Philip Morris Products S.A. v British American Tobacco Australia Services Limited

[2013] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by Philip Morris Products S.A. to trade mark application 1348176 – Innominate Device - in the name of British American Tobacco Australia Services Limited

Delegate:

Debrett Lyons

Representation:

Opponent: Written submissions only

Applicant: Michael Hall of counsel, instructed by Davies Collison Cave, Patent & Trade Mark Attorneys

Decision:

2013 ATMO 26

s.52 opposition to registration: s.41 argued – trade mark is inherently adapted to distinguish- opposition not established.

Costs awarded against Opponent.

Background

1. On 2 March 2010 (‘the priority date’) British American Tobacco Australia Services Limited (‘the Applicant’) filed an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark shown below:

1. Following examination, the trade mark was accepted for “cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles” in class 34 (‘the Goods’) and on 1 July 2010 was advertised as such in the Australian Official Journal of Trade Marks.

2. On 1 October 2010, Philip Morris Products S.A. filed a notice of opposition to registration of the trade mark (‘the notice’).  

3. The parties later filed and served the following declarations which comprise the evidence of record in these proceedings:

   Opponent – Evidence in support

   o   Statutory Declaration of Maria del Mar Oliva Galvan dated 18 July 2011 with Exhibits 1 to 3 (‘Galvan Declaration’).

   Applicant – Evidence in answer

   o   Statutory Declaration of Stuart Paul Aitchison dated 13 March 2012 with Exhibits A-J (‘Aitchison Declaration’);

   o   Statutory Declaration of Trevor Keith Stevens dated 19 March 2012 with Exhibits TKS-1 and 2 (‘Stevens Declaratio’). 

   Opponent – Evidence in reply

   o   Statutory Declaration of Roseanne Mannion dated 18 June 2012 with Exhibit A (‘Mannion Declaration’).

4. The parties were given an opportunity to request a hearing or to file written submissions.  The Applicant asked to be heard.  A hearing was convened before me as a delegate of the Registrar of Trade Marks in Sydney on 14 February, 2013.  Michael Hall of counsel, instructed by Davies Collison Cave, Patent & Trade Mark Attorneys, appeared for the Applicant.  The Opponent chose to rely on written submissions by its attorneys, Spruson & Ferguson, Patent & Trade Mark Attorneys. 

Grounds of opposition and Onus

1. The Opponent’s written submissions rely on the ground of opposition under section 41(2) of the Act, namely, that the trade mark must be rejected if it is not capable of distinguishing the Applicant’s goods from the goods of other persons. Any other ground listed in the notice has not been pressed and is not established.

2. The Opponent bears the onus of establishing the section 41 ground of opposition on the balance of probabilities.[1]  The date at which the ground of opposition must be established is the date of the application for registration.[2]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; 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 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Section 41

1. Section 41 of the Act has very recently been amended however for the purposes of this opposition it is the wording of the section as it stood prior to 15 April 2013 which is applicable and which, so far as was relevant, provided:

   Trade mark not distinguishing applicant’s goods or services

   (1)   …

   (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:…

Submissions

1. The Opponent’s written submissions can be distilled to the following propositions (from which it is said that the conclusion must be drawn that the application  should be refused): 

• that the trade mark is a simple geometric shape which is inherently incapable of distinguishing one trader’s goods from those of other traders; 

• that the trade mark is merely a pictorial representation of the goods and other traders have a legitimate entitlement to use the trade mark in the course of trade;

• that I should have due regard to decisions of those national trade mark offices in other places (namely, New Zealand, Singapore, Thailand and St Lucia) which have refused to register or protect the trade mark;

• that I should consider some type of shape depletion theory, expressed by the Opponent in the following terms:

  If the Applicant is granted a registration for such a simple geometric shape, third parties will be deprived of and excluded from essentially using any circular device or a collection of circles in the legitimate course of trade. It will remove an entire shape from the cache of shapes or geometric representations that traders may, in the legitimate course of business, think of and desire to use in relation to the goods resulting in limited choice.

• that the evidence shows that the trade mark has been used in conjunction with one of its best known cigarette brand names and that I should regard the trade mark as:

  simply a limping mark to the Applicant’s LUCKY STRIKE trade mark. It cannot function independently of the words LUCKY STRIKE as a badge of origin for the Opposed Relevant Goods. As such, it cannot act as a badge of origin and the public would merely interpret the Opposed Mark as a decorative element or a border or frame surrounding the words “LUCKY STRIKE”.

• that the Goods:

  are likely to be purchased only to a verbalization of a word element such as “LUCKY STRIKE”. The relevant consumer … is unlikely to enter a shop and say "can I please have a packet of the circle or disc or bull’s-eye device [to use the Applicant’s wording] cigarettes

  and that somehow the decision of Greenberg J. in N.V. Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 should direct me insofar as His Honour stated at 310:

  I also accept that notwithstanding the importance of get-up, colouring and livery, the dominant feature in the mind of retailers and consumers governing the sale, selection and purchase of the product is the name and it seems to me that even though the livery has, in one sense, a persona, the product is known, that is to say the reputation, resides in the brand name, albeit in a stylized or crafted way.

1. For its part, the Applicant submitted:

• that the trade mark is inherently distinctive since it consists of concentric circles wherein the first and fourth (counting from the centre) circles have contrasting shading – the innermost circle lightest in the northeast corner and darkest in the southwest.  The fourth circle is darkest in the northeast corner, lightest in the southeast and northwest corners and dark again in the southwest;

• that the suggestion of a pictorial resemblance between the trade mark and the Goods themselves is farfetched; 

• that the evidence goes to show that no one has sought to describe the trade mark in words which suggest that the trade mark is a depiction of a cigarette.

Reasoning

1. Section 41 makes it clear how I should approach those arguments. My task starts by first taking account the extent to which the trade mark is inherently adapted to distinguish. If I am satisfied that it is inherently adapted to distinguish, that is the end of the enquiry. If I am not so satisfied then the factors listed in sub-sections 41(5) or 41(6) come into play. For sub-section 41(5) the trade mark is to some extent inherently adapted to distinguish and in the case of a trade mark wholly lacking in inherent capacity to distinguish the provisions of sub-section 41(6) apply[3].

   [3] Per Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241

2. Chapter 22 of the Trade Marks Office Manual of Practice and Procedure states:

   A trade mark which consists solely of a device which is common to the trade will be considered to have insufficient inherent adaptation to distinguish unless it is depicted in a special or fanciful manner.  For example, an ordinary representation of grapes and vine leaves for wine would not be considered capable of distinguishing one trader's wine from that of another.  Other examples of devices common to the trade are cats and dogs for pet food, lightning flashes for electrical apparatus, and orchard scenes for fruit.

   A device which is just a depiction of the goods upon which, or in connection with which, it will be used will not be acceptable.  For example, an ordinary device of a wheelbarrow for wheelbarrows would not be prima facie "capable of distinguishing" any one trader's wheelbarrows in the marketplace.

3. In my opinion there is no sensible argument that the trade mark is a simple pictorial representation of the Goods. Of the products described as “cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles” it is only cigarettes which could meaningfully attract an objection under section 41. That said, the submission from the Opponent that the trade mark is a graphic representation of either the lit or unlit end view of a cigarette is, to use the Applicant’s word, far-fetched. The fact that the trade mark uses concentric circles is not enough to support a finding that it is a depiction of an end view of a cigarette. None of the evidence shows that anyone other than the Opponent has conceived it in that way. Tellingly, an extract from the book, Worlds Greatest Brands, (Exhibit ‘D’ to the Aitchison Declaration) describes the trade mark as the Holder’s “instantly recognisable ‘target logo’.”  Others have described the trade mark as a “bullseye”.   Moreover, there is no proof that the trade mark has been commonly used in the trade.  The Galvan Declaration exhibits various examples of cigarette packaging but takes the Opponent no further since many examples show simple device elements like roulette wheels or long play vinyl records which happen to be circular.  That evidence is of no weight.

4. My decision that the trade mark has sufficient inherent adaptation to be immediately acceptable for registration under section 41(3) of the Act is not deflected by any of the Opponent’s residual arguments. The trade mark has been examined and accepted in numerous overseas jurisdictions which have rigorous absolute ground examination, including the United Kingdom and the European Community, and the very few refusals do not disturb me. I do not find it necessary to turn to either section 41(5) or (6) of the Act and so the fact that the evidence shows the trade mark to have been extensively used along with the Applicant’s “LUCKY STRIKE” trade mark becomes an irrelevancy. I have already decided that the trade mark is one which distinguishes the Goods as coming from a particular trade source. As the Applicant correctly pointed out, it does not have to be the only trade mark capable of doing that but in any case it is unnecessary for me to come to any findings on that point. For similar reasons the decision of Greenberg J. in N.V. Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 is a distraction since His Honour was principally occupied with the question of whether consumers would refer to the Applicant’s “LUCKY STRIKE” trade mark as “LUCKIES” and I do not consider that the analysis in that case of the role also played by the packaging, getup, colouration of the product is of relevance to me here.

5. The Opponent has failed to establish its ground of opposition.

Decision

1. 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.

2. The Opponent has not to any extent established a ground of opposition. The trade mark application 1348176 may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

Costs

1. Both parties sought their costs.  It is usual for costs to follow the event and, as the Applicant is the successful party, I have awarded costs against the Opponent.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

3 May 2013