Trade Mark Update - August 2017

Decisions from the Australian Trade Marks Office

Trade Mark Update: August 2017
Andrew Clarke

Every month, we provide a brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We will report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.

This month, we look at:


When does a descriptive word have capacity to distinguish?

The Coca-Cola Company v Vitasoy International Holdings Limited [2017] ATMO 77

Hong-Kong based company, Vitasoy International Holdings Limited (Vitasoy) filed trade mark application no. 1534588 on 8 January 2013 for a stylised word “Icy” in respect of goods in class 30 (tea drinks; not being frozen/slush drinks) and class 32 (carbonated and non-carbonated non-alcoholic beverages; juices; soft drinks; soy bean-based extracts and beverages; non of which being frozen/slush drinks). The trade mark in question is:

After the issuance of a couple of adverse examination reports, the mark was subsequently advertised as being in order for acceptance by the primary examiner. However,  The Coca-Cola Company (Coca-Cola) opposed the acceptance of the trade mark on grounds under section 41 and section 62 of the Trade Marks Act 1995. Only those grounds under section 41 were pursued at the Hearing.

Section 41: Trade mark not capable of distinguishing the Applicant’s goods from the goods of other parties

Coca-Cola argued that in the context of drinks the word ‘Icy‘ is directly descriptive and has no ability to distinguish the goods of Vitasoy from the goods of anyone else. Dictionary definitions of the word from some of the world’s most commonly used dictionaries were submitted:

Icy: (iii) Resembling ice; extremely cold, frosty; slippery
Oxford English Dictionary.

Icy: (ii) Resembling ice.  (iii) Cold.
Macquarie Dictionary.

Although the trade mark is stylised through “modest rendering,” Coca-Cola contend that the word is not sufficiently stylised to confer any ability to distinguish the goods of Vitasoy. It is alleged that the mark is so plain that it is effectively directed simply to the word ‘icy‘. In addition, Coca-Cola contended that it was common in Australia, at the time the Vitasoy trade mark was filed, to describe cold drinks as being ‘icy‘.

One avenue for Vitasoy to rebut these assertions would have been to demonstrate that through their prior use of the trade mark on its products, it had in fact become distinctive of its goods.

However, Coca-Cola submitted that such evidence of was absent.

Is ‘icy’ descriptive of cold drinks? 

The criterion for assessing the ability of a mark to distinguish goods was described by Lord Parker of Waddington in Registrar of Trade Marks v W. & G. Du Cros (1913): 

“The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses 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. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire to use” (emphasis added).

Naturally, Coca-Cola drew upon Lord Waddington’s reasoning in arguing that other traders would wish to use the word “icy” to describe their beverages.

Vitasoy, however, turned to the High Court decision of Cantarella Bros v Modena Trading that found that: “the test [for the ability to distinguish] does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical”. To this end, Vitasoy tried to argue that the word icy when used in respect of drinks (remembering that the specification specifically excluded frozen/ slushy drinks from the listed goods) was clearly a metaphorical use – as there was no ice present in such drinks. However, in light of the dictionary definitions presented above, it was apparent that the word ‘Icy is a synonym for the word ‘cold‘. Therefore, a drink need not actually contain ice to be described as an ‘icy‘ drink.

Moreover – the evidence before the delegate of the registrar of trade marks demonstrated that the word icy is regularly used by a number of traders to describe their drinks. It seems clear, therefore, that the word ‘icy‘ is descriptive in respect of cold drinks.

Registering descriptive words by using creative get-up.

It’s well established that the use of distinctive get-up can allow for in the use of descriptive words in a trade mark registration. However, if a descriptive word is to be registered only because of it’s get-up – that get-up must be sufficiently different to fonts in which the plain typed word might normally be rendered. As previously described in Clark Equipment, the ability of a trade mark to have a capacity to distinguish will come down to “whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it“.

In practice, the get-up should not conflict with the plain typed word (i.e., nearly resemble the plain typed word) such that the trade mark would be used by another trader for the sake of its ordinary meaning. The question before the delegate was therefore : would the use of the Vitasoy trade mark be considered to be a use of the plain typed word Icy or vice versa? If the answer to either question is yes, then there is a potent argument that the get-up within the trade mark is insufficient to render the mark as inherently adapted to distinguish.

This stylised Icy is little more than the plain word.

Unsurprisingly, the delegate considered that the notional trade mark ‘Icy‘ (in plain script) is substantially identical to the Vitasoy trade mark. The use of the Vitasoy mark would therefore be be considered as use of the typed word ‘Icy‘. If the Vitasoy trade mark was to proceed to acceptance, it stands to reason that any traders wishing to use the the plain printed word ‘Icy‘ for its ordinary meaning would find that they couldn’t do so without infringing on the trade mark rightes vested to Vitasoy.

Thus, the delegate found that the trade mark, when considered as a whole and taking into account the get-up of the mark, possesses little if any inherent adaptation to distinguish the goods identified in the specification. The trade mark application was refused.

Take Home Message

This ATMO decision highlights that when get-up is to be used to confer a capacity to distinguish – attention must be given to ensure that the get-up is substantial. It’s not sufficient to simply use a slightly rendered font and argue that because of the stylisation a distinctive mark has been created. If the clear impression of the mark is no more than the descriptive word itself then the mark will rightfully be considered to be little more than the word in question. In these instances, you should be able to draw upon specific features of your trade mark that are distinctive over the plainly typed word.


Trade marks: Use it or lose it!

Leconfield Wines Pty Ltd v G. Patrirri & Co Pty Ltd [2017] ATMO 81

This decision is on an an application by the winemaker G Patritti & Co to remove the following trade mark from the trade mark register:

Trade Mark No. 1063359
Owner: Leconfield Wines Pty Ltd
Specification of Goods: class 33 (Wines)

Under Australian law, an application to remove a trade mark on the basis of non-use can be made it if can be shown that the mark has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed.

Should they chose to defend their mark, the opponent to a non-use removal application (i.e., the trade mark owner) bears the onus of showing the the trade mark has been used within the relevant period. In this case, the relevant period is 3 June 2012 to 3 June 2015.

The origin of the MARION VINEYARD trade mark.

The trade mark appears to had been used by Leconfield Wines from 1994, and is inspired by a particular vineyard located with the South Australian suburb of Marion.

Leconfield Wines’ evidence of use

The most pertinent evidence presented by Leconfield Wines appears to be a copy of their “Museum Releases” price list. Although this evidence is not dated in any of the evidentiary applications, it is stated that this price list was “made available during the relevant non-use period“. Specifically, the wine list was allegedly presented to those visiting Leconfield Wines’ Cellar Door. The price list shows the following three wines as being available:

  • ’01 Richard Hamilton Marion Vineyard Grenache – $75
  • ’02 Richard Hamilton Marion Vineyard Grenache – $75
  • ’03 Richard Hamilton Marion Vineyard Grenache – $70

Naturally, Pattriti draws attention to the evidence by suggesting that there is not sufficient information to conclude that the price list was sufficiently available to the public – and highlighted the careful wording in the declarations filed by Leconfield Wines. Specifically, the declarations indicate that the price list sat upon a counter and was “viewable and available to members of the purchasing public whom entered the Leconfield Wines cellar door“. It is Pattriti’s contention that this does not satisfy the requirement of use in the course of trade.

Showing Use Without Sales.

It is well established that in instances where there is no conclusive proof of sales within the relevant period, evidence demonstrating an offer to sell the trade mark owner’s product under the trade mark must be convincing and amount to use in good faith.

In this case, the delegate appears unimpressed that the exact dates that the Museum Releases price lists were available is not provided in the evidence, instead simply stating instead that they were somewhat ambiguously made available within the relevant period.

Additionally, it was considered that although the use of the phrase MARION VINEYARD on the bottle label itself amounts to use of the trade mark (shown below), the delegate commented on the fact that  the price list refers to “Richard Hamilton Marion Vineyard Grenache”. This addition of the name “Richard Hamilton” is asserted to be one that substantially affects the identity of the trade mark as registered.

This emphasises the importance of ensuring your trade marks are continually being used as trade marks. The difference between the bottle and the price list, is that the words “MARION VINEYARD” appear on a single line on the bottle, in a colour that stands our from the other text. It’s this part of the label that jumps out at the consumer. This isn’t so on the price list, where the reference to MARION VINEYARD is disguised in the middle of the listing.

Because of this, the use of the trade mark by itself would only ever be evident to a prospective consumer if the bottle label as well as the price list were concurrently viewable to the purchasing public. As the only evidence suggesting such was an undated photograph (which was believed to be little more than a mere example of the view that may (or may not) have actually been seen by consumers during the relevant period), it was found that sufficient trade mark use had not been established during the relevant period.

Lessons in preparing evidence for oppositions.

This decision certainly serves as a reminder to ensure that your trade marks are continually not only being used – but used by themselves as a trade mark in the course of trade. Simply stating the words in combination with other words, phrases and logos may not be sufficient to establish use. Should Leconfield Wines have presented additional evidence of the MARION VINEYARD trade mark being used, not in conjunction with the winemaker (Richard Hamilton), then it may well have been far easier to have demonstrated trade mark use. Perhaps having the MARION VINEYARD text coloured red in the price list, or even in a bold font, would have been sufficient to establish use of the trade mark.

This decision also shows the importance of documenting your trade mark use – especially when the use is not online, or in an otherwise readily available format. For example, if your trade mark is only viewable to people once entering your shopfront, the more information that is recorded regarding exactly how and where the trade mark is used (in addition to the number of units that are sold) can  serve as valuable evidence during opposition proceedings.


The importance of classifications.

Paypal, Inc v Braintree Communications Pty Ltd [2017] ATMO 90

This decision concerns a trade mark filed by the very well known US-based company, Paypal, Inc. Specifically, the following trade mark is at the centre of this dispute:

Trade mark application no. 1579864
Filing Date: 18 July 2013
Goods/Services: Class 36 (Credit card payment processing services; credit card transaction processing services; payment processing services, namely, providing electronic processing of electronic funds transfer, ACH (automated clearing house), credit card, debit card, electronic check and electronic payments).

Importantly for this case, all of the goods and services listed on the application relate to payment processing services.

Queensland-based company Braintree Communications Pty Ltd filed an opposition to the registration of the Paypal trade mark, citing grounds under section 44 of the Trade Marks Act 1995. Specifically, Braintree asserted that the trade mark is substantially identical or deceptively similar to their own earlier-filed trade mark. The particulars of Braintree’s trade mark are as follows:

Registration No: 860587
Filing Date:
 22 December 2000
Trade Mark:

Goods/Services: Class 9 (Transmission, receiving and storage equipment, apparatus and systems; including but not limited to computer software, computer hardware, macros, CD-ROMs, disks and modems; all associated parts, accessories and fittings); Class 38 (Telecommunication services; telecommunication services namely short duration transaction systems used in relation to, but not limited to, payment server systems, alarm systems, security systems, surveillance systems, defence systems, lottery systems, gambling systems, telemetry systems, electronic funds transfer systems, point of sale systems, packet handling systems and transaction gateway systems); and class 42 (Computer programming services; computer design services; services for maintenance and modification of computer software; computer program design consultancy services; providing access to and leasing access time to computer databases; on-line computer services).

The evidence filed by Braintree described their business endeavours as including Axon – G4020, which enables temporary EFTPOS and ATM locations for events or places where landline connections are too costly or slow. Allegedly, with the Axon – G4020, “you can take the till to the product, not the product to the till“. Alongside the managements of other financial applications of Axon – G4020, Braintree specialises in developing solutions to allow legacy transaction equipment to connect to modern IP platforms using intelligent protocol conversion.

Deceptively similar – only in respect of similar goods or closely related services.

It is well established that a deceptively similar mark can only act as a barrier to trade mark registration if the earlier mark is registered against the same or similar goods or services as the new application. Thus, before one even looks at the trade mark in question, it should be determined whether the goods and/or services are so similar or closely related.

It appears that Braintree entered the Hearing stating the similarities between the services offered by them and those offered by Paypal. That is, both parties provide the ability for merchants to receive payments that are initially checked by a payment gateway provider and then sent to the financial institution for processing.

However, the delegate reasoned that the arguments of Braintree are based on the preposition that their earlier mark is registered in respect of “credit card transaction processing services” or some such similar services to Paypal. Unfortunately, however, the Braintree has no such registration their own trade mark does not refer to such services. The result of this is significant – as the Delegate must restrict his analysis of the Paypal mark to only those services that fall within the scope of Braintree’s own trade mark specification.

Braintree’s services enable communication of data, of which one aspect is as part of an electronic payment (EFTPOS) system. It has equal functionality in ‘alarm systems, security systems, surveillance systems, defence systems, lottery systems, gambling systems etc.” Despite the most common application of Braintree’s services being as part of EFTPOS systems – this does not automatically place them into the same description as the goods and/or services listed on the Paypal specification.

The Plumber Analogy

To illustrate this point, the delegate provides an elegant analogy: a plumber who installs taps, pipes, drains, and pumps is not in the business of water supply or effluent treatment. Another example is lottery systems; if Braintree’s systems were commonly used by lottery providers – this would not result in those services being the same as the “lottery systems” listed in Braintree’s specification. Braintree is not in the business of providing lottery services, but rather in providing systems to enable such lottery systems.

How similar are similar goods, and how close are closely related services?

After finding that the Paypal and Braintree trade marks are not for the same services, Braintree took the next step of arguing that the goods and services between the two applications are closely related. The delegate highlighted the goods of class 9 as being contentious in this regard. Specifically, the goods in question are:

Transmission, receiving and storage equipment, apparatus and systems; including but not limited to computer software, computer hardware macros, CD-ROMs, disks and modems; all associated parts, accessories and fittings”.

Braintree argue that this encompasses data transmission, receiving and storage equipment, and computer apparatus and systems – which are closely related to the services listed on Paypal’s trade mark.

In the delegate’s opinion, the generalisation “transmission, receiving and storage equipment, apparatus and systems” is so vague as to the nature of the goods that it is, in essence, meaningless. It’s broad enough to refer to the transmission, receiving and storage of virtually anything that is capable of being transmitted (including data and radio waves). In this regard, and as stated by the Assistant Registrar of Trade Marks in Re Barnes Miling Ltd’s Trade Mark “As a trade mark owner’s trade mark rights derive from the goods and/or services in respect of which registration is sought, specification of goods should be clear and unambiguous“.

The delegate determined that accepting Braintree’s contentions (that the services listed on the Paypal trade mark are closely related to goods listed on their earlier application) would be based on the information that they might receive, convey or store. To do so would have worrying implications. For example, the same goods – being capable of transmitting, receiving and storing music or video – would, by extension – become closely related to entertainment services. This is clearly incorrect.

Therefore, the delegate considered that the goods listed within the Braintree application are not closely related to the services stated on Paypal’s application. Accordingly, the grounds of deceptive similarity could not be established – and Paypal’s trade mark was directed to proceed to registration.

The next chapter…

Braintree’s earlier trade mark (Registration No: 860587) is currently facing an application for removal for non-use. Guess who filed the application? Paypal! It will be interesting to see how this case develops, and we’ll keep you updated once we have some more details.


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