The Coca-Cola Company v Vitasoy International Holdings Limited
[2017] ATMO 77
•1 August 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Coca-Cola Company to registration of trade mark application 1534588 (30, 32) - Icy - in the name of Vitasoy International Holdings Limited.
Delegate: Iain Campbell Thompson Representation: Opponent: Margaret Ryan of Phillips Ormonde & Fitzpatrick
Applicant: Sam Hallahan of Counsel instructed by Roseanne Mannion of Davies Collison CaveDecision: 2017 ATMO 77
Trade Marks Act 1995
Section 52 opposition to registration; section 41 – inherent adaptation resident in ‘get up’; Trade Mark lacks inherent adaptation to distinguish: registration refused.Background
1. In these proceedings Vitasoy International Holdings Limited (‘the Applicant’) has made application under the Trade Marks Act 1995 (‘the Act’) for the registration of the trade mark which appears below:
Application No: 1534588
Priority Date: 8 January 2013Goods:Class 30: Tea drinks; none of the aforementioned goods being frozen/slush drinks
Class 32: Carbonated and non-carbonated non-alcoholic drinks and beverages, syrups, powders, extracts and concentrates for making carbonated and noncarbonated non-alcoholic beverages, juices of all kinds, soft drinks, soya bean-based extracts and beverages; none of the aforementioned goods being frozen/slush drinks
(‘the Specification’)
Trade Mark:
(‘the Trade Mark’)Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.[1]
[1] The endorsement reflects the examiner’s objection under subsection 44(1) of the Act and the provision of a ‘letter of consent’ from the owner of the originally cited registrations.
2. The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 9 July 2015.
3. On 7 September 2015, The Coca-Cola Company (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 30 September 2015, by its Statement of Grounds and Particulars (‘the SGP’) citing grounds under section 41 and 62 of the Act.
4. On 16 November 2015, the Applicant filed a Notice of Intention to Defend.
5. Since then the parties have served Evidence in Support, Evidence in Answer, and Evidence in Reply as I further discuss below.
6. Both parties requested a hearing in this matter. As a delegate of the Registrar of Trade Marks, I heard the submissions of the parties at a hearing in Canberra on 21 June 2017. Margaret Ryan of Phillips Ormonde & Fitzpatrick represented the Opponent; Sam Hallahan of Counsel instructed by Roseanne Mannion of Davies Collison Cave represented the Applicant.
Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2] I note that the ground is one under section 41 of the Act, the ground under section 62 mentioned in the SGP not having been relied upon at the hearing.
[2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[3] which is here the same as the priority date.
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Evidence
9. The evidence is comprised of the following declarations:
Evidence in Support
Gregory Morris Chambers (‘Chambers 1’) made on 18 February 2016, with Exhibits GMC-1 to GMC-14; and
Dianne Everett (‘Everett’) made on 18 February 2016, with Exhibit DE-1.
Evidence in Answer
Tong Ah Hing (‘Tong’) made on 23 May 2016 with Exhibits A, B, C, D, Confidential Exhibit E, Confidential Exhibit F and Exhibit G;
Rachel Elizabeth Craft (‘Craft’) made on 23 May 2016 with Exhibits REC-1 to REC-2;
Katherine Louise Kemp (‘Kemp’) made on 23 May 2016 together with Exhibits KK-1 to KK-5; and
Stephanie Lam (‘Lam’) made on 2 June 2016 with Exhibits A to C.
Evidence in Reply
Gregory Morris Chambers (‘Chambers 2’) made on 29 September 2016 with Annexures GMC-15 to GMC-17.
10. The Evidence in Support is contended to enliven the Opponent’s contentions that the Trade Mark lacks inherent adaptation to distinguish goods within the Specification; the Evidence in Answer addresses the Applicant’s contention that, if the Trade Mark lacks inherent adaptation to distinguish, the evidence establishes that it has become distinctive of goods within the Specification or that it is capable of becoming so. I will discuss this evidence in more detail under the heading Section 41.
Section 41
11. In its SGP the Opponent contends:
Section 41: The Opposed Trade Mark is not capable of distinguishing any or all of the Applicant’s Goods from the goods and services of the Opponent and/or other persons.
Particulars:
i) The word ‘Icy’ is defined by the Oxford English Dictionary to mean, inter alia, ‘extremely cold’. In the context of the Goods for which the trade mark is sought to be registered, the word is directly descriptive and has no ability to distinguish the Goods of the Applicant from the goods of other persons.
ii) The modest rendering of the word ‘Icy’ forming the mark is not sufficiently stylised to confer on the mark as a whole any ability to distinguish.
iii) It is industry and public practice in Australia to refer to goods, such as those in classes 30 and 32, when cold as being ‘Icy’.
iv) The Applicant has not demonstrated that through use of the word ‘Icy’ on any of its products that the alleged mark has in fact become distinctive of any of the Applicant’s Goods.
12. The parties are agreed that, as the priority date of the Trade Mark falls before the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, it is the Act as it stood before that amendment which applies to this matter.
13. Section 41 of the Act as was at the priority date provided:
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).
14. Two issues arise for the Registrar’s consideration:
1. Whether or not the particular get-up/stylisation of the Trade Mark adds to whatever inherent adaptation to distinguish the Trade Mark might otherwise possess; and
2. The extent, if any, the word ‘Icy’ which constitutes the Trade Mark is inherently adapted to distinguish goods within the Specification from the similar goods of other traders.
15. Initially, I mention that the Applicant is the owner of the Australian trade mark registration which appears below:
Registration No: 988506
Priority Date: 10 February 2004
Goods: Class 30: Tea drinksClass 32: Carbonated and non-carbonated non-alcoholic drinks and beverages, syrups, powders, extracts and concentrates for making carbonated and non-carbonated non-alcoholic beverages, juices of all kinds, soft drinks, soya bean-based extracts and beverages
Trade Mark:
16. I note that the above trade mark does not consist solely of the Trade Mark and accordingly I do not view it as setting a precedent[4] when considering the Trade Mark under the provisions of section 41.
[4] See also the remarks of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579; [2000] AIPC 37-137 at [35].
Inherent Adaption of the word ‘Icy’
17. The considerations in assessing inherent adaptation are those in Clark Equipment Co v Registrar of Trade Marks[5] where Kitto J stated:
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. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question 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.
[5] [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5]
18. Further, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[6] (‘Cantarella’) said of the expression ‘for the sake of the signification which they ordinarily possess’:
In accordance with the principles established in Mark Foy’s and restated in ClarkEquipment, Faulding and Burger King, determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.
As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.
[6] (2014) 254 CLR 337 at [70]-[71].
19. In Cantarella the Court also stated:
The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.
20. Chambers 1 provides the following definitions of the word ‘Icy’:
The Oxford English Dictionary defines the word ‘Icy’ as follows:
i. Abounding in ice; covered or overlayed with ice.
ii. Consisting of ice.
iii. Resembling ice; extremely cold, frosty; slippery.
The Macquarie Dictionary defines the word ‘Icy’ as follows:
i. Made of or covered with ice.
ii. Resembling ice.
iii. Cold: icy wind.
iv. Slippery: icy road.
v. Without warmth of feeling; frigid : an icy stare.
21. While the Applicant argues that the Trade Mark is purely metaphorical, and thus qualifies as a trade mark which is in terms of Cantarella only allusive or metaphorical, the above definitions show that the word ‘Icy’ has both metaphorical and literal meanings in its application to goods within the Specification. I agree with the Opponent’s submission that:
As indicated from each of these dictionaries the word ‘Icy’ is used not only as a literal adjective relating to something that is made of or covered with ice, but also as a synonym for the word ‘cold’. Thus, for example, in the expression ‘an icy drink’ the word ‘Icy’ indicates simply that the drink is cold. It is not necessary for the drink to contain ice for the drink to be described as an icy drink. Now produced and shown to me and marked Exhibit GMC-6 are some examples of different uses of the word “icy” by third parties in relation to beverages which have been located through a search on the internet.
22. For the sake of brevity, I note that the examples within Exhibit GMC-6 show prominent usages of the word ‘Icy’ by traders other than the parties to this matter in relation to a wide range of non-alcoholic beverages and that these include both metaphorical and literal usages.
23. Mr Hallahan submitted that, in effect, the goods are not icy when made by the Applicant or sold to retailers. However, the retailer is not the only consumer of the goods and, almost universally, the ultimate purchasers of drinks which are made to be consumed chilled will select them from refrigerators in shops. The word ‘Icy’ is, under such circumstances, merely descriptive of the cold temperature of the beverage as it is sold or how it is to be consumed. Further, while the Applicant has excluded frozen/slush drinks from the Specification, the word ‘Icy’ does not only denote ‘frozen’: it also denotes ‘cold’.
24. The word ‘Icy’, per se, lacks inherent adaptation to distinguish the goods within the Specification.
Get-Up
25. The Everett and Craft declarations in the evidence both go to the parties’ differing views on whether the Trade Mark is in a standard or non-standard font and, if it is in a non-standard font, how different from a standard font the get-up might be. In my view, however, such considerations may both distract from what is at issue and also lead to some unusual results: after all, the word ‘Icy’ when rendered in a standard font such as Wingdings (Icy) might convey no meaning at all to the untrained eyes of most Australians whereas the word ‘Icy’ rendered in a non-standard font might deviate very little from its rendition in a standard type-face. There is also the caution sounded by Jacobs J in British Sugar Plc v James Robertson & Sons Ltd[7] when talking of a putative maker of saponaceous products bearing the inherently non-distinctive word ‘Soap’:
He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.
[7] British Sugar Plc v James Robertson & Sons Ltd at 302.
26. Case law shows that when considering ‘get up’ there is a continuum at the low end of which alterations or additions to a trade mark make little or no difference to its inherent adaptation through to those at the high end of the continuum where those alterations or additions render the trade mark in question in a distinctive manner.
27. At the low end, there are cases such as Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft[8] (‘Bayer’) and Blount Inc v Registrar of Trade Marks[9] (‘Blount’). In Bayer what was sought to be registered was the trade mark:
[8] [1960] HCA 35; (1965) 120 CLR 285.
[9] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.
28. Kitto J observed of the ‘Bayer Cross’ trade mark:
If, then, the desired registrations are to be granted, it must be on the ground that the cross device, possesses a capacity, either inherent or acquired, to distinguish goods as being in a relevant sense the respondent's. First, then, is the cross device inherently adapted to produce this effect? I do not think that it is. In my opinion it merely provides a fancy method of presenting the name "Bayer", and it has no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as "Bayer". It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which (to use a phrase of Lloyd Jacob J. (1955) 72 RPC, at p 195) "would strike the eye and fix in the recollection". The dominant impression which the device gives is not adequately described as that of a cross formed by printing; it is an impression of the name "Bayer", arranged indeed in a particular way so that it appears twice yet with compactness and definition, but predominantly the name "Bayer". The effect produced by an application of the device to particular goods is essentially that of a branding of the goods with that name, albeit in a quaint manner; for, to some extent by the delimiting effect of the circle, and much more by the arrangement of the two words so that they intersect and share the one middle letter, attention is focussed on the identity of the words, and "Bayer" is impressed sharply on the mind. Throughout this case, the device has been referred to, by witnesses and counsel alike, as a "Bayer" Cross. That is exactly what it is: not in the sense that it is a cross device belonging to a person or corporation having "Bayer" as part of its name, but in the sense that it is in essence the word "Bayer", presented in the form of a cross. The case seems to me to be as clear as the Benz Case (1913) 30 RPC 177 and the Ludowici Case [1938] HCA 67; (1938) 61 CLR 149.
29. Bayer was a case under a legislative predecessor of the Act in which the onus was on an applicant for registration. However, in Blount, decided under the Act, Branson J quoted Kitto J with approval. Her Honour said of the trade mark which appears below the passage quoted from her judgment:
By analogy, it seems to me that I must conclude that the particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient to take the applicant's trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.
30. At the high end of the continuum there are trade marks in which the get-up renders those trade marks distinctive despite the lack of inherent adaptation in the words appearing in the trade mark – one such case is Standard Cameras Ltd’s Application[10] which involved the trade mark[11] appearing below:
[10] (1952) 69 RPC 125.
[11] The name ‘Robin Hood’ prima facie lacked inherent adaptation as it was the name of a person.
31. In its submissions the Applicant also referred me to my decision in Freelife International Holdings LLC;[12] however there the trade mark owner was able to both adduce evidence that the trade mark was capable of becoming distinctive and also limit the specification of goods to accord with the description ‘Goji Juice’ which comprised the trade mark written in script as it appears below. The words ‘Goji Juice’ were thus ‘inherently disclaimed’ as they were acknowledged within the specification of goods to be generic. There is no suggestion from the Applicant here that such a restriction is appropriate or possible and, as I will discuss below, the Applicant has not established that the Trade Mark is capable of becoming distinctive.
[12] [2009] ATMO 45.
32. There are a number of factors which may be involved in consideration of whether the ‘get-up’ of the Trade Mark adds sufficient inherent adaptation to it for the lack of inherent adaptation in the word ‘Icy’ to be set to one side and Trade Mark to be considered registrable.
33. There is the instructive passage in Clark, ‘whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it’. The highlighted expression may obliquely refer to the provisions of both sections 44 and 120 of the Act and the potential impairment of the right of traders other than the owners of trade marks to use ordinary descriptive words in relation to their goods. In short, Clark, quoted at paragraph [17], above, (and consequently Cantarella) both look to the future and the possible effects of registration of a trade mark. If a descriptive word is to be registered only because of its get-up, that get-up should be sufficiently different to fonts in which the plain typed word might normally be rendered that it should not be considered to conflict with the plain typed word under the provisions of either section 44 or section 120 of the Act when the word is being used by another trader only for the sake of its ordinary meaning.
34. Allowing for the effects of section 33 and the presumption of registrability, one approach is to view the Trade Mark in terms of ‘use’: would the use of the Trade Mark be considered to be a use of the plain typed word ‘Icy’ or vice versa? If such use of the plain typed word ‘Icy’ was to be considered a use of the Trade Mark, the similarity involved would a potent argument that the get-up within the Trade Mark is not such to render it inherently adapted to distinguish on that basis and to answer the question ‘whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it’.
35. Adopting this approach, subsection 7(1) provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
36. In Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[13] Yates J said:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414.
[13] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].
37. The consideration thus becomes the familiar one in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[14] where Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
[14] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
38. When considering the Trade Mark compared side by side with the plain typed word ‘Icy’ in different fonts, does a total impression of resemblance or dissimilarity emerge from the comparison?
Icy
39. In my consideration the putative trade mark ‘Icy’ (in plain script) is substantially identical to the Trade Mark: a total impression of resemblance emerges from the comparison. The use of the Trade Mark is thus a use of the typed word ‘Icy’. Any traders wishing to use the plain printed word ‘Icy’ for the sake only of its ordinary meaning would find that use precluded to them since the use of the plain printed word in standard fonts would constitute a use of the Trade Mark.
40. Further, the aural use of the Trade Mark is to be considered. Subsection 7(2) of the Act provides:
(2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
41. The Trade Mark, when used aurally, is indistinguishable from the word ‘Icy’ when it is used aurally.
42. For the above reasons I find that the get-up of the Trade Mark is not such that it renders the Trade Mark inherently distinctive or capable of becoming so.
43. I further find that the Trade Mark, considered as a whole, and taking into account the get-up of the Trade Mark, possesses little, if any, inherent adaptation to distinguish goods within the Specification.
Subsections 41(5) and 41(6)
44. The Applicant’s evidence addressing its use of the Trade Mark in Australia is in the Tong and Lam declarations.
45. Mr Tong is Company Secretary of the Applicant. The sales of goods bearing the Trade Mark in Australia were, to judge from the Tong declaration, (and subject to my comments below) relatively modest at the priority date. Mr Tong states that the beverages offered under or by reference to the Trade Mark are distributed in Australia by Ettason Pty Ltd (‘Ettason’).
46. Ms Lam is the Operations Manager of Ettason. She states that Ettason has distributed products bearing the Trade Mark in Australia since 2013. In this regard Lam and Tong are at odds because Mr Tong states that Ettason has distributed beverages bearing the Trade Mark in Australia since 2011.
47. There is a further discrepancy between Lam and Tong because whilst Mr Tong states that ‘Beverages offered under or by reference to the [Trade Mark] are offered for sale in retail outlets such as Coles, Woolworths, Chinese/Asian supermarkets, bakeries, convenience stores and independent retail outlets in Australia and have been for many years’ Ms Lam provides a ‘full list’ of Ettason’s customers for goods sold under the Trade Mark and these do not include Coles or Woolworths.
48. In my view these discrepancies affect the weight that the Registrar can put on either of these declarations.
49. Further, if the date of first use of the Trade Mark in Australia provided by Ms Lam (2013) is the correct one, it is at best contemporaneous with the priority date of the Trade Mark: 8 January 2013.
50. Accordingly the evidence does not establish that the Trade Mark did at the priority date distinguish the goods within the Specification or that it was capable of doing so.
51. The Opponent has established its ground under section 41 of the Act.
Decision
52. At the relevant date section 55 of the Act provided:
Decision
55. Unless the proceedings are discontinued or dismissed, 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: For limitations see section 6.
53. I refuse to register application 1534588.
Costs
54. Both parties requested their costs in this matter. Since the Opponent has been successful, it is appropriate that the Registrar award costs against the Applicant at the official scale set out in Schedule 8 to the Trade Mark Regulations 1995.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
1 August 2017
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