Priceline Pty Ltd

[2022] ATMO 60

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2018031 (Classes 35 and 44) – Pantone Process Magenta C colour mark - in the name of Priceline Pty Ltd.

Delegate:	Blake Knowles
Representation:	Applicant: Greg Chambers of Phillips Ormonde Fitzpatrick.
Decision:	2022 ATMO 60. Trade Marks Act 1995 (Cth) – section 33 proceedings – section 41 – trade mark not capable of distinguishing– trade mark application rejected.

Background

1.     This is a decision on examination of trade mark application number 2018031 (‘Application’) by Priceline Pty Ltd (‘Applicant’) filed on 21 June 2019 (‘Relevant Date’). The Application, following amendments, seeks registration of the following trade mark:

Endorsement: The trade mark consists of the colour PANTONE PROCESS MAGENTA C applied to the façade of a shop, being the shopfront signage boards, awnings or bulkheads from which the specified services are provided, as shown in the representations attached to the application form.

(collectively, the ‘Trade Mark’)

2.     Registration is sought for the following services:

Class 35: Retail services for health, hygiene, beauty, home and pharmaceutical products including but not limited to cosmetics and cosmetics accessories, skincare products, hair products, hair removal products, nail products, body art, foot care products, toiletries and hygiene products, dental and oral care products, optical and optometry products, eyecare products, earcare products, undergarment accessories, fragrances, pharmaceutical products, health products including health aids, thermometers, monitors, massage appliances, vapourisers, first aid products, sports tapes, insect repellents, medicated preparations and aids to stop smoking, family planning and sexual health products, adult products, vitamins, dietary supplements, food, beverages, feeding products, bottles and filters, infant, baby and children's products, homewares, giftwares, travel accessories, electrical goods, manchester, stationery and cards, printed media, books, confectionery and gift cards; the bringing together for the benefit of others, of a variety of goods (excluding the transport thereof) enabling customers to conveniently view and purchase these goods; customer loyalty program

Class 44: Medical services provided through pharmacy stores; pharmaceutical services including provision of pharmacy advice, dispensing pharmaceutical products and services for the safe and secure disposal of pharmaceutical products and sharps; hygiene and beauty care services provided through pharmacy stores including skincare consultation, beauty care consultation, beauty care lessons and cosmetic application; health services including vaccination, health checks and health consultation, lifestyle counselling, pain management consultation, online health tracking and online evaluations of weight, fertility and disease risk; providing information, including online, about health, wellbeing and lifestyle, diet and nutrition, fitness, conception and parenting, hygiene, skincare, beauty care, hair care and hair styling

(‘Services’)

3.     As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined. The examiner raised and subsequently maintained a ground for rejection under s 41 on the basis of being satisfied that the Trade Mark had no inherent adaptation to distinguish, and that it also did not distinguish, by virtue of its use (for which the Applicant provided evidence), the Services at the Relevant Date.

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

4.     The Applicant requested a hearing and I subsequently heard the matter as a delegate of the Registrar on 3 March 2022. Mr Greg Chambers of Phillips Ormonde Fitzpatrick appeared by video conference on behalf of the Applicant. I have formed my decision based on the evidence, written submissions, and oral submissions presented at the hearing.

Evidence

5.     The Applicant relies on several declarations in support of the Application, namely:

-     First declaration of Mr Peter Sanguinetti, General Counsel of the Applicant, made on 22 September 2021, with Annexures PS-1 to PS-31.

-     Second declaration of Mr Peter Sanguinetti, made on 16 November 2021, with Annexures PS-32 to PS-34. 

-     Declaration of Ms Magda Bramante, made on 28 February 2022, with Annexures MKB-1 to MKB-23.

6.     Mr Sanguinetti declares that the Applicant has operated PRICELINE branded stores since the 1980s, including PRICELINE PHARMACY stores since 2002. As at the Relevant Date, the Applicant had over 400 PRICELINE stores, with over 300 of those being PRICELINE PHARMACY stores. Mr Sanguinetti declares that the Applicant provides a range of retail, health, and beauty services from its stores.

7.     Mr Sanguinetti provides confidential revenue figures for the financial years ending 2014 and 2019. As one would expect given the number of stores, the figures are significant and it is reasonable to infer that they were also significant between 2015-2018 and in the years prior to 2014.  Mr Sanguinetti also provides confidential advertising expenditure figures for financial years ending 2011-2020, which were also reasonable, particularly when one considers they do not apparently include the Applicant’s significant sponsorships (discussed below).  

8.     Mr Sanguinetti declares that the Applicant adopted the colour Pantone Process Magenta C (‘Colour Pink’) as its corporate colour in 2008. Mr Sanguinetti explains that the Colour Pink was adopted to express the following unique brand personality ‘Feminine. Passionate. Expert in beauty, health and wellbeing. Emphathetic. Friendly. Warm and welcoming. Knowledgeable. Positive. Confident. Vibrant. Permissible fun. Spirited and grown up’. Mr Sanguinetti opines that the Colour Pink does not perform any functional or utilitarian role in relation to the Services.

9.     Mr Sanguinetti states that the Colour Pink is used to create an impactful and memorable storefront. Further, Mr Sanguinetti explains that the Colour Pink is used extensively on in-store signage, point of sale materials, shopping bags, and name badges worn by the Applicant’s staff.

10.     Mr Sanguinetti declares that the Applicant issued a Master Brand Style Guide in 2009, with an updated version issued in 2017. The stated purpose of the 2009 guide was to attain consistency and remain focused on the company’s core vision and values. Similarly, the purpose of the 2017 guide was to ensure that a consistent and recognisable brand identity is presented. The guidelines contain various instructions regarding the use of the Applicant’s word and logo trade marks, in addition to the use of various colours. Mr Sanguinetti also annexes a copy of the Retail Fitout Design Standards issued by the Applicant which similarly contains instructions regarding the use of word and logo trade marks, and colours, to ensure consistency in the context of the Applicant’s overall branding.

11.     Mr Sanguinetti declares that the Opponent has operated a website at since at least 2009 and social media accounts on Instagram, Facebook, Twitter, YouTube, and Pinterest. The Instagram, Facebook, and Twitter accounts have been operational since at least 2012. The social media accounts have large numbers of followers. Both the website and the social media pages make extensive use of the Colour Pink, amongst other shades of pink.

12.     Mr Sanguinetti declares that the Applicant also conducts a range of commercially significant sponsorships, including of the Adelaide Thunderbirds netball team, Sydney Sixers cricket team, Western Bulldogs AFLW team, and the MiniRoos football team. Mr Sanguinetti explains that the Colour Pink features prominently in signage and paraphernalia associated with such sponsorships.

13.     Mr Sanguinetti declares that the Applicant distributes large numbers of catalogues (with 72 million distributed in 2016, and 99 million being distributed as of 2021). The Colour Pink features prominently in these catalogues.

14.     Mr Sanguinetti declares that the Applicant has also used the Colour Pink in relation to a range of other promotional activities, including its membership program that operates under the trade mark SISTER CLUB, charitable fundraising under the SISTERHOOD trade mark, and a 2017 “Beauty of You” campaign including various Australian celebrities from a variety of fields. Further, Mr Sanguinetti states that the Applicant has used the slogan “GO PINK!” in marketing collateral and television advertisements, with examples annexed from campaigns between 2012 and 2015. Mr Sanguinetti also explains that the Applicant has given annual awards for health and beauty products called the PRICELINE PINKY AWARDS, with the awards being published in Body & Soul magazine, with examples of marketing collateral annexed from 2013 to 2016.

15.     Mr Sanguinetti declares that the Colour Pink is very distinctive when used in relation to shopfronts and that none of the Applicant’s main competitors (namely, Amcal, Chemist Warehouse, TerryWhite Chemmart, Discount Drug Stores, Mychemist, Pharmacy4Less, Coles, and Woolworths) use the Colour Pink in their logos or on store signage.

16.     Mr Sanguinetti provides images of use of the Colour Pink on various storefronts throughout Australia in addition to photographs demonstrating extensive use of various shades of pink within individual stores. With regards to the storefronts, only two of those appear to correspond directly to the configurations in the images that form part of the representation of the Trade Mark, namely the Mildura store (which corresponds to Image 1) and the Geelong West store (which corresponds to Image 3):

17.     The photographs of the remaining storefronts indicate the use of a variety of configurations, some of which (namely Warrnambool, Port Lincoln, Port Macquarie, Warriewood, and Carlingford) have noticeable similarities in configuration with the images forming part of the representation of the Trade Mark, but most of which differ quite significantly.

Discussion

18.     Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Services of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Services, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Services, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that that it did not in fact distinguish the Services based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that after considering the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or use or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Services (s 41(4)).

19.     A presumption of registrability applies when assessing the Trade Mark under s 41. I am also not bound by the examiner’s decision. I must decide the matter based on my own consideration of the authorities and relevant circumstances of the case.

20.     The test to determine whether a trade mark is inherently adapted to distinguish was set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’):

His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish 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.[2]

[2] [1964] HCA 55, [5].

21.     In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[3]

[3] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

22. Previous case law under the Act invariably dealt with single colour trade marks under the provisions of s 41(6), which is the predecessor of the current s 41(3). In Philmac Pty Ltd v Registrar of Trade Marks,[4] Mansfield J considered the registrability of the colour terracotta applied to pipe fittings and connectors. In referring to the test in Clark Equipment, his Honour noted a number of ways in which other traders might be impaired by the registration of a colour trade mark. First, if the colour could be applied to goods to denote a meaning that the colour might ordinarily possess, noting ‘the concepts of hot, cold, environmentalism, danger, stop, go, communism, mourning, and femininity are universally conveyed as colours’ [emphasis added]. Second, if the colour has a practical utility (e.g. yellow and visibility, black and heat absorption, etc). Third, if the colour is a natural result of the manufacturing process. His Honour held that the mark in question did not fall in any of these categories, but was still nevertheless not inherently adapted to distinguish as it was one of a limited range of colours that might legitimately occur to an honest trader as a colour for application to their own similar goods. His Honour said: ‘The proven existence of a competitive need for colours to remain available in my view places the present application in the same class as an application for registration of a purely descriptive word’, while also being careful not to suggest that single colours will never be inherently adapted to distinguish.[5] Further, his Honour noted that the consequence of a grant of registration for a colour mark, like any other sign, is that it will potentially prevent the use and registration of any other sign, as a trade mark, that is deceptively similar to the colour mark.[6]

[4] [2002] FCA 1551

[5] Ibid, [50] to [66].

[6] Ibid, [59].

23.     In Woolworths Ltd v BP plc (No 2)[7] (‘BP’), the Full Federal Court considered an appeal regarding the registrability of the colour green applied as the predominant colour to various objects and surfaces in service station complexes. At first instance, Finkelstein J had found that the trade mark had no inherent adaptation to distinguish, and that

…merely applying a colour to a product will not act as an identifier for that product. In deciding whether colour functions as a trade mark it is necessary to determine whether the trader has used the colour in a way that informs the public that the product emanates from a particular source. Put another way, colour must be used to distinguish products and not as mere ornamentation or decoration.[8]

[7] [2006] FCAFC 132 (Heerey, Allsop, and Young JJ).

[8] BP plc v Woolworths Limited [2004] FCA 1362, [24].

These findings were not challenged on appeal, and the Full Bench merely had to consider whether the evidence sufficed to demonstrate the trade mark was registrable under s 41(6).

24.     The Full Bench in BP first had to consider whether the use of the colour green by the respondent was use ‘as a trade mark’. The court said:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade.  How the mark has been used may not involve a single or clear idea or message.  The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin.[9]

[9] BP (n 7), [77].

25.     The court in BP was also mindful of the need to assess the trade mark as applied for, rather than the use of the colour green as part of get-up or packaging of goods generally, stating:

In our view, there are obvious dangers in approaching these issues by reference to the get-up of the service stations. The foremost danger, perhaps, is that the inquiry will be diverted into an examination of the distinctiveness of the colour green alone, and away from the questions posed by s 41(6). That danger must be heightened where the evidence clearly showed that BP had used the colour green in ways, and as part of other trade marks, that did not correspond with the trade marks that were the subject of the applications in suit. For the purpose of s 41(6), the focus of the inquiry should be the use of the marks applied for, rather than use of colour as part of the get-up or packaging of goods generally…  Woolworths submitted that the primary judge was diverted in this way, and as a result incorrectly concluded that the trade marks the subject of the applications had been used by BP, either at all or to such an extent that they did distinguish BP’s goods and services. We agree with this submission.[10]

[10] Ibid, [82].

26.     The court went on to discuss the use of colour by the respondent, holding that, in the context of the oil industry in which a small number of companies had for many years used colours to distinguish their goods and services, there had been trade mark use by the respondent of green in combination with yellow, including on fascias of buildings, petrol pumps, signage boards, and spreaders in service stations.  However, the court was unable to conclude that there had been any trade mark use of green other than in conjunction with yellow as a subsidiary colour. As such, the use relied on did not support the applications, which were in respect of the colour green as the predominant colour without mentioning any specific subsidiary colour.[11]   

[11] Ibid, [99] to [106].

27.     The mere fact that a colour trade mark is used (as it will almost invariably will be) in combination or conjunction with more traditional trade mark elements will not preclude a finding that there has been use of colour ‘as a trade mark’.[12] However, the use of other brands will be relevant in assessing the context in which the colour is used, and the intention behind such use by an applicant. Not all use of a single colour, even if such use is reasonably consistent and extensive, will qualify as ‘trade mark use’. Education of the public (whether directly or indirectly) of the significance of the colour as a brand in its own right can often assist an applicant in establishing the colour has been used ‘as a trade mark’.     

[12] See eg, Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (Bennett J), Application by Veuve Clicquot Ponsardin, Maison Fondee En 1772 [1999] ATMO 29, and Application by Cadbury Limited [2002] ATMO 56.

28.     Where the evidence demonstrates that a colour has been used ‘as a trade mark’, but that colour entirely lacks inherent adaptation to distinguish, then it must be determined (under s 41(3)) whether due to the extent of its use the trade mark does in fact distinguish the applicant’s goods or services from those of other traders.[13] The Applicant referred to numerous examples of single colour trade marks that are registered in Australia for various services under the provisions of ss 41(5) or 41(6).[14] While such precedent is indicative that single colours can be registrable notwithstanding that they commonly have little or no inherent adaptation to distinguish, each case must be decided on its merits (having regard to the extent and nature of use of a particular mark) and as such prior registrations provide little guidance in deciding the present matter.

[13] BP (n 7), [72].

[14] Trade mark numbers 1414010, 751852, 795001, 820449, 780092, 1242267, 773450, and 1610989.

29.     Turning to the assessment of the Trade Mark, I am satisfied that it has no inherent adaptation to distinguish the Services. Various shades of pink are regularly used to convey femininity, and it is clear from the evidence this is one of the primary reasons the Colour Pink was selected by the Applicant. The 2009 Master Brand Style Guide identifies the first aspect of the Applicant’s brand personality as ‘feminine’, states that the Applicant’s first value is that ‘We understand women’, and then goes on to identify various categories of women as its target market (‘Inner Girl’, ‘Spiritual Woman’, and ‘Savvy Woman’). I consider that for the same reason as the Applicant selected the Colour Pink, other traders who also wish to primarily target the same market would have a legitimate desire and competitive need to use the Colour Pink, or various deceptively similar shades of pink, on shopfront signage, awnings, and bulkheads in the same or similar configurations as shown in the representation of the Trade Mark.

30.     As the Trade Mark has no inherent adaptation to distinguish, I must consider whether it was capable of distinguishing based on the extent of its use at the Relevant Date. In determining this, I must first determine whether the Trade Mark has been used ‘as a trade mark’, and secondly, whether the extent of such use is sufficient to show that the Trade Mark acted to distinguish the Applicant’s Services from those of other traders at the Relevant Date.

31.     I note that the images contained in the Applicant’s evidence do not always show consistent use of the same shade of pink. This is a common issue with reproduction of colour, where factors such as lighting and the medium in which a colour is produced can affect the way in which colour is perceived. However, there are sufficient examples of use of pink closely approximating the Colour Pink for me to be satisfied that it has been used extensively at least in relation to the Applicant’s various storefronts, and in other business contexts.

32.     I am also satisfied that the Applicant intended to, and did in fact before the Relevant Date, use the Colour Pink as a core component of its branding. The ubiquitous and dominant presence of the Colour Pink (and various similar shades) throughout the Applicant’s extensive Australian retail pharmacy business indicates that the colour rises above being used merely as decorative getup or a subtle cue to consumers and constitutes use as a trade mark. For similar reasons, I am also satisfied that any use of the particular combination of colour and storefront configuration constituting the Trade Mark can be characterised as ‘trade mark use’.  

33.     Turning to the extent of use, I am satisfied that various shades of the Colour Pink have been used extensively throughout the Applicant’s business. However, as was said by the court in BP, I must be careful not to be diverted away from the correct enquiry. I am required to assess registrability having regard to use of the Trade Mark (and marks that are substantially identical), and not use of the Colour Pink ‘in ways, and as part of other trade marks, that did not correspond with the trade marks that were the subject of the applications in suit’.[15]

[15] BP (n 7), [82].

34.     The Trade Mark consists of the Colour Pink applied in three specific configurations. The evidence indicates that these configurations have only been used twice, namely at the Mildura store (which opened August 2017) and Geelong West (which opened November 2017). The uses of the Colour Pink in relation to different store front configurations and in other capacities throughout the Applicant’s business I consider are only relevant in assessing context, i.e. whether there has been use of the Trade Mark ‘as a trade mark’. These other uses are not relevant to determining the extent of use of the specific Trade Mark as applied for under the provisions of s 41(3).  I am also not satisfied that the other configurations for which use of the Colour Pink has been demonstrated are substantially identical to the Trade Mark, such that their use can be considered under s 7. The test for substantial identity requires that two marks be assessed side-by-side, having regard to the total impression that emerges from the comparison.[16] In this case, the use of colour in alternative configurations creates noticeable visual differences that are readily apparent on a side-by-side comparison. As such, I am not satisfied that a total impression of similarity emerges when comparing the Trade Mark with the various different combinations of colour used on storefronts that are included in the evidence.   

[16] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

35.     I am satisfied that the use of the Trade Mark at only two stores, for just under two years prior to the Relevant Date, is not sufficient to establish that the Trade Mark was capable of distinguishing at the Relevant Date. I note that the prospects of registration may have been different if the Trade Mark had been defined in a manner that would have allowed the Applicant to rely on a broader range of uses of the Colour Pink throughout the Applicant’s business. However, as it stands, I consider the highly specific scope of the Trade Mark precludes any allowable amendment that would advance the present Application.

36.     I also note that the Applicant has suggested an amendment to the Services that it would agree to if it would allow acceptance of the Trade Mark. However, I do not consider that the evidence is sufficient to demonstrate registrability of the Trade Mark in relation to any of the Services, and as such, the amendment does not advance the Applicant’s case.

37.     For the reasons given above, I am satisfied that there is a ground for rejecting the Trade Mark under s 41. 

Decision

1. Under s 33(3)(b), if I am satisfied that there is a ground for rejection and the Applicant has been given an opportunity to be heard, then I must reject the Application.

2. Therefore, I reject the Application for all of the Services.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   26 April 2022