This article reviews the recent decision by the Hearings Office of IP Australia concerning the registrability of the trade mark CLICK & ROLL.
Phillip Morris Products S.A opposes British American Tobacco’s “CLICK and ROLL” trade mark registration
British American Tobacco (Brands) Ltd (“BAT”) applied to register the trade mark CLICK & ROLL in respect of cigarettes, tobacco, lighters and other smokers’ articles. IP Australia accepted the application, however registration was opposed by Philip Morris Products S.A. (“Philip Morris”), on the ground that the trade mark was not capable of distinguishing BAT’s goods. The onus was on Philip Morris to establish its ground of opposition, on the balance of probabilities.
Philip Morris argued that the trade mark was descriptive of cigarettes which feature a capsule device, and, in particular, was descriptive of the action of breaking the capsule component of cigarettes. Philip Morris also argued that the terms CLICK and ROLL were commonly used relation to cigarettes, so the trade mark therefore lacked distinctive character. Philip Morris also provided information concerning Trade Marks Office decisions refusing registration of the mark in New Zealand, Costa Rica and the Dominican Republic.
BAT argued that the trade mark said nothing tangible about cigarettes, and that when the trade mark was considered in its entirely, it did not describe characteristics of cigarettes. BAT also noted that Philip Morris’ evidence did not demonstrate use of the mark by other parties.
The Hearings Officer agreed with BAT. The Hearings Officer found that the evidence did not demonstrate use of the trade mark by other traders, and that the trade mark did not provide a tangible meaning in relation to characteristics of cigarettes. The Hearings Officer did not consider decisions in other jurisdictions refusing registration to be relevant, and noted that the trade mark was registered 32 other jurisdictions. Additionally, the Hearings Officer noted that Philip Morris’ evidence indicated that the trade mark was not suitable for describing the action of activating the capsule within cigarettes.
Take home message
The decision reinforces the principle that the registrability of a trade mark should be judged by the distinctiveness of the trade mark in its entirety, not of its component elements. The fact that the component elements of a trade mark may be descriptive in their own right, does not necessarily preclude the trade mark from being distinctive.