Philip Morris Products S.A. v British American Tobacco (Brands) Limited

[2013] ATMO 22

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 protection of International Registration Designating Australia 1407925 – International Registration  1064627 – CLICK & ROLL - in the name of British American Tobacco (Brands) Limited. 

Delegate:

Debrett Lyons

Representation:

Opponent: Written submissions only

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

Decision:

2013 ATMO 22

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

Costs awarded against Opponent.

Background

1. The International Bureau of the World Intellectual Property Organisation requested that the Registrar of Trade Marks extend protection of International Registration 1064627 in the name of British American Tobacco (Brands) Limited (‘the Holder’) to Australia.  Such a request is known as an International Registration Designating Australia (‘IRDA’) and it was given the Australian trade mark number 1407925.   IRDA 1407925 has a priority date of 11 November 2010.  The trade mark of the IRDA is CLICK & ROLL.

2. Following examination, the IRDA was accepted for possible protection for “cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles” in class 34 (‘the Goods’) and on 7 April 2011 was advertised as such in the Australian Official Journal of Trade Marks.

3. Opposition to the protection of an IRDA is allowed under regulation 17A.29 of the Trade Marks Regulations 1995 (‘the Regulations’).  Regulation 17A.31 adapts the grounds of opposition in Part 5 of the Trade Marks Act 1995 (‘the Act’) to opposition to an IRDA.

4. On 7 July 2011, Philip Morris Products S.A. filed a notice of opposition to protection (‘the notice’).  The International Bureau was informed and the Holder subsequently provided the Registrar with an address for service in Australia in compliance with regulation 17A.33(3).

5. 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 4 October 2011 with Exhibits MG-1 to MG-20 (“Galvan Declaration”).

   Holder – Evidence in answer

   o   Statutory Declaration of Stuart Paul Aitchison dated 13 March 2012 with Exhibits A-C (“Aitchison Declaration”).

   Opponent – Evidence in reply

   o   Statutory Declaration of Jan Vidjeskog with Exhibits PM 2-1 and PM 2-2 (“Vidjeskog Declaration”).

6. Regulation 17A.33(1) requires that the Registrar must allow the Opponent and the Holder an opportunity to be heard on the opposition.  The parties were given an opportunity to request a hearing or to file written submissions.  The Holder 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 Holder.  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 and Regulation 17A.31(1), namely, that the trade mark is not capable of distinguishing the Holder’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]

   [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].

3. The date at which the grounds of opposition must be established is the date of filing of the application for protection (‘the relevant date’): see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Section 41

1. Section 41 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. To put the opposition into a broad context, it is the Opponent’s principal submission that the trade mark “does not possess sufficient inherent adaptation to distinguish the goods for which protection is sought and is not capable of distinguishing such goods. This is because the Opponent considers that the mark CLICK & ROLL is descriptive of a characteristic of manufactured cigarettes, and in particular manufactured cigarettes that include a capsule device.”

2. Those last words allude to the fact that some cigarette makers, the Holder being one, have devised a way to infuse into the inhaled smoke of a filtered cigarette an additive such as menthol by means of a capsule incorporated within the filter, such that a smoker can, with finger pressure, choose to break that capsule, so releasing a menthol (or other) additive into the fibre of the filter which then mixes with the inhaled tobacco smoke.

3. The Opponent submitted that the Galvan Declaration establishes that the words “click” and “roll” are commonly used in the tobacco industry.  It is alleged that the word “click” is commonly used to describe the action of breaking the filter within cigarettes to release flavour inside the capsule.  Further, it is said that the word “click” is onomatopoeic and used to describe the sound made by the capsule when broken.  In addition, the word “roll” is also commonly used in connection with cigarettes and loose tobacco. 

4. The Galvan Declaration exhibits dictionary definitions of the words “click” and “roll”, various websites where the words are used in relation to the Goods, and photographs of cigarette packaging and advertising which show use of the words.

5. The Vidjeskog Declaration claims that the expression “CLICK & ROLL” is a shorter, more succinct direction on how to use products which provide a smoker with the option of clicking a filter to release a flavour inside a breakable capsule.

6. The Opponent further submitted that the inherent distinctiveness of the trade mark has been the subject of proceedings in New Zealand, Costa Rica, and the Dominican Republic and in each case, the trade mark was found to be lacking the inherent ability to distinguish the Goods[2].  

   [2] The Opponent recognized “that these decisions are [not] binding on the Hearing Officer but may be of assistance given the commonality of the parties, the trade mark and the goods. In addition, the Opponent submits there are significant similarities in the market and consumer conduct between Australia and New Zealand.”

7. For its part, the Holder argued that:

   … the flaw in this opposition is that the Opponent analyses the individual elements of the trade mark, and never considers its overall or composite effect.  Many trade marks consist of a combination of elements some or even all of which can have a simple meaning in a different context, but which when combined together produce a distinctive whole.  CLICK & ROLL, used in relation to tobacco products, is such a mark.  The mark is a composite phrase and must be considered as a whole.  Just as “SIZZLE & STIR” consists of individual words which, separately and in context, might relate to foodstuffs but together form a registrable trade mark (EFFEM Foods Pty Limited v Unilever Plc (2000) 50 IPR 627), so “CLICK & ROLL” constitutes a phrase which has no particular application to tobacco products and which other traders are unlikely to wish to use.

8. The Holder submitted that the Opponent’s evidence shows ordinary use of the word “roll” in the context of “roll your own” tobacco products and does not show any use of the word “roll” together with the word “click”. 

Reasoning

1. As a preliminary matter, I find that there is no sensible objection grounded on section 41 to all of the Goods.  Of the products described as “cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles” it is only cigarettes, tobacco and tobacco products which could meaningfully attract an objection under section 41 and I find that the opposition is not established in respect of those other goods listed.  I do not accept the logic of the Opponent’s submission that lighters, matches and smokers’ articles are each “associated with tobacco products and their use/consumption may overlap” and therefore if the Opponent succeeds in relation to “tobacco products” protection should be refused to all the Goods.

2. Applying  section 41, the Opponent submitted that:

   [I]t is necessary for the Registrar to, first take into account the extent to which the Trade Mark is inherently adapted to distinguish in deciding whether or not it is capable of distinguishing the Holder’s goods and second, if still unable to decide that question, Section 41(4) directs the decision maker to Section 41(5) or Section 41(6). Here, the onus is reversed and it is up to the Holder to satisfy the Registrar. The presumption no longer applies once the enquiry moves to Section 41(5) or Section 41(6).

3. I have no issue with that summation of the decision making process.  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-section 41(5) come into play.  Finally, in the case of a trade mark wholly lacking in inherent capacity to distinguish the provisions of section 41(6) apply.

4. However I am less satisfied by the Opponent’s following submission, being that:

   Because of the current evidence that has been tendered by the Holder, it is the Opponent’s submission that the considerations of Section 41(6) should apply to the Opposed Mark. Notwithstanding that at the examination stage the Examiner may have considered the matter under Section 41(5) based on the material available at that time, there is nothing to prevent the Hearing Officer now considering this matter under Section 41(6).

5. In my assessment the evidence as a whole has almost no impact on my evaluation of the distinctiveness of the trade mark.  First, the decisions from the three overseas Registries refusing registration of the trade mark are, in my opinion, inadequately reasoned and as the Aitchison Declaration shows, those refusals stand against evidence of either acceptance or registration of the trade mark in 32 other trade mark systems including Singapore, Hong Kong, South Africa and under the European Community Trade Mark.  I give that evidence no weight. 

6. Secondly, although much in the declarations filed in this opposition is simply argumentative and of little value to me as a decision maker, it is worth repeating here one strand of argument.  The Galvan Declaration exhibits to no great end dictionary definitions of the words “click” and “roll”.  Paragraph 13 of the Aitchison Declaration states that “Ms Galvan does not explain … how or why the phrase CLICK & ROLL, as distinct from the separate word CLICK and the separate word ROLL, has any direct relevance to tobacco products.”  In reply, paragraphs 9 and 10 of the Vidjeskog Declaration point to the Holder’s own advertising which carries the direction, CLICK THE CAPSULE,  CHANGE THE TASTE,  ROLL TO TURN IT UP, and goes on to claim, as mentioned earlier, that the trade mark “is a shorter, more succinct direction on how to use products.” 

7. There is no evidence of use of the expression “click and roll” by a party other than the Holder.  There is no evidence of the expression “click and roll” being used descriptively in relation to tobacco products, even by the Holder.  The examples of third party use of “roll” are limited to use of “roll your own” loose tobacco.  The examples of use of the word “click” in connection to capsule containing filtered cigarettes is equalled by the use of other, more descriptive terms such as “squeeze” or “crush”, and is not present in immediate conjunction with the word “roll”. 

8. The test for determining whether a trade mark is adapted to distinguish was proposed by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

   “[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it”.

9. Not only does the evidence fail to show any use, at the priority date, of the expression “click and roll” by a trader other than the Holder, it instead shows the third party use of other words and phrases apt to describe the process of activating a capsule within a filtered cigarette.  One example is CAMEL brand cigarettes sold as CAMEL “CRUSH” which carry the direction “SQUEEZE the capsule, hear the CLICK, CHANGE the taste” (accompanied I should add by pictorial directions).

10. Moreover, there are good indications in the Opponent’s own evidence that the trade mark is not suited to function as a direction on use.  I refer to the decision taken in the Costa Rican registry to refuse registration of the trade mark.  There, the decision maker accepted the opponent to registration’s submission that “the expression CLICK & ROLL corresponds to the description of a procedure for usage of the properties of the product” which the attorney expanded upon, stating that “the word ROLL is related to the part of the mechanism in which, once the capsule has released the minty flavour, the filter is deformed, therefore, the consumer must roll the cigarette with his hands to return it to its original shape.”   That is not the rolling function as described in any of the Holder’s advertising material and the fact that it is an interpretation at clear odds with that material points directly against a conclusion that the trade mark is simply instructional.

11. To apply the trade mark to tobacco products says nothing tangible about the character of those goods.  The statement in the Vidjeskog Declaration that the trade mark “is a shorter, more succinct direction on how to use products” is met directly by what the High Court had to say in Mark Foy’s Ltd. v. Davies Coop and Co. Ltd & Anor. [1956] HCA 41; (1956) 95 CLR 190 about the registrability of the trade mark TUB HAPPY. There, Dixon CJ wrote:

    It is, I think, a mistake first to assume that words like "Tub Happy" do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.

    The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. 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.

1. Registrability of the trade mark BABY-DRY was approached in the same way when the long awaited Community Trade Mark Regulation was first tested before the European Court of Justice[3].

   [3] Procter & Gamble v. OHIM, ECJ Case No. C-383/99 (5 April 2001), being an appeal against the judgment of the Court of First Instance of the European Communities (Second Chamber) of 8 July 1999 in Case T-163/98 Procter & Gamble v OHIM ('BABY-DRY) [1999] ECR II-2383.

2. In that case, Advocate General Jacobs wrote:

   ... given that the goods concerned in this case are babies' nappies, the determination to be made depends on whether the word combination in question may be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance.

   As it is, that word combination, whilst it does unquestionably allude to the function which the goods are supposed to fulfil, still does not satisfy the disqualifying criteria set forth in paragraphs 39 to 42 of this judgment. Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics.

   Word combinations like 'BABY-DRY cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and may not be refused registration under Article 7(1)(c) of Regulation No 40/94.

3. I agree entirely with the Holder’s submission that the trade mark has sufficient inherent adaptation to be immediately acceptable for registration under section 41(3) of the Act. The Opponent has failed to establish its ground of opposition.

Decision

1. Regulation 17A.34(1) which provides:

   Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

2. The Opponent has not to any extent established a ground of opposition and so it is my decision to extend protection to Australia for all Goods listed in the IRDA.

Costs

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

Debrett Lyons

Hearing Officer

Trade Marks Hearings

24 April 2013