This matter concerned the opposition by Coca-Cola to the registration of the trade mark ICY by Vitasoy. Vitasoy had applied to register ICY (shown below) in connection with beverages in Classes 30 and 32.

The opposition was pursued under section 41 of the Trade Marks Act, on the allegation that the trade mark is not capable of distinguishing any or all of the applicant’s goods.

On its face, the trade mark ICY was not considered, by the Hearing Officer, to have the required inherent adaptation to distinguish the applicant’s goods. However, as noted by the applicant, its trade mark was not ICY, rather it was an application for ICY in the particular get-up shown above. The Hearing Officer reviewed the get-up, but even taking that into account, the Hearing Officer remained of the view that the trade mark ‘possesses little, if any, inherent adaption to distinguish’.

The applicant did file some evidence of use of its trade mark, but that evidence was seen by the Hearing Officer as insufficient to invoke the provisions of sections 41(5) or 41(6), largely because there were numerous ‘discrepancies affect[ing] the weight that the Registrar can put on’ the evidence of use.

The application is to be refused registration.

To view the Office decision, click here.