Unilever Plc and Unilever Australia v Regal Cream Products Pty Ltd
[2011] ATMO 98
•11 October 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Unilever Plc and Unilever Australia Limited to registration of trade mark applications 1260265 and 1260269 (30) - REAL DAIRY ICE CREAM - filed in the name of Regal Cream Products Pty Ltd.
Delegate:
Heath Wilson
Representation:
Opponent: Brian Elkington of Adams Pluck, Patent & Trade Marks Attorneys.
Applicant: Celia Davies of Freehills, Patent & Trade Marks Attorneys.
Decision:
2011 ATMO 98
Section 52: Ground pressed under section 41 of the Trade Marks Act 1995 - trade marks refused under section 41(6) – costs awarded against applicant.
Background
1. On 3 September 2008 Regal Cream Products Pty Ltd (‘the applicant’) applied for the registration of two trade marks, the details of which (at that time) comprised:
TM No.
Trade Mark
Class / Statement of Goods
1260265
REAL DAIRY ICE CREAM
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago,
artificial coffee; flour and preparations made from
cereals, bread, pastry and confectionery, honey, treacle;
yeast, baking-powder; salt, mustard; vinegar, sauces
(condiments); spices; frozen dairy products including
frozen and ice confections, ice creams including cup ice
creams and cone ice creams, tub ice cream, stick-line
frozen confections and frozen dairy desserts; frozen
desserts, frozen yoghurt, flavoured frozen yoghurt;
artificial frozen dairy products including frozen
imitation cream; water ices, flavoured water ices and
milk ices
1260269
(As above).
2. Both of the applicant’s trade marks were accepted for possible registration by the trade marks examiner under the provisions of subsection 41(5) of the Trade Marks Act 1995 (‘the Act’) on the strength of the applicant’s evidence of trade mark use.
3. Following publication of these acceptances in the Australian Official Journal of Trade Marks on 9 July 2009, Unilever Plc and Unilever Australia Ltd (hereafter collectively ‘the opponent’) filed notices of opposition to both trade marks on 9 October 2009. These notices listed most of the available grounds of opposition under the Act.
4. The ensuing evidence in support from the opponent consisted of a statutory declaration by Brian Elkington of Adams Pluck, Patent and Trade Mark Attorneys dated 7 April 2010. Annexures A and B to this declaration consist of examples of the expression ‘Real Dairy’ or ‘Real Dairy Ice Cream’ used by other traders and consumers in Australia and around the world.
5. The evidence in answer comprised a statutory declaration by Kristie Keppel, senior project manager of the applicant, dated 1 November 2010. The exhibits to this declaration contain examples of use of the applicant’s trade marks, promotional materials and sales and advertising figures.
6. The opponent’s written submissions provided before the hearing pressed the grounds of opposition under sections 41 and 43. The applicant then requested its specification of goods to be amended as a matter of urgency, effectively making the opponent’s argument under section 43 redundant. The amendment was completed and the specification of goods for both of the applicant’s trade marks now reads:
Class: 30 Frozen dairy products including frozen and ice confections, ice creams including cup ice creams and cone ice creams, tub ice cream, stick-line frozen confections and frozen dairy desserts; frozen desserts
7. I was delegated by the Registrar of Trade Marks to hear the matter and did so on 16 August 2011 in Canberra. Mr Elkington appeared on the opponent’s behalf and Ms Celia Davies of Freehills, Patent & Trade Marks Attorneys appeared for the applicant.
8. Due to the amendment to the specifications of goods, Mr Elkington did not find it necessary to pursue section 43, preferring instead to rely on section 41. The initial onus for establishing a ground of opposition rests with the opponent and the relevant standard of proof before the Registrar is the balance of probabilities (Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]).
The Law
Section 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 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.
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).
Discussion
9. The initial test of the inherent adaptation of a trade mark to distinguish its goods was set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 (at 555):
The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.
10. The submissions from Ms Davies and Mr Elkington made it clear that neither party believed that the applicant’s trade marks are sufficiently inherently adapted to distinguish the relevant goods as to warrant acceptance for registration on this basis alone. To avoid any doubt, I also agree that the expression REAL DAIRY ICE CREAM (with or without the ribbon device) is not registrable based only on its inherent adaptation to distinguish. As was the case in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498, I am “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.”
11. As a consequence, the main consideration is the extent (if any) the opponent’s trade marks are inherently adapted to distinguish the designated goods. If I find they are at least to some extent so adapted then I am obliged to consider the matters indicated in s 41(5). If I find the opponent’s trade marks are not to any extent so adapted then s 41(6) applies (see Blount Inc, supra, at IPR 504).
12. Ms Davies submitted that the expression REAL DAIRY ICE CREAM does not directly define or label the applicant’s goods and the words have an advertising flavour. Ms Davies highlighted previous decisions where trade marks were found to lack any inherent distinctiveness under section 41(6) such as TROPICAL BIRCH for plants, POPPING CANDY for confectionery and THE COLLEGE OF LAW for educational and training services. The submission was that the distinctiveness of REAL DAIRY ICE CREAM is more analogous to YELLOW for telephone directories, LEAFGUARD for leaf rejecting gutters and LITTLE BUBBLES for sparkling wine, all of which were trade marks found to have a limited inherent adaptation to distinguish under section 41(5) of the Act. The applicant argues that the word(s) “REAL” or “REAL DAIRY” and the combination of the device in the second trade mark give the trade marks a scintilla of inherent adaptation to distinguish as a whole.
13. Conversely, Mr Elkington argued for the opponent that the trade marks have no inherent adaptation to distinguish and the oppositions should be determined under subsection 41(6) of the Act. In relation to the descriptiveness of the trade marks he went one step further with the proposition that REAL DAIRY ICE CREAM is so devoid of any inherent capacity to distinguish these goods that no amount of evidence would make it registrable.
14. Section 41(6) of the 1995 Act potentially allows for the registration of any trade mark, regardless of the level of its inherent adaptation to distinguish, if the applicant establishes that it had in fact become distinctive by the filing date because of the extent of its use. Acknowledging the wording of section 41(6), Mr Elkington submitted that this does not reflect the reality of the marketplace. In the ‘Caplets’ decision (Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] 30 FCR 326 at 335; (1991) 21 IPR 1 at 12,) decided under the Trade Marks Act 1955 Lockhart J commented that: “A word may be so totally descriptive of the goods concerned as to be unregistrable…” In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (at 302) Jacob J said:
There is an unspoken and illogical assumption that `use equals distinctiveness'. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word `Soap' as a purported trade mark for soap the word would not be distinctive of his goods.
15. That matter dealt with different legislation, but I note that the above paragraph was also quoted with approval when Justice Middleton considered section 41(6) under 1995 Act in the “Persian Fetta” case (Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367 (at 227)).
16. In relation to whether the word “real” (or “the element REAL”) adds any distinctiveness to the trade marks, Ms Davies highlighted a number of other trade marks on the register that incorporate the word “real” in some fashion. In most cases, those trade marks incorporate an additional element that renders the trade mark distinctive as a whole or at least capable of distinguishing. I find that the elements accompanying the element REAL in the applicant’s trade marks REAL DAIRY ICE CREAM do not perform this function.
17. In this regard, Mr Elkington referred the comments of Justice Hill in a Federal Court case involving the opponent: Unilever Australia Limited v Karounos [2001] FCA 1132; (2001) 52 IPR 361. Ms Davies correctly submits that case is not binding precedent for the registrability of the applicant’s trade marks because these trade marks (REAL and Real Fish ’n Chips), the presented evidence, and the goods for the trade marks are different from the applicant’s. Accepting all that, I find that Justice Hill makes useful observations that offer some guidance for the current matter. He said:
In contrast, the word "real" has and is only capable of having a very direct reference to the character and quality of the goods in connection with which it is used. In my opinion, the word "real" in its ordinary usage and as used in the evidence in this case, is, in the words of Lockhart J, "so totally descriptive of the goods concerned as to be unregistrable"; the Caplets case at 336.
…
In my opinion, the evidence shows that almost without exception consumers understand the word "real" to refer to the character or quality of goods, or their ingredients, as being genuine, natural, organic, healthy or the like. There was no evidence to support the proposition that the word "real", on its own, is or can be regarded as a word which provides a "badge of origin". The qualities which it implies are all qualities a manufacturer or seller of goods or services may honestly wish to attribute to their goods and services by use of the word "real" without any intention to associate its goods with those of the respondents. In fact, there was a considerable body of evidence, some of which is referred to earlier, showing such persons using the word in a descriptive sense in respect of foodstuffs.
18. The use of the word “real” in the expression ‘Real Dairy Ice Cream’ also clearly and unambiguously refers to the “character or quality of goods, or their ingredients, as being genuine, natural, organic, healthy or the like.” To my mind, the only function that the word “real” performs in this context is to specify the type of ice cream referred to, that is, ice cream made from genuine dairy products as opposed to artificial substitutes. I find that the expression ‘Real Dairy Ice Cream’ has a clear and unambiguous meaning, being ice cream consisting of genuine (or real) dairy ingredients.
19. The applicant’s further argument relates to the presence of the ribbon device in the second trade mark. There is no ‘get-up’ or stylisation in the first of the applicant’s trade marks, so this argument is only relevant to the applicant’s composite trade mark. Ms Davies argued that the ribbon adds another element of distinctiveness and referred to the comments of Hearing Officer Thompson in Freelife International Holdings LLC [2009] ATMO 45 (30 June 2009) where, in the course of finding that a stylized ‘Goji Juice’ trade mark fell under section 41(5), the Delegate said:
…I will, however, stress that this trade mark falls right at the lower end of those trade marks which may be considered under subsection 41(5) – it has the barest scintilla or spark of inherent capacity to distinguish the applicant’s goods from those of other traders. However, that glimmer, be it ever so faint, saves the trade mark from consideration under subsection 41(6).
20. I do not think the Delegate in that case was proposing that any glimmer regardless of how faint it was, would be sufficient to have the trade mark assessed under section 41(5) rather than section 41(6). It is a question of fact and degree. Obviously, different trade marks would have widely varying capacities to distinguish and must be judged on their own particular merits. I find nothing memorable in the way the words REAL DAIRY ICE CREAM are represented and the ribbon device is not sufficiently distinctive, serving only to emphasise words that are highly descriptive of the applicant’s refined specification of goods.
21. Once the initial question of whether a trade mark is to any extent inherently adapted to distinguish is answered in the negative, the onus falls on the applicant to establish that the trade mark should be registered on the strength of its use. After careful consideration, I find that both of the applicant’s trade marks should be assessed under the provisions of subsection 41(6) of the Act. Despite Mr Elkington’s submissions to the contrary, I find I must consider the evidence of trade mark use and assess whether the trade marks may be accepted under the provisions of subsection 41(6)(a).
Applicant’s Evidence of Use
22. As I have found that the applicant’s trade marks are not to any extent inherently adapted to distinguish the goods (under s41(3)), 41(6) applies and thus only trade mark use prior to 3 September 2008 is relevant for the assessment of the evidence.
23. The applicant’s Keppel declaration indicates that it has used the expression ‘Real Dairy Ice Cream’ since around 2000 in Australia in ‘plain word format’ and the composite words and ribbon device were first used in 2002. The expression ‘Real Dairy Ice Cream’ has been used continuously since that time throughout Australia. The only goods that the trade marks have been used on or in relation to are tubs of ice cream (‘the applicant’s products’) and the promotional material associated with those tubs of ice cream (e.g. grocery catalogues, point of sale advertisements and television commercials).
24. The applicant’s products have been sold via most of the major Australian grocery chains. Exhibits to the Keppel declaration consist of photographs of the applicant’s products at the point of sale in various Woolworths supermarkets across Australia. In addition, the sales figures and promotional expenditure from 2003-2010 for the applicant’s products bearing the trade marks are impressive. There is little doubt that the extent and duration of the use of the expression by the applicant is substantial. However, I find that the determinative factor for these particular trade marks is the nature of the applicant’s use in the Australian marketplace.
25. The packaging of the applicant’s products from 2006 to the current date features the word and ribbon device. On the packaging for those ice cream tubs the words “Made with Fresh Milk and Cream” appear in conjunction with “Real Dairy Ice Cream”. This labelling serves to remove any possible doubt over the actual meaning of the words ‘real dairy’. The tub packaging from 2003 and 2005 features a slightly different ribbon device, and from 2000 only the plain words appeared on the tub. On all of the packaging variations over the years the constant is that the words “Real Dairy Ice Cream” are attached to the applicant’s BULLA trade mark as seen below:
26. While the appearance of another trade mark on the same label does not necessarily prevent the words REAL DAIRY ICE CREAM from functioning as a trade mark, it is a relevant factor affecting the outcome.
27. After assessing the applicant’s evidence in totality, I am not satisfied that the nature of the applicant’s use of these highly descriptive trade marks is such that they would be seen by the Australian public as a ‘badge of origin’[1] of the applicant. I am not satisfied that they distinguish the designated goods as being those of the applicant. As a result, subsection 41(6)(a) is not satisfied and I find that the ground of opposition under subsection 41(6)(b) of the Act has been established.
[1] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107; 47 IPR 481 per Black CJ, Sundberg and Finkelstein JJ (at FCR 115; IPR 489).
Decision
28. Section 55(1) of the Act provides:
(1) 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.
29. The opponent has established a ground of opposition under the Act. The applicant is unsuccessful in this matter and I refuse to register trade mark application nos. 1260265 and 1260269.
Costs
30. Both parties sought their costs in this matter. As the opponent has been successful it is entitled to costs, which I award against the applicant as per the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995. The costs for the second opposition are to be assessed in accordance with the decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhard (2001) 53 IPR 591.
Heath Wilson
Hearing Officer
Trade Marks Hearings
11 October 2011
2
13
0