TRADE MARK OPPOSITIONS: AN ANALYSIS OF SECTION 41 OF THE TRADE MARKS ACT 1995 (CTH)
Media giants, Pacific Magazines (New Idea and That's Life!) and Bauer Media (Woman's Day and Australian Women's Weekly) recently came face to face in a trade mark hearing regarding use of the phrase "Test Kitchen".
Both magazines have extensively used the phrase "Test Kitchen" in their respective publications for decades and both have registered trade marks for their respective brands (e.g. AUSTRALIAN WOMEN'S WEEKLY TEST KITCHEN and NEW IDEA TEST KITCHEN). Taking it one step further, in 2011, Bauer applied to register the phrase "TEST KITCHEN" as a trade mark, which would give them a monopoly over the term.
One essential principle when it comes to trade marks is that descriptive words, with ordinary meanings, cannot generally be registered as trade marks. Bauer persuaded IP Australia that its use of the phrase "Test Kitchen" in Australian Women's Weekly over time meant that the phrase was solely associated with Bauer. On this basis, IP Australia accepted and advertised the mark in the Official Journal of Trade Marks pending registration.
Pacific then filed opposition proceedings to prevent registration of the mark.
IP Australia's Hearing Officer handed down his decision on 5 August 2015 which determined that the phrase "Test Kitchen" is descriptive and not capable of being registered as a trade mark in respect of publications, such as magazines and cookbooks.
The decision was a result of a lengthy analysis of use of the phrase TEST KITCHEN by Bauer, Pacific and third parties. The nature of that use and, in particular, whether it might be characterised as "trade mark use" for the relevant goods and services was the crux of the opposition.
Pacific's position in the opposition was simple. Essentially, they argued that TEST KITCHEN is not capable of distinguishing the relevant goods and services from the goods and services of other persons. Further, other traders will want, or need to, use the phrase "test kitchen" in the course of providing those goods and services.
The leading principles in relation to the inherent adaptability of a sign to function as a trade mark is set out in Kitto J's decision of Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 whereby the trade mark is tested by reference to whether:
- other persons trading in goods of the relevant kind will think of the phrase TEST KITCHEN and want to use it connection with similar goods;
- those other persons who think of and want to use TEST KITCHEN are actuated only by proper motives, i.e. the person is not trying to take advantage of an established brand or reputation, but rather wants to use the phrase because it forms part of the common language in the industry; and
- those other persons would use the mark in a manner which would infringe a registered trade mark granted in respect of it.
Pacific submitted that each of the above elements were satisfied and therefore TEST KITCHEN lacked, to any extent, an inherent ability to distinguish itself from the goods and services of other persons.
Bauer raised a defence by seeking to rely on the recent High Court decision of Cantarella Bros Pty Limited v Modena Trading Pty Limited  HCA 48. Cantarella considered the "ordinary significance" of foreign words when determining whether or not those foreign words (which were descriptive in Italian, e.g. Five Star and Gold) were in fact, non-descriptive in Australia as the ordinary Australian did not understand them. Therefore, they were capable of distinguishing the applicant's goods and services.
Bauer argued that the significance of that case was that only those words which are understood by the target audience as having a directly descriptive meaning in relation to the relevant goods should not have a monopoly granted in respect of them. The hearing officer disagreed with Bauer's submissions.
USE AND OTHER CIRCUMSTANCES
While it was not ultimately material to the decision, the case provides some insight into the type of use that might make a descriptive trade mark distinctive in fact and therefore registrable. The hearing officer found that the use of the phrase "test kitchen" put forward by Bauer, whilst extensive and long-running, was not use of the trade mark as applied for because most use was in close connection with the master branding of "Australian Women's Weekly". Further, it was found that Bauer's use of TEST KITCHEN was in fact not "trade mark use" but rather "descriptive use" as Bauer had used the phrase as sub-headings for food-related sections of its magazines, alongside similar headings for sections on fashion, beauty and health, all of which are purely descriptive of the subject matter of the magazines.
ClarkeKann acted for Pacific Magazines in the opposition. For a full copy of the decision, visit http://www.austlii.edu.au/au/cases/cth/ATMO/2015/69.html
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