This matter concerned an opposition filed by Unilever Plc against Beiersdorf AG’s New Zealand trade mark registration No. 1005360 for BLACK & WHITE in relation to “deodorants and anti-perspirants for personal use” in class 3.
Unilever relied primarily on sections 18(1)(b) and 18(1)(c) claiming that the mark BLACK & WHITE has no distinctive character and is descriptive of the goods claimed.
In its submissions, Unilever pointed out that the ordinary signification and meaning of the words BLACK & WHITE in the context of the opposed goods was a reference to the colours black and white, and the suitability of the product for use when wearing such colours.
In Beiersdorf’s view, the mark BLACK & WHITE was not descriptive of the anti-staining qualities of the product, and was at most suggestive of these qualities. Beiersdorf also noted that the term BLACK & WHITE was a known phrase with a number of different meanings, including a “straightforward difference or choice”.
The Assistant Commissioner was satisfied that the ordinary signification of the term BLACK & WHITE was the colours black and white, and that this was likely the way in which the phrase BLACK & WHITE was understood in the context of the present matter. This conclusion was bolstered by the fact that Beiersdorf’s actual use appeared to be in accordance with this meaning.
The Assistant Commissioner also referred to Beiersdorf’s packaging dominated by the colours black and white, and including images of black and white clothing. Further, the Assistant Commissioner noted that the associated marketing material focused on the anti-staining characteristics of the product.
Of particular interest, the Assistant Commissioner agreed with Beiersdorf’s submissions that “black & white” was a very abbreviated way of indicating that a product “avoids white staining on black clothes, and yellow staining on white clothes”. The Assistant Commissioner further added that without additional words, such as “for black & white clothes” or “won’t mark black & white clothes”, it made little sense. Having said that, the Assistant Commissioner pointed out that “it is a possible for a mark to require additional words in order to make sense, yet still lack distinctiveness”.
On balance, the Assistant Commissioner found that the mark BLACK & WHITE had no distinctive character, and was descriptive of the goods claimed.
While other grounds of opposition were relied upon, they were not discussed with great detail and were all unsuccessful.
The opposition was successful and the application was denied registration.
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