SociéTé Des Produits Nestlé S.A.

[2015] ATMO 120

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1559085 (31) - AS GOOD AS IT LOOKS - in the   name of Société des Produits Nestlé S.A.

Delegate:	Katrina Brown
Representation:	Kate Andean of Banki Haddock Fiora
Decision:	2015 ATMO 120 Section 33 proceedings – s 41 – trade mark not capable of distinguishing Applicant’s goods – trade mark application rejected.

Background

1. This matter is an ex parte proceeding pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) involving an application for the registration of the following trade mark:

   Trade Mark No:                  1559085

   Applicant:  Société Des Produits Nestlé S.A. (‘the Applicant’)

   Filing Date:  24 May 2013

   Trade Mark:    AS GOOD AS IT LOOKS (‘the Trade Mark’)

   Goods:  Class 31: Foodstuffs for animals

   2. The application was examined and a ground for rejection was identified under s 41 of the Act on the basis that the Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s goods from those of other traders.

   3.     In the course of examination the Applicant made submissions to the effect that the Trade Mark was capable of distinguishing the goods. However the examiner remained unconvinced that the Trade Mark was prima facie capable of distinguishing foodstuffs for animals.

   4.     To support its application the Applicant also submitted the declaration of Matthew Jones (Marketing Manager of Nestlé Purina PetCare Asia, Oceania & Africa) made on 20 January 2015 with Exhibits 1 to 10 (‘Jones Declaration’).

   5.     The examiner was of the opinion that the evidence of use provided in the Jones Declaration was not sufficient. The fifth examination report stated:

   [T]he manner in which the mark is being used is as a description of the quality of the goods to consumers, rather than clearly as an indicia of the trade source.

   6.     After the fifth examination report the Applicant requested to be heard. The matter came before a delegate of the Registrar of Trade Marks in Sydney on Friday 21 August 2015. Kate Andean of Banki Haddock & Fiora Lawyers made written and oral submissions on behalf of the Applicant.

   7.     The delegate who conducted the hearing is no longer available to determine the matter and it has been allocated to me, also a delegate of the Registrar, for decision based on the recording of the oral hearing made on Friday 21 August 2015, the evidence and the written submissions provided prior to the hearing.

   Evidence

   8.     The Applicant relies on the following declarations:

   • Jones Declaration (submitted during examination).
   • Declaration of Kate Andean (Associate at Banki Haddock Fiora) made on 10 August 2015 with Exhibits KA-1 to KA-6 (‘Andean Declaration’). 
   • Declaration of Nicole Battistessa (Vice President – Marketing of Nestlé Purina PetCare Asia, Oceania & Africa) made on 10 August 2015 with Exhibits NB-1 to NB-4 (‘Battistessa Declaration’).

   Section 41

2. As a preliminary matter I mention that the focus here is not to review the examiner’s decision and arguments, but rather to consider afresh the ground for rejection that has been raised.

3. Section 41 of the Act relevantly 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.

   …

   (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.

4. Pursuant to s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. As explained below, the Trade Mark is to some extent, but not sufficiently, adapted to distinguish the designated goods. Accordingly, I am not entitled to reject the trade mark unless I am satisfied that it is not capable of distinguishing the designated goods having regard to the combined effect of its inherent adaptation to distinguish, any past or intended use and any other circumstances.

   Inherent adaptation to distinguish

   12.     As outlined in the written submissions, the inherent adaptation of a trade mark is to be tested:

   [B]y 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.[1]

   13.     The Trade Mark is not so distinctive that other traders are unlikely to wish to use the same or similar trade mark for the sake of its ordinary signification without any improper motive in relation to animal foodstuffs.

   14.     It is a colloquial phrase which is used to describe the quality of something. For example, the phrase is used to indicate that an item smells or tastes as good as it looks. The phrase has a clear meaning and does more than evoke an emotive idea. It proclaims to the public that the goods bearing the Trade Mark are as good as they look. It is part of the common heritage and I believe that the ordinary consumer would have no hesitation in understanding the phrase AS GOOD AS IT LOOKS as indicating the quality of the animal foodstuffs to which the Trade Mark is applied.

   15.     The Applicant has provided evidence in the form of Google® searches to demonstrate that other traders are not using the Trade Mark in relation to the designated goods.[2] The assessment of whether a trade mark is inherently adapted to distinguish is based on the nature of the trade mark itself, not by reference to whether traders other than the Applicant are in fact using the expression in relation to their similar goods (although evidence of such is likely to support a ground for rejection under s 41).

   16.     To further support its position, the Applicant cites the following cases: TGI Friday’s (Aust) Pty Limited v TGI Friday’s Inc[3] and Effem Foods Pty Limited v Unilever Plc.[4] While these cases concern slogans and the capacity to distinguish, I do not consider them to be analogous to the current situation.  The phrase AS GOOD AS IT LOOKS, in and of itself, has a meaning which describes in a laudatory sense the quality of the goods and is therefore differentiated from TGI Friday’s, wherein the expression “TGI Friday’s” was found not to describe restaurant services nor services of any character. The current situation is not analogous to Effem because unlike SIZZLE & STIR, AS GOOD AS IT LOOKS is a known colloquial phrase and does not require the academic exercise of piecing together different sentences to construe a phrase.

   17.     I also note the Applicant’s proposal to amend the claim in class 31 to cat food. This restriction to the designated goods is not sufficient to address the s 41 ground for rejection. For the same reasons as discussed above, the Trade Mark is not prima facie capable of distinguishing the more specific claim for cat food.

   [1] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, 63.

   [2] Andean Declaration Exhibit KA-3 to KA-5.

   [3] ‘TGI Friday’s’ [2000] FCA 720.

   [4] ‘Effem’[2000] ATMO 131.

5. I consider that the Trade Mark is not inherently adapted to distinguish the designated goods. However, for the ground for rejection under s 41(4) to apply, I must also be satisfied that the Trade Mark does not and will not distinguish the designated goods as being those of the Applicant having regard to the factors set out in s 41(4)(b) of the Act. Accordingly, I will now consider the applicant’s evidence of use, intended use and any other circumstances that may be relevant.

   Evidence of use and other circumstances

   19.     The Jones Declaration states that the Trade Mark was first used in the United Kingdom in 2004 and was introduced into the Australian market in March 2014.[5] Goods bearing the trade mark have been widely promoted in Australia including national television commercials[6] and in-store merchandising displays in national retailers Coles and Woolworths.[7] Australian sales revenue has been provided and goods bearing the Trade Mark account for a significant share of the wet cat food market in both Australia[8] and overseas.[9]

   [5] Jones Declaration, 3[20].

   [6] Battistessa Declaration Exhibit NB-3.

   [7] Jones Declaration, 3[21].

   [8] Battistessa Declaration, 2[15].

   [9] Jones Declaration, 2[18].

   20.     The promotion, sales revenue and market share that the Applicant has gained in a short period of time are certainly significant. However, given the examples of use provided by the Applicant show the Trade Mark used in combination with FELIX, PURINA and a cat device these figures are not solely attributable to the Trade Mark.  

   21.     The following is an example indicative of the packaging used in Australia.[10]

   [10] Jones Declaration Exhibit 7.

   22.     It is clear from the examples provided that the phrase is used when promoting the Applicant’s product. Whilst there is consistent use of the TM symbol adjacent to the Trade Mark, both on the product and in the advertising and promotional material, the Trade Mark is invariably in the company of the FELIX and PURINA trade marks.       

   23.     The presence of multiple signs is not fatal to the application. It is not unusual for multiple trade marks to be used on packaging. This fact is supported by the Andean Declaration which provides examples of other traders using multiple trade marks on their cat food.[11]

   [11] Exhibit KA-6.

   24.     The question is ultimately whether the evidence demonstrates that the Trade Mark is acting, in its own right, as a badge of origin notwithstanding the presence of other indicia. This requires consideration from an objective viewpoint of the purpose and nature (context) of the use[12] including:

   Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand.[13]

   [12] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 425.

   [13] Nature’s Blend Pty Ltd v Nestlé Australia [2010] FCAFC 117 [19].

   25.     The relative distinctiveness of the words is also relevant to determining how a consumer is likely to perceive the product label. In this regard, the words PURINA and FELIX are highly distinctive when used in relation to animal foodstuffs. Comparably, the Trade Mark is a laudatory phrase and its strength as a brand is diminished particularly when displayed in such close proximity to the more distinctive material.

   26.     Taking into account all of the above, I am not convinced that upon seeing the packaging and promotional materials that the phrase would be perceived by the purchasing public as a trade mark. In my opinion, there is a strong possibility that the Trade Mark would be viewed as a descriptive adjunct to the FELIX trade mark.  It is at best, a limping trade mark in the sense that is referred to in Philips Electronics NV v Remington Consumer Products:

   [W]hat we have here is a kind of “limping mark”, always used with what is obviously a proper trade mark. The same was true of treat which was always used with silver spoon. Neither sign was ever used by the proprietor on its own. And that was evidence of a lack of a capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that a part of a sign — a “subsign” — cannot also be a trade mark: both ford and fiesta are obviously valid marks. But there are these other cases, where the sign proffered as a valid mark cannot really stand up on its own.[14]

   [14] (1997) 40 IPR 279, 301.

   27. The evidence before me does not sufficiently demonstrate that the Trade Mark has or will be viewed by consumers as a badge of origin separate from the other indicia used by the Applicant. Therefore, having regard to the combined effects of the matters specified under s 41 (4)(b) of the Act, I am not satisfied that the Trade Mark does or will distinguish the designated goods.

   Decision

6. Section 33 of the Act provides:

   Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)   the application has not been made in accordance with this Act; or

   (b)   there are grounds under this Act for rejecting it.

   Note:        For this Act see section 6.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:        For limitations see section 6.

   (3)If the Registrar is satisfied that:

   (a)  the application has not been made in accordance with this Act; or

   (b) there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   Note:        For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:        For applicant see section 6.

   29.     I have found that the Trade Mark is not capable of distinguishing the designated goods. As such, I am satisfied on the balance of probabilities[15] that there is a ground for rejecting the Trade Mark under s 41 of the Act.

   [15] Blount Inc v Registrar of Trade Marks [1998] FCA 440 [56].

   30. In accordance with s 33(3) of the Act, I reject trade mark application number 1559085. However, if the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

   Katrina Brown
   Hearing Officer
   Trade Marks Hearings
   18 December 2015