The Coca-Cola Company v Vitasoy International Holdings Limited

The matter before the Registrar concerned an application for registration of the trade mark "Icy" by The Coca-Cola Company, opposed by Vitasoy International Holdings Limited. The dispute centred on whether the trade mark was capable of distinguishing the applicant's goods from those of other traders, as required by section 41 of the relevant legislation. The goods in question included tea drinks and various non-alcoholic beverages and related products.

The primary legal issues for determination were whether the stylisation or "get-up" of the trade mark added sufficient inherent distinctiveness to the word "Icy," and to what extent the word "Icy" itself was inherently adapted to distinguish the specified goods. The Registrar was required to consider the ordinary signification of the word "Icy" in Australia, its potential for use by other traders, and whether the applicant had demonstrated that the mark had become distinctive through use. The relevant legislation was the Act as it stood before the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

The Registrar reasoned that the word "Icy" is directly descriptive of goods that are cold or intended to be consumed cold, and therefore lacks inherent adaptation to distinguish. The definitions from the Oxford and Macquarie Dictionaries confirmed that "Icy" can mean "extremely cold" or "cold," which is a common characteristic of beverages. The Registrar found that the stylisation of the trade mark did not sufficiently alter its identity from the plain word "Icy" such that it would not be considered a use of the plain word. Consequently, allowing registration would prevent other traders from legitimately using the descriptive term "Icy" in relation to their own cold beverages. Furthermore, discrepancies in the evidence regarding the extent and timing of the applicant's use of the trade mark in Australia meant that the applicant had not established that the mark had become distinctive by the priority date.

Accordingly, the Registrar refused to register the trade mark application. The opponent was awarded costs against the applicant.