asked what colour they associated with "post-it notes", 78% of consumers and 94% of business buyers said "Yellow";

Again, however, the survey did not differentiate between "post it notes" as a generic term and "Post-It" notes as the product of the applicant.  Nor did it ask any questions in relation to "canary yellow" or the perception of colour amongst respondents.  In relation to this, Mr Klein, whose company conducted the survey, states at paragraph 16.8 of his declaration:

Although the trade mark application specifies the colour canary yellow, in my opinion many consumers would be unable to agree on a common meaning of the term canary yellow.  I was concerned at the outset that reference in the survey to canary yellow would confuse respondents and/or lead to unreliable results due to this ambiguity.  It is likely that some consumers who hold yellow colour associations in relation to the Applicant's goods do so with a particular hue in mind, most likely the light yellow hue of the product marketed originally and most widely by the Applicant.  This tendency could be researched via face-to-face interview in which specific colours are presented to consumers.  This was beyond the scope of the resources available in the present study.  In any case, it is likely in my opinion that a range of yellow colours would need to be encompassed within the trade mark registration in order to be an effective grant of protection in this instance.

To my mind, this does not overcome the need for specificity that s.41(6) requires. The application in question is for canary yellow, and it this precise colour which must be addressed by the evidence. At the very least, the respondents should have been asked whether, in their knowledge, there were shades of light yellow stick-on notes available. This would have assisted me in determining whether the average consumer is able to differentiate between the various shades or whether they were aware of any noticeable or distinctive difference between yellow notes generally. The failure to do this reduces the value of the survey in relation to a s.41(6) as it does not assist me in determining whether the trade mark distinguishes the goods from those of other manufacturers. I have no way of knowing what proportion of the respondents used the term post-it notes as a generic term or as a trade mark. For that reason, I cannot ascertain what proportion of respondents associated the colour yellow with the applicant's products. If I cannot ascertain that point, I cannot determine whether a reasonable proportion of consumers would associate the colour canary yellow with the applicant's product. This goes to the very heart of the s.41(6).

Accordingly, I am not satisfied, on the basis of the survey evidence that consumers associated the colour canary yellow with goods made by the applicant.

However, I am conscious of the comments of Branson J, particularly in relation to the overall feel of the evidence, and the lack of a necessity at law to conduct a statistically sound market survey.  Accordingly, I will now assess the balance of the evidence.

The first declaration of Mr Spencer sets out the history of the applied-for trade mark and the products to which it has been applied.  Clearly, there were substantial sales of the products in the period 1993 to 1998 and the applicant dominates the market.  Advertising revenue is also substantial for the same period.  Mr Spencer refers to a substantial number of overseas trade mark registrations for the colour canary yellow.  By my count, there are at least 18 such registrations.  I have noted the comments of Hearing Officer Williams in BP Amoco plc's Applications 559837 and 676547 for the colour Green (27 October 2000) regarding such overseas registrations and their consideration in finely balanced circumstances. However, there is nothing before me which indicates that the overseas registrations were not allowed on their specific circumstances. For instance, there is no evidence before me that those applications were not accepted on more specific evidence of past use than has been presented in the current case. Similarly, there is no evidence before me as to the extent to which other manufacturers were involved in the production of yellow stick-on notes in those countries nor whether, if there are manufacturers in those countries, that these other manufacturers use colours that are clearly distinguishable from the applicant's goods. Accordingly, in the context of s.41(6), the evidence of overseas registrations, without more, is of little weight.

I have also taken into account the declaration of Mr Stevens, including its exhibits.  I have already referred to two of these exhibits - the declarations of Mr Smith and Dr Berns.  The declaration of the inventor, Mr Fry, is of some limited assistance.  He explains the history of the product and confirms its existence since 1978 and the commercial launch in the United States in 1979.  He also states that he has been asked repeatedly why the applicant chose the colour canary yellow for their product.  Unfortunately, he does not provide the answer.  At its highest, his declaration could be taken as asserting that he was asked about the specific shade of yellow.  This would, however, indicate not only a high degree of specificity in questioning, but also a keen perception of colour in the marketplace.  As Mr Smith points out at paragraph 6 of his declaration, the name "canary yellow" is a description which is applied by the applicant - it is not an accepted industry term or specification of the colour.  With that in mind, I am not willing to accept that Mr Fry was asked about the colour with the specificity that he suggests.  Rather, his declaration seems to have been influenced by his own knowledge of the name applied by his employer to the colour in question. 

Mr Wilson states that the applicant was the only manufacturer of stick on notes until 1984. Presumably, Mr Wilson was referring to the American marketplace - he does not mention any other countries in his declaration. Mr Spencer states that the trade mark was first used in Australia in 1982. Therefore, and in the absence of any evidence to the contrary, it is reasonable to assume that the applicant was the sole manufacturer of sticky notes in Australia during the period 1982 to 1984. From that time however, the assumption cannot be made. Accordingly, it is possible that there were other manufacturers of sticky notes in the Australian market in the period from 1984 until the application date, September 1997. Again, in the absence of evidence to the contrary, I believe it is reasonable to assume that these competitors would have used a colour similar to canary yellow. As a result, I am not satisfied that the declarations of Mr Wilson and Mr Spencer, have assisted the applicant in meeting its burden of proof in relation to s.41(6). The declarations do not establish to my satisfaction that the applied-for colour was recognised as a trade mark by consumers as at the date of application.

What then is my "overall impression" of the evidence?

I am not satisfied that, at the date of the application, the applied-for trade mark distinguished the applicant's products from those of other manufacturers. There is nothing before me that satisfies me that consumers at the date of filing, when presented with a canary yellow stick-on note would have recognised it as a trade mark or associate it with the applicant. I think the more likely situation is that there were a number of manufacturers of different shades of yellow stick-on notes, each of which was, to consumers at least, indistinguishable by reason of colour alone. Accordingly, the requirements of s.41(6) have not been made out to my reasonable satisfaction and the application must be rejected.

Decision

I find that the applicant has failed to make out its case in relation to s.41 of the Act and the application is therefore rejected.

Geoffrey Purvis-Smith
Hearings Officer
24 January 2002