Beiersdorf AG v Univlever Plc
[2019] NZHC 44
•30 January 2019
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE
CIV-2017-404-001769
[2019] NZHC 44
BETWEEN BEIERSDORF AG
Appellant
AND
UNILEVER PLC
Respondent
Hearing: 23 October 2018 Appearances:
L Carter and C Fleetwood-Smith for the Appellant J Rutter at commencement of hearing only
Judgment:
30 January 2019
JUDGMENT OF HINTON J
This judgment was delivered by me on 30 January 2019 at 4.30 pm pursuant to Rule 11.5 of the High Court Rules
…………………………………………………………………… Registrar/Deputy Registrar
Solicitors:
AJ Park Law Ltd, Auckland Kensington Swan, Auckland
BEIERSDORF AG v UNILEVER PLC [2019] NZHC 44 [30 January 2019]
[1] The appellant appeals against two decisions of Assistant Commissioner Glover dated 6 July 2017, upholding the respondent’s opposition to the appellant’s New Zealand trade mark application 1005360 BLACK & WHITE.
Introduction
[2] The appellant originally applied on 18 September 2014 for the trademark BLACK & WHITE to be used in relation to “deodorants and anti-perspirants for personal use”.
[3]IPONZ1 accepted the application, and the respondent opposed it.
[4] The Assistant Commissioner allowed the opposition on the following grounds under the Trade Marks Act 2002 (the Act):
·The BLACK & WHITE mark has no distinctive character – s 18(1)(b).
·The BLACK & WHITE mark consists only of signs or indications that may serve, in trade, to designate the kind, intended purpose or other characteristic of the relevant goods – s 18(1)(c).
[5]The appellant says the Assistant Commissioner erred in both findings.
[6] The respondent filed submissions for the appeal. However, at the commencement of the hearing, it advised that, having entered into a settlement agreement with the appellant, and without withdrawing its submissions in opposition, it did not intend to take any further substantive steps. I allowed the respondent counsel’s request to move to the back of the Court.
[7] This makes for an awkward appeal, especially on a matter of this nature. I have not had the benefit of the respondent’s assistance in teasing out the issues relevant to this judgment, and yet the appeal is still opposed. Some of the issues I consider to be a little different to those advanced by the appellant. I am also not aware of the
1 Intellectual Property Office of New Zealand.
terms on which the parties have settled. This is not entirely optimal in that, at least in theory, the parties may have agreed that the respondent’s usage of the term “BLACK & WHITE” will be unaffected, while, if registration is granted, other participants might be excluded from what might be considered to have become a duopoly of usage rights. However, it is not my function to seek to avoid that outcome.
[8] I do note that, if it becomes relevant, the appellant should not be prejudiced by the way in which the appeal has proceeded.
[9] I also note Gault J’s comment in Mainland Products Ltd v Bonlac Foods (NZ) Ltd:2
While care must be taken not to extend unduly the ambit of protection of registered marks which are known words with meanings suggestive of relevant goods or services, care also must be taken to prevent erosion of the distinctiveness of a good trade mark by competitors with strategic motives claiming descriptive use.
[10] This appeal is by way of re-hearing of the issues on appeal.3 I must come to my own view on this appeal while having due regard to the opinion of the Assistant Commissioner, because of her position as an expert adjudicator.4
The Assistant Commissioner’s decision
[11] In relation to s 18(1)(b), the Assistant Commissioner decided that the BLACK & WHITE trade mark has no distinctive character, principally for the following reasons:
·Despite the mark not being descriptive on its face, this was not dispositive of the distinctiveness issue.
·The respondent’s or other traders’ use of black and/or white clothing imagery, the colours black and white, or the BLACK & WHITE mark, meant other traders are likely to want to use the BLACK & WHITE
2 Mainland Products Ltd v Bonlac Foods (NZ) Ltd [1998] 3 NZLR 341 (CA) at 351.
3 High Court Rules 2016, r 20.18.
4 Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141; and
New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115 (CA).
trade mark in relation to deodorant or anti-perspirants with anti-marking or anti-staining qualities or as a description.
[12] In relation to s 18(1)(c), the Assistant Commissioner decided that the BLACK & WHITE trade mark was a description of the kind, intended purpose, or other characteristics, of deodorants with anti-staining or anti-marking qualities, for the same reasons as above.
[13] The Assistant Commissioner did not accept three other opposition grounds, which I do not need to consider.
[14] The Assistant Commissioner declined to register the trade mark on the s 18(1)(b) and (1)(c) grounds.
The relevant provisions
[15] The following are the two most relevant provisions of the Act, and I think it helpful to set them out now:
13 When trade mark registrable
(1)If all the requirements set out in subsection (2) are met, a trade mark is registrable under this Act in respect of the following:
(a)particular goods or services within 1 or more classes:
(b)particular goods and services within 1 or more classes.
(2)The following requirements must be met:
(a)an application for the registration of the trade mark must be made in accordance with this Act:
(b)all prescribed fees, if any, must be paid in respect of the application:
(c)the Commissioner must be satisfied that there are no absolute or relative grounds set out in this Part that would prevent the registration of the trade mark.
18 Non-distinctive trade mark not registrable
(1)The Commissioner must not register—
(a)a sign that is not a trade mark:
(b)a trade mark that has no distinctive character:
(c)a trade mark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services:
(d)a trade mark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.
(2)The Commissioner must not refuse to register a trade mark under subsection (1)(b), (c), or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character.
[16] Section 18 forms part of a group of “absolute grounds”, being grounds where the Commissioner is prohibited from registering a trade mark. A subsequent subpart sets out “relative grounds” for non-registration, where registration is discretionary, or possible with consent of third parties.
The issues on appeal
[17]The appellant states the issues on appeal in the following way:
·Does the BLACK & WHITE trade mark have a distinctive character – s 18(1)(b)? (Given the wording of s 18(1)(b), this issue should more properly be stated: Does the BLACK & WHITE trade mark have no distinctive character? However, little may turn on this.)
·Does the BLACK & WHITE trade mark consist only of signs or indications that may serve, in trade, to designate the kind, intended purpose or characteristics of deodorant and anti-perspirants for personal use – s 18(1)(c)?
Preliminary observations
Relevant date for determination
[18] The relevant date for determining whether the mark should be registered is the date on which the trade mark application was filed, namely 18 September 2014. I will refer to this as the application date. For reasons that will become clear, I consider this to be an important factor.
[19]In this respect, the Assistant Commissioner said:
I accept, though, that the assessment under s 18 of the Act is forward-looking, and so evidence of events after September 2014 may also be of assistance to inform the position as at that date. The crucial question is the inherent potential of the mark to serve as a distinguishing feature.
[20] While I do not disagree with this, there must still be evidence of the “position” as at the application date.
Assessment of New Zealand circumstances
[21] Section 18 requires an assessment, not of global circumstances, but of circumstances that pertain in New Zealand.5 Of course, circumstances overseas may be shown to have impacted upon circumstances in New Zealand but, unless that is put into evidence, then those overseas circumstances are of minimal or no relevance to the issue before me. Again, I consider this to be an important factor.
[22] I note here that the issue before me is not unique to New Zealand. The respondent has provided evidence to the effect that other jurisdictions have declined registration in similar circumstances, and the appellant has provided evidence to the effect that registration has been granted elsewhere. Given what I have said, I consider evidence of this nature to be of limited assistance here, again unless there is a clear evidentiary link to circumstances in New Zealand.
5 See “Cycling IS …” Trade Mark Applications [2002] RPC 37 at [58] as summarised in the IPONZ Trade Mark Act 2002 Practice Guidelines (online ed) “Section 18: Absolute grounds distinctiveness” at [3.2.3]; adopted in Intellectual Reserve Inc v Sintes [2009] NZCA 305, [2014] NZAR 556 at [48]; and in AA Insurance Ltd v AMI Insurance Ltd [2012] 1 NZLR 837 (HC) at [25].
[23] I note also in this context that it appears from the evidence that the parties to this appeal are two of the four major global companies in the deodorant/anti-perspirant market. The anti-staining characteristics of product offerings had, prior to the application date, at least overseas, been a major area of focus and an obvious battleground for at least the appellant and respondent. If the weight of evidence is indicative, the battle may have been principally between them, with the other major suppliers being less engaged.
[24] I also note that one of the other major suppliers is evidently not involved in the New Zealand market and the other, although involved in the New Zealand market, is not involved in the present challenge to the proposed registration.
Onus
[25] Where does the onus lie on an opposed trade mark application? There is no clear law on the point, but it is relevant here because of my view of the evidence, or shortage of it.
[26] I note that it is not always appropriate or necessary to fit the usual principles of onus/burden of proof into trade mark application processes. For example, initial applications do not seek to justify distinctiveness. Rather, it is left to the adjudicator or subsequent opponents to claim non-distinctiveness, at which stage the adjudicator seeks the views of the applicant (and the opponent, if applicable), and makes his or her final decision.
[27] Under s 43 of the Act, the Commissioner must reject an application if, within the time specified by the Commissioner, the applicant does not satisfy the Commissioner that the applicant has complied with the requirements in the Act for registering a trade mark. Kerly’s Law of Trade Marks does not note any case law in this respect. However, the editors record the UK Registry’s view that the overall effect of their equivalent of s 43 is that the adjudicator is required to make a judgment about
whether registration should be allowed, but that there is no overall onus to be discharged, one way or the other.6
[28] Kerly also notes that there is no overall onus on the applicant in opposition proceedings and that, where the opponent raises objections in the form of relative grounds for refusal of registration, the opponent must make them out.7 The grounds contended for before me are absolute grounds, not relative, but there is no indication that the approach should differ.
[29] I consider I should proceed on the basis that, at least where a mark is distinctive on its face, an opponent should put up some evidence of non-distinctiveness for an applicant to rebut.
The first issue on appeal – does the BLACK & WHITE trade mark have no distinctive character? – s 18(1)(b)
“Distinctiveness”
[30] Section 5 of the Act defines a trade mark as “any sign capable of being represented graphically and of distinguishing the goods or services of one person from those of another person”. The word “distinguishing” mirrors “distinctiveness” in s 18, and the cases draw no distinction between the two terms.8
[31] It is generally accepted that “distinctiveness” is a similar, if not identical concept in many jurisdictions, particularly in New Zealand, the UK (especially before European law was relevantly embraced) and Australia.9
[32] A mark is distinctive if it is capable of denoting the origin of a product, and thus of distinguishing the goods or services from those of other traders/suppliers.10
6 James Mellor and others Kerly’s Law of Trade Marks and Trade Names (16th ed, Sweet & Maxwell, London, 2018) at [7-050].
7 See “Audi-Med” [1998] RPC 863 as cited in Kerly’s Law of Trade Marks at [7-127].
8 Given the language of s 5, strictly speaking, the submissions should not refer to the mark as a trade mark, but I proceed on the same basis that counsel have.
9 AA Insurance Ltd v AMI Insurance Ltd [2012] 1 NZLR 837 (HC) at [41].
10 AA Insurance Ltd v AMI Insurance Ltd, above n 5; see Procter & Gambill Co v Office for Harmonisation in the Internal Market [2002] RPC 17 [BABY DRY Trade Mark] at [32]–[33]; and see generally Kerly’s Law of Trade Marks, above n 6, at [10-017].
This defining language from case law is consistent with the definition of “trade mark” in s 5.
[33] The essential premise of denoting origin was expanded upon by Lord Parker in Registrar of Trade Marks v W & G du Cros Ltd, which most Courts adopt as the best approach to an assessment of distinctiveness:11
“Distinctive” is defined [in s 9(5) of the English statute] as meaning “adapted to distinguish the goods of the applicant for registration from the goods of other persons.” … In my opinion, in order to determine whether a mark is distinctive it must be considered quite apart from the effects of registration. The question, therefore, is whether the mark itself, if used as a Trade Mark, is likely to become actually distinctive of the goods of the person so using it. The applicant for registration in effect says, “I intend to use this mark as a trade mark, i.e., for the purpose of distinguishing my goods from the goods of other persons,” and the Registrar or the Court has to determine before the mark be admitted to registration whether it is of such a kind that the applicant, quite apart from the effects of registration, is likely or unlikely to attain the object he has in view.
[34] While the above is the ratio of du Cros, Lord Parker went on to provide “guidance” that many subsequent Judges have found helpful:12
The applicant’s chance of success in this respect must, I think, largely depend upon 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.
[35]Du Cros has without doubt been accepted in New Zealand.13
[36] The respondent’s written submissions rely heavily on the words “others may legitimately desire to use”, words that are themselves paraphrased from Lord Parker’s guidance, as if this were some sort of test or further hurdle that applicants must overcome. I am not persuaded that is the case. It seems to me also that the “guidance” should not be the subject of over-literal application. Many competitors would desire to use a successful mark, or something similar to it, and that may not result from “improper motives”.
11 Registrar of Trade Marks v W & G du Cros Ltd [1913] AC 624 (HL) at pp 634–635.
12 At 635.
13 See Intellectual Reserve Inc v Sintes, above n 5, at [22]; McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA) at [15]; and AA Insurance Ltd v AMI Insurance Ltd, above n 5, at [21].
[37] Lord Parker himself provided further guidance, which has, perhaps unfortunately, had less profile subsequently. He specifically singled out “names (unless represented in some special manner), and descriptive words”, as being marks which “others may legitimately desire to use”.14 These are marks that trade mark law has traditionally declined to protect and I consider it was marks of this nature which Lord Parker had in mind, when referring to improper motives.
[38] Consistent with that reading, I note that Kerly refers to the UK equivalent of our s 18(1)(c) as being designed “to prevent the registration of signs which are descriptive … [and] which honest traders either use or may wish to use without any improper motive”.15
[39] I will therefore consider the distinctiveness or non-distinctiveness of the BLACK & WHITE trade mark by considering whether that trade mark was capable of denoting the origin of the product, in New Zealand and as at the application date.
No evidence of double attribute claim
[40] In the absence of evidence to the contrary, on its face, the trade mark BLACK & WHITE is distinctive (or there is no basis on which I could find it non-distinctive), and no one suggests otherwise. As the Assistant Commissioner said, considering the market on its own, assuming no use, the mark is capable of distinguishing the origin of the good, without first educating the public that it is a trade mark.
[41] The respondent, however, successfully contended before the Assistant Commissioner that the mark BLACK & WHITE was not distinctive, not because as at the date of the application it was used to denote literally the words BLACK & WHITE in relation to deodorants, but rather because it was used to denote a deodorant that did not stain black and white clothing. This is sometimes referred to as a “double attribute” claim, and I adopt that language.
[42] Given what I have said earlier about onus, in the case of a double attribute claim, there needs to be some evidence put up by the respondent to which the applicant
14 W & G du Cros Ltd, above n 11, at 635.
15 Kerly’s Law of Trade Marks, above n 6, at [10-099] (emphasis added).
then has to respond. Without evidence, no concern as to non-distinctiveness could be raised as, on the face of it, the mark is distinctive. Further, the evidence would have to be as to use in New Zealand at the date of application, for the reasons that I have already set out above. If the position were otherwise, an applicant would have to provide evidence negating an unsupported premise.
[43] I therefore turn to the evidence available to the Assistant Commissioner to support the finding of the double attribute claim of the mark. This comes in the form of a lengthy statutory declaration by Mr Beale, trade mark counsel in the personal care (deodorant) section of the respondent.
[44] Mr Beale provides evidence to the effect that, in around 2012, the respondent had launched its own double attribute products, and begun using the words “Black + White”, and using black and white imagery, and black and white packaging in various countries.
[45] But there is no evidence as to any such usage in New Zealand prior to the application date of September 2014. Nor is there any evidence suggesting that the sign would be interpreted by all or any section of the New Zealand public at that time as making a double attribute claim. Absent such evidence, it is not available to me to find that the sign had such a meaning in relation to deodorants/anti-perspirants at the application date.
[46] Mr Beale claims that anti-staining/marking properties were commonly claimed by suppliers, and that packaging of products frequently included images of black clothing and white clothing or references to the words “BLACK” and “WHITE”, individually or together, to indicate these attributes. He also asserts that the respondent was the first supplier to launch anti-white mark anti-perspirant products, which I believe relates to black clothing.
[47]Mr Beale’s evidence supports the following propositions:
·Marking/staining was a consumer concern.
·Traders marketed, to the extent they lawfully could, as to anti-marking and anti-staining properties.
·Prior to July 2014, the date adopted by Mr Beale, and therefore prior to the application date here, there were frequent references in a number of overseas markets to black clothing and to white clothing and references to BLACK and to WHITE, individually or together, to refer to these properties.
·The respondent had used the mark in a variety of markets, including Spain, South Africa and Russia prior to the application date. (I note that only one of the three countries specifically referred to was an English-speaking country.) Mr Beale refers to launching under the mark in a variety of markets, including Spain, South Africa and Russia prior to the application date. He also refers to product being available in some countries, which appear to be the United Kingdom, The Netherlands, France and Poland, but the only evidence as to actual in-country launches appears to be in relation to Spain, South Africa and Russia.
[48] As I have said, none of this evidence addresses usage or awareness in New Zealand at any relevant time. While I might be able to accept that the first two bullet-pointed assertions above applied in New Zealand, I am not able to accept, without more, that the remaining assertions applied in or affected New Zealand conditions.
[49] Counsel for the respondent suggests that Mr Beale’s evidence demonstrates that circumstances overseas were “of equal significance in the New Zealand market”. However, as already noted, I cannot ascertain the basis for that submission, either from the respondent’s submissions or, more importantly, from the evidence.
[50] So, although the evidence provided by the respondent might lead to a conclusion of non-distinctiveness in many overseas markets, it does not do so in the New Zealand context at the relevant time.
[51] I consider that the complete absence of evidence, to which I have referred, is dispositive of the s 18(1)(b) issue. I cannot base my decision on overseas circumstances unless there is evidence as to their consequences in New Zealand. An absence of distinctiveness in another country may well have relevance in a New Zealand context, but the link must be established by the evidence.
[52] The position here is different to, for example, the decision in COLORCOAT, where Robin Jacob Esq, QC was persuaded that other traders had marketed in the UK prior to the application date, in manners that would infringe the mark, if granted.16 There is no such evidence before me.
[53] I therefore conclude that there is no concern about non-distinctiveness of the mark on the basis of a double attribute claim in New Zealand as at the application date.
[54] There being no argument but that the trade mark was otherwise “distinctive” as at that time, it follows that I am satisfied that s 18(1)(b) does not prohibit registration and no further inquiry is needed in relation to that section.
[55] For the record, I should not be taken to agree with the appellant’s submission that the mark BLACK & WHITE signified something akin to “a straightforward difference or choice”. Again, there is no evidence upon which I might make a finding to that effect. My finding is simply to the effect that there is no evidence on which I might make a finding of non-distinctiveness. If the law requires me to make a finding of distinctiveness, I also so find.
Would evidence of a double attribute claim result in a different finding?
[56] Even if the evidence did suggest that the trade mark made a double attribute claim in New Zealand as at the application date, I still do not consider that would result in a finding of non-distinctiveness under s 18(1)(b).
[57] The essential test remains whether the words are likely to be understood by the relevant market as a descriptive reference to a particular characteristic that the goods
16 COLORCOAT Trade Mark [1990] RPC 511.
possess, namely double attribute characteristics, such that traders are likely in good faith to want (or to use a word I prefer – “need”) to use the same or a similar term. There must be more than a simple likelihood that other traders will need to use a mark. If there were no more than that, then any clever mark would be at risk of ineligibility, because of course other traders would wish to use it.
[58] The respondent states the essential test to be whether a mark is so descriptive that others will, without improper motive, want to use it, a statement with which I broadly agree.
[59] What is clear is that a double attribute claim per se does not make a mark non-distinctive. So, evidence of such is not per se sufficient.
[60] There is no question that registration should be denied to some existing phrases or words which have become synonymous with some manner of functionality, or even to some proposed phrases or words.17 For an existing mark, a non-distinctiveness finding will probably follow if it has been used by more than one trader, so that consumers would be confused as to origin, even if there were other ways of conveying a claim. But, for novel marks, it seems to me this would only be the case when, in all practical respects, the mark is a necessary or unavoidable way of delivering a message, or where it would at least be difficult to convey a message without use of the mark. Only then would such a mark be incapable of indicating origin. In that sense, it would fail the essential du Cros test, and the du Cros guidance would be simply confirmatory.
[61] But where, on the other hand, a phrase or word is indicative of an aspect of functionality in the sense that it would likely be understood by members of the public to be making a functional claim, it does not follow that it is necessarily descriptive or non-distinctive.
17 For example, see Telstra Corp Ltd v Phone Directories Co Australia Pty Ltd (2015) 237 FCR 388, which I discuss below.
[62]The Baby-Dry decision is a possible case in point.18 Similarly, the Tub-happy
decision.19 Williams J in the latter case said:20
The conclusion that the words “Tub Happy” are registrable under s 16(1)(d) of the Trade Marks Act because they have no direct reference to the character or quality of articles of clothing goes a long way towards deciding the ground on which his Honour ruled against the defendants. There is nothing in the registration of these words to prevent the defendants describing their cotton goods as having the qualities of washability, freshness and cheapness, and in particular the first of these qualities. The whole English language is open to them … In J.B. Stone & Co. Ltd v. Steelace Manufacturing Co. Ltd, Lawrence L.J. said: “In my opinion the object of [the legislation] was to safeguard traders in cases where the registered trade mark consisted of more or less descriptive words forming part of the ordinary English language, without the use of which other traders would find some difficulty in describing certain qualities of their goods; …
[63] It is patently not the case that there were no other ways of making double attribute claims as at the application date here. In fact, the respondent has itself provided evidence of many such ways in the annexures to Mr Beale’s statutory declaration. These include:
·At least one supplier appears to have been content to claim, “on white shirts, on coloured shirts, on black shirts”.
·Others refer to “black, white & colours” or to “shirt-protect”.
·Others claim to protect against white, yellow and oily stains and to protect against three different types of anti-perspirant stains.
·There is also evidence of claims as follows: “no residue”, “white mark”, “white mark protection”, “white mark formula”, “white marks”, “anti-white marks”, “anti-yellow stains”, “anti-mark, anti-stains”.
[64] There are obviously many more such ways of making double attribute claims, for example, “darks and lights”, “navies and creams”, and so on.
18 BABY DRY Trade Mark, above n 10.
19 Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 895 CLR 190 [Tub-happy].
20 At 201–202 (citations omitted) (emphasis added).
[65] Even now, it appears that the only (or at least the principal) reason why this observation may have changed in the New Zealand context, since the application date, is the respondent’s decision to embrace the mark in its New Zealand operations. That decision, however, was made with full knowledge of the appellant’s application.
[66] In summary, I consider that, even if the mark might have been seen at the application date as making a double attribute claim, it would not be necessarily fatal to registrability. More would be required than was available to the Assistant Commissioner, or is available to me.
[67] I consider this case to be quite different to, for example, the “Cycling IS …” decision.21 The applicant was denied registration for the “Cycling IS …” mark. On its face, if granted registration, this would/could have prevented other traders from engaging in such obvious marketing as saying “Cycling is … fun”. The mark was taken to be one that would be perceived by the relevant class of persons as identifying cycling as the raison d’être for the marketing of the goods and services to which it related, a message that other retailers might naturally also be interested in communicating. The sign was determined as not sufficiently striking to function as an indication of trade origin.
[68] Probably the highest point of a functional mark being found to be nonetheless distinctive, is the “Baby-Dry” decision of the Court of Justice of European Communities.22 It seemed that a mark “Dry-Baby” would have been found to be non-distinctive, but the lexical inversion of the words bestowed distinctive power on the mark, according to the Court. The message embraced by a “Baby-Dry” communication is one that many, if not all, competitors of the applicant might also wish to convey. That did not trouble the Court. I note there has been some criticism of Baby Dry, but I refer to it only by way of illustration.
[69] Gault J was troubled by the conclusion in Baby-Dry, in McCain Foods (Aus) Pty Ltd v Conagra Inc23 (the Healthy Choice case). However, to the extent that he
21 “Cycling IS …” Trade Mark Applications, above n 5.
22 BABY DRY Trade Mark, above n 10.
23 McCain Foods (Aust) Pty Ltd v Conagra Inc, above n 13.
concluded that a mark that might reasonably be used in relation to the goods in question should not be monopolised by one trader, I believe he was intending to restrict his comments to the reasonably clear-cut proposition before him. In that case, he was considering the registrability of “Healthy Choice” as a trade mark in relation to certain food products. He readily concluded that, absent extraordinary circumstances (as evidently existed in the USA), Conagra should not be granted that monopoly.24
[70] I also do not consider this case to be analogous to the so-called “colour decisions” (relied upon by the respondent), most notably Cadbury and White Cloud Dairy.25 In those cases, the relevant colour (purple in relation to chocolate and kura/red in relation to dairy goods) was found to be inherently descriptive,
i.e. incapable of acting as a badge of origin. These cases do not suggest any additional layers of analysis over those in the established case law.
[71] Similarly, I do not consider the YELLOW decision of the Australian Full Federal Court to be analogous.26 In that case, Telstra, a large telecommunications provider, sought to register the trade mark YELLOW, to refer to its print and online business directories. It was the owner of the trade marks for “Yellow Pages”, which referred to a printed business directory, in the form of a large yellow book, which was a household item in Australia. On appeal, the Full Federal Court found that YELLOW, both the colour and the word, was descriptive in Australia of print and online dictionaries generally. YELLOW was not, therefore, capable of distinguishing the goods and services of Telstra from those of its competitors. For that reason, the Court held the trade mark application should be rejected. The YELLOW case is an example of where a common word had come to denote a category of products, and so could not distinguish between products in that category. This is different from the present case, where BLACK & WHITE can distinguish the appellant’s products.
24 For completeness, I also note Gault P’s comment at [41] that the test of distinctiveness is entirely forward-looking. He stated that the capacity to distinguish must be shown at the date of application and must be inherent in the mark. While he cannot be taken to be seeking to distance the law of New Zealand from settled trade mark law principles, I need not differ from that stance here because I find that the BLACK & WHITE mark was at the date of application inherently capable of distinguishing origin.
25 Cadbury Ltd v Effem Foods Ltd [2007] NZCA 303; and White Cloud Dairy Innovation Ltd [2017] NZIPOTM 3 (13 January 2017).
26 Telstra Corp Ltd v Phone Directories Co Australia Pty Ltd, above n 17.
[72] For the above reasons, I find that, even if there were evidence that the BLACK & WHITE mark made a double attribute claim in New Zealand as at the date of application, that mark still had the ability to distinguish the appellant’s products from others in the market, as at that date.
The second issue on appeal – did the BLACK & WHITE trade mark consist only of signs that designate the characteristics of deodorant? – s 18(1)(c)
[73] Section 18(1)(c) prohibits registration where a mark consists only of signs or indications that may serve, in trade, to designate the kind, intended purpose or characteristics of deodorant and anti-perspirants for personal use. If this section applies, then I must prohibit registration.
[74] The Assistant Commissioner found that the s 18(1)(c) ground of opposition must also succeed. This was because she had already found that the BLACK & WHITE mark indicated a kind of goods, the intended purpose of the goods and/or the characteristics of goods, when she undertook her analysis under s 18(1)(b), the same issues being engaged under s 18(1)(c).
[75] As noted by the Assistant Commissioner, it is generally accepted that the specific requirements of s 18(1)(c) and s 18(1)(d) are subsets of the overall requirements of distinctiveness set out in s 18(1)(b). Despite appearing first, s 18(1)(b) is seen as the “sweeping-up” provision, with (1)(c) and (1)(d) providing certain policy considerations that shed further light on the distinctiveness issue.27
[76] There is considerable authority for the approach taken by the Assistant Commissioner in this latter respect. For example, Williams J in AA Insurance, which I have already cited, was of the view that a s 18(1)(c) or (1)(d) finding adverse to an applicant would necessarily result in an adverse s 18(1)(b) finding. While arguably rendering paragraphs (c) and (d) redundant, which is unusual, I accept the authority for the view expressed.
27 AA Insurance Ltd v AMI Insurance Ltd, above n 5, at [66].
[77] I have reached a contrary conclusion to the Assistant Commissioner on the s 18(1)(b) issue. It may not necessarily follow that the converse of the Assistant Commissioner’s approach applies, i.e. that s 18(1)(c) cannot apply if s 18(1)(b) does not apply. However, the respondent has not argued otherwise, and I see no reason why the same approach should not apply. A positive finding under s 18(1)(b) still necessarily entails a consideration of the s 18(1)(c) and (d) factors.
[78] I therefore conclude that the finding I have already made under s 18(1)(b) leads to a finding that 18(1)(c) does not prohibit registration of the BLACK & WHITE mark.
[79] In any event, for the same reasons on which I have based my finding on s 18(1)(b), I am satisfied that there was no s 18(1)(c) non-distinctiveness concern, as at the application date, in the New Zealand context.
[80]I am therefore satisfied that s 18(1)(c) does not prohibit registration.
Orders
[81] I am satisfied that neither of the absolute grounds set out in s 18(1)(b) or s 18 (1)(c) prohibits the registration of the trade mark “BLACK & WHITE”.
[82]The appeal is allowed.
[83]I therefore order as follows:
·Registration of the BLACK & WHITE trade mark is not prohibited under s 18(1)(b).
·Registration of the BLACK & WHITE trade mark is not prohibited under s 18(1)(c).
·Accordingly, I direct that trade mark application number 1005360 BLACK & WHITE proceed to registration.
[84] I made a note at the hearing that the appellant advised there was to be no costs order, regardless of outcome. If that is incorrect, the appellant can file a memorandum within seven days, and I will make directions as to costs memoranda thereafter.
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Hinton J
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