The Federal Court has dismissed claims made by owners of Chemist Warehouse outlet stores of misleading and deceptive conduct and trade mark infringement, instead ordering that their trade mark is invalid for lack of distinctiveness and therefore should be cancelled from the Register.
Prevention is better than cure
To avoid suffering a similar fate as the owners of Chemist Warehouse outlet stores, traders should note that:
- long-term, widespread use of a trade mark will not necessarily 'cure' a claim of invalidity if the mark is not inherently adapted to distinguish;
- the use of bright colours is a common marketing ploy used by discount stores and so cannot be claimed by one particular outlet to be theirs alone to use, unless the colours are claimed as part of a valid trade mark;
- if you want to use a descriptive phrase in a trade mark, consider also filing an application for a composite mark (ie combining the phrase with devices, shapes, sounds, scents and / or colour elements) to avoid a finding that your mark is not inherently adapted to distinguish.
In Verrocchi v Direct Chemist Outlet Pty Ltd  FCA 234 the applicants, trading as 'Chemist Warehouse', had alleged that Direct Chemist Outlet (the respondents) had, among other things:
- intentionally copied various visual aspects of Chemist Warehouse's marketing and business and adopted a get-up so similar to that of Chemist Warehouse that it was likely to make consumers believe that the two pharmacy chains were linked; and
- infringed the applicant's registered trade mark (shown below) which contained the phrase, 'Is this Australia’s Cheapest Chemist?'
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Above: Chemist Warehouse's registered trade mark
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Above: Direct Chemist Outlet's advertising
In response, the respondents cross-claimed that the trade mark was descriptive and should be invalidated for lack of distinctiveness under section 88 of the Trade Marks Act 1995 (the Act).
For the purpose of this post, we will focus on the trade mark dispute.
The respondents had been using the slogan 'Who is Australia's Cheapest Chemist?', in a very similar layout to that used by Chemist Warehouse. In response to the 'descriptive' counter-claim, the applicants argued that they had used 'Is this Australia's Cheapest Chemist?' as a trade mark extensively since 2005 in online campaigns, brochures and television commercials. As such, they said it should be considered capable of distinguishing the applicant's goods and services under subsections 41(5) or (6) of the Act.
The applicants did not put forward any trade mark arguments in relation to the get up of their stores, catalogues or website, however.
Trade mark validity
Justice Middleton held that the applicants' mark did not meet the registrability requirements of either section 41(5) or 41(6) and thus was invalid.
- At the relevant time, s41(5) provided that if a trade mark was to some extent inherently adapted to distinguish, then the Registrar could consider evidence of use and other circumstances to determine if the mark did distinguish, or was capable of becoming distinctive of, the relevant goods or services.
- On the other hand, if the mark was considered to be to no extent inherently adapted to distinguish, s41(6) allowed the applicant to adduce evidence of the extent to which it had used the trade mark to prove that the trade mark did in fact distinguish the goods or services as those of the applicant, as at the filing date of the application.
In considering the extent to which the trade mark was inherently adapted to distinguish, his Honour stated that the last part of the trade mark, 'Australia's Cheapest Chemist', merely signifies the geographical location, price and nature of the business. In his Honour's opinion, the addition of the words 'Is this' was insufficient to render the mark to some extent inherently adapted to distinguish the goods and services of the applicants, and thus concluded that s41(5) did not apply.
Accordingly, as the mark was considered to be to no extent inherently adapted to distinguish, s41(6) was to be applied. However, in the court's view, the evidence did not show that the mark did in fact distinguish the goods and services of the applicants at the filing date of the application. Although the Chemist Warehouse stores had made extensive use of the mark across Australia since 2002, it was held in this case that extensive use of the 'inherently descriptive' mark was not enough here to make it relevantly distinctive. His Honour noted that the significance of the mark was often diluted by the multitude of slogans and logos by which it was surrounded at the Chemist Warehouse stores.
(Note: Similar provisions to the former ss41(5) and (6) now apply in the Act post the Raising the Bar amendments. Section 41 was re-drafted in negative terms so that a trade mark is now held to be distinctive unless ss41(3) and (4) apply. These amendments were made to clarify that the presumption of registrability applies to the consideration of the inherent registrability of trade marks.)
Was Chemist Warehouse hard done by?
When determining whether the mark was to any extent inherently adapted to distinguish, his Honour appears to have focused almost solely on the words 'Australia's Cheapest Chemist', rather than the stylised trade mark as a whole. Notwithstanding the description of the words 'Australia's Cheapest Chemist', the trade mark also includes the words 'Is this' in a font of different size and orientation. Furthermore, the phrase is posed as a question. In these circumstances, the trade mark does not actually describe Chemist Warehouse as 'Australia's Cheapest Chemist', it merely poses the question – what if the answer is 'no'?
As stated in Cadbury Schweppes Pty Ltd v Effem Foods Pty Ltd (2005) AIPC 92-105, it is 'beyond dispute that a trade mark can be, as a whole, capable of distinguishing even though composed of elements that are individually of no great inherent adaptation to that purpose' [at 58]. Furthermore, in Re Allergan Inc (1997) AIPC 91-297 – in relation to the trade mark 'CLEAN-N-SOAK' – the senior examiner commented that:
by virtue of the combination of the three factors, phonetic rendering, hyphenation and grammatical usage… it is not quite "a sign that is ordinarily used to indicate" the goods in question. It follows, therefore, that there is some doubt as to whether the trade mark is totally devoid of adaptation to distinguish.
If we take this reasoning and apply it to the present situation, it is unlikely that the applicants' mark is in fact merely descriptive, as his Honour suggests. Taken as a whole, including the text stylisation and grammatical usage of the mark, the mark may be considered to be 'to some extent' adapted to distinguish the applicants' goods from those of others, thus bringing it under s41(5). Section 41(5) is important as post-filing evidence may be adduced under this provision to demonstrate that a mark is capable of becoming distinctive, which is a lower threshold than s41(6).
Trade mark infringement
Although it was unnecessary to decide the question of infringement, his Honour determined that the respondents did not use the sign in question as a trade mark and so would not have infringed the applicants' mark even if it was held to be valid. This was because a trade mark must be seen as 'a reliable badge of trade origin on its own' and, as with the applicants' mark, the respondents' phrase 'Who is Australia's Cheapest Chemist?' was found to be merely descriptive.
For the reasons stated above, we consider that if the respondents' mark had been considered as a whole, having regard to stylisation of the mark, the differing font size and orientation, and the fact that the mark was stated as a question, this may have impacted on the court's finding that the mark was merely descriptive and hence not being used as a trade mark.
This means that if the applicants' mark had been deemed to be valid, the respondents' trade mark may indeed have been found to infringe. Such a finding may have also impacted on the misleading and deceptive conduct claims in this case, which also failed. However, this analysis would have to have involved careful consideration of other circumstances, including the use of the respondents' slogan as a trade mark in the context of their other advertising and store get-up.
Other issues: Trial by jury?
In the reasons, his Honour mentioned that before trial he had suggested to the parties that it may be an appropriate case to be tried by jury under s40 of the Federal Court of Australia Act 1976. His Honour referred to a paper written by Justice Rares in 2010 and also comments made by Rares J in Ra v Nationwide News Pty Ltd (2009) 182 FCR 148 (the only example of a 'trial by jury'), in which Justice Rares stated that juries can be highly valuable in cases such as this as they represent 'the very audience' to which the publication (or, in this case, advertising) is directed [at 19].
Given the Court's recent criticism of survey evidence, particularly in trade mark infringement cases (see Adidas AG v Pacific Brands Footwear Pty Ltd (No 3)  FCA 905), it is interesting that his Honour suggested this matter be tried by jury. This may be an indication of a new direction for the Federal Court in relation to trade mark cases.
In any case, both parties opposed this proposal for practical reasons, including increased cost and time delay.
Orders have been filed pursuant to Justice Middleton's judgment, however no appeal has been filed as of yet. The applicants will have until 21 April 2015 to file an appeal, if they choose to do so. We note that there has been no request to have the trade mark cancellation order stayed until then.