Part 2: Trade mark use – what, when & who?.

In part 1 of our blog we discussed Aldi’s court battle with Moroccanoil Israel (MI).

In part 2, we discuss the importance of trade mark ‘use’ and highlight the issues MI had in establishing its word mark ‘Moroccanoil’ (Trade Mark) was distinctive of its products.

What happened?

The Court held the Trade Mark was descriptive and not capable of distinguishing MI’s products from the products of other traders.

MI failed to provide evidence of use that proves the Trade Mark had become distinctive of its products at the time its trade mark application was filed. This means:

• MI was unable to register; and
• other traders may use,

the Trade Mark for hair care products in Australia.

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The Court’s decision turned on an analysis of MI’s evidence.

(a) ‘What’ was being used?

Justice Perram stated that most of MI’s marketing activities involved its full branding, including the Moroccanoil logo. Consumers would recognise, or be ‘struck by’, MI’s branding and not the Trade Mark. This means the Trade Mark (being plain words) had not become distinctive of MI’s products.

(b) ‘When’ was it being used?

Justice Perram’s conclusion that the Trade Mark was not inherently capable of distinguishing MI’s products from the products of others (instead of concluding it was to some extent capable of distinguishing) was important.

If his Honour had concluded the latter, MI could have relied on evidence of use before the trade mark application date and after that date. Unfortunately for MI, the Trade Mark was held not inherently capable of distinguishing MI’s products. This meant it could only rely on evidence of use up to the trade mark application date.

(c) ‘Who’ was using it and who was the use directed at?

Another 2 factors that weighed against MI were, most:

• of its marketing activities were directed at members of the trade rather than consumers; and
• ‘use’ of the Trade Mark was by people other than MI (such as third parties reviewing MI’s products).

What this means for you.

Applying for a trade mark can be a costly and time-consuming exercise. Your chances of overcoming an objection increase if:

• you have extensive evidence of use relating to activity before the trade mark application date;
• you have been using the trade mark you have applied for, rather than a variation of that trade mark; and

• consumers have been exposed to your promotional material.

To avoid receiving a ‘descriptiveness’ objection, you should seek advice from our Intellectual Property team during your branding process.