Re: Opposition by Philip Morris Products S.A to registration of trade mark application no. 1756904 advanced heat technology and device in the name of British American Tobacco (Brands Limited)

[2019] ATMO 95

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 registration of trade mark application no. 1756904– advanced heat technology and device - in the name of British American Tobacco (Brands Limited).

Delegate:	Bianca Irgang
Representation:	Opponent: Francesca Colubriale of Spruson & Ferguson Applicant: Frances St John of Counsel instructed by Davies Collison Cave
Decision:	2019 ATMO 95 Trade Marks Act 1995 (Cth) - Section 52 opposition: section 41 pursed– section 41 not established - trade mark opposition not established.

Background

1. British American Tobacco (Brands Limited) (‘the applicant’), filed trade mark application number 1756904 on 4 March 2016 in classes 9, 11 and 34 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (‘the Trade Mark’)

   Trade mark application no: 1756904            

   Filing Date:  4 March 2016

   Specification:  Class 9: Batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; chargers; USB chargers for electronic devices that are used for heating tobacco; car chargers for devices that are used for heating tobacco

   Class 11: Electronic vaporisers; apparatus for heating liquids or tobacco; apparatus for generating vapour, wired vaporiser

   Class 34: Cigarettes; tobacco, raw or manufactured; tobacco products; tobacco substitutes (not for medical purposes); cigars, cigarillos; lighters; matches; smokers' articles; cigarette paper, cigarette tubes, cigarette filters; pocket apparatus for rolling cigarettes; hand held machines for injecting tobacco into paper tubes; electronic cigarettes; liquids for electronic cigarettes; tobacco products for the purpose of being heated; electronic devices and their parts for the purpose of heating cigarettes or tobacco

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks on 28 July 2016. Subsequently Philip Morris Products S.A (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).         

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 11 April 2019. The applicant was represented by Frances St John of Counsel instructed by Davies Collison Cave. The opponent was represented by Francesca Colubriale of Spruson & Ferguson.

   Grounds of Opposition

5. The Notice nominated one ground of opposition under the Trade Marks Act 1995 (‘the Act’) being section 41 which was pursued at the hearing. The onus is upon the opponent to establish its ground of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach of Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.  

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of  Kathryn Howard (‘Howard’) Paralegal of Spruson & Ferguson, dated 15 March 2017

   Evidence in Answer

   ·Declaration of Katherine Louise Kemp (‘Kemp’) Trade Mark Searcher for Davies Collison Cave, dated 20 July 2018

   Evidence in Reply

   ·Declaration of  Francesca Colubriale (‘Colubriale’) Special Counsel of Spruson & Ferguson, dated 22 October 2018

   Discussion

   Section 41 - Trade mark not distinguishing applicant’s goods or services

7. Section 41 provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  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 (the 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.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  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; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   iii)  any other circumstances.

   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:       For goods of a person and services of a person see section 6.

   Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a  mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:       For applicant and predecessor in title see section 6.

   Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

8. Section 41 of the Act provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods and services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. Therefore, the opponent must establish that the applicant’s trade mark is not capable of distinguishing the goods and services in question.

9. Turning to the relevant consideration of whether a trade mark is inherently adapted to distinguish, in the case of Clark Equipment Co v Registrar of Trade Marks Kitto J found:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

   …

   [T]he question [is] 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. [4]

   [4] (1964) 111 CLR 511 [513–14].

10. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[5](‘Cantarella’) noted the following part of Kitto J’s test:

    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

    [5] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.

11. Considering this passage the High Court explained that the inherent adaptation of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods (or, as here, the designated goods and services)[6].

    [6] Cantarella at [28], [30] per French CJ, Grennan and Kiefel JJ

12. Francesca Colubriale, representative for the opponent, has submitted the opponent’s case on the section 41 ground is based upon:

    ·The expression ADVANCED HEAT TECHNOLOGY is an identifier of product quality as opposed to an indicator of trade origin;

    ·The device contained within the trade mark has been indexed as BALL IN RING FORMS CIGARETTE which can be taken as an indication of consumer perception of the device as being a graphic representation of the lit end of a cigarette which is common to the trade when considering the tobacco goods and services to which the Trade Mark is applied.

    ·The applicant has not, on the evidence, used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the designated goods services as being those of the applicant;

    ·Section 41(3) of the Act required the opposed application to be refused in these circumstances.

13. Ms Colubriale argues that the ordinary signification of the words ADVANCED HEAT TECHNOLOGY is straightforward and quotes the initial examination report of a different trade mark application for the words solus which states: ADVANCED HEAT TECHNOGY describes your class 9, 11 and 34 goods as possessing or utilising Technology in relation to the regulation of Heat which is more advanced than other goods of the same nature[7].

    [7] Trade Mark Application No. 1912464 in Annexure B accompanying Colubriale

14. She goes on to state that there can be no question that consumers and persons trading in electronic devices for the heating of tobacco products will understand ADVANCED HEAT TECHNOLOGY by its ordinary, plain English meaning. Thus, ADVANCED HEAT TECHNOLOGY is directly descriptive of a characteristic of the designated goods because it is an identifier of the aspects of the product and its quality that is offered for retail, wholesale or online sale. Ms Colubriale also pointed to the device element as being perceived by consumers as the lit end of a cigarette which, she claims, is a device which is common to the trade for electronic heating devices for tobacco.

15. Ms Colubriale referred me to a number of examples in the opponent’s evidence which she asserts supported the opponent’s claims that other traders in the marketplace were using the device of a lit end of a cigarette on similar goods in the marketplace[8]. She argues that taken all together the Trade Mark is descriptive of the relevant goods and that other traders without any improper motive would desire to use some mark nearly resembling this arrangement of words with a cigarette device.  

    [8] Exhibit KH-6 accompanying Howard

16. Frances St John, counsel for the applicant, has argued the opposite view. She states that the Trade Mark is inherently adapted to distinguish the applicant’s goods and services from those of other traders because:

    ·The Trade Mark is not just for the words ADVANCED HEAT TECHNOLOGY but for a composite trade mark which includes a distinctive device that cannot be ignored; and

    ·The combination of the device with the stylization of the words in a particular font, in lower case and arranged in a circular formation around the device makes the Trade Mark distinctive.

17. In considering the Trade Mark it is clear to me that the ordinary signification which may be applied to the expression “ADVANCED HEAT TECHNOLOGY” does indicate the applicant’s goods possess or utilize technology in relation to the regulation of heat which is more advanced than other goods of the same nature. However, these words alone do not make up the Trade Mark.

18. The Trade Mark also consists of a device element which the opponent has described as the lit end of a cigarette which is common to the trade. Indeed, the device may be interpreted in a number of ways by an Australian consumer who may view it as a button, concentric circles or the lit end of cigarette. However, I note that many of the claimed goods by the applicant in classes 9 and 11 are not for electronic cigarettes so even if this device were to universally be acknowledged by consumers as the lit end of a cigarette (which is doubtful) it’s potential descriptive nature is significantly diminished when applied to goods which are not cigarettes.

19. When considering whether or not the Trade Mark is capable of distinguishing the applicant’s goods and services from those of another trader, I am satisfied that the Trade Mark, as a whole, is capable of distinguishing. Therefore, I am satisfied that the section 41(4) ground of opposition has not been established.

    Decision

20. Section 55 of the Act provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, 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:          Forlimitationssee section 6.

21. The opponent has not established its ground of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

    Costs

22. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    19 June 2019