Solaire Pty Ltd

[2017] ATMO 106

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1518861(3) VIOLET BASE SOLUTION; 1518862(3) GREEN BASE SOLUTION - in the name of Solaire Pty Ltd.

Delegate:	Katrina Brown
Representation:	Applicant: Siobhan Ryan of Counsel instructed by Warren Chandler of Baxter Patent Attorneys Pty Ltd.
Decision:	2017 ATMO 106 Trade Marks Act 1995 – s 33 proceedings – s 41 – trade marks not capable of distinguishing – evidence not sufficient to overcome ground for rejection – trade mark applications rejected.

Background

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

Trade Mark No:	1518861	1518862
Trade Mark:	VIOLET BASE SOLUTION	GREEN BASE SOLUTION
Applicant:	Solaire Pty Ltd (‘the Applicant’)
Filing Date:	9 October 2012 (‘the relevant date’)
Specification:	Class 3: Artificial tanning preparations; cosmetic preparations adapted for sun-tanning; cosmetic preparations for skin tanning; cosmetic preparations for tanning the skin; cosmetic preparations for use in giving a sun-tan effect; cosmetics for skin tanning; creams for tanning the skin; self tanning creams (cosmetic); self tanning lotions (cosmetic); self tanning mists (cosmetic); self tanning preparations (cosmetic); sun-tanning preparations (cosmetics); tan lotions (cosmetic); tanning compositions (cosmetics); tanning creams (cosmetics); tanning oils (cosmetics); tanning preparations (cosmetics); colour cosmetics for the skin; preparations for colouring the skin; preparations for the skin (cosmetic); skin care creams (cosmetic); skin care lotions (cosmetic); skin care preparations (cosmetic); skincare cosmetics; skincare preparations (cosmetic); suntan preparations for use on the skin; sprays for use on the body (cosmetics) (‘the designated goods’)

1. These are the relevant details of the applications as they currently stand.

2. The applications were examined and grounds for rejection were raised under s 41(5) of the Act. The first examination reports stated:

   1518861: Your trade mark is, or has as its main feature, the words VIOLET BASE SOLUTION.

   VIOLET is the name of a plant and a colour. Thus, your trade mark is a descriptive phrase that indicates your goods will have a base solution made of the plant or a base solution of that colour.

   Other traders should be able to use VIOLET BASE SOLUTION in connection with goods similar to yours.

1518862: Your trade mark is, or has as its main feature, the words GREEN BASE SOLUTION.

GREEN is the name of a common colour. Thus, your trade mark is a descriptive phrase that indicates your goods will have a base solution of that colour.

Other traders should be able to use GREEN BASE SOLUTION in connection with goods similar to yours.

1. The Applicant was given the option of supplying evidence of use to overcome the grounds for rejection.

2. To support the trade mark applications, the Applicant submitted evidence and an amendment to the statement of goods. The examiner was of the opinion that the evidence and amendment to the goods was not sufficient to overcome the grounds for rejection.

3. After the fifth examination report the Applicant requested to be heard. These matters came before Adrian Richards, a delegate of the Registrar of Trade Marks, in Canberra on 24 April 2017. Siobhan Ryan of counsel, instructed by Warren Chandler of Baxter Patent Attorneys Pty Ltd, made written and oral submissions on behalf of the Applicant.

4. The matters have been allocated to me, also a delegate of the Registrar of Trade Marks, for decision based on the recording of the oral hearing, the evidence and written submissions.

Evidence

1. The evidence in this matter consists of the following declarations.

• Adam Taylor (Director of Applicant) made on 11 July 2014 with accompanying Exhibits TM-01 to TM-08 (‘Taylor 1’).

• Adam Taylor made on 11 April 2016 with accompanying Exhibits AT-1 to AT-30 (‘Taylor 2’). I note that a separate declaration was submitted for each of the Claimed Marks. The declarations are identical aside from ‘green base solution’ being substituted for ‘violet base solution’.

• Andrea Taylor (Employee of Applicant) made on 2 August 2016 with accompanying Exhibits AT-1 to AT-10 (‘Andrea Taylor Declaration’). I note that a separate declaration was submitted for each of the Claimed Marks. The declarations are identical.

1. Third party declarations have been submitted from the following individuals within the tanning industry:

• Cynthia Bell (Owner and manager of Hydrate Beauty) made on 30 May 2016 (‘Bell Declaration’);

• Enza Caio (Owner and operator of K.O. Beautyzone Pty Ltd) made on 30 May 2016 (‘Caio Declaration’);

• Janine Cantwell (Owner and operator of The Look Tan Hair and Beauty) made on 27 May 2016 (‘Cantwell Declaration’);

• Jodie Hodder (Owner and operator of Tanning Couture Mobile Spray Tans) made on 30 May 2016 (‘Hodder Declaration’);

• John Hayes (CEO of Ultraviolet Resources International) made on 30 May 2016 (‘Hayes Declaration’);

• Kimberley Alderton (Owner and operator of Kim’s Spray Tanning and Beauty) made on 27 May 2016 (‘Alderton Declaration’);

• Leanne Thomas (Owner and operator of Diamond Face and Body Burnside) made on 30 May 2016 (‘Thomas Declaration’);

• Samantha Jane Mato (Owner and operator of Ezy Tan Cannington) made on 27 May 2016 (‘Mato Declaration’);

• Renee Steggink (Sales and Marketing Manager of Beaute Internationale) made on 21 July 2016 (‘Steggink Declaration’).

1. I will refer to the declarations set out in [9] of this decision collectively as the ‘Third Party Declarations’.

2. The Hodder, Hayes, Thomas, Mato and Steggink Declarations are titled as statutory declarations. Pursuant to s 8(b) of the Statutory Declarations Act 1959, a statutory declaration must be made before a prescribed person. In this instance, the Hodder, Hayes, Thomas, Mato and Steggink Declarations have not been signed by an authorised witness.

3. The Act does not require evidence to be submitted in the form of a statutory declaration. Regulation 21.6 of the Trade Marks Regulations 1995 states that a declaration must be in an approved form. A notice (‘the notice’) setting out what is required for a declaration to be in an approved form was published in the Official Journal of Trade Marks on 28 June 2012. Pursuant to the notice, there is no requirement for a declaration to be witnessed. The Hodder, Hayes, Thomas, Mato and Steggink Declarations are substantially compliant with the requirements set out in the notice and as such, I will proceed on the basis that they are in an approved form, albeit not in statutory declarations.

4. At the hearing, the Applicant’s Representative requested the opportunity to file a supplementary declaration. The details of this declaration are as follows:

• Adam Taylor made on 2 May 2017 with accompanying Exhibits AT-1 to AT-2 (‘Taylor 3’).

Section 41

1. 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 grounds for rejection that have been raised.

2. It is also important to note that the trade mark applications were filed prior to the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. At the relevant date, the provisions of s 41 of the Act provided:

   41 Trade mark not distinguishing applicant’s goods or services

   (1) …

   (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.

   …

   (6) If the Registrar finds 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, 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

   …

3. In this matter, the Applicant is seeking to persuade the delegate that the Claimed Marks are inherently adapted to distinguish the designated goods from the goods of other persons. Alternatively, the Applicant submits that s 41(5) applies to their applications. That is, that the Claimed Marks are capable of distinguishing the designated goods due to the combined effect of the extent that they are inherently adapted to distinguish and the Applicant’s use of the Claimed Marks in the marketplace.

4. The starting point for my assessment is to take into account the extent to which the Claimed Marks are inherently adapted to distinguish the designated goods from the goods of other persons.

Inherent adaptation to distinguish

1. 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]

   [1] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.

2. The signification which the words ordinarily possess (ordinary signification) is the ordinary meaning of the words to people in Australia who purchase, consume and trade in the designated goods.[2]

   [2] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 [70] (‘Cantarella’). 

3. In the matter before me, the Claimed Marks consist of the words ‘violet base solution’ and ‘green base solution’ in plain text. Each of these phrases is made up of ordinary words which can be defined as follows:

• Green – the colour of growing foliage, between yellow and blue in the spectrum.

• Violet – a blueish purple colour.

• Base – to make or form a base or foundation for; any of numerous compounds which react with an acid to form a salt.

• Solution – the formation of a solution by dissolving a substance.[3]  

  [3] Macquarie Dictionary, online edition, Macmillan Publishers Group Australia 2015.

1. Using these definitions, the most basic meaning of the Claimed Marks is that the goods to which they are applied are liquid mixtures with a base of the colour green or a base of a blueish purple colour.

2. The Applicant submits that other traders would not desire to use the Claimed Marks for this basic meaning because colours other than brown are associated with faulty products within the tanning industry.

3. Whilst most of the designated goods are tanning products, there are several broader claims which would encompass a multitude of cosmetics not related to tanning. The broad claims I am referring to are:

   colour cosmetics for the skin; preparations for colouring the skin; preparations for the skin (cosmetic); skin care creams (cosmetic); skin care lotions (cosmetic); skin care preparations (cosmetic); skincare cosmetics; skincare preparations (cosmetic).

4. Eye shadow comes in a multitude of colours including green or purple and would be covered by the claim for colour cosmetics for the skin. It is also not particularly unusual for skin care creams to be coloured.

5. It is apparent from the information before me that ‘green base solution’ and ‘violet base solution’ have another ordinary signification to people in Australia who purchase, consume and trade in tanning products and cosmetics. In Taylor 2 at [34] the Applicant explains the development of the Claimed Marks:

   As a marketing strategy, I contrived a colour matching theory based on complementary colours that could be used to pair a select tanning formulation with predetermined DHA concentration to a particular skin colour or tone to achieve a desired outcome.

   The theory of complementary colours stems from a traditional colour wheel where pairs of colours when combined produce a neutral grey-scale colour.

   I therefore coined the term ‘Green Base’ and ‘Green Base Solution’ in reference to a conventional colour chart as a marketing ploy to characterise select staining formulations having a predetermined DHA concentration for use with a particular skin tone to complement the skin tone and reduce appearance of non-aesthetically pleasing orange ‘fake tan’.

1. A colour wheel is a visual representation of colours arranged according to their chromatic relationship. On a traditional colour wheel, green is opposite red and violet is opposite yellow and orange. Colours which are opposite each other on a colour wheel are complementary colours that neutralise one another. As such, green neutralises red and violet neutralises yellow and orange.

2. The theory of complementary colours is embedded in the Applicant’s advertisement of their products. The following are two examples from the Andrea Taylor Declaration at Exhibit AT-8:

   Skin tones can be generalised into two groups. Firstly those with a yellow base and secondly those with a more red base tone. For clients with a [sic] more of a red-pink complexion, to counteract these colours an opposite green base solution^TM will perform better. For a client with yellow base colourings a violet base solution^TM on the opposite end of the colour spectrum will deliver the best natural brown results.

   The way that Solaire ® counteract the dreaded orange effect to achieve a natural chocolate brown, is by creating a base from the opposite side of the colour spectrum to that nasty orange-yellow.

3. In the third and fifth examination reports, the examiner provided internet based research showing other traders using the terms ‘green base’ and ‘violet base’ in the same manner as the terms are used in the Applicant’s advertising extracted above. For example, the examiner pointed the Applicant to “ /skin_guide.htm” which contains the following:

Cool Skin Tone

The best tanning base for your skin tone is a tanning solution from our Green Base range. A Green base will counteract any pink hue your skin will throw leaving you with the most natural looking tan.

Warm Skin Tone

If you’re a warm skin tone, the veins on your wrist will appear green, and your skin type will quickly bronze or darken in the sun, so your skin tone would suit a tanning solution from within our Vibe Range which has a Violet Base. A violet base will counteract any yellow hue.

Neutral Skin Tone

If you fit within this range you have a wide variety of choice as your skin tone allows for a wide variety of choice.

1. It was not contested that these examples show other traders using something so nearly resembling the Claimed Marks in relation to the designated goods. Rather, it is submitted that each of the examples is after the relevant date, the earliest being a dated article from 12 November 2013.  

2. I agree that each of the examples provided by the examiner is after the relevant date. In Chocolaterie Guylian N.V. v Registrar of Trade Marks, when considering evidence six years post priority date, J Sundberg stated:

   [T]he recent evidence seems to me to lend further support to the view I take that, as at the priority date other traders might have wished in the future to adopt the same shape or one closely resembling it.[4]

   [4] [2009] FCA 891 [81].

3. In my opinion, J Sundberg’s approach should be applied in the current matter. The examples after the relevant date support the view that as at the priority date, there was some degree of likelihood that others traders may have wished in the future, to use the phrases ‘green base solution’ and or ‘violet base solution’ or something closely resembling them, for their ordinary signification.

4. In my opinion at the date of filing, the Claimed Marks were to some extent inherently adapted to distinguish the designated goods from the goods of other traders. If the Claimed Marks were to be plotted on a s 41 continuum they would be close to a s 41(6). With that in mind, I will now consider the use of the Claimed Marks by the Applicant.

Evidence of use

1. In Taylor 3 it is declared that the Applicant supplies spray tanning products under the Claimed Marks to over 6000 salons in Australia. The Applicant estimates that this amounts to a market share of up to 30% of the Australian spray tanning industry in 2017. Revenue and promotional expenses in relation to spray tanning products bearing the Claimed Marks has been provided for the financial years 2005-2006 through to 2015-2016.

2. These statistics and figures relate to the Claimed Marks collectively with the exception of the financial figures prior to 2009 which only relate to ‘green base solution’. As such, it is not clear what portion of these figures and statistics is attributable to the use of ‘green base solution’ and what is attributable to the use of ‘violet base solution’.

3. The Taylor Declarations also make reference to the Applicant being the sponsor of the Miss Universe Australia Pageant. The promotional activities and expenditure undertaken by the Applicant in relation to this pageant is significant. However the expenditure and promotional activities in relation to the Miss Universe Australia Pageant relate to the Applicant’s suite of trade marks. For example Exhibit AT-29 to Taylor 2 refers to ‘Mediterranean Tan, Wax and Beauty’ as being the official tan of Miss Universe Australia. It appears that many of the Applicant’s trade marks were used in the promotion of the Miss Universe Australia Pageant and therefore it is not clear what portion of the activities and expenditure is attributable to use of the Claimed Marks.

4. I also note that the revenue, sales figures and or promotional expenses that are provided in Taylor 1, Taylor 2 and Taylor 3 differ despite the fact that each purports to only be in relation to the Claimed Marks. The figures for the financial years 2006-2007 through to 2011-2012 vary widely between declarations. For example, in Taylor 3 the revenue for the financial year 2006/2007 is exceptionally more than the figure declared in Taylor 1 (and the hearing submissions) for the same financial year. Taylor 3 was submitted after the hearing and I do note that during the hearing the Applicant’s Representative requested the opportunity to submit this supplementary declaration to correct some of the revenue figures. However, Taylor 3 does not indicate that the figures provided are a correction nor does it provide any explanation as to why the figures are grossly different.

1. Third party declarations have been provided from nine individuals within the tanning industry. Each of the declarants attests to exclusively associating the phrases ‘violet base solution’ and ‘green based solution’ with products manufactured by the Applicant. The fact that the declarants associate these words with the Applicant does not on its own demonstrate the capacity of the Claimed Marks to distinguish the Applicant’s goods from those of other traders.[5] It is necessary to establish that the association is because of the use of the Claimed Marks as a trade mark.[6]

   [5] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [100].

   [6] Woolworths Limited v BP Plc (No 2) [2006] FCAFC 132 [117].

2. Use as a trade mark is:

   [U]se of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[7]

   [7] Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19].

3. In Taylor 1 it is declared that the Claimed Marks were first used in or around April/May 2006. The Applicant has provided invoices and order forms that show the Claimed Marks being used in relation to tanning products as follows:

   1 Solaire Lavender 1 L – 9% DHA – Violet Base Solution

   Mediterranean Tan 2 Hour Medium – Violet Base Solution

4. Much of the evidence shows the Claimed Marks used in close proximity to the words ‘Solaire’, ‘Mediterranean Tan’, ‘Mediterranean Tan, Wax and Beauty’, ‘VBS’ or ‘GBS’. The following are examples are from the Applicant’s evidence.[8]

[8] Taylor 1 Exhibit TM-01; Taylor 2 Exhibit AT-3, AT-4, AT-5.

1. The presence of multiple indicia is not fatal to an application. The question is ultimately whether the evidence before me demonstrates that the Claimed Marks are acting, in their own right, as a badge of origin notwithstanding the presence of other indicia. This requires consideration from an objective viewpoint of the purpose and context of the use[9] 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.

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

2. The relative distinctiveness of the words is also relevant to determining how a consumer is likely to perceive a product label or promotional material. The words ‘Solaire’, ‘Mediterranean Tan’, ‘Mediterranean Tan, Wax and Beauty’, ‘VBS’ and ‘GBS’ are on the face of it distinctive in relation to the designated goods. Comparably, the Claimed Marks are not inherently distinctive and their strength as a brand is therefore diminished.

3. I am not convinced that upon seeing packaging and promotional material where the Claimed Marks are displayed in close proximity to words such as ‘Solaire’, ‘Mediterranean Tan’, ‘Mediterranean Tan, Wax and Beauty’, ‘VBS’ and ‘GBS’, that ‘green base solution’ or ‘violet base solution’ would necessarily be perceived as trade marks. My impression of the packaging and promotional material as a whole is that ‘Solaire’, ‘Mediterranean Tan’, ‘Mediterranean Tan, Wax and Beauty’, ‘VBS’ and ‘GBS’ do the work of distinguishing the goods. In my view, the presence of other distinctive trade marks makes it difficult to conclude that the Claimed Marks have, by themselves, become distinctive of the Applicant’s goods.

4. The Applicant’s evidence contains limited references to the Claimed Marks which are not in close proximity to other indicia. Exhibit AT-15 and AT-17 to Taylor 2 contain approximately 4 photographs which show use of the Claimed Marks in a manner which may be perceived by a consumer as a badge of origin. These photographs were taken at the Spa & Beauty Expo in Sydney in 2015 and the Salon Melbourne Expo in 2015. Likewise Exhibit AT-25 and AT-26 to Taylor 2 contain references by third parties to the Claimed Marks which might be perceived as imparting trade mark significance.

5. However much of the use of the Claimed Marks not in close proximity to other indicia does not clearly impart trade mark significance.  For example, the following is extracted from Exhibit TM-06a to Taylor 1:

   Solaire guarantees to have a solution for everybody! With over 30 different solutions ranging in green base solution, violet base solution and specially designed clear bridal solutions through to one hour tans.

6. Similarly, Exhibit AT-25 to Taylor 2 contains the following extract from the website “ Belladonna Brides we use violet based solutions that give you a beautiful glow and guarantee no orange colour.

In my view, on reading the above extracts a customer would not perceive ‘violet based solution’ or ‘green based solution’ as a badge of origin.

1. When I weigh the evidence before me together with the extent that the Claimed Marks are inherently adapted to distinguish the designated goods, I find that the combined effect does not overcome the s 41 grounds for rejection.

2. I am satisfied on the balance of probabilities that there is a ground for rejecting each of the Claimed Marks under s 41 of the Act.

Decision

1. 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.

2. In accordance with s 33(3)(b) of the Act, I reject trade mark application numbers 1518861 and 1518862.

3. 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
Hearings & Oppositions
19 September 2017