Re Unilever plc's application to register the trade mark PHOENIX

This matter concerned an application by Unilever Plc to register the trade mark PHOENIX in class 3 for toiletries. The application was opposed by an examiner of trade marks on the grounds that the mark was not capable of distinguishing, pursuant to section 41 of the relevant Act, due to the existence of a well-known city named Phoenix in the United States. The decision was made by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the trade mark PHOENIX was capable of distinguishing the applicant's goods. This involved considering the inherent adaptation of the mark to distinguish and whether, by reason of use or other circumstances, it did or would distinguish the goods. The delegate also had to consider the significance of the geographical name and its potential for use by traders in that location.

The delegate reasoned that while the existence of the city of Phoenix, with its substantial population, presented a risk that the mark might be used to indicate origin, this was outweighed by the strong ordinary meaning of the word "phoenix" as a mythical bird. The delegate considered that customers would likely perceive the mark as referring to the bird rather than the city. Furthermore, the delegate noted that the intended use of the mark, in conjunction with a stylised device of a phoenix and the LYNX house mark, reinforced its trade mark character. The delegate also took into account the registration of the mark in comparable overseas jurisdictions, such as the United Kingdom and the United States, as a factor supporting its acceptance.

Ultimately, the delegate accepted the application under subsection 41(5) of the Act, finding that on balance, the trade mark PHOENIX was capable of distinguishing the applicant's toiletries.