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Unilever Plc v Beiersdorf AG

Unilever Plc v Beiersdorf AG

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Case Copied 27 March 2017 51 min read

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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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2017] ATMO 25
Decision Date: 27 March 2017

CaseChat Overview and Summary

This matter concerned a dispute between Unilever Plc (the Opponent) and Beiersdorf AG (the Applicant) before the Australian Competition Tribunal. The Opponent, through its Australian affiliate, argued that the use of the words "BLACK AND WHITE" and the anti-stain category of the relevant market had been discussed in numerous decisions in other jurisdictions. Evidence was presented regarding the Australian market for antiperspirant deodorants, where Unilever was identified as the leading player.

The legal issues before the Tribunal included whether the use of the words "BLACK AND WHITE" and the anti-stain category constituted a relevant market for the purposes of competition law. The Tribunal was also required to consider the extent to which developments in the global market for such products quickly made their way into the Australian market and influenced consumer concerns and marketing efforts.

The Tribunal considered evidence from Unilever Australia's Marketing Director, who detailed the company's extensive use of "BLACK AND WHITE" wording and imagery in the marketing of its anti-marking antiperspirant deodorant products since at least 2010. This included artwork for REXONA brand products and a significant advertising campaign launched in October 2014. The campaign specifically promoted the anti-white mark and anti-yellow stain benefits using "BLACK AND WHITE" wording and imagery across various media, including television, radio, social media, and point-of-sale materials. The Tribunal noted that the advertising consistently emphasized the product's ability to help "white stay white" and "black stay black."

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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; andthe 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.

Ratio Decidendi

Legal Principle Established

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