This High Court case concerned an application by Nestle Trinidad and Tobago challenging seven trademarks registered under the Trademark Act (TMA) by “Dairy Distributors Ltd.” The claim objects to the pure word marks (Nos. B 18927, B 28855 and 22362) and word marks used in combination with particular ‘get ups’ (Nos. B 27065, B28802, B28803, B27064). The applicant seeks to have the marks expunged from the Register of Trademarks (RTM) pursuant to section 46 of the Act.
The judgment offers a review of the history of the parties relative to the action, an overview of the Trademark Act with regards to the powers of the court, section 13(b) and 16(b) of the Trademark Act.
The respondent started operations in Trinidad and Tobago in 1991, selling powdered milk with the words “Dairy Dairy”. The applicant did not challenge that the respondent was the only producer and distributor of powdered milk bearing the ‘get up’ of a splash of white liquid on the local market.
With regards to the pure marks, exclusive use was granted to the respondent for ‘Dairy Dairy’. The applicant submitted that the mark ‘Dairy Dairy’ was generic and described a class of goods contrary to section 13(b) of the Act. The challenge to the combination marks alleged that they incorporated the phrase ‘Dairy Dairy’ and that the image of a white splash and a glass of milk is common to the trade, is not distinctive in character and therefore contravenes section 16(b) of the Act.
It is important to note that the respondent brought a claim for trademark infringement for the applicant’s alleged use of a white splash of liquid into a glass on its products. An interim injunctive relief application, submitted against applicant (Nestle) from using the get up was refused and a date was set for trial. The trial date of that case [H.C.A No. 528 of 2003] and the instant trial coincided.
Does the mark “Dairy Dairy” contain words that generically designate milk or milk products?
The court took a practical and purposive approach to this question and treated the word ‘dairy dairy’ as a compound and inventive word as it would have been, in their view, fictitious to dissect the word.
“I am satisfied that the mark ‘Dairy Dairy’ is a single distinctive compound word which is not intended to and does not generically designate the types of goods to which it applies, but rather identifies the product of the manufacturer (Dairy Manufacturers Ltd.) in a distinctive and unique way.” – p. 10.
The court issued an order pursuant to section 16(b) that the mark be varied by the Respondent incorporating a disclaimer to the exclusive use of the word ‘dairy’. The order did not affect the registration of the mark.
Is the device of the pour and splash common and open to the trade to use?
The applicants submitted that the device with the white liquid being poured with a splash is common to the trade and open to the trade to use. A survey carried out by a research firm gathered customers’ feedback to ascertain the distinctiveness of the mark. The court relied on the survey results in their analysis.
Evidence was submitted which showed that the device of a liquid white pour and splash is widely used internationally throughout the beverage industry to show milk and milk products. As such, it was held that that the combination of the white pour and splash is common to the trade as contemplated by s. 16(b) of the Act.
Is the liquid white pour and splash non-distinctive in character?
The applicant submitted that the white pour and splash was unique and distinctive in character. According to the court, “the distinctiveness of this device when isolated must be determined by whether the ordinary viewer could recall it as distinctive when compared to other white pours and splashes considered separately” (p. 13). The court found the liquid white pour and splash to be non-distinctive when isolated from the rest of the get up. However, the application brought by the applicants was to expunge the combination of the marks from the Register.
It was conclusively held that the combination of marks which consisted of the ‘get up’ and the word ‘Dairy Dairy’ are, in their totality, distinctive in character. The court did not find it to be just or equitable to expunge the mark from the Register of Trademarks given that the mark and the ‘get up’ combined is distinctive. As such, the mark was permitted to remain on the Register provided that a disclaimer is given with respect to the exclusive use of the liquid white pour and splash. In other words, the registration gave no right to the exclusive use by the respondent of the white pour and splash, separate and apart from the marks.
Both parties submitted cases in support of and against whether compound and combination of ordinary English words remain distinctive.
Cases referred to (non-exhaustive list): Univer Plc’s Trade Mark [1984] RPC 155, Pepsi-Cola Company of Canada v Coca-Cola Company of Canada [1940] S.C.R. 17, Chaseside Engineering Coy’s Ltd. Application for a Trade Mark [1956] R.P.C 73, Wheat Company Ltd. V Kellogg Company of Canada Ltd.