The Assistant Commissioner of Trade Marks has recently held that the striped logo on the packaging below is not a representation of toothpaste. At first, this seems difficult to understand although the Assistant Commissioner has relied on expert evidence in deciding so.
The owner of the Maclean’s brand of toothpaste, Glaxosmithkline Consumer Healthcare (UK) IP Limited, applied to register its striped logo as a trade mark in New Zealand in respect of toothpaste and a range of other oral care related goods. IPONZ initially gave notice that it intended to reject the application on the basis that the image is simply a picture of toothpaste and so could not be registered in respect of toothpaste as other brand owners should be free to use the images in their own advertising.
A hearing on the matter was held before the Assistant Commissioner of Trade Marks in December 2016. At that hearing, a toothpaste expert (how one earns this title I do not know but they presumably have great teeth!) confirmed for the applicant that it is not actually possible to squeeze toothpaste from a tube into this shape (a point easy to demonstrate no doubt). There was also expert evidence presented that the amount of toothpaste shown in the images above does not represent the recommended amount of toothpaste to be used. Based on this evidence, the image could not be seen as an actual representation of toothpaste or as a representation of the recommended use of toothpaste.
Despite this, there is no doubt that consumers generally recognise the logo to be of toothpaste. In a survey around my office 100% of people (excluding those familiar with this judgment or nurdles per se) recognised the logo to be toothpaste. But why is this?
The Assistant Commissioner explains in her judgment that consumers recognise the image as being of toothpaste not because this is what toothpaste actually looks like, but because the advertising of the applicant has associated this image with its toothpaste products. In the Assistant Commissioner’s view, a consumer who had never been exposed to the logo before would not recognise it to be of toothpaste. It is hard to test this theory as we cannot “unsee” the advertising and put ourselves in the shoes of an uneducated consumer seeing the images for the first time.
The Trade Marks Act 2002 distinguishes between trade marks that should not be registered because they are descriptive of the goods applied for (i.e. marks that are simply pictures of the goods), and trade marks that should not be registered because through use they have become generic or customary and as a result are no longer able to distinguish the goods/services of one trader from those of another (the core function of a trade mark).
In determining whether trade marks are descriptive and therefore non-distinctive in respect of certain goods and services, the proper test is to consider the trade mark alone without context and assume that the mark has not been seen before in any advertising. It is the use of a mark in context that may give rise to a rejection for genericism, as it is through the use of one or multiple brand owners that the mark has become customary.
IPONZ raised only the ground of non-distinctiveness in its initial rejection of the application. As the Assistant Commissioner did not see the images as representations of toothpaste, that rejection was not upheld and instead the Assistant Commissioner directed that the application be accepted.
Interestingly, the Assistant Commissioner suggested in her judgment that there may be grounds to reject the application on the basis that the mark has become generic and customary in trade, rather than for descriptiveness or non-distinctiveness. The Assistant Commissioner could not make a determination on whether the mark should be rejected for genericism as IPONZ had not raised that as a ground of rejection and so the issue was not being argued in the hearing.
Whether IPONZ will raise a further rejection on the basis that the logo has become generic in the toothpaste market and therefore should not be registered remains to be seen. Under the Trade Marks Act, if a further rejection is raised then the application would be entitled to another hearing on that issue and would have to satisfy the Assistant Commissioner that the image can function as a trade mark to distinguish the applicant’s Maclean’s toothpaste from the likes of Colgate and other toothpaste brands.
The full judgment is available here: http://www.nzlii.org/nz/cases/NZIPOTM/2017/6.html
The real issue here is not that this image is non-distinctive in terms of s 18(1)(b), but rather that the public has been educated to identify this and similar images as being representative of toothpaste.