New Zealand: A sweaty time for the BLACK & WHITE trade mark
The High Court of New Zealand recently handed down its decision regarding the BLACK & WHITE trade mark for “deodorants and anti-perspirants for personal use”, in Beiersdorf AG v Unilever PLC  NZHC 44. The High Court granted Beiersdorf’s appeal, holding that BLACK & WHITE is distinctive and not descriptive, overturning the Assistant Commission’s decision and allowing the BLACK & WHITE trade mark to proceed to registration.
This dispute was between two of the four major global companies in the deodorant industry, namely Beiersdorf AG (the Appellant / Applicant) and Unilever PLC (the Respondent / Opponent). Beiersdorf applied to register BLACK & WHITE and the application was accepted for registration by the Intellectual Property Office of New Zealand (IPONZ). On opposition by Unilever, the Assistant Commissioner allowed the opposition on the basis that BLACK & WHITE has no distinctive character and is a mark consisting only of a sign that designates the characteristics of deodorant. Beiersdorf appealed that decision to the High Court of New Zealand.
Curiously, although Unilever filed submissions for the appeal, the parties came to a settlement agreement prior to the appeal but Unilever did not withdraw its opposition. Consequently, the Court heard the appeal without further assistance from Unilever, leaving the Court to reply solely on the submissions, and evidence presented to the Assistant Commissioner.
Is BLACK & WHITE distinctive for deodorants?
In considering whether the BLACK & WHITE trade mark was distinctive, the Court reviewed the evidence provided by Unilever that ‘BLACK & WHITE was not distinctive, not because it was used to donate literally the words ‘BLACK & WHITE in relation to deodorants, but rather because it was used to denote a deodorant that does not stain black and white clothing‘ – the so-called “double attribute claim”.
However, the Court found that while the evidence showed that this may be the case overseas, Unilever failed to provide evidence of such use in New Zealand or how the overseas use could be linked back to create a double attribute claim in New Zealand. The Court noted that it is necessary to establish with evidence that the relevant market in New Zealand understands that the mark is a descriptive reference to a particular characteristic (a double attribute claim), and are therefore likely to want to use the term or something similar, rather than merely having a desire to use the mark. Hinton J noted at para 51 that “I consider that the complete absence of evidence, to which I have referred, is dispositive of the s 18(1)(b) issue. I cannot base my decision on overseas circumstances unless there is evidence as to their consequences in New Zealand. An absence of distinctiveness in another country may well have relevance in a New Zealand context, but the link must be established by the evidence.”
Hinton J provided some helpful comments on the assessment of distinctiveness under s18(1)(b), including:
- (para 57): There must be more than a simple likelihood that other traders will need to use a mark. If there were no more than that, then any clever mark would be at risk of ineligibility, because of course other traders would wish to use it.
- (paras 60-61) For an existing mark, a non-distinctiveness finding will probably follow if it has been used by more than one trader, so that consumers would be confused as to origin, even if there were other ways of conveying a claim. But, for novel marks, it seems to me this would only be the case when, in all practical respects, the mark is a necessary or unavoidable way of delivering a message, or where it would at least be difficult to convey a message without use of the mark. Only then would such a mark be incapable of indicating origin. In that sense, it would fail the essential du Cros test, and the du Cros guidance would be simply confirmatory.
-  But where, on the other hand, a phrase or word is indicative of an aspect of functionality in the sense that it would likely be understood by members of the public to be making a functional claim, it does not follow that it is necessarily descriptive or non-distinctive. (emphasis added)
In this case Hinton J noted that there were many other ways to refer to non-staining deodorants than needing to use the term BLACK & WHITE, including “no residue”, “white mark”, “white mark protection”, “white mark formula”, “darks and lights” and “navies and creams”, before concluding that, even if BLACK & WHITE was proven to constitute a “double attribute” functional claim, the mark was still distinctive.
Consequently, the Court found that BLACK & WHITE was distinctive for deodorants.
Is BLACK & White descriptive?
Unlike Australia, New Zealand separates out the statutory requirement that a mark is distinctive and not descriptive into two separate grounds. However, Hinton J noted at para 76 that the “descriptiveness” requirement of s18(1)(c) is a subset of the overall requirement for distinctiveness under s18(1)(b), such that “a s18(1)(c)… finding adverse to an applicant would necessarily result in an adverse s 18(1)(b) finding“.. Hinton J went on to note that the reverse scenario is not true – i.e, a finding that the mark is distinctive under s18(1)(b) does NOT mean that an objection could still not be maintained successfully under s18(1)(c).
Fortunately for Beiersdorf, the Court ordered that BLACK & WHITE proceed to registration.
Interestingly, the Australian Trade Marks Office, faced with the same opposition, found the opposition to be successful and refused to register the BLACK & WHITE trade mark in Australia for the same goods.
This case provides a number of key messages for trade mark owners and their advisors:
- Where a mark is distinctive on its face, an opponent must provide some evidence of non-distinctiveness for the applicant to rebut.
- A Court cannot rely on overseas circumstances unless there is evidence and a link to how this has affected the New Zealand market. “An absence of distinctiveness in another country may well have relevance in a New Zealand context, but the link must be established by the evidence.“
- A “double attribute” claim within a mark (i.e. as to functionality of the branded goods) per se does not make a trade mark non-distinctive.
- A novel mark should only be considered incapable of indicating origin where it would be difficult or impossible to convey a message without using the mark. However, a trade mark is not necessarily descriptive or non-distinctive simply because it indicates “an aspect of functionality in the sense that it would likely be understood by members of the public to be making a functional claim“.
- Although a finding that a mark is descriptive (s18(1)(c) will necessarily result in the mark being considered non-distinctive (s18(1)(b), the reverse scenario does not necessarily apply.
 s18(1)(b), Trade Mark Act 2002
 s18(1)(b) and (c), Trade Marks Act 2002