Reemtsma Cigarettenfabriken GmbH

[2001] ATMO 113

TRADE MARKS ACT 1995

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

Re:Application by Reemtsma Cigarettenfabriken GmbH for registration of trade mark application 779033 – Shape of Cigarette Packet.

Background

This issue arises out of the filing, by Reemtsma Cigarettenfabriken GmbH (‘the applicant’), on 20 November 1998, of application 779033 to register the trade mark appearing below in respect of ‘tobacco, smoker’s articles, matches’ in Class 34 of the International (Nice) Classification of Goods and Services.

The mark consists of the configuration of the eight sided box and the colours brown, which appears on the sides of the box, and a red area in the middle, wider at the top and narrower at the bottom of the box, as depicted in the representation

My understanding of the above representation is that each side of the box is tapered into three planes or panels so that if the box were looked at from directly above, the figure would be six-sided.  The applicant’s description of the box is therefore wrong if the top and bottom of the box are considered to be sides.  Accompanying the application is a photograph of the above sign:

The photograph submitted is in colour so I explain that the predominant colour in the above image is dark brown and that the elongated wedge, trapezoid or triangular area, which can just be perceived in this representation, is red.

On 1 March 1999, an examiner reported on the application that grounds for rejection exist in terms of section 41(5) of the Trade Marks Act 1995 (‘the Act’) in that the combination of the shape and colours in the sign was not capable of distinguishing the applicant’s goods from those of other traders. The applicant responded to the report, filing a statutory declaration by Peter Ohlinger, an officer of the applicant, and arguing that other traders would not, without improper motive, require to use the trade mark in respect of their similar goods. In a further report, the examiner noted, “it has not been shown by evidence that, at the time of filing, this claimed sign did distinguish the Applicant’s goods and act as a badge of origin of the goods”. Although it is not expressly stated in the report, it is apparent that the objection was one under section 41(6). In view of the examiner’s latter iteration of the grounds for rejection, the applicant has requested that the issue be resolved on the written record by a delegate of the Registrar of Trade Marks. Thus, the issue has come to me, for my reasons.

I note that the trade mark the subject of this application, and the evidence filed in relation to it, bear striking resemblance to those described in Reemtsma Cigarettenfabriken GmbH [2001] ATMO 32 (27 April 2001), a decision of Hearing Officer Mr Williams. One area of divergence between the evidence filed in relation to that application and that filed with this application concerns the length of time during which the applicant has used the trade mark in Australia and the volume of sales under the sign.

The Evidence

Mr Ohlinger’s declaration states that the applicant first started making cigarette packets in the shape of that of this application, though not in these colours, in 1985.  Since then, it has introduced several colour variants which include that of this application which was first used in Germany in 1992 and in Australia in 1994.  Sales of cigarettes in relation to the trade mark in Australia since 1994 have averaged some 2.5 million cigarettes, or some 125,000 packets, per year.  These figures at a glance appear to be significant.  If it is thought that a moderate smoker might smoke a packet of 20 cigarettes a day and thus consume some 365 packets of cigarettes per year – a total of 7300 cigarettes, it follows that only about 342 people within Australia would actually purchase the goods sold in relation to the trade mark.

The applicant appends the details of registration of the trade mark in several countries.  I find problems with these: the United States registration is on the Supplemental Register; the Canadian registration depicts the trade mark and its description in the following terms:

Colour is claimed as a feature of the trade-mark.  The colour RED for the darker shading and of the colour BROWN for the lighter shading, as applied to the visible surface as shown in the drawing.

The colours of the Canadian registration are thus reversed from that of this Australian application – i.e. on the application before me the red is on the central trapezoidal or triangular portion of the representation whereas on the Canadian registration the colour brown is described as being in this area.  The Brazilian registration shows the tapered portion of the triangle at the top of the cigarette packet – unless, of course, the representation has actually been registered inverted in Brazil.  The German registration contains the colour claim: “red/brown/red/(running)” but, like the Canadian registration, this appears to put the brown portion of the trade mark on the inside of the central wedge, or triangular, portion of the trade mark unlike that before me.

The applicant’s annual report shows similar, but not identical, trade marks in use.  There are no physical examples of the trade mark in use in the evidence.

Reasons

Section 41 of the Act provides:

41  Trade mark not distinguishing applicant’s goods or services

(1)       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).

(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 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:            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).

In Blount Inc v Registrar of Trade Marks [1998] 440 FCA (1 May 1998), Branson J described the operation of section 41 in the following way:

Subsection (3) requires the Registrar first to "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". Having taken such matter into account, it is theoretically open to the Registrar to conclude:

(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b) 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; or

(c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

The initial step for me, in terms of the above analysis, is to take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods of the applicant from the similar goods of other persons.

The inherent adaptation of a trade mark to distinguish the goods of a trader is to be assessed with reference to the test in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514, where Kitto J put the question as follows:

[T]he question whether a mark is adapted to distinguish [is to] 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.

The applicant has made it clear that the sign in respect of which it seeks registration is a combination trade mark – it is seeking to register in respect of both the colours in which the sign is rendered and the shape of the packaging.  My consideration of the inherent distinctiveness is therefore that of the combination and my following comments deal with the two elements of shape and colour separately only for the sake of convenience.

In Hearing Officer Williams' decision, which I refer to above, he said of the shape of the packet:

I do not, as I said at the hearing, accept that the mere flattening of the front side corners of a cigarette pack endows that package with any inherent trade mark merit.  It is reasonable and normal for an object intended to be carried on the person to be constructed to allow it to be less obtrusive in a pocket or under a suit: holsters for pistols and hip flasks for liquor are prime examples.  In the present social climate, where smoking is seen by some, perhaps many, to be antisocial, I do not find it at all remarkable that a manufacturer would move to make the familiar bulge of a cigarette packet more discreet.  That change is entirely functional and the fact that the flattening of the corners appears to better approximate the radius of the cigarettes at the two ends of the front row is entirely predictable.  Similarly, the fact that the back of the pack does not have the flattened corners is readily explicable on grounds of function, to allow the easier and more durable operation of the flip-top packaging.  The shape, to put it simply, is entirely functional.

I agree with his assessment of the shape which is the same shape as that before me.

My general knowledge of the colours of packets in which cigarettes are sold is that the one brand might be sold in a variety of colours – each manufacturer uses a range of colours, and colour combinations, for each of its brands to indicate strength and, occasionally, a ‘deluxe’ version of a cigarette.  The colours are presented in a number of ways, including stripes and chevrons.  Of course, the different manufacturers of cigarettes use a range of colours, and arrangements of such, for their goods.  The colours of the applicant’s packets are red and brown.  I consider that these colours lack inherent distinctiveness as they are such that other makers of cigarettes might require to use in respect of their similar goods.

The combination of the shape and colour in the trade mark does have some slight inherent distinctiveness.  It is less likely that other traders actuated only by proper motives would require to use the particular combination of shape and colour in respect of which the applicant seeks registration.  But, I note that the inherent distinctiveness gained by the combining of these two inherently non-distinctive signs in relation to these goods is very slight.  The shape portion of the trade mark is subject to comments, above, concerning functionality and to which considerations apply such as those raised in Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA; 100 FCR 90 and Kenman Kandy Australia Pty Ltd v The Registrar of Trade Marks [2001] FCA 1047. A range of colours, and combinations of such, are commonly used on different brands of cigarettes and also designate strengths of cigarettes within a brand. Accordingly, I am not able to decide on the basis of that modicum of inherent distinctiveness gained by the combination that the trade mark ‘is capable of so distinguishing the designated goods or services’.

Thus, in terms of Branson J’s analysis in Blount, above, I turn to subsection 41(5) and consider what bearing the evidence submitted by the applicant has on the issue, as far as how the use or the intended use of the trade mark, might contribute to the present or future fitness of the trade mark to distinguish the goods as being those of the applicant.

The evidence of overseas reputation and registrations in the applicant’s evidence cannot be taken into consideration. It is apparent that some of this material refers to different trade marks than the one the applicant has applied to register.  Thus, I cannot give this evidence much weight and this weight is further adversely affected by the evident inconsistency in the references to the overseas trade marks in the evidence.  Whatever the relevance of the trade mark’s reputation overseas, I cannot be sure that the international sales figures relate to this trade mark.

The sales of the goods bearing the trade mark in Australia have been very modest – such sales must occupy a minute portion of the market and there is no evidence that sales are increasing.  I am not satisfied on the basis of such use that the trade mark does or will distinguish the designated goods as being those of the applicant.

Accordingly, the trade mark is taken not to be capable of distinguishing the applicant’s goods from the goods of other persons and I must refuse to register the trade mark.

Ian Thompson
Hearing Officer

12 November 2001