The decision of Union-Swiss (Pty) Ltd v Bio-Cream Cosmetics and another (North Gauteng High Court, Judge Rabie, 17 July 2015) dealt with two distinct issues; namely, passing off and rectification of the register. Each, in turn, was closely linked to this question: to what extent is ‘bio’ a trade mark?
First, the passing off. The facts were that the company Union Swiss has for many years been selling an oil that’s used for the treatment of scars and stretch marks. This product is marketed under the trade mark Bio-Oil. The trade mark has consistently been used together with what’s described in the judgment as a “Drop Device” with an “irregular edge”, as well as a colour combination of orange and white. Sales have been very good and advertising has been extensive. The product has won awards and it’s clearly a market leader. The judge said this of the product: “Market research conducted during 2012 has indicated it to be the product most recommended by doctors, pharmacists and midwives.” In its evidence, Union Swiss claimed that its customers have been asking it to bring the product out in a lotion form.
So, when a competitor, Bio-Cream Cosmetics, brought out a similar product that came in a lotion form, Union Swiss objected. The competing product was sold under the trade mark Bio-Lotion, a trade mark that was used with a Drop Device with a rough edge, and an orange-and-white colour combination. Union Swiss sued for passing off.
The judge found for Union Swiss. The judge felt that there would clearly be consumer confusion, saying that many consumers would "undoubtedly consider that the Bio-Lotion product is a line-extension of the well-known Bio-Oil product’. Although Bio-Cream Cosmetics claimed that there would be no confusion because there were many other similar get-ups in the marketplace, the judge rejected this, saying that there was, in fact, only one other similar get-up, and Union Swiss was in the process of putting a stop to that.
While acknowledging that this case did relate to similar get-ups (comprising names, devices and colours), and that it was these get-ups that “would attract the attention of the ordinary purchaser of these two products, and which would give rise to the likelihood of confusion”, the judge did seem to single out the word “bio” , describing it as the most ”striking feature”. There’s certainly a strong suggestion here that the judge regarded “bio” as a distinctive word in the context of oils and creams.
The second issue was rectification. Union-Swiss had registrations in class 3 for two trade marks, the first being Bio-Oil, and the second being Bio-Oil together with the Drop Device. Bio-Cream Cosmetics, on the other hand, had a later registration in class 3 for the word trade mark Bio-Lotion. Union Swiss applied to have the registration for Bio-Lotion cancelled on the basis that it conflicted with its earlier trade mark registrations. It’s important to bear in mind that the Drop Device and the colour combination did not form part of Bio-Cream Cosmetic’s registration.
The judge held that the Bio-Lotion registration should be removed. Bio-Cream Cosmetics had pointed to the fact that there were other trade marks on the register that contained the term “bio”, but the judge said that this was not relevant. According to the judge, it’s the state of the marketplace that counts: “Consumers will not be aware of entries on the register and ... the presence of these marks on the register does not, therefore, bear upon the enquiry as to the likelihood of confusion or deception.”
Bio-Cream had also argued that the only common feature between the trade marks in issue – the word ”bio” - was ”an entirely non-distinctive term ... a descriptive term referring to ‘biological’, ‘of living things’ and ‘of life’” . The argument here, of course, was that a registration comprising a weak or non-distinctive term has a much narrower scope of protection than a trade mark comprising an arbitrary or coined term. Again, the judge disagreed, saying: “A descriptive term would, as a general rule, describe a product. The word ‘bio’ does not describe an oil or any type of cosmetic product. It is not an everyday word in relation to any product in class 3. In fact it describes nothing. At best it is an illusion (sic) to something biological.”
The judge went on to say: “The rest of the mark, including the Drop Device, increases the likelihood (of confusion). As already stated, the likelihood that consumers will indeed be confused is made all the more probable by the fact that the Bio-Oil trademark is extremely well-known.”
There will be people who disagree with this judgment. They will say that the word “bio”, even if not totally descriptive, is surely very non-distinctive in relation to a wide range of products, including those in issue in this case. They will say that no company should be allowed monopolise the term. They will argue that, although there may have been a passing off, given the combination of similar names, colours and devices, the rectification application, being limited to the name Bio-Lotion, should have failed.
Companies shouldn’t read too much into this judgment. Distinctiveness is at the heart of trade mark law, both in terms of getting registration and in terms of enforcing rights. The best approach is to favour strong trade marks over weak ones.