Wesbeam Holdings Limited

[2022] ATMO 116

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2140228 (19) - Colour: blue pantone 3015U - in the name of Wesbeam Holdings Limited

Delegate:	Louise Tuohy
Representation:	Applicant: Megan Evetts of counsel, instructed by Bennett & Co
Decision:	2022 ATMO 116 Trade Marks Act 1995 (Cth) – section 33 proceedings – s 41 – trade mark not capable of distinguishing – evidence not sufficient – trade mark application rejected

Background

1.     This decision follows from an ex parte hearing at the request of Wesbeam Holdings Limited (‘Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’) in relation to the following trade mark application:

Application Number:             2140228

Trade Mark:  

The Trade Mark is a colour mark. It consists of the colour(s) Pantone 3015U as applied to the exterior of the goods covered by the application as shown in the representation(s) attached to the application form. (‘Claimed Trade Mark’)

Filing Date:  2 December 2020

Specification:  Class 19: Laminated veneer lumber (‘LVL’) (‘Designated Goods’)

2. The application was examined as required by s 31 of the Act and grounds for rejection were raised under s 41(3) and s 44 of the Act. The first examination report issued on 11 December 2020 and raised the grounds for rejection as follows:

Section 41(3)

Your trade mark is the colour BLUE.

Colours are commonly applied to goods. For this reason, it is unlikely consumers to assume that colours identify the particular trader supplying the goods. Timber and lumber goods, such as you have claimed, are often colour coded to help identify particular features or qualities of the goods. My research indicates that the colour BLUE is commonly used by a number of traders to indicate that timber has been treated for resistance to termites. As your trade mark indicates a quality or function of your goods, it is not capable of acting as a badge of origin for your goods.

Other traders should be able to use the colour BLUE, or one so similar, in connection with goods or services similar to yours.

Section 44

Trade Mark Number: 700016

Your trade mark closely resembles the earlier trade mark [700016] because both marks claim the colour BLUE. As the earlier mark does not indicate which particular shade of BLUE they are using, there is a real and tangible danger of confusion between the marks.

AND

The goods are similar because the earlier mark's claims for flooring materials and particle board in Class 19 are similar to your claim for laminated veneered lumber also in Class 19.

3.     In support of the application the Applicant made submissions and filed the following declarations:

• Declaration of Jessie Mileto, Owner of BOM Timber, made on 8 February 2021.
• Declaration of Daryl Prothero, Managing Director of Oxley Frame and Truss, made on 8 February 2021.
• Declaration of Bruce Biddle, Trade Manager of Margaret River Mitre 10, made on 9 February 2021.
• Declaration of Conan Wheatcroft, Director of City Building Supplies, made on 9 February 2021. 
• Declaration of Andrew Cienciala, Purchasing Supervisor of Pickard Timber, made on 10 February 2021 (‘Cienciala declaration’).
• Declaration of Simon Lalor, General Manager of Franz Building Supplies, made on 10 February 2021.
• Declaration of Matt Fresser, General Manager of King Truss, made on 11 February 2021.
• Declaration of John Costa, Director of Costa’s Mitre 10, made on 12 February 2021.
• Declaration of Keith Coady, Product Category Manager of Bowens Timber & Building Supplies, made on 15 February 2021.
• Declaration of Aaron Hillman, General Manager of TrussCorp, made on 16 February 2021.
• Declaration of Stephen Thompson, Detailing and Estimating Manager of Bay Timber, made on 17 February 2021.
• Declaration of Travis Smith, Operations Manager/Director of Freeman Wauchope, made on 18 February 2021 (‘Smith declaration’).
• Declaration of David Ruddy, Regional Manager of Big River Group, made on 19 February 2021.
• Declaration of Nathan Kaminski, NSW Sales Manager of Precision Frame and Truss, made on 22 February 2021.
• Declaration of Adam Fraser, Operations Manager of Gem Frame and Truss, made on 24 February 2021.
• Declaration of John Donald, Regional Purchasing Manager of Langs Building Supplies, made on 26 February 2021.
• Declaration of Nick Steens, Senior Manager of Independent Timber Supplies, made on 4 March 2021.
• Declaration of Nikita Bourke, Accounts, Human Resources and Work Health and Safety Manager of Westruss Manufacturing, made on 8 March 2021 (‘Bourke declaration’).
• Declaration of Bob Remmers, General Manager of Major Timber, made on 12 March 2021.

(collectively the ‘Industry declarations’)

• Declaration of Denis Anglin Cullity, Managing Director of the Applicant, made on 5 July 2021 with Annexures DAC-1 to DAC-19 (‘First Cullity declaration’).

4. The examiner did not find the submissions or evidence persuasive and maintained the s 41(3) and s 44 grounds for rejection. In response to the second adverse report the Applicant made submissions and filed the following declarations:

• Declaration of Boris Iskra, National Codes and Standards Manager of Forest and Wood Products Australia Limited, made on 17 January 2022.
• Declaration of Andrew Dunn, Chief Executive Officer of the Timber Development Association of New South Wales, made on 18 January 2022.
• Declaration of Gavin Matthew, Chief Executive Officer of Engineered Wood Products Association of Australasia, made on 28 January 2022, with Annexure GM-1.

5. The examiner did not find the submissions or evidence persuasive and maintained the s 41(3) and s44 grounds for rejection. The Applicant did not respond to the third examination report, instead it exercised its right to be heard.

6. The Applicant’s written submissions only addressed the s 41 ground for rejection. In the discussion below, I have only found it necessary to address the s 41 ground for rejection in this decision. Nonetheless, should the decision be appealed, then it is open to the Applicant to plead the s 41 and s 44 ground for rejection in proceedings before the Court.

7.     The matter came before me, a delegate of the Registrar of Trade Marks on 6 June 2022. Megan Evetts of counsel instructed by David Stewart of Bennett & Co, represented the Applicant, making verbal and written submissions on its behalf and filed the following declaration:

• Declaration of Denis Cullity, made on 2 June 2022 (‘Second Cullity declaration’).

Legislative Background and Reasoning

Section 41

8. Section 41 of the Act provides:

41  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 the goods or services of other persons.

(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.

(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.

9. Section 41 must be assessed having regard to s 33 of the Act, which embodies a ‘presumption of registrability’. Section 33(3) compels the Registrar to accept a trade mark for registration unless the Registrar is satisfied that grounds exist for rejecting the application.

10. To determine the merits of the ground for rejection under s 41, the extent of the Claimed Trade Marks’ inherent adaptation to distinguish the Applicant’s Designated Goods must be assessed. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that this was to be assessed:

[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[1]

[1] [1964] HCA 55, [5].

11.     The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied. The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar goods. ^[2]

[2] [2014] HCA 48, [71], (French CJ, Hayne, Crennan and Kiefel JJ).

12.     The Applicant relies on Philmac Pty Limited v The Registrar of Trade Marks[3] (‘Philmac’) and Woolworths Limited v BP plc[4] (‘BP’) the principal cases concerning assessment of the inherent adaption to distinguish within colour trade marks. In Philmac, Mansfield J addressed the application of the test in Clark to colour trade marks as follows:

[3] [2002] FCA 1551, (Mansfield J).

[4] [2006] FCAFC 132, (Heerey, Allsop and Young JJ).

In the present case, the test in Clark Equipment demands consideration of the likelihood that other traders actuated only by proper motives might think of the sign applied for, namely the colour terracotta, and want to use it in connection with similar goods in a manner which would infringe a registered mark granted in respect of it. The concept of a properly motivated competing trader was discussed by Buckley J in Blue Paraffin Trade Mark [1977] RPC 473 at 500:

"Speaking for myself, I should describe the duty of the Registrar as this: that examining the facts he has also to survey the possible confusions or difficulties and the possible impairment of a right of innocent traders to do that which apart from the grant of the mark would be their natural mode of conducting their business."

There are, in my view three obvious respects in which the right referred to in that passage might be impaired by the registration of a mark of the type contemplated in the present case.

First, a trader might legitimately choose a colour to apply to goods to denote a meaning that that colour might ordinarily possess. For example, the concepts of hot, cold, environmentalism, danger, stop, go, communism, mourning and femininity are universally conveyed as colours. Accordingly, an application for the colour mark red applied to taps might fail to satisfy the test in Clark Equipment because the registration of such a mark would impair the right of other traders in taps from legitimately using that colour to convey the meaning it ordinarily possesses. The application would, in my judgment, be analogous to an application for registration of a purely descriptive word and the mark applied for would therefore not be inherently adapted to distinguish. That conclusion is consistent with international jurisprudence in respect of the registration of trade marks comprising colour applied to goods or parts of goods. The colour blue in relation to fertiliser pellets was precluded from trade mark protection by the United States Supreme Court because it had the utilitarian function of identifying the presence of nitrogen, and was therefore ornamentally functional: Nor-Am Chem. Co. v OM Scott & Sons Co, 44 USPQ 2d (BNA) 1316 at 1320; KL Davidson, "Supreme Court says Yes to Color, Pure and Simple: Qualitex Co v Jacobson Products" 1996 21 Dayton L Rev 855 at 861.

Secondly, a trader might legitimately choose a colour for its practical utility. That is, the colour may be a feature of a product that serves to improve the functionality or durability of the product. The function of visibility is, for example, served by the colour yellow; heat absorption by the colour black; light reflection by the colour white; military camouflage by a combination of khaki, brown and green. In the present case  Philmac 's evidence was that the colour black was ordinarily applied to polymer piping to serve the function of protecting the product from degradation through exposure to ultraviolet light. The shape mark cases properly indicate a reluctance to permit, by virtue of a trade mark registration, a permanent monopoly of matters of engineering design: Kenman per French J at [45]; Koninklijke Philips Electronics NV v Remington Products Australia Ltd [1999] FCA 816; (1999) 91 FCR 167; Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 per Jacob J; British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281. In my view there is no reason why the functionality principles applied to the registration of shape marks should not also apply to the consideration of the application of colour marks.

Thirdly, a product may be produced in a particular colour being the naturally occurring result of the manufacturing process. Terracotta is a case in point. Were the applicant to apply for the registration of the colour terracotta to terracotta roof tiles or garden pots, the effect of granting the registration would be to force on other traders a method of manufacture that would involve a departure from the "natural mode" of conducting the business of manufacturing those terracotta products.[5]

[5] [2002] FCA 1551, [51] to [55].

13.     In BP the Court observed:

Woolworths submitted that, during the relevant period, the letters " BP " and the logo with the letters "BP" surrounded by the yellow outline of a shield, had each been used as a trade mark, but not the colour green. It also submitted that, even if some of BP’s advertisements were to be regarded as using the colour green as a trade mark, BP had not established the distinctiveness called for by s 41(6) as at the relevant filing dates.

One of the difficulties with the approach of the primary judge is that one does not find any analysis expressed in the terms of s 41(6), although his Honour referred to the statutory questions posed by s 41(6) early in his reasons. The primary judge proceeded to analyse the evidence and draw his conclusions by reference to the get-up of the service stations: at [62]-[65]. Apart from those conclusions his Honour made no express finding about what had been used as a trade mark. Certainly, one can recognise the discussion of what may be a very similar issue in the United States of disaggregating get-up for the purposes of individual trade mark registration. However, s 41(6) calls for a more precise analysis. In Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525 at 548 [71], Mansfield J said that for the purposes of applying s 41(6) to a colour mark two issues needed to be addressed. The first is whether the use of the colour in the manner described in the application has, prior to the date of the application, constituted use of the colour as a trade mark. The second issue is whether the trade mark applied for does in fact distinguish the applicant’s products, having regard to evidence concerning the actual use of the colour as a trade mark. We agree with that approach. Thus, s 41(6) requires specific consideration of the extent to which BP has used each of the marks applied for as a trade mark before the date of filing and whether that use was sufficient to distinguish the designated goods and services as being those of BP: Blount v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 at 60.

In our view, there are obvious dangers in approaching these issues by reference to the get-up of the service stations. The foremost danger, perhaps, is that the inquiry will be diverted into an examination of the distinctiveness of the colour green alone, and away from the questions posed by s 41(6). That danger must be heightened where the evidence clearly showed that BP had used the colour green in ways, and as part of other trade marks, that did not correspond with the trade marks that were the subject of the applications in suit. For the purpose of s 41(6), the focus of the inquiry should be the use of the marks applied for, rather than use of colour as part of the get-up or packaging of goods generally: cf British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 302. Woolworths submitted that the primary judge was diverted in this way, and as a result incorrectly concluded that the trade marks the subject of the applications had been used by BP either at all or to such an extent that they did distinguish BP’s goods and services. We agree with this submission.[6]

[6] [2006] FCAFC 132, [80] to [82].

14.     A single colour applied to the surface of goods that are normally coloured will generally be regarded as being devoid of inherent adaptation to distinguish.[7] However, in the assessment of the inherent adaptation to distinguish of the colour blue applied to the Designated Goods in the application, I am required to consider:

[7] Trade Mark Office Manual of Practice and Procedure Part 21, 4, [4.3.1].

1. Whether another trader in LVL or similar goods might legitimately choose the colour blue to apply to their goods to denote a meaning that that colour might ordinarily possess.
2. If a trader in LVL or similar goods might legitimately choose the colour blue for its practical utility: if the colour blue may be a feature of a product that serves to improve the functionality or durability of the product.
3. Whether the blue colour of the LVL or similar goods is the naturally occurring result of the manufacturing process. 

15.     I note that in terms of the endorsement on the application makes it clear that the colour is to be applied to the exterior of the Designated Goods.

16.     In relation to the first point, the First Cullity declaration provides an account of the Applicant’s adoption of the colour blue stating:

“In or around 2004, the Applicant commenced colouring its LVL with blue dye. The purpose of this was to communicate to the market that LVL has the same hazard-resistance properties as H2 pine timber.”

17.     The Cullity declaration states that the Designated Goods are highly distinct from traditional building products such as regular timber and lumber products. LVL is an engineered wood product, in comparison timber products are manufactured by sawing rectangular sections from round logs.

18.     Before proceeding with that I will provide some background to Australia Standard 1604 series which sets out the industry standards for timber preservation required to protect timber or LVL products used in Australia from local species of decay organisms and insect pests. Treatment specifications vary depending on the environment the timber or LVL product will be placed in, the types of pest the timber or LVL product will be exposed to and its intended use. All treated timber or LVL products supplied in conformance with AS 1604 must bear a treatment brand at the time of supply which identifies the treatment plant that applied the actual treating process; the preservative used; and the hazard level. A suffix code may also be used on treated timber or LVL labels which describes the intended use of some timber or LVL products within a nominated hazard level. The hazard levels are identified by a number prefixed with the letter ‘H’. In some cases, colour coding of timber products is used, in addition to the required treatment brand, to identify treated timber for hazard levels H2, H2F and H3. The colour blue (colour coding) is only used to identify treated timber for hazard level H2F.[8]   

[8] NSW EPA website < dated 21 June 2022.

19.     Mr Cullity declares that:

a)Since 2000 H2[F] [Suffix code F for Framing] [labelled] pine timber has been ordinarily stained with a blue dye by timber manufacturers so as to readily identify it to participants in the building industry as H2[F] South of the Tropic of Capricorn pine timber.

b)The Applicant originally produced both untreated LVL and H2S [Suffix code S for LVL beams] LVL.

c)In or around 2004 the Applicant commenced colouring its LVL with blue dye. The purpose of this was to communicate to the market that LVL has the same hazard-resistance properties as H2[F] pine timber.

d)In 2008 the Applicant largely stopped manufacturing untreated LVL and manufactured blue coloured H2S as its primary e-beam LVL product.

20.     Based on the information above the blue colour applied to the Applicant’s treated H2S LVL products is not an industry requirement. However, it is an industry requirement to apply the colour blue to the exterior of treated timber products typically used for framing, south of the Tropic of Capricorn.

21.     In relation to the second and third questions, Mr Cullity declares that LVL’s natural colour is light brown and is manufactured by peeling thin strips of veneer from round logs which are then bonded together to form rectangular slabs of given thicknesses. The slabs then pass through a multi-rip saw that cuts the slabs to the finished section dimension. The individual sawn LVL lengths then pass across an inspection deck and are presented to a spray booth in batches of multiple pieces. A coating consisting of a mixture of blue dye and wax emulsion (which acts as a temporary moisture barrier) is applied on all four sides of each piece of the LVL as they pass through the spray booth. The LVL pieces are formed into packs at the finishing line of the manufacturing process. The packs are strapped, and the same blue coloured dye and wax emulsion mix is applied by paint roller to the ends of the packs. The packs are then wrapped and strapped, ready of dispatch. As such the colour blue applied to the LVL products is not a feature of LVL products that serves to improve the functionality or durability of the product, nor is it a naturally occurring result of the manufacturing process. In addition, there is no evidence before me which shows traders in timber products would choose the colour blue for its practical utility or that the colour blue is a naturally occurring result of the manufacturing process.

22.     In my assessment of the Claimed Trade Mark, I am satisfied that it has no inherent adaptation to distinguish the Designated Goods. The Claimed Trade Mark is not for treated timber products typically used for framing, south of the Tropic of Capricorn, where it is an industry requirement to apply the colour blue to the exterior of the product. However, while those in the building trade may distinguish between LVL and timber products,[9] LVL is still a wood based product and therefore similar to timber products. I believe that it is reasonable to infer that many in the building trade would perceive the colour blue as indicating products which are H2F or have equivalent treatment properties. I consider that for the same reasons as the Applicant adopted and initially selected the colour blue, other traders who wish to target the same market would have a legitimate desire and competitive need to apply the colour blue, or various deceptively similar shades of blue to their own products.

[9] Matthews declaration [5].

23.     I note that the Industry declarations state that the declarants are not aware of any other LVL manufacturer using the colour blue for their LVL products. In particular, the Cienciala, Bourke and Smith declarations state that other manufacturers of LVL products are identifiable by the use of their own signature colours, for example the colours orange or yellow. However, a recent Google search shows a New Zealand LVL manufacturer using the colour blue on the exterior of their treated LVL products, which are available for sale at different locations in Australia.[10] The Second Cullity declaration also submits evidence of a Chinese company that recently started on-selling certain blue coloured LVL products labelled E-BEAM (which is a trade mark of the Applicant). The Second Cullity declaration also states that these Chinese products are no longer available in Australia.  

[10] The product name is TERMISPAN for sale on the Megatimber website < dated 21 June 2022 and Canterbury Timbers website < dated 21 June 2022.

24.     As the Claimed Trade Mark has no inherent adaptation to distinguish, I must consider whether it had acquired distinctiveness, based on the extent of its use up to the Relevant Date. In looking at this evidence of use, I must first determine whether the Claimed Trade Mark has been used ‘as a trade mark’, and secondly, whether the extent of such use is sufficient to show that the Claimed Trade Mark acted to distinguish the Applicant’s Designated Goods from those of other traders at the Relevant Date.

Consideration of evidence

25.     In the First Cullity declaration, Mr Cullity states that the Applicant first used the Claimed Trade Mark in 2004 and it has been applied to the Applicant’s E-BEAM, E-BEAM+[F17] and E-JOIST, LVL products.

26.     The First Cullity declaration states that the approximate size of the current Australian LVL market is 260,000 cubic metres of which the Applicant supplies approximately 33%.

27.     The First Cullity declaration provides confidential sales, advertising and promotion figures for the Applicant’s LVL products which feature the Claimed Trade Mark for the financial years 2013/2014 to 2019/2020.

28.     The First Cullity declaration states that the Applicant’s website has depicted the Claimed Trade Mark since 2019. Annexure DAC-7 is an extract from the archiving service ‘Wayback Machine’ dated 23 January 2019 which contains an image of the Applicant’s Claimed Trade Mark applied to its E-BEAM product. I have reproduced the image below:

29.     The First Cullity declaration states that the Applicant attends trade shows and uses print media to promote its Claimed Trade Mark. Dated examples of press advertisements produced by the Applicant to promote its partnership with Bowens are annexed at DAC-14 and DAC-15 (dated 9 July 2020 and 17 April 2020 respectively). These advertisements feature the Claimed Trade Mark applied to the Goods. I have reproduced these advertisements below:

30.     Annexure DAC-13 in the First Cullity declaration is a copy of a brochure entitled ‘Introducing e-joist blue!’ which was emailed to customers. No emails have been annexed and the brochure is not dated. I have reproduced a copy of the brochure below:

31.     The First Cullity declaration states that the Applicant’s Goods have featured on distributor websites and have been reported in the media. Annexure DAC-16 is a copy of an article from Engineers Australia website dated 2018 entitled ‘Wesbeam Site Tour: From logs to engineered timber – the process path for Laminate Veneer Lumber’.

32.     Annexure DAC-18 in the First Cullity declaration provides a screenshot from the Applicant’s You Tube Channel, Westbeam Pty Ltd dated 18 April 2019.  The video entiteled ‘Wesbeam -Building Better Wood’ shows the Applicant’s warehouse and LVL products featuring the Claimed Trade Mark.   

33.     In the Second Cullity declaration, Mr Cullity states that as the Marketing Director of approximately 15 sales representatives, he is aware that over the course of many years they have promoted the Applicant’s LVL products by reference to the distinctive blue colour. For example Mr Cuttity states that he is aware that the sales representatives often tell customers that ‘If its blue it is Wesbeam’.

34.     The 19 Industry declarations provided on behalf the Applicant all state that they associate the Claimed Trade Mark to be the product of the Applicant and no other supplier.

35.     In my assessment of the evidence before me, I only have statements by the Applicant as to the Claimed Trade Mark’s first use which was approximatley 16 years prior to the Relevant Date. The sales figures are in the order of 10s of millions of dollars having grown significantly from 2013 and the advertising and promotion figures show substantial investment and solid growth with the Applicant commanding 33% of the market. While these figures are impressive it does not necessarily follow that the evidence is sufficient to establish that the Claimed Trade Mark does distinguish the Designated Goods as being those of the Applicant.

36.     The Applicant submits that the Claimed Trade Mark has been used as a badge of origin and draws my attention to the fact that it is shown in the Applicant’s website and advertising  brochures. However, the Applicant did not start using images of blue coloured LVL products on its website until 2019. Moreover, many of the examples provided in the Annexures are not dated and all the dated documents show the Applicant’s WESBEAM and/or device trade marks and/or its E-BEAM or E-JOIST trade marks applied to or used in close association to the goods. As such it is not clear to me that upon seeing this type of advertising material the Claimed Trade Mark would be perceived by a consumer as possessing the character of a trade mark.

37.     The only brochure or advertising documentation provided which specifically promotes or discusses the colour blue is in Annexure DAC-13 which is not dated. There is also no evidence that the Applicant’s sales representatives promote the colour blue to customers.

38.     While the Industry declarations are helpful, with all the declarants stating that they associate the blue coloured LVL products to the Applicant, these declarants constitute only a small number of wholesalers and retailers of LVL and timber products. Furthermore, LVL products are highly unlikely to be ordered or referred to by the colour blue by purchasers. They are more likely to be ordered or referred to using the Applicant’s word trade marks, or generic terms such as LVL.

39.     Overall my impression of the evidence is that the colour blue has not been sufficiently promoted as a trade mark in its own right and any distinctiveness that the Claimed Trade Mark has acquired is attributable to its use in combination with the Applicant’s WESBEAM and/or device trade marks and/or its E-BEAM or E-JOIST trade marks. In the words of Sundberg J which concerns a shape and is equally applicable to a colour:

There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone.[11] 

[11] Societe Des Produits Nestle SA v Unilever plc (n 13) 662 (Jacob J).

1. For the above reasons, I find that the evidence falls short of demonstrating that the Claimed Trade Mark distinguished the Designated Goods, under the terms of s 41(3), at the Relevant Date.

   Decision

   41. I am satisfied that there is a ground for rejecting the Claimed Trade Mark under s 41 of the Act. In accordance with s 33(3) of the Act, I reject trade mark application number 2140228.

   42.     If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application should be in accordance with the Court’s order or direction.

   Louise Tuohy
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   13 July 2022