Unilever Plc v Beiersdorf AG
[2017] ATMO 25
•27 March 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Unilever Plc to registration of trade mark application 1649164 (3) BLACK & WHITE in the name of Beiersdorf AG
| Delegate: | Michael Kirov |
| Representation: | Opponent: Neil Murray of Counsel, instructed by Byron Angelopulo and Gillian Woon of Baker & McKenzie Applicant: Andrew Lockhart and Gerard Skelly of Shelston IP |
| Decision: | 2017 ATMO 25 Opposition under s 52 of the Trade Marks Act 1995: s 41 considered – trade mark not inherently adapted to distinguish the designated goods – use insufficient to establish trade mark capable of distinguishing the designated goods – registration refused |
Background
This is an opposition brought by Unilever Plc (“the Opponent”) under s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Beiersdorf AG (“the Applicant”):
Application Number: 1649164
Filing Date: 25 September 2014
Goods:Class 3: Deodorants and anti-perspirants for personal use
(“the Claimed Goods”)
Trade Mark: BLACK & WHITE (“the Opposed Mark”)
Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 12 February 2015. The Opponent filed a formal Notice of Intention to Oppose on 13 April 2015, followed by a Statement of Grounds and Particulars (“SGP”) on 13 May 2015. The Applicant filed a Notice of Intention to Defend on 4 June 2015.
For their evidence the parties rely on the following declarations made pursuant to the Act and reg. 21.6 of the Trade Marks Regulations 1995 (“the Regulations”):
Evidence in Support
▪ Stephen Francis Beale made 10 September 2015, with Annexures SFB-1 to SFB-9 (“Beale”)
▪ Jonathan David Francis McCarthy, made 11 September 2015, with Annexures JDFM-1 to JDFM-12 (“McCarthy”)
Evidence in Answer
▪ Julia Braun made 11 January 2016, with Annexures JB-1 to JB-15 (“Braun”)
Evidence in Reply
▪ Jonathon Friedrich made 15 March 2016, with Annexure JF-1 (“Friedrich”)
I heard the matter as a delegate of the Registrar of Trade Marks on 27 October 2016 in Sydney. Andrew Lockhart of Shelston IP, assisted by Gerard Skelly of the same firm, appeared for the Applicant. Neil Murray of Counsel, instructed by Byron Angelopulo and Gillian Woon of Baker & McKenzie, appeared for the Opponent. Also present as observers on the Opponent’s behalf were Jonathon Friedrich, Senior Corporate Counsel with Unilever Australia Limited (“Unilever Australia”), and Jenni Rutter of Kensington Swan Lawyers of New Zealand. Both parties’ representatives also filed written submissions, emailed to each other and to me prior to the hearing.
Grounds of Opposition and Onus
The SGP lists grounds corresponding to ss 41 and 43 of the Act and both grounds were pressed at the hearing. To succeed in its opposition the Opponent bears the onus of establishing at least one of these two grounds, with the required standard of proof being the civil standard based on the balance of probabilities.[1] I have in fact only found it necessary to address the s 41 ground in this decision and this is discussed below. Of course should the decision be appealed, it would remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach.
The relevant date for assessing the registrability of the Opposed Mark is the date the opposed application was filed, being 25 September 2014 (“the Relevant Date”).[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.
The Evidence
It is convenient to begin with an overview of the parties’ evidence insofar as it is relevant to the s 41 ground. Stephen Beale is “Trade Mark Counsel in the personal care (deodorant) segment” of the Opponent, which is part of the Unilever group of companies (referred to individually or collectively hereafter as “Unilever”). Having worked for Unilever for some 25 years he claims “considerable knowledge of the relevant market as well as of Unilever’s products.” He says that:
7. [Unilever] comprises one of the world’s leading fast moving consumer goods companies with products sold in over 190 countries. Unilever owns over 400 brands, including well-known personal care brands such as REXONA, DOVE, LYNX and IMPULSE. Under these brands, and related brands in countries other than Australia, Unilever manufactures and sells deodorant and anti-perspirant products and is a key player in the global market for these products.
8. The principal players in the global market for deodorant and anti-perspirant products are Unilever, the Applicant, Colgate-Palmolive and Procter & Gamble. …
9. The principal players in the global market, with the exception of Procter & Gamble, are also major players in the Australian deodorant and anti-perspirant market. Because of their involvement in a global market, each of these players is in a position rapidly to implement new developments and innovations which arise in any particular market across a multiplicity of brands and jurisdictions (whether these developments and innovations relate to technological matters, marketing trends, consumer behaviour, efficacy claims or otherwise). The global deodorant and anti-perspirant market is highly competitive, and the principal players in the market are aware of, and frequently respond to, developments and innovations introduced by their competitors. These factors, together with the functional nature of deodorant and anti-perspirant products, frequently result in competitors’ products sharing common themes, whether in packaging, functionality, claims, advertising and promotional materials or otherwise. In addition, Unilever, like its major competitors, seeks to ensure a measure of consistency to its branding globally, and to depart from that consistency only if and to the extent considered advisable in light of considerations in particular local or regional markets.
10. … Unilever has undertaken research and development, and devoted considerable resources, to addressing consumer concerns that use of deodorant and anti-perspirant products may result in marks or stains on clothing and, in particular, that such use may cause white marks on black clothing and yellow stains on white clothing. The attributes of products directed at these concerns are commonly referred to in the market as “anti-white mark” and “anti-yellow stain” attributes respectively. The white marks, which are most obvious on black clothing, are usually caused by the drying out of aluminium salts incorporated in antiperspirants to block and close sweat glands, and can also be caused by residues left by other ingredients in deodorants. Yellow stains, particularly noticeable on white clothing, result from a reaction between sebum secretions from the skin and the aluminium compounds in antiperspirants.
11. Tests of the efficacy of anti-white mark and anti-yellow stain claims are routinely done by Unilever on black cloths and white cloths respectively as the colours black and white are extremes of the colour spectrum.
Mr Beale annexes online or print articles which appeared in the New York Times, The Guardian (U.K.) and other media, and excerpts from website blogs, all published between mid-2009 and the Relevant Date, said to support his claim that the “marking or staining of clothing by deodorant and antiperspirant products…is a long standing consumer concern.” He also annexes pages from various websites as they appeared prior to the Relevant Date[3] said to illustrate that other traders in the Claimed Goods “commonly refer to the products’ anti-marking or staining properties.”
[3] Obtained using the website < which is a digital archive of information on the Internet created by the Internet Archive, a non-profit organization, based in the U.S.A. It contains some 300 billion web pages saved at various time intervals and is searchable via the relevant URL of interest.
Also annexed to Beale are 33 pages downloaded before the Relevant Date from the overseas websites of four traders in the Claimed Goods. Mr Beale says these show their packaging and advertising copy “frequently include[d] images of black clothing and white clothing, or references to the words BLACK and WHITE, individually or together, to indicate the anti-white mark and anti-yellow stain attributes of the products.” Images of what appear to be the two most pertinent products, Henkel’s RIGHT GUARD and L’Oreal’s GARNIER Mineral, are reproduced below:
Mr Beale says that “Unilever was the first in the global market to launch anti-white mark antiperspirant products in 2003 in the U.K. market,” being “the result of research undertaken by Unilever from as early as 1997.” He says that “products addressing the anti-yellow stain problem associated with white clothing in particular were subsequently launched by Unilever based on research begun by Unilever in or about 2000.” He says that “Unilever launched products using the words ‘BLACK AND WHITE’ or ‘BLACK + WHITE’ under a variety of brands, including REXONA, SHIELD and SURE, in a variety of markets, including Spain, South Africa and Russia prior to the [Relevant] Date.” In this regard he annexes screenshots of, inter alia, the Spanish Facebook® posts (dating from 17 May 2014) and U.K. and European Google® search results (both prior to 1 September 2014) shown below:
Mr Beale also annexes examples of “the Applicant’s use of the words BLACK &/AND WHITE outside Australia in connection with its NIVEA Invisible For Black & White product…obtained from the Applicant’s U.K. NIVEA website.”
Mr Beale concludes by saying that, “The use of the words BLACK AND WHITE and/or the anti-stain category of the relevant market have been discussed in a number of decisions in other jurisdictions.” He annexes copies of five such decisions (“the Overseas Decisions”) by:
the Office for Harmonization of the Internal Market in the E.U. dated 28 May 2013;
the Paris District Court in France dated 7 March 2014;
the Advertising Standards Authority of South Africa dated 7 January 2015;
the Advertising Standards Authority of South Africa dated 5 May 2015; and
the Advertising Standards Authority of the U.K. dated 3 June 2015.
Jonathan McCarthy is Marketing Director for the deodorants portfolio within the personal care division of Unilever Australia, the Opponent’s local affiliate. He has been with Unilever for over 10 years in senior marketing roles in Australia, Asia and the UK and previously held “various brand manager positions at Diageo UK and Diageo Russia.” He provides details of the market in the Claimed Goods in Australia, annexing statistics indicating that the Opponent is the “leading player” having had around 63.9% of the market as at August 2015. Like Mr Beale he says that:
…given the nature of the relevant market, in which the principal players in the global market are also major players in the Australian market, these players quickly become aware of developments that occur in the global market, which developments frequently make their way into the Australian market within a relatively short period of time.
He annexes copies of news articles or excerpts from social media forums which circulated in Australia between March 2009 and July 2014 said to illustrate Australian consumers’ concerns about the staining of clothing by the relevant products. Such concerns, he says, “are a key driver of research and marketing efforts undertaken by Unilever in relation to these products.” He says that Unilever Australia “has used references to BLACK and WHITE words and imagery in the marketing of its anti-marking antiperspirant deodorant products from at least 2010” and annexes examples of artwork finalized between October 2012 and September 2014 for 13 of Unilever’s REXONA brand “anti- white mark and anti-yellow stain products,” the artwork having been used on the relevant products in Australia shortly thereafter. What appears to be the most pertinent example, dated 29 October 2013, is shown below:
Mr McCarthy says that:
Unilever Australia ran an advertising campaign for the REXONA Invisible Dry Diamond antiperspirant deodorants from October 2014 to December 2014 over various forms of media. The campaign promoted the anti-white mark and anti-yellow stain benefits provided by the product by using BLACK and WHITE wording and imagery.
He then sets out in a table some details of the campaign, which involved television and radio advertisements, Facebook® posts, website promotions, posters placed on the sides and/or back of busses and a range of point of sale materials, all first published or used between 1 and 31 October 2014. Mr McCarthy includes relevant copy from the different forms of advertising in the campaign which used the words “black and white,” all of which are essentially similar. By way of illustration I reproduce below the details he provides of the relevant voiceovers (“VO”), onscreen text and imagery used in the earliest television commercial (“TVC”) broadcast in Australia on 5 October 2014 (with Mr McCarthy’s emphasis retained):
VO: For effective black and white protection, only trust the experts.
VO: Superior to other black and white antiperspirants against yellow stain.
Text: Competitive Black and White Aerosol.
VO/text: Helping white stay white.
VO/text: [And] black stay black.
Text: Trust nothing else on black + white.
Imagery: Actors shown in TVC only wear black and/or white clothing.
Unilever Australia’s October 2014 advertising campaign was obviously after the Relevant Date (25 September 2014). Mr McCarthy does however go on to say that:
On 18 June 2014, a proposal for the majority of the above mentioned advertisements was provided to me by the REXONA brand development team in the U.K. While parts of the advertisements were adapted for the Australian market between June and October 2014, the BLACK and WHITE wording and imagery described in the table above was effectively settled by Unilever Australia on 18 June 2014.
It is convenient to mention in passing Mr Murray’s submission that, to the extent the Opposed Mark’s reference to the Claimed Goods was not immediately obvious, it was in any event reasonable to infer from the nature of the copy illustrated above that Australian consumers had already been “educated” by the Relevant Date as to the significance of the terminology “black and white” in the context of the relevant goods.
In this regard Mr McCarthy also says that:
Unilever Australia ran an advertising campaign for DOVE Invisible Dry antiperspirant deodorants from July to October 2014 over various forms of media in which the tagline “tested on 100 colours” was used with the product packaging featuring an image of a black dress. The advertorial published as part of the campaign stated that the product formula “has been tested on 100 colours - black and white included”. The advertorial was published in a number of magazines such as Marie Clare, Women’s Health, Who and New Idea.
Additionally, he annexes screenshots from various third party websites as they appeared prior to the Relevant Date[4] said to illustrate that “various traders have marketed deodorant and antiperspirant products in Australia as having anti marking and anti-staining properties, using references to the words BLACK and WHITE and images of black and/or white clothing in the process.” One of these is shown below:
[4] Obtained using the website < type="1">
As Mr Beale did for the Applicant’s overseas use, Mr McCarthy also annexes examples of the Applicant’s use in Australia of “BLACK and WHITE wording and imagery to describe the anti-white mark and anti-yellow stain benefits provided by NIVEA Invisible For Black and White antiperspirant deodorants.” These comprise TVCs and print advertising broadcast or published between February 2012 and July 2014. In his submissions Mr Murray highlighted the example shown below, which apparently appeared in Men’s Health magazine on 1 May 2013, noting that, inter alia, the block of apparently descriptive copy on the left hand side ends with the sentence, “With the added benefit of keeping your black clothes black and your white clothes white, you can be sure that you will always look your best.”
Mr McCarthy says that the Applicant “similarly uses BLACK and WHITE wording and imagery [descriptively] on its Australian website ( to describe the anti-white mark and anti-yellow stain benefits provided by NIVEA Invisible For Black and White antiperspirant deodorant products.” He annexes several (essentially similar) screenshots from the website in question, one of which is shown below:
Mr McCarthy also notes that the Applicant is the owner of Australian registration 1601177, (being a protected International Registration Designating Australia), covering “Cosmetics, deodorants and antiperspirants for personal use” for the mark:
Mr McCarthy concludes by saying:
As far as I am aware, there has been no customer confusion arising from Unilever Australia’s use of the words BLACK and WHITE in connection with its REXONA and DOVE antiperspirant deodorants as such use is descriptive of the REXONA and DOVE products having anti-white mark and/or anti-yellow stain properties.
Other traders in goods similar to the [Claimed Goods] would be unduly prejudiced if the Applicant is allowed registration of the words BLACK & WHITE in respect of the [Claimed Goods]. Other traders would be hindered from being able to use the words BLACK and WHITE, either individually or together, for the sake of their ordinary signification in relation to the [Claimed Goods].
The Applicant’s evidence in answer is contained in the declaration of Julia Braun, who is “General Manager of Marketing” of the Applicant’s local subsidiary Beiersdorf Australia Limited (“Beiersdorf Australia”). Ms Braun has been with Beiersdorf Australia since 2002 and oversees “all marketing relating to the brand NIVEA and its various sub brands.” She has “worked [with the Applicant or its related companies] in the skin and personal care industry since September 1988 and believe[s] that [she has] a good understanding and knowledge of the trade marks and descriptive terms used in Australia for skin care and personal care products, including anti-perspirant and deodorant products in Australia.”
Ms Braun provides a detailed history of the Applicant since its founding some 130 years ago, from which I note the following “Milestone” for 2011 described on its website ( type="1">
She says that the Applicant:
…launched a brand of anti-perspirant deodorant internationally (including in Australia) in 2011. Now annexed and marked JB-7 [reproduced below] are some examples showing this anti-perspirant deodorant product (“Beiersdorf Deodorant”).[5] The Beiersdorf Deodorant has been promoted and offered for sale in Australia since July 2011 up until the present.
Annexure JB-7
[5] I will hereafter also use the same shorthand (“Beiersdorf Deodorant”) to refer specifically to the Applicant’s deodorant bearing the Claimed Mark, as shown in Annexure JB-7.
Ms Braun says that:
The Beiersdorf Deodorant has been sold in Australia since 2011 in a variety of different outlets located throughout Australia, including major supermarket and grocery stores, such as Woolworths and Coles, IGA and Metcash, as well as major pharmacies, such as Priceline, My Chemist, Terry White Chemists, Soul Pattinson Chemists, Chemmart, and Chemist Warehouse.
Based on my own knowledge and from enquiries I have made from sales and marketing personnel at Beiersdorf Australia, I believe that [the Applicant] and Beiersdorf Australia were the first to use the words BLACK & WHITE, BLACK and WHITE or BLACK + WHITE in combination for deodorants and anti-perspirant products or similar goods in Australia up until at least February 2012.
I note that the Beale Declaration refers at paragraph 14 to products with “anti-white mark” and “anti-yellow stain” attributes.[6] At Annexure JDFM-8 (paragraph 16) of the McCarthy Declaration various examples of products in Australia are shown, including from archived web-pages.[7] These pages show use of terms such as “Anti White”, “anti-white”, “anti-white marking”, “anti-yellow stains” and “Anti-White Marks”. These are examples showing some of the descriptive terms that have been used by other traders in Australia for this category of antiperspirant deodorant including before [the Relevant Date].
In my experience, other descriptive terms used for this category of antiperspirant deodorant are “no residue”, “anti-stain(s)”, “white mark protection”, “white mark formula”, “invisible”, “anti-white mark technology” and “anti-yellow stain technology”. Now annexed and marked JB-9 are further examples showing how these descriptive terms have been used by other traders in Australia for this category of antiperspirant deodorant. [Annexure JB-9 is reproduced in part below.]
Based on my own knowledge and from enquiries I have made from sales and marketing personnel at Beiersdorf Australia, I believe that the Beiersdorf Deodorant was the first antiperspirant deodorant (or other deodorant product) to be marketed in Australia that combined both the anti-white marking and anti-yellow staining innovation. Previously, there was only anti white marking anti-perspirant deodorant products (or other deodorant products) marketed in Australia.
[6] Paragraph 14 of Beale was summarised above at paragraph 9 of this decision.
[7] Paragraph 16 of McCarthy was summarised above at paragraph 20 of this decision.
I note that one of the 6 examples forming Annexure JB-9 is a screenshot from Unilever Australia’s website < downloaded on 27 December 2015. It is reproduced (in part) below with Ms Braun’s original highlighting (in yellow) retained, although I would point out in passing that the webpage in question also carries the copy “Help white stay white and black stay black with anti-white mark and anti-yellow stain protection.”
Ms Braun also annexes “some examples showing how retailers have referred to the Beiersdorf Deodorant in Australia.” One such example downloaded from the website < on 15 December 2015 is shown on the next page. I note that the copy on this example, (which was presumably prepared by the Applicant since the majority of the annexed examples contain similar copy regardless of the retailer), reads:
Keep your black clothes black and your white clothes white for longer with Nivea Deodorant INVISIBLE FOR BLACK & WHITE. The first antiperspirant deodorant that protects against yellow stains on white and white marks on black clothes. Nivea Deodorant Invisible for Black & White protects you and your favourite clothes, so blacks stay black and whites stay white.
Also annexed to Braun is “an example of a promotion for the Beiersdorf Deodorant in Men’s Health magazine which [Ms Braun] believe[s] was published and distributed in Australia on or about 22 July 2011.” This is shown below:
Ms Braun concludes by annexing extracts from several dictionaries showing that apart from its literal meaning the collocation “black and white” may also have “the unprompted meaning to Australians of a straightforward difference or choice depending on the context.” “To illustrate”, as she puts it, “that the term is used in this context both in marketing communications and the trade marks of other companies”, she also annexes details of several Australian and American trade mark registrations containing or consisting of the words “black and white” (or “black & white” or “black + white”).[8] It is convenient here to note that those few registered marks listed which consist only of the words in question either cover services or cover goods where such a colour combination is unlikely on the face of it to have any descriptive significance, namely liquors and spirits, tobacco and cigarettes, vitamins and minerals for use as supplements for animal foodstuffs, poker machines and hamburgers.
[8] Neither party sought to draw a distinction between the substantially identical collocations “black & white”, “black and white” and “black + white”. Since nothing turns on the issue I will accordingly refer to all variants collectively hereafter simply as “black & white” unless the context demands otherwise.
Jonathon Friedrich is Corporate Counsel for Unilever Australia and his declaration constitutes the Opponent’s evidence in reply. It is solely concerned with challenging one particular aspect of the Braun declaration, as Mr Friedrich explains:
The Applicant has referred in the Braun Declaration to its NIVEA INVISIBLE FOR BLACK & WHITE anti-perspirant deodorant products, which the Applicant has called “Beiersdorf Deodorant” in paragraph 13.
In Annexure JB-10 referred to in paragraph 19 of the Braun Declaration, the Applicant has provided examples of how certain retailers have referred to the Applicant’s NIVEA INVISIBLE FOR BLACK & WHITE products. The examples selected for Annexure JB-10 are neither comprehensive nor representative of the manner in which third parties refer to the Applicant’s NIVEA INVISIBLE FOR BLACK & WHITE products.
Mr Friedrich then annexes 13 “additional examples of how third party retailers refer to the [Beiersdorf Deodorant]” and concludes with his view that:
These examples illustrate that the Applicant’s NIVEA INVISIBLE FOR BLACK & WHITE products are commonly referred to by third parties in a manner that indicates descriptive use of the words BLACK & WHITE.
The 13 examples have been taken from the websites of The Sydney Morning Herald, Mama Mia, Woolworths, Coles, Terry White Chemists, Priceline Pharmacy and others between 2011 and December 2015. They do not to my mind differ significantly from, (albeit they reinforce), the examples of references to the Beiersdorf Deodorant by third party retailers provided by Ms Braun, which were discussed above at paragraph 30 and which apparently use the words “black and white” descriptively.
Bearing the evidence summarized above in mind I turn now to a discussion of the Opponent’s s 41 ground.
Discussion
Section 41 generally
As from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”) repealed s 41 of the Act as it then stood and substituted new wording. The opposed application was filed after this date and thus s 41 as amended is applicable in this case. Unless otherwise indicated, accordingly, all references to s 41 in this decision are to the amended section set out below:
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 goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(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.
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: For goods of a person and services of a person see section 6.
Note 3: 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 (5) and 7(3) and section 8).
(5)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).
Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a “presumption of registrability.” As was explained by Branson J in Blount Inc v Registrar of Trade Marks[9] (“Oregon”), however, prior to the Amending Act ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (“the EM”) stating at page 146:
The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.
[9] (1998) 40 IPR 498 at 505.
The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):
Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.
The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.
Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:
Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:
(a) that the [Opposed Mark] is inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Claimed Goods]; [that is, neither s 41(3) nor s 41(4) applies] or
(b) that the [Opposed Mark] is not to any extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons; [that is, s 41(3) applies] or
(c) that the [Opposed Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Claimed Goods]. [that is, s 41(4) applies]
Particulars of the Section 41 ground and the relevant issues in this case
The ground based on s 41 is particularized in the SGP as follows:
(1) Manufacturers and suppliers of [the Claimed Goods] have long recognised the importance of addressing consumer concerns that prolonged use of certain such goods may mark or stain clothing. In particular, there are concerns that such use may cause white marks on black clothing and yellow stains on white clothing. Several manufacturers have devoted considerable resources, including research and development and marketing resources, to address such concerns.
(2) For a number of years prior to the [Relevant Date], several unrelated traders in the market for the [Claimed Goods], both inside and outside of Australia, have repeatedly made claims in relation to the following features of their products when promoting those products:
“anti-white mark” - indicating that the product does not cause white marks on black clothing;
“anti-stain” - indicating that the product does not cause stains on white clothing.
Those traders have, in product packaging and advertising and promotional materials, commonly used the words BLACK and/or WHITE, black and white colour combinations and representations of black and white clothing in promoting the [Claimed Goods].
(3) As at [the Relevant Date], the words BLACK and WHITE possessed an ordinary signification related to, or an association with, the above features such that traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the words BLACK and WHITE, including in the form of the Opposed Trade Mark, in connection with the [Claimed Goods]. The expression “black and white” has become indicative of a characteristic claimed for the [Claimed Goods]: namely, that the goods do not cause marks or stains on either black or white clothing.
(4) Following from the above:
(a) the Opposed Trade Mark is not to any extent inherently adapted to distinguish the [Claimed Goods] from the goods of other persons; and
(b) the Applicant has not used the Opposed Trade Mark before the [Relevant Date] to such an extent that the trade mark does in fact distinguish the [Claimed Goods] as being those of the Applicant.
(5) In the alternative, if the Opposed Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the [Claimed Goods] from the goods of other persons, the Opposed Trade Mark does not and will not distinguish the [Claimed Goods] as being those of the Applicant, having regard to the combined effect of the following:
(i) the extent to which the Opposed Trade Mark is inherently adapted to distinguish the [Claimed Goods] from the goods of other persons;
(ii) the use, or intended use, of the Opposed Trade Mark by the Applicant;
(iii) any other circumstances.
Referring to these particulars Mr Lockhart set out in his written submissions what the Applicant (and I agree) considers are “the central issues in the opposition” as follows:
Whether the Opponent has through its evidence displaced the presumption of registrability and the Examiner’s finding that the [Opposed] Mark is registrable.
The relevant issues under the Section 41 ground are whether the term BLACK & WHITE (alone and as applied for) was, at the [Relevant] Date, according to its “ordinary signification” to the target audience in Australia, directly descriptive of the [Claimed] Goods or otherwise did not have the requisite inherent distinctiveness.
More particularly, does the Opponent’s evidence satisfy the delegate that:
(a) The ordinary signification of BLACK & WHITE to the relevant target audience at the [Relevant] Date, was as claimed in the Opponent’s [SGP], namely of deodorant and antiperspirant with the characteristic of not causing marks or stains on black or white clothing or, more particularly, of not causing white marks on black clothing and yellow stains on white clothing (hereinafter referred to as the “Double Attribute”); and
(i) The ordinary signification was, at the [Relevant] Date, directly descriptive of the [Claimed] Goods; or
(ii) This ordinary signification was such that the [Opposed] Mark did not otherwise have the requisite inherent distinctiveness at the [Relevant] Date.
The Applicant submits that the term BLACK & WHITE is inherently adapted to distinguish and, by reason of that inherent adaptation alone, the [Opposed] Mark is capable of distinguishing the [Claimed] Goods as the Applicant’s goods without evidence of use.
I note Mr Lockhart refers to two possible aspects of the Opposed Mark as being potentially problematic in terms of s 41, namely that according to its “ordinary signification” to the target audience it was “directly descriptive,” or that it “otherwise did not have the requisite inherent distinctiveness.” This harks back to the words of the majority judgment in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd[10] (“Cantarella”), where French CJ and Hayne, Crennan and Kiefel JJ said at [71], “Once the “ordinary signification” of a word … is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.” The majority observed (also at [71] and quoted in paragraph 47(c) below) that other traders might need to do so for various reasons, including such things as its geographical or surnominal significance, or its laudatory nature, or that it was a “direct reference to the character or quality” of the relevant goods. It was solely this last mentioned issue, namely that the Opposed Mark was not inherently adapted to distinguish the Claimed Goods because it referred directly to a character or quality they possessed, to which Mr Murray confined his submissions and I will do likewise in the discussion which follows.
[10] (2014) 254 CLR 337; 109 IPR 154.
In the above quotation Mr Lockhart also refers to “the target audience”. The majority in Cantarella at [59] defined this as “persons who will purchase, consume or trade in the [relevant] goods”. I will accordingly refer hereafter to this particular cohort, persons concerned with the Claimed Goods as purchasers, consumers or traders, as “the Target Audience.” As did both Mr Lockhart and Mr Murray in their submissions, I will for convenience refer to the characteristic of the Claimed Goods of not causing white marks on black (or dark) clothing or yellow stains on white (or light) clothing as the “Double Attribute”.
Inherent adaptation to distinguish
As s 41(1) indicates, the Opposed Mark must be rejected for registration if it is “not capable of distinguishing” the Claimed Goods from the similar goods of others, which s 41(2) specifies would be the case “only if either subsection (3) or (4) applies.” Whether either subsection applies depends in turn on whether, and if so to what extent, the Opposed Mark is “inherently adapted to distinguish” the Claimed Goods.
As mentioned, the EM states that the 2013 amendments to s 41 “are not meant to alter the key concept of ‘inherently adapted to distinguish’.” In this regard, as Mr Murray highlighted, Note 1(a) following ss 41(3) and (4), (which is identically worded to Note 1(a) which followed the former s 41(6) prior to the Amending Act), states:
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.
Both parties’ representatives essentially agreed (as do I) that, as Mr Murray put it in his written submissions, “the following statements of principle” are relevant:
(a) 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[11]
(b) 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).[12]
(c) [T]he consideration of the “ordinary signification” of any word or words … which constitute a trade mark is crucial, whether … 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 … is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[13]
(d) In deciding whether a word is inherently descriptive, the Court may consider evidence of the use of the word in the particular trade.[14]
(e) If a word mark is taken as an example, the ordinary signification of the mark, and the question of “whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods”[15]… are closely related questions. Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods.[16]
[Mr Murray’s original footnotes retained, with my additions in square brackets.]
[11] Clark EquipmentCo v Registrar of Trade Marks (1964) 111 CLR 511 [“Clark Equipment”] at 514.
[12] Cantarella at [59].
[13] Cantarella at [71].
[14] FH Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537 at 555 [“Barrier Cream”], cited in Telstra Corporation Ltd and Another v Phone Directories Company Australia Pty Ltd and Others (2015) 237 FCR 388 [“Yellow”] at [119]. [I note the majority in Cantarella also made the same point, citing Barrier Cream with approval, at [56]].
[15] [Being, I note, the words used by Lord Parker in Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624 at pp 634-635 and cited by Kitto J in Clark Equipment at 514.]
[16] [Yellow] at [126].
While the parties disagreed on whether the Target Audience would understand the ordinary signification of the collocation “black & white” as a direct reference to the Double Attribute when used in relation to the Claimed Goods, there was at least a consensus as to the essential, primary meaning of the words generally. In this regard both parties referred to dictionary definitions of the individual words “black” and “white” and it was not in dispute that their primary meanings were as adjectives or nouns referring to the particular “colours” commonly identified by the words in question. Neither did I understand there to be disagreement as to the primary meaning of the combination “black & white” as signifying a combination of each of the colours in question, although Mr Lockhart may in the alternative have also contemplated the combination as primarily signifying, as Ms Braun proposed in her evidence,[17] “a straightforward difference or choice”.
[17] See paragraph 32 above.
I think this alternative signification of the combination “black & white” suggested by the Applicant can be disposed of briefly here. There is nothing about deodorants or anti-perspirants that would in my view lead the Target Audience to assume such a secondary, essentially metaphorical or rhetorical, meaning was intended to be conveyed. To my mind the ordinary signification of the words “black & white” to the overwhelming majority of the Target Audience in the context of the Claimed Goods would be that of the named colours and I proceed on that basis. I would add that I must reject Mr Lockhart’s oral submission that the Opponent would need to file evidence in a case such as this of what the Target Audience in fact thought before I could satisfy myself in this regard.
That said, in maintaining that the Target Audience would not understand the words “black & white” as a direct reference to a characteristic of the Claimed Goods, Mr Lockhart submitted (with footnotes omitted):
Inherent adaptability is something which depends on the nature of the trade mark itself and is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.
The registrability of a mark must be assessed by reference to the specification of goods for which registration is sought. In this opposition the goods are deodorants and antiperspirants, not clothing or other goods.
…
It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which must be assessed.
The ordinary signification must be sufficiently widespread and generally understood by the target audience.
In Cantarella it was established by the High Court that only words that have an ordinary signification or meaning that is generally or widely understood by the target audience in Australia, to be directly descriptive will fail the registrability test. The focus on the target audience directs attention not just to whether a trade mark is used descriptively or has descriptive meanings but whether those meanings are widely understood, by consumers and by traders concerned with the goods.
Deodorant/antiperspirant is a commodity. The relevant class of consumer for the goods of this application (i.e. deodorant/antiperspirant) is most of the public in addition to all traders concerned with such goods. It is against this huge base of consumers and relevant traders that the ordinary meaning of the [Opposed] Mark (and whether it is widely understood) must be assessed.
…
Totalling up the evidences of use by other traders does not inform the statutory question of inherent distinctiveness as it starts with a consideration of other uses rather than the inherent meaning of the [Opposed] Mark and involves a type of backwards reasoning. It is unreliable, especially in this opposition where the use of other traders evidenced is after the [Relevant] Date and/or first use of the words Black and White in combination by the Applicant. It has the tendency to promote collateral inquiries as to precisely how the trader was using the relevant words, where they used [sic] descriptively, when use commenced and what prompted commencement of the use. In such circumstances, it can mean no more than the traders thought that the words Black and White in combination were commercially attractive and good ones to distinguish their goods and so, in fact amounts in this instance to evidence that the [Opposed] Mark had an inherent capacity to distinguish.
I believe the last paragraph quoted above effectively conflates two separate issues. I accept that whether words are inherently adapted to distinguish particular goods is something that is intrinsic to the words themselves. That is to say, if words are not so inherently adapted then no amount of use can alter this fact. However this does not mean that evidence of the manner in which those words are actually used by relevant traders cannot inform the questions of their ordinary signification to persons concerned with the goods and thus whether the words are inherently adapted to distinguish those goods in the first place. Indeed this is precisely what was said in cases such as Barrier Cream at 555, Yellow at [119]-[127] and Cantarella at [56]. As the Full Federal Court (Besanko, Jagot and Edelman JJ) put it in their joint judgment in Yellow at [126] (with my emphasis in bold):
If a word mark is taken as an example, the ordinary signification of the mark, and the question of “whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods” (Registrar of Trade Marks v Du Cros [(1913) 30 RPC 660] at 635 per Lord Parker) (or to note alternative formulations: such traders actuated only by proper motives “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” (Clark Equipment v Registrar of Trade Marks at 514 per Kitto J), or “a trader might without any improper motive, want to use to describe his goods” (Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 (“Burger King”) at 425 per Gibbs J (as his Honour then was), or “other traders might legitimately need to use the word in respect of their goods” (Cantarella at 20-21 [71])) are closely related questions. Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required. Burger King appears to be such a case (see Gibbs J at 425). In other cases, evidence might be called on the issue of the ordinary signification of the word mark as happened in [Barrier Cream]. Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at 543-544 [102] per Kenny J), but would be considered in light of all of the evidence in the case. It is important to note the possible dual significance of such evidence. Evidence of other traders using the word yellow or the colour yellow in connection with their print and online directories could be evidence of the ordinary signification of the YELLOW mark and of the fact that other traders might want to use the word to describe their goods or services.
It is relevant to the present matter to pause and note the significance in another respect of the words I have highlighted above. It is that use by relevant traders of a particular colour for its descriptive character could also shed light on the descriptive character of the word for that colour. In this regard Yellow concerned an application by Telstra Corporation Ltd to register the word “YELLOW” for, inter alia, print and on-line telephone directories. In their joint judgment the Full Federal Court said at [117]:
The word yellow describes a colour and, even without evidence, it would be appropriate to infer that at least some other traders might wish to use that colour. Furthermore, there was at the very least evidence in this case of not infrequent use of the colour yellow in connection with print and online directories.
The Full Court in Yellow further addressed this point at [148]-[150] of its decision:
[148] Telstra submitted that the primary judge erred by approaching the issue under s 41(3) [as it stood prior to the Amending Act] in relation to the YELLOW mark as if the application was an application for the registration of the colour yellow. …
[149] We think that there are two answers to this submission. First, we think the primary judge was well aware that the application for registration was for the word yellow. For example, he said (at [220]):
While I accept that the use of the colour yellow by other traders cannot be determinative in relation to the word yellow, in my view the use of the colour yellow and the word yellow cannot be separated as cleanly as Telstra contends. ...
[150] Secondly, the word yellow describes the colour yellow and if, as the primary judge found, the colour yellow signifies print and online directories, the word is descriptive of those goods and services. There is clearly a link between a word describing a colour and the colour itself (Cadbury Ltd v Effem Foods Ltd [2007] NZCA 303; (2007) 78 IPR 672 at 678 [27], 680 [34]).
In the present matter, as I believe my earlier summary of the parties’ evidence reveals, it is apparent several traders, (including the Applicant), were using black and white packaging and/or images of black clothing and white clothing (in addition to the words “black” and/or “white”) before the Relevant Date in order, on the face of it, to refer to the Double Attribute characteristic claimed for their deodorants and anti-perspirants. I think the fact that several traders in the Claimed Goods were using these colours and this imagery does more than merely indicate, as Mr Lockhart suggests in his above-quoted submission, that “the traders thought that the words Black and White in combination were commercially attractive and good ones to distinguish their goods.” It rather implies, to my mind, that the relevant traders believed the Target Audience would understand that the words “black & white” were apt for referring to the Double Attribute.
As to Mr Lockhart’s submission that the Target Audience includes “most of the public in addition to all traders concerned with [the Claimed Goods]” and that, “It is against this huge base of consumers and relevant traders that the ordinary meaning of the [Opposed] Mark (and whether it is widely understood) must be assessed”, it is relevant here to add that the Full Court in Yellow said at [127]:
A consideration of what persons in the trade or other traders might want to do includes, at least in the ordinary case, a consideration of the views of consumers of the relevant goods or services because the perceptions of traders in goods and services will be based on, or strongly influenced by, the perceptions of the consumers of those goods and services.
Noting that the key issue to be decided was whether the words “black & white” were, as the majority in Cantarella put it at [59], “a ‘direct reference’ to the relevant goods (prima facie not registrable) or … a ‘covert and skilful allusion’ to the relevant goods (prima facie registrable),” Mr Lockhart went on to submit (with footnote omitted):
The [Opposed] Mark must be considered as a whole, rather than by its constituent parts, and then assessed whether (according to its ordinary signification at the [Relevant] Date) there is a direct reference to the character or quality of the goods.
It has never been a requirement that a mark be absolute[ly] meaningless and an indirect reference to the goods does not disqualify a trade mark from registration.
In his oral submissions at the hearing Mr Lockhart supplemented the above quoted submission by referring to Effem Foods Pty Ltd v Unilever plc,[18] a decision in 2000 in which the Deputy Registrar considered the trade mark SIZZLE & STIR was prima facie capable of distinguishing a range of goods in Classes 29 and 30. Mr Lockhart suggested that the decision illustrated the combination “SIZZLE & STIR” was significantly different in terms of its registrability from the arguably descriptive words “sizzle” and “stir” in isolation. I do not however agree that this issue was critical to the applicant’s success in that case. Rather, there the opponent had relied on evidence gleaned from the Internet which the Deputy Registrar agreed with the applicant’s attorney was “nothing more than a collection of cooking references which show that the words ‘sizzle’ and ‘stir’ do occur and are sometimes found in close proximity to each other”, (albeit there being “no instance, however, of the words appearing together in the phrase ‘sizzle & stir’ or ‘sizzle and stir’”). Significantly, however, whereas the words in question, whether individually or in combination, alluded to the relevant goods and would be “readily comprehended by ordinary English users,” the Deputy Registrar agreed that they were not apt for their normal description (and were accordingly not a direct reference to them).[19]
[18] [2000] ATMO 131.
[19] See American Screw Co.’s Appn. [1959] RPC 344 at 346.
I do not think the position in the present matter is analogous. The evidence here satisfies me that both the Applicant and other traders in the Claimed Goods were using the individual words “black” and “white,” and/or their combination, for the sake of their ordinary signification, to refer directly to a key characteristic of the goods prior to the Relevant Date, as the examples in Beale reproduced in paragraphs 9 and 10 above illustrate. As mentioned, the evidence indicates other traders were also using the actual colours black and white on their packaging and in their advertising for the same reason. I also accept Mr Beale’s unchallenged evidence that, “Tests of the efficacy of anti-white mark and anti-yellow stain claims are routinely done by Unilever on black cloths and white cloths respectively as the colours black and white are extremes of the colour spectrum.” In this regard I believe there is force in Mr Murray’s submission that there being no monopoly in the Double Attribute itself, a monopoly in what appears to be its normal description should not be granted lightly.
It is no answer to say, as Mr Lockhart put it, “the goods are deodorants and antiperspirants, not clothing or other goods” (and thus as I understand his submission that the words “black & white” are merely a skilful allusion to the goods). As Mr Murray emphasized, ss 41(3) and (4) are concerned with, inter alia, reference to a characteristic of the relevant goods as much as to the goods themselves. Moreover, he added, a partial description is enough, as Gibbs J indicated in Burger King (WHOPPER for hamburgers) at 425:
“Whopper” is an ordinary English word. Although, as I have said, it can be used in a number of different senses, when applied to a hamburger sandwich it can naturally only be understood as having one meaning, namely, that the hamburger sandwich is uncommonly large. That would not be a peculiar or unfamiliar use of the word and it would indeed appear on the evidence that it is the meaning in which the applicant wishes it to be understood. The word so applied would clearly, in my opinion, be descriptive; it would not give a complete description of the goods but would describe one of their characteristics, namely, their size.
For the sake of completeness I mention three general criticisms raised by Mr Lockhart of the evidence obtained by the Opponent via the Internet. The first was that it “amount[ed] to a trawl through the internet to dredge up whatever can be found” and was accordingly “inherently unreliable and likely to mislead about the true state of affairs because it amounts to just cherry picking.” The second was that the material obtained via the website < (also known as “the wayback machine” and referred to hereafter as “the WM search engine”) was “inherently unreliable” given three Federal Court judges had apparently considered this to be the case in matters before them. The third was that, “The uses alleged on the foreign websites in the Opponent’s evidence are relatively recent (i.e. close to the [Relevant] Date)” and “don’t say anything about what was known by the target audience in Australia” because there is no evidence before me as to whether or how often the websites were visited by Australians. As explained below, I do not consider any of these criticisms are significant in the circumstances of the present opposition.
As to the first matter, I note that the Opponent’s evidence includes some 500 pages of annexures, obtained from a very wide range of sources (albeit via the Internet in most cases), including material from Unilever’s websites, from the websites of several other traders in the Claimed Goods and from the websites of the Applicant itself. It does not at all have the character of “cherry picking” in my opinion. Rather, the material in evidence strikes me as being comprehensive and to the point as far as enabling a fair assessment of the manner in which the Applicant and a significant number of other traders in, and purchasers or consumers of, the Claimed Goods refer to the Double Attribute.
Mr Lockhart’s second criticism, concerning the reliability of material obtained via the WM search engine, relies on comments by Flick J at first instance in E & J Gallo Winery v Lion Nathan Australia (Pty) Ltd[20] (“Gallo”), by Greenwood J in King Par LLC v Brosnan Golf Pty Ltd[21] (“King Par”) and by McKerracher J in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4)[22] (“Harcourts”). I note that in none of these cases was the evidence obtained via the WM search engine considered determinative and the comments by the judges concerned were in that regard in the nature of obiter dicta.
[20] [2008] FCA 934. Flick J’s decision was upheld by the Full Federal Court but subsequently overturned by the High Court, which did not address the reliability of the WM search engine.
[21] [2014] FCA 795.
[22] [2016] FCA 138.
Moreover Flick J’s comments in Gallo (at [123]-[130]) indicate his Honour saw the admissibility of historical brochures obtained via the WM search engine as being problematic in that case principally because of “the hearsay nature of the representations contained within those brochures and the failure to satisfy the requirements of s 69(1) and (2) [of the Evidence Act 1995 (Cth)].” Although it was accordingly “unnecessary to resolve” the issue further, Flick J does not appear to me to be suggesting that the reliability of the search results in question was because of some deficiency of the WM search engine. Rather, he believed the evidence so obtained “was open to serious doubt” because some of the documents found (which he quotes and which are on their face obviously incomplete drafts unlikely to have been publicly circulated) “raised questions as to who it was that recorded the information and how accurately that task was undertaken.”
In King Par at [133]-[139] Greenwood J discusses technical aspects of the WM search engine, concluding (with his Honour’s original emphasis retained) that “the date assigned by the archive website to the particular website stored in the archive, is a date applicable to the HTML file, that is, the hyper text markup language, but not to image files linked to the HTML file. Thus, images that appear on a particular page may not have been archived as at the same date as the HTML file.” Later (at [168]-[169]) he makes it clear that he does “not rely upon any of the images [so obtained] as [he] cannot be satisfied as to the accuracy of the dates of archive of those images on any of the websites to which they are attributed by the WM search engine.” However his Honour is “satisfied that all of the textual references in the form of HTML pages…on the websites searched using the WM search engine are consistent with a pattern of other conduct of use and thus represent reliable indications…of the way in which the particular archived HTML webpages appeared on the nominated dates.”
In Harcourts (at [187]) McKerracher J acknowledged the concern Greenwood J had in King Par regarding the possible unreliability of the date images obtained via the WM search engine appeared on a particular website. Indeed, he accepted a submission that, “the pages on Archive.org [the WM search engine] could be unreliable where the archived records are incomplete” (at [195]). Like Greenwood J, however, he went on to say (at [195]), “But I also find that in this case there was other plausible secondary support for the usage of the [relevant material] at the [relevant website] during the [claimed] period.”
In the present matter I am likewise satisfied that there is plausible, (and abundant), secondary support for the evidence obtained by the Opponent using the WM search engine, which forms a very small proportion of the evidence as a whole. This includes relevant references or advertisements which appeared in dated newspapers and magazines and social media posts, time specific searches using the Google® search engine, several of the Overseas Decisions and the Applicant’s own evidence, much of which material was highlighted in my earlier summary. In my estimation this material alone is sufficient to indicate how the Target Audience was and is likely to understand the words “black & white” in the context of the Claimed Goods. I also note the more general point made by Mr Murray that the Registrar is not bound by the rules of evidence, (a reference I understand to reg. 21.15(4) of the Regulations), and that I might in principle give what weight to the material obtained via the WM search engine that I consider reasonable in the circumstances.
Nor do I find significant in this case the Applicant’s third criticism of (some of) the Opponent’s Internet based evidence, namely that it was “relatively recent (ie close to the [Relevant] Date)” and came from “foreign websites” which may or may not have been visited by Australians. Contrary to the Applicant’s claims I consider there is sufficient evidence of relevant usage of the words “black” and “white” individually and in combination, and of black and white packaging and imagery, prior to the Relevant Date and both overseas and locally, for me to assess the degree to which the Target Audience in Australia was likely to have understood their significance as referring to the Double Attribute. I believe this would be particularly the case as far as other traders in the Claimed Goods (including the Opponent) are concerned and I agree with Mr Murray that the evidence indicates the “conditioning”, as he put it, of consumers in this regard commenced well before the Relevant Date.[23]
[23] Each of the separate judgments by the Full Federal Court (Davies, Burchett & Lehane JJ) in Powell v Glow Zone Products Pty Ltd (1997) 39IPR 506 also appears to me relevant in this case.
Moreover I accept Mr Beale’s evidence that the Claimed Goods are fast moving consumer items in a global market in which a relatively small number of manufacturers (including the Applicant and the Opponent) dominate and which is characterized by intense competition. I accordingly agree with Mr Murray that evidence of activity beyond Australia’s shores is relevant in a case such as this because, as he put it in his written submissions referring to Beale:
New developments and innovations that arise in any particular market can be implemented rapidly across multiple brands and jurisdictions. The principal players are aware of, and frequently respond to, developments and innovations introduced by competitors. These factors, combined with the functional nature of the [Claimed] Goods, means that competitors’ products often share common themes in packaging, functionality, claims, advertising and promotional material. Unilever, like its competitors, seeks to ensure a measure of consistency to its branding globally.
Turning now to Mr Murray’s submissions more generally, after a comprehensive review of both parties’ evidence he indicated that the Opponent’s “primary submission” was that the Opposed Mark contained no inherent adaptation to distinguish the Claimed Goods. He continued:
Alternatively, if the [Opposed] Mark is, to some extent, but not sufficiently, inherently adapted to distinguish, the [Opposed] Mark does not and will not distinguish the [Claimed] Goods as those [of] the Applicant having regard to the extent to which the [Opposed] Mark is inherently adapted to distinguish, the use, or intended use, of the [Opposed] Mark by the Applicant and any other circumstances.
The evidence outlined above demonstrates conclusively that “other persons, trading in [the Claimed Goods] 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 connection with similar goods”. The ordinary signification of the words “BLACK” and “WHITE”, including in combination, in the context of the [Claimed] Goods is that they will not leave marks on such coloured clothes. They were so used in a descriptive sense by multiple suppliers of the [Claimed] Goods before the [Relevant] Date. Indeed it is how the Applicant uses those words, as confirmed on its packaging, in its marketing materials and in the articles describing the process by which the INVISIBLE FOR BLACK AND WHITE products were developed.
The market evidence establishes that: (a) the term “BLACK AND WHITE” is descriptive in the context of deodorants and antiperspirants that are intended to be used with, and will not stain, black and white clothing; and (b) the Applicant has recognised the descriptive nature of the term in the marketing of its own product.
The [Opposed] Mark should be rejected under s 41.
I agree with Mr Murray’s assessment of the evidence. As I have already said, I think it demonstrates that traders in the Claimed Goods had for some time before the Relevant Date used the words “black” and “white” (including in combination) for the sake of their ordinary signification to refer to the Double Attribute and that they have likewise used black and white packaging and imagery for their relevant products for the same reason. Indeed, the evidence satisfies me that the Applicant itself has consistently done so for many years in relation to the Beiersdorf Deodorant.
I am accordingly compelled to conclude that the Opposed Mark is not to any extent inherently adapted to distinguish the Claimed Goods in terms of s 41(3) and that it is not therefore prima facie capable of distinguishing those goods. If I be wrong in this assessment and it is thought the Opposed Mark contains at least some minimal inherent adaptation to distinguish the relevant goods, then I would add that the distinction is of no consequence in this case in any event. As discussed below this is because the evidence of use, intended use or other circumstances that might in principle be relied upon under s 41(4) is insufficient to satisfy me the Opposed Mark does or will distinguish the Claimed Goods, let alone that because of its use before the Relevant Date the mark did in fact then distinguish them as required by s 41(3). That said, there is no evidence in this case of the Applicant’s intended use, or of any other relevant circumstances going to s 41(4). What evidence of actual use there is of the Opposed Mark before me is discussed below.
Evidence of use
As Ms Braun explains in her declaration the Applicant uses the Opposed Mark in Australia and elsewhere in the world in relation to an anti-perspirant product sold under its NIVEA house brand, which for convenience she refers to as the Beiersdorf Deodorant. She says the Beiersdorf Deodorant was launched “internationally (including in Australia) in [July] 2011”, being just over three years before the opposed application was filed. Ms Braun does not mention any pre-launch advertising. While she does say the product “has been sold in Australia since July 2011 in a variety of different outlets”, she does not provide any information as to the volume of sales or of any amounts that may have been spent on advertising or promoting it. What the evidence does nevertheless clearly indicate is that the Opposed Mark has always appeared on the packaging of the Beiersdorf Deodorant as shown in Annexure JB 7 to Braun (see paragraph 27 above). For ease of reference examples are set out below:
I note that not only do the words of the Opposed Mark appear exclusively on the Applicant’s packaging in the form and as part of the longer phrase “INVISIBLE FOR BLACK & WHITE”, their descriptive significance is reinforced, as Mr Murray highlighted, by their placement next to representations of black and white clothing and with copy including the words “no white marks”.
As with its packaging, the Applicant’s advertising for the Beiersdorf Deodorant is likewise replete with descriptive use of the words “black” and “white,” and their combination, referring to the Double Attribute. The Applicant’s advertisements published in Men’s Health magazine in Australia in July 2011 (headed “Black & White PROTECTED”) and May 2013 (headed “Keep it Black & White”) shown in paragraphs 31 and 21 above respectively are obvious examples. Apart from the direct references to the Double Attribute in their headings, as mentioned earlier these advertisements also include descriptive copy such as, “With the added benefit of keeping your black clothes black and your white clothes white, you can be sure that you will always look your best” along with imagery of black and white clothing. The screenshot of the Applicant’s website < provided by Mr McCarthy and reproduced at paragraph 22 above further illustrates this pattern of use.
I think that the evidence summarized earlier speaks for itself in this regard and I do not believe it is necessary to itemize all of the many further examples of use of this kind which Mr Murray highlighted at the hearing. In short, the manner in which the Applicant has apparently used the collocation “black & white” is not in my view likely to have rendered the Opposed Mark distinctive of the Claimed Goods by the Relevant Date.
Decision
Section 55(1) of the Act relevantly provides that, 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.
I have found the opposition to be successful on the ground raised pursuant to s 41 of the Act. I accordingly refuse to register trade mark application number 1649164.
Costs
In the event of success Mr Murray requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.
Michael Kirov
Hearing Officer
Trade Marks Hearings
27 March 2017
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