Vitasoy International Holdings Limited has failed to have “Icy” registered as a trade mark in Australia following objections by The Coca-Cola Company.

Vitasoy filed its trade mark application for ‘Icy’ in a stylised font (below) on January 8, 2013 in Classes 30 and 32 for a range of beverages including tea, carbonated and non-carbonated beverages but excluding frozen slush drinks.

Coca-Cola opposed the application citing two grounds of opposition in the Statement of Grounds and Particulars. Coca-Cola relied on Section 41 of the Trade Marks Act 1995 (“the Act”) that the Trade Mark lacks inherent adaptation to distinguish the goods for which the application was filed and Section 62 that the application for the Trade Mark is defective. Coca-Cola advanced only the Section 41 ground of opposition.

Section 41 of the Act provides that an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons. At the hearing of the opposition, the Registrar’s Delegate considered the following two issues:

  • “Whether or not the particular get up/stylisation of the Trade Mark adds to whatever inherent adaptation to distinguish the Trade Mark might otherwise possess; and
  • The extent, if any, the word ‘Icy’ which constitutes the Trade Mark is inherently adapted to distinguish the goods within the Specification from the similar goods of other traders.”

In assessing the inherent adaptation to distinguish of the word ‘Icy’, the Registrar’s Delegate in his decision referred to the well established considerations stated in Clarke Equipment Co v Registrar of Trade Marks and by the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited namely, “… determining whether a trade mark is ‘inherently adapted to distinguish’, as required by s 41(3), requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied”. It is only once the ordinary signification of a word is known that a determination can be made of whether others may legitimately need to use it in connection with their goods or services.

The Registrar’s Delegate accepted Coca-Cola’s submission that the dictionary definition of the word ‘icy’ indicates that the word is used as an adjective to describe something that is made of or covered with ice and as a synonym for the word ‘cold’.

Consumers who purchase the goods from retailers will consume them chilled and select them from a refrigerator in a store. Therefore, the word ‘icy’ is descriptive of the cold temperature of the beverage as it is sold or intended to be consumed and lacks inherent adaptation to distinguish,

On the question of whether the particular get up of the Trade Mark was sufficiently distinctive to allow the Trade Mark to be registered, the Registrar’s Delegate concluded that the word ‘Icy’ in plain script is substantially identical to the Trade Mark such that “a total impression of resemblance emerges from the comparison”. Use of the Trade Mark is use of the plain word ‘icy’. The get up of the Trade Mark does not render the Trade Mark inherently distinctive or capable of distinguishing.

As a result of discrepancies in the evidence of use regarding the date of first use of the Trade Mark, the evidence did not establish that the Trade Mark distinguished the goods as at the priority date of the application.

This case illustrates that trade marks owners should stay away from selecting words that describe or could be considered to describe the nature or a characteristic of the goods for which a trade mark is intended to be used.

This article first appeared on WTR Daily, part of World Trademark Review, in (month/year). For further information, please go to www.worldtrademarkreview.com.