FEDERAL COURT OF AUSTRALIA

Unilever Australia Ltd v Societe Des Produits Nestlé S.A. [2006] FCA 782

TRADE MARKS – application for cancellation of registration of the trade mark GO ON… – slogan – no use prior to filing date – common expression – exhortation to indulge – use by other traders – use with multiple tag lines – not a composite mark – use of ellipsis – punctuation to indicate a pause – no inherent adaptation to distinguish – evidence of intended use – not use to indicate origin of goods – intended use not use as a trade mark – no capacity to distinguish – registration cancelled

Trade Marks Act 1995 (Cth) ss 41, 88

Anheuser-Busch Inc v Budejovický Budvar, Národnì Podnik (2002) 56 IPR 182 cited

Aston v Harlee Manufacturing Co. (1960) 103 CLR 391 applied

Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 209 ALR 93 applied

Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285 applied

Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 applied

British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 applied

Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 applied

Canada (Registrar of Trade Marks) v Cie internationale pour L’informatique CII Honeywell Bull, SA I [1985] 2 FC 766 cited

Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 cited

Chris-Telle Pty Ltd v Australian Swimming Inc (2005) 64 IPR 110 cited

Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 applied

“Cycling IS…” Trade Mark Applications [2002] 37 RPC 729 considered

Effem Foods Pty Ltd v Unilever Plc (2000) 50 IPR 627 applied

Fieldturf Inc v Office for Harmonisation in the Internal Market Case [2004] EUECJ T-216/02considered

Hugo Boss Fashions Inc v Federal Insurance Co, 252 F. 3d 608 (2d Cir. 2001), 59 USPQ2d 1161 considered

I CAN’T BELIEVE IT’S YOGURT Trade Mark [1992] 109 RPC 533 considered

In the Matter of an Application for Registration of a Trade Mark by Magdalena Securities (1931) 48 RPC 477 considered

Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 applied

Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 applied

Mark Foy’s Limited v Davies Coop and Company Limited (1956) 95 CLR 190 applied

Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 applied

Nestlé SA’s Trade Mark application (Have a Break) [2004] FSR 2 considered

Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 applied

Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 applied

Oxford University Press v Registrar of Trade Marks (1990) 17 IPR 509cited

re Boston Beer Co., 198 F3d 1370 (Fed. Cir. 1999), 53 USPQ2d 1056 considered

re Carvel Corporation, 223 USPQ 65, PO TM TAppBd, 1984 considered

re Hills Bros. Coffee Inc, 120 USPQ 537 considered

re O F Mossberg & Sons Inc, 175 USPQ 191 considered

Registrar of Trade Marks v Muller (1980) 144 CLR 37 cited

Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 applied

Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 cited

Samuel Taylor Pty Ltd v Registrar of Trade Marks (1959) 102 CLR 650 applied

Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 applied

T.G.I. Friday’s Australia Pty Ltd v TGI Friday’s Inc (2000) 100 FCR 358 considered

Thomson v B Seppelt & Sons Ltd (1925) 37 CLR 305 applied

Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 considered

Unilever Australia Ltd v Karounos (2001) 113 FCR 322 applied

Wella AG v Registrar of Trade Marks (1996) 33 IPR 374 applied

Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242 applied

DR Shanahan, Australian Law of Trade Mark and Passing Off, 3rd edn, LBC (2003)

House of Representative Debates (1995) pp 1909-1911

Macquarie Dictionary, 3^rd edn & rev, Macquarie Library Pty Ltd, Sydney, 2003 (1981)

Shorter Oxford English Dictionary, 5th edn, Oxford University Press, Oxford, 1993 (1933)

UNILEVER AUSTRALIA LIMITED (ACN 004 050 828) v SOCIETE DES PRODUITS NESTLÉ S.A.

NSD819 OF 2004

BENNETT J

22 JUNE 2006

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD819 OF 2004

BETWEEN:	UNILEVER AUSTRALIA LIMITED (ACN 004 050 828) APPLICANT
AND:	SOCIETE DES PRODUITS NESTLÉ S.A. RESPONDENT
JUDGE:	BENNETT J
DATE OF ORDER:	22 JUNE 2006
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The Register be rectified by cancelling the registration of Australian trade mark no. 898159 in respect of the goods in respect of which the trade mark is registered.

2. The respondent pay the applicant’s costs.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD819 OF 2004

BETWEEN:

UNILEVER AUSTRALIA LIMITED (ACN 004 050 828)

APPLICANT

AND:

SOCIETE DES PRODUITS NESTLÉ S.A.

RESPONDENT

JUDGE:	BENNETT J
DATE:	22 JUNE 2006
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1 The issue is whether “GO ON…” should remain registered as a trade mark.

2 The applicant (‘Unilever’) seeks an order under s 88 of the Trade Marks Act 1995 (Cth) (‘the Act’) that the Register of Trade Marks be rectified by cancellation of Australian Trade Mark No. 898159 for GO ON… (‘the trade mark’) in Class 30. The respondent (‘Nestlé’) registered the trade mark with effect from 17 December 2001 (‘the date of registration’) in respect of a broad category of goods in Class 30:

‘Coffee, coffee essences and coffee extracts; mixtures of coffee and chicory; preparations to be used as substitutes for coffee; tea, tea extracts; cocoa, and preparations having a base of cocoa; chocolate, chocolate products (for food), non-medicated confectionery and candy; sugar; mayonnaise; flour, preparations made from cereals and/or rice and/or flour for food for human consumption; breakfast cereals, bread, biscuits (other than biscuits for animals), cookies, cakes, pastry; ice cream, water ices, frozen confections, and preparations for making ice-cream and/or water ices and/or frozen confections; honey and honey substitutes; snack foods; prepared meals, desserts and puddings; all included in this class.’

3 The questions that arise are:

(1) Can a trade mark lack a capacity to distinguish the goods?

(2) Is the trade mark inherently adapted to distinguish the goods?

(3) What was the intended use of the trade mark?

(4) Was the intended use as a trade mark?

4 Unilever is in the same trade as Nestlé and has also applied for registration of the trade mark “GO ON…”. Unilever has used the expression “Go On…treat yourself” in relation to the promotion of its ice cream products. Nestlé has threatened Unilever with infringement proceedings under s 120 of the Act. It is not in dispute that Unilever has standing as an “aggrieved person” to bring an application for cancellation of the registration of a trade mark (s 88(1) of the Act).

5 The Court may cancel the registration of a trade mark on any of the grounds on which the registration of the trade mark could have been opposed under Division 2 of Part 5 of the Act (s 88(2)(a) of the Act). Section 57 in Division 2 Part 5, in turn, provides that the registration of a trade mark may be opposed on any of the grounds specified in Division 2 of Part 4. Section 41 is within Division 2 of Part 4 of the Act and, accordingly, provides the grounds for cancellation of the trade mark on which Nestlé relies.

6 It is not in dispute that the Court considers the question as at the date of registration (Unilever Australia Ltd v Karounos (2001) 113 FCR 322 at [13]). Unilever accepts that it bears the onus of demonstrating that the mark should not have been accepted under s 41(3) or s 41(5) of the Act.

7 During the hearing, Nestlé offered to limit the category of goods for which the trade mark was to be registered to ‘ice cream, water ices, frozen confections and preparations for making ice cream and/or water ices and all frozen confections’. This would result, it was submitted, in a higher degree of inherent adaptation to distinguish Nestlé’s goods.

Can a trade mark lack a capacity to distinguish the goods?

8 Nestlé distinguishes cases decided under the Trade Marks Act 1955 (Cth) (‘the 1955 Act’) as being from a time when certain marks were held to be inherently unregistrable no matter how distinctive they might have become in fact. That position, Nestlé submits, was altered by the Act.

9 Decisions under the1955 Act concerning the inherent adaptation to distinguish a trader’s goods are relevant to the same question under the Act (Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 59). The history of trade mark legislation in Australia is discussed in detail in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 by French J [35]–[44] and by Stone J at [134]–[143]. The Act did not change the nature or policy of trade mark use. The changes brought about by the Act were, according to the Working Party to Review Trade Mark Legislation established by the Minister for Science, Customs and Small Business in 1989 and its report entitled ‘Recommended Changes to the Australian Trade Marks Legislation’, in part to ensure that Australia recognised the ‘developments in marketing and technology throughout the world’. Registrable marks would no longer be confined to signs consisting of words, letters, numerals, figurative elements or combinations of these but would also include colours, shapes, sounds, tastes or smells and aspects of packaging. These changes were described in the Second Reading Speech for the Act as ‘…an evolution from, rather than a revolutionary change of, the 1955Act’ (House of Representative Debates (1995) pp 1909-1911).

10 In commenting on these changes in Kenman Kandy Stone J recognised at [142] that:

‘the changes effected by the 1995 Act were not radical changes in that, while they expanded the ambit of trade mark operation, they did not change the nature or policy of trade mark use…[nor]…detract from the fundamental requirement that a trade mark must have the capacity to distinguish one trader’s goods from those of another; s 41(2) of the 1995 Act.’

11 A trade mark must distinguish goods as provided by s 17 of the Act:

‘A trade mark is a sign used, or intended to be used, todistinguish goods or servicesdealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’

12 By s 41(2) the registration of the trade mark must be cancelled if the trade mark is not capable of distinguishing the goods in respect of which it is registered from the goods or services of other persons.

13 Nestlé points to the scheme of s 41 and, in particular, s 41(6)(a) which relevantly provides for a trade mark that is not inherently adapted to distinguish the designated goods. If an applicant establishes that, because of the extent to which it has used the trade mark before the filing date, it does distinguish the goods, then the trade mark is taken to be capable of distinguishing those goods from the goods of other persons pursuant to s41(6)(a).

14 Note 1 to s 41(6) states that trade marks in this category, namely trade marks that are not inherently adapted to distinguish goods, are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of the goods or the time of production of goods. This note is a guideline only and does not have legislative force. It has, however, been observed by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at [30] that ‘it fairly reflects the trend of relevant judicial authority’.

15 Slogans are composed of more than one word and can include phrases such as “go on”. They are commonly used in the course of trade and advertising. There are numerous examples of phrases and exhortations that can obtain distinctiveness. No different test is applied in assessing slogans as trade marks or in determining their inherent capacity to distinguish. Slogans can be registered as trade marks if they are capable of distinguishing the applicant’s goods from those of other traders.

16 The increasing use of slogans in advertising and their use by traders as trade marks, as well as the inclusion of colours, shapes, colours, tastes or smells and aspects of packaging in the Act, has broadened the ways in which distinctiveness can been acquired. In particular, it has led to the use of multiple trade marks, with distinctiveness being acquired by a slogan by use with another strong trade mark. There are examples of ‘brand cueing’ which exhibit similar language to GO ON… such as “Good on you mum Tip Top’s the One!” and “Anyhow… Have a Winfield”. The use of a slogan in conjunction with a registered mark may lead, in time, to recognition by the public that separate use designates the origin of a product and distinguishes it from other products.

17 Nestlé submits that, taking account of s 41(6), there is no class of words excluded by policy from trade mark registration and no trade marks that are incapable of distinguishing goods. Nestlé submits that the Act has changed the previous position that certain marks could never become distinctive because they were inherently unregistrable. That is not a correct analysis.

18 The effect of s 41(2) is that a trade mark without a capacity to distinguish the designated goods must not be registered. There are three ways of determining capacity to distinguish.

19 The first is that the trade mark is inherently adapted to distinguish the goods from those of others (s 41(3)).

20 The second is that the trade mark is to some extent inherently adapted so to distinguish and, because of the combined effect of that inherent adaptation, the use or intended use of the trade mark and any other relevant circumstances, the trade mark does or will distinguish the goods as those of the trader (s 41(5)). If the trade mark does or will, to the satisfaction of the Court, distinguish the goods, it is taken to be capable of distinguishing the goods from those of other persons (s 41(5)(b)). If the Court is not so satisfied, it is taken not to be capable of distinguishing the goods from those of other persons (s 41(5)(c)).

21 The third is that a trade mark that is not inherently adapted to distinguish the designated goods but, because of the extent of use prior to the filing date of the application to register the mark, the trade mark does distinguish the goods. It is then taken to be capable of distinguishing them for the purposes of s 41(2) (s 41(6)(a)). Otherwise, the trade mark is taken not to be capable of distinguishing the goods (s 41(6)(b)).

22 Nestlé concedes that s 41(6)(a) has no application to this trade mark as there was no use of GO ON… by Nestlé prior to the registration date. Nestlé accepts that, if neither s 41(3) nor s 41(5) apply, the trade mark cannot survive and that, if Nestlé fails under s 41(5), it also fails under s 41(3).

23 It follows that a trade mark may lack a capacity to distinguish. If the trade mark has no inherent adaptation to distinguish, it lacks a capacity to distinguish and should be cancelled.

Is the trade mark inherently adapted to distinguish Nestlé’s goods?

24 Nestlé relied upon the acceptance for registration without requisition or opposition from which, it submits, it can be inferred that the Registrar considered that the mark was inherently adapted to distinguish Nestlé’s goods.

25 The acceptance for registration has marginal relevance in the context of this application for cancellation of registration.

26 Nestlé submits that GO ON… is not descriptive of the goods for which the trade mark is registered; it has no reference to any characteristic of the goods; not to their quality, type or origin. “Go on...ice cream” does not make any allusion to the quality of the goods themselves and is not an expression usually applied to or descriptive of ice cream. Accordingly, Nestlé submits, cases that relate to descriptive marks can be distinguished.

27 I accept that the trade mark is not descriptive of the goods to which it is applied and does not indicate a characteristic of them. GO ON… can be viewed as an exhortation, not describing the goods at all but an emotive direction to do something or take action and, as used by Nestlé, to taste ice cream. As Dixon CJ explained in Mark Foy’s Limited v Davies Coop and Company Limited (1956) 95 CLR 190 at 194 (‘the Tub Happy Case’) :

‘Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.’

However, the fact that the trade mark is not descriptive of the goods does not mean that it has an inherent capacity to distinguish.

Relevant principles

28 The expression “inherently adapted to distinguish” has been the subject of much judicial analysis. In Kenman Kandy Lindgren J, although in dissent in the application of the principle, elucidated the concept and the principles at [81] to [84]. His Honour commented that sub-sections 41(5) and (6) make it clear that the expression excludes from consideration any secondary significance a mark acquires from use and that there are degrees of inherent adaptation to distinguish. It depends on the nature of the mark itself and is therefore not something that can be acquired. The nature of the range of goods to which the mark is to be applied is also to be taken into consideration as are the various ways in which it might be used or is proposed to be used in relation to those goods (at [84]). His Honour proposed that inherent adaptation to distinguish can be tested by assessing how it would be perceived and understood by members of the public seeing it used for the first time, because that test excludes the possibility of a trade mark significance arising from use.

29 The question of distinctiveness is not whether the mark will be adapted to distinguish if registered but whether, irrespective of registration and as determined before registration, the trade mark is likely to distinguish the goods (Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624; Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511). It is insufficient that the mark may have the potential or capacity to acquire a distinctive character in the future (Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 209 ALR 93 at [30]). The power of advertising may mean that any mark other than a pure description may acquire the capacity to distinguish a trader’s goods, regardless of whether or not it does so at any particular time (Ocean Spray at [25]). Acquired distinctiveness is achieved only because the relevant community has, since the priority date, been educated to see the mark as an indicator of the origin of particular goods. An inherent capacity is an ‘essential permanent characteristic’ and ‘intrinsic’ to the trade mark (Shorter Oxford English Dictionary, 5th edn, Oxford University Press, Oxford, 1993 (1933)).

30 As Gibbs J remarked in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424 that inherent adaptability is ‘something which depends on the nature of the trade mark itself…and therefore is not something that can be acquired’. There is a distinction between ‘inherently adapted to distinguish’ and ‘inherently capable of distinguishing’. Sufficient distinguishing characteristics may mean that it is to be expected that distinctiveness will result, whatever the type and scale of the user and that distinctiveness can be acquired by appropriate user, thereby overcoming a negative quality in the mark. In Burger King Gibbs J observed at 425 that an inquiry as to inherent adaptability must be made where the question is whether the trade mark is capable of becoming distinctive as well as when the question is whether it is in fact distinctive.

31 The more apt the word or expression is to describe the goods, the less it is inherently apt to distinguish them as the goods of a particular manufacturer (Clark Equipment at 515). The setting or context in which the use occurs is relevant in determining whether the use is descriptive or for the purpose of indicating a connection in the course of trade between the product and the trade mark applicant, as a badge of origin (Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 424–5; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 350–1). The question of factual distinctive character is one of degree. For common or descriptive or laudatory words, however, extensive use is unlikely to be sufficient (British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 306 approved by Wilcox J in Ocean Spray at [24]). It is necessary to ascertain ‘the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess’ (the Tub Happy Case at 195).

32 In Clark Equipment at 514 Kitto J (citing Du Cros at 635) said that the applicant’s chances of success in distinguishing its goods ‘largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods’. Kitto J concluded at 516 that some words are ‘so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration’. It is ‘the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess’ (at 514). Other traders ought to be at liberty to use words for the sake of their ordinary meaning (Ocean Spray at [33]). The Clark Equipment test does not, however, identify all circumstances in which a trade mark will not satisfy the test (Kenman Kandy at [98] per French J).

33 An expression may not in any way be descriptive of any of the characteristics of a product but it does not necessarily follow that it is in some way distinctive of the product so as to distinguish it from the products of other traders. On the other hand, a descriptive word may to a degree have a capacity to distinguish and be inherently adapted to distinguish because the description itself involves an unfamiliar, obsolete, unexpectedly evocative or purely emotive usage (Austereo at [39]).

34 Care is to be taken of the precise expression the subject of the trade mark. Unusual punctuation or grammar may set the expression apart as unidiomatic. A word descriptive of one category of goods may not be descriptive of a different category and thereby have a capacity to distinguish with respect to that different category. One test is whether the description is of the character of the products or services (T.G.I. Friday’s Australia Pty Ltd v TGI Friday’s Inc (2000) 100 FCR 358at [62]). If not apt for normal description and not likely to be required by other traders in the normal course of trade and capable of distinguishing the goods nominated, the trade mark may be registered (Effem Foods Pty Ltd v Unilever Plc (2000) 50 IPR 627 at 633).

35 Evidence of use does not assist in the consideration of inherent capacity or adaptability of the expression to distinguish or become distinctive (Samuel Taylor Pty Ltd v Registrar of Trade Marks (1959) 102 CLR 650 at 658). Evidence of use is relevant only to the question of whether the mark possessed the required capability at the priority date (Austereo at [33]). Evidence that a particular expression has assumed a secondary and distinctive meaning after registration may afford some indication that, initially, the expression had a capacity to become distinctive but as the High Court noted in Samuel Taylor at 657, use in combination with another trade mark makes it ‘difficult to see how the critical words could have acquired a distinctiveness of their own’.

36 Even where extensive use is relied upon, care must be taken before concluding that substantial use has displaced the common meaning and has come to denote the mark of a particular trader, particularly where it has been used in conjunction with a trade mark (British Sugar at 302). The evidence should establish that the proposed trade mark is a reliable badge of trade origin on its own and covers the full range of goods covered by the registration (British Sugar at 303).

Examples in Australia and other jurisdiction

37 In Austereo the words “sounds different”, the proposed trade mark, had been used in combination with one of more Nova trade marks. Finn J observed that the “sounds different” formula when considered severally is made up of descriptive words that are commonplace in industry usage. The composite formula while not entirely devoid of inherent adaptation to distinguish, was ‘by no means sufficiently adapted to distinguish as to justify its being characterised as, of itself, being inherently adapted to distinguish’ (at [48]). Finn J rejected the submission that the words were an indirect evocative reference to an aspect of Nova’s radio broadcasts.

38 In Top Heavy Pty Ltd v Killin (1996) 34 IPR 282, Lehane J considered the use of “Chill Out” as a trade mark in connection with Coca-Cola. His Honour drew a distinction between the Tub Happy Case where the phrase “Tub Happy” was held to have no particular meaning and was registrable and “Chill Out” which has a meaning. The question in Top Heavy was whether use on T-shirts indicated a trade origin rather than, or at least as well as, conveying some other message to the reader. His Honour observed that the question often arises as to whether a claimed trade mark is capable of being read as descriptive but that is not necessarily the question in all cases. There was no evidence that the phrase had acquired a secondary meaning. Lehane J concluded that the message was an exhortation to the reader, reinforced by certain images and an advertising message that Coca-Cola was a suitable medium or accompaniment of relaxation. It was not a message about trade origin.

39 Some assistance can be gained from other jurisdictions where capacity to distinguish is relevant. The United Kingdom Trade Marks Act 1994 s 3(1)(b)–(d) provides that trade marks which are ‘devoid of any distinctive character’ cannot be registered, such as words that are purely laudatory or descriptive.

40 HAVE A BREAK…HAVE A KIT KAT and HAVE A KIT KAT are registered trade marks in the United Kingdom. Nestlé sought to register HAVE A BREAK. The Court of Appeal found that HAVE A BREAK lacked inherent distinctiveness and approved the hearing officer’s conclusion that the mark would be ‘understood by consumers as an origin neutral invitation to consume a snack’ (Nestlé SA’s Trade Mark application (Have a Break) [2004] FSR 2 at 23).

41 Robin Jacob QC in I CAN’T BELIEVE IT’S YOGURT Trade Mark [1992] 109 RPC 533 considered whether that phrase was one used or proposed to be used for the purpose of indicating a connection in the course of trade between the yoghurt and the applicants. He drew a distinction at 537, as in the Have a break case, between a phrase that is no more than an exhortation to buy, a phrase used ‘purely in an advertising sense and not in a trade mark sense at all’ and, for example, a trader’s name. He noted that in between there may be phrases which serve both functions, that is branding and as an advertising slogan. In those circumstances, intended use is relevant. Use of the slogan with another trade mark may indicate the mere advertising extreme but not necessarily. If used with no other name, it is more likely to be a true trade mark as there is no other indication of source of the goods. Such was the case with “I can’t believe it’s yogurt” and that was sufficient for Mr Jacob to conclude that the public would take the phrase as the brand name. He also concluded that there would be no interference with other traders in yoghurt.

42 An applicant sought to register “Cycling IS…” in relation to “clothing, footwear and headgear” and “advertising, all relating to the cycling industry” (“Cycling IS…” Trade Mark Applications [2002] 37 RPC 729). There was no claim to distinctiveness through use prior to the date of the application. At [32] Geoffrey Hobbs QC observed:

‘There is a degree of foreseeability in the conclusion that a syntactically unusual juxtaposition of words in the nature of a lexical invention would not be understood purely descriptively by the relevant class of persons. There is likewise a degree of foreseeability in the opposite conclusion that a sign or indication would simply be perceived by such persons as a new form of description. The latter conclusion points to unregistrability.’

“Cycling IS…” includes, of course, the reference to cycling. There, as in GO ON…, ‘[t]he ellipsis visibly (and when represented audibly by a pause) invites people to add meaning to the words’(at [62]). The balance for registration purposes was, in Mr Hobbs’ opinion at 745, on one hand the fact that the sign is ‘cryptic to a degree which makes it more likely than not that they would carry connotations of trade origin’ and, on the other, that it is ‘visually and linguistically meaningful in a way which is more likely than not to relate the goods and services to the activity of cycling without also serving to identify trade origin’. He recognised at [72] that the treatment of the words was not unconventional and concluded at [73] in refusing registration, that the sign identified cycling for marketing purposes, which other bicycle retailers might wish to use.

43 The European Court at First Instance considered “LOOKS LIKE GRASS…FEELS LIKE GRASS…PLAYS LIKE GRASS” in Fieldturf Inc v Office for Harmonisation in the Internal Market Case [2004] EUECJ T-216/02 and stated at [25]:

‘Registration of a trade mark which consists of signs or indications which are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use. However, a sign which, like an advertising slogan, fulfils functions other than that of a trade mark is distinctive…only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a difference commercial origin.’

The trade mark was held at [29] to possess the necessary ‘minimum of distinctiveness’ but was also held merely to concern the properties of the goods, which describe the goods and do not immediately indicate their commercial origin.

44 In the United States under the Lanham Act § 67.763, slogans can be registered on the Supplemental Register even if they possess some descriptive meaning, as long as they possess some degree of distinctiveness. The trade mark “NO WORK…NO WASTE…GOOD TASTE” was held to be registrable for instant coffee because it possessed a degree of distinctiveness and ingenuity in phraseology as applied to the goods and so could distinguish them (re Hills Bros. Coffee Inc, 120 USPQ 537). In considering whether “MORE GUN FOR THE MONEY” could be registered in re O F Mossberg & Sons Inc, 175 USPQ 191, it was held that this was ‘a merely informational phrase…completely void of imagination’ which tells the purchaser that guns are being sold for less money than those of competitors. The Court was of the view that a laudatory expression ‘must have some degree of ingenuity or say something in a slightly different way from that expected to be said about a product’. In re Carvel Corporation, 223 USPQ 65, PO TM TAppBd, 1984, “AMERICA’S FRESHEST ICE CREAM” was not found to have any extra element or different twist or to consist of an unusual combination of words to enable the slogan to qualify for Supplemental Register registration. “THE BEST BEER IN AMERICA” was held to be unregistrable because it was ‘so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as trademark’ (re Boston Beer Co., 198 F3d 1370 (Fed. Cir. 1999),53 USPQ2d 1056 at 1058). In Hugo Boss Fashions Inc v Federal Insurance Co, 252 F. 3d 608 (2d Cir. 2001), 59 USPQ2d 1161 it was held by the Court of Appeal for the Second Circuit that “BOSS” did not qualify as a trademarked slogan because it merely reminded consumers of the brand, and a slogan must be something other than a house mark or product mark which provides such reminder.

Consideration

45 Expressions that are purely emotive may have an inherent adaptation to distinguish (Wella AG v Registrar of Trade Marks (1996) 33 IPR 374 per Lehane J). One question is whether the mark is free of associations or significations that prevent its inherent adaptation (Kenman Kandy at [146] – [146] per Stone J with whom French J agreed).

46 “Go on” is used and has been used as an exhortation by other traders. There was evidence of use by other traders of “Go on…indulge” or “Go on indulge” or “Go on – indulge” or “Go on, indulge yourself!” in relation to a variety of objects such as aromatherapy, biscuits, desserts and spa therapy. Other uses included “Go on, try it!” for a particular dessert and “Go on, treat yourself” for ice cream. That is, there were examples of use, after the application date, of variants of “Go on…” or “Go on” followed by a pause indicated by a comma or a dash, by a variety of traders for a variety of “indulgent” goods. Those uses were sometimes closely associated with other trade marks and sometimes used in descriptive passages removed from the trade mark.

47 Unilever prepared a schedule of extensive uses of “Go on” by other traders. Examples included; “Go on…give one a try” and “Go on, treat yourself today” (Kentucky Fried Chicken); “Go on…spoil yourself!” (Happy Snax and the AIDS Trust of Australia); “Go on…give in to temptation” (News Magazines Pty Limited’s Donna Hay Magazine); “Go on…take it all off!” (the Leukaemia Foundation of Australia). There was also an audio example of Ernie Dingo for the National Tourism Initiative urging customers to “go on”, try the promoted holiday.

48 Whenever “Go on” is used, the context is almost invariably connected with what may be called an indulgence. That is the way in which Nestlé has used “Go on”. It is a common expression and may be an exhortation that other traders would wish to use. Examples of use by other traders of “Go on” (without the ellipsis) indicated non-distinctive use.

49 “Go on” is not an expression that was invented by Nestlé. In the Shorter Oxford English Dictionary, the relevant definition of “go on” is ‘continue, persevere’. In the Macquarie Dictionary (Macquarie Dictionary, 3^rd edn & rev, Macquarie Library Pty Ltd, Sydney, 2003 (1981)), it is ‘to go ahead; proceed; continue’. It is and was prior to the registration date a commonly used expression in connection with a range of goods. It was generally used in connection with goods seen to be indulgent.

50 Other examples of use, prior to the date of registration included: “Go on, dare to try it” by Dairy Farmers in Australia on radio (23 February 1998) to promote flavoured milk; Ernie Dingo on radio, “Go on [pause] get out there [pause] see Australia” (21 November 2000, 28 March 2001 and 5 April 2001). International examples included: from New Zealand (“Go on indulge” for Griffins chocolate biscuits, 11 June 1997); from Canada (“As They Go On” for Levis 12 August 1997); and from the United Kingdom (“Go on. Go ahead. Give in” for United Biscuits).

51 As in Top Heavy, GO ON… is part of an exhortation to try the product and no more likely to be taken as distinguishing the goods than “indulge” or “treat yourself”. The phrase “Go on” is a common English expression that other traders, without improper motive, would want to use in respect of their own goods for the signification the expression ordinarily possesses.

52 As Finn J said in Austereo at [48], the expression is not sufficiently adapted to distinguish Nestlé’s goods as to justify it being characterised as, of itself, being inherently adapted to distinguish; ‘it cannot “do the job” of distinguishing entirely on its own’. Subsequent use in conjunction with Nestlé and other Nestlé trade marks may have resulted in a capability to distinguish but that is, as it was in Austereo, insufficient to support an inference that the required capability existed at the priority date.

53 The decision in Cycling IS... is apposite. There was, as here, no claim to distinctiveness through prior use and the use of the expression was not unconventional. As in Top Heavy, there is no evidence that the phrase had acquired a secondary meaning. The expression is not a lexical invention and is an expression that others marketing indulgent products, like ice cream, might wish to use. As Mr Hobbs concluded in Cycling IS…, neither the nature of the expression nor its presentation are sufficiently striking to function as an indication of trade origin in relation to the specified goods.

54 The issue is not whether the trade mark is ‘adapted to acquire distinctiveness’ but rather ‘is the trade mark instantly adapted to distinguish the proprietor’s goods in his future trade?’ (Thomson v B Seppelt & Sons Ltd (1925) 37 CLR 305 at 312 per Isaacs J as discussed in Oxford University Press v Registrar of Trade Marks (1990) 17 IPR 509 at 525 and Blount at 61). Section 41 of the Act is concerned with capacity to distinguish and the extent of that capacity. This was, as pointed out in Oxford (by Lockhart J at 514 and by Gummow J at 522–3), the approach taken by the High Court in Registrar of Trade Marks v Muller (1980) 144 CLR 37at 42. The distinction made was between “inherently adapted so to distinguish”; “adapted to distinguish” by reason of a combination of inherent adaptation and use or other circumstances; and “capable of becoming distinctive”, becoming “adapted to distinguish” by reason of extensive use or other circumstances.

55 An inherent capacity to distinguish should exist as an intrinsic characteristic of the mark. It is not the same as acquired distinctiveness achieved through advertising and actual use. That is dealt with in s 41(6).

56 In British Sugar, Jacob J at 306 said, with respect to “devoid of any distinctive character”, that ‘the phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark?’. Stone J in Kenman Kandy at [145] observed that signs which are descriptive of the character or quality of the relevant goods cannot be inherently distinctive because the words have significations or associations that invite confusion. It is the absence of association and signification that accounts for signs and invented words being found to be inherently adapted to distinguish a trader’s product (at [146]–[148]). The ‘concept is negative not positive’.

57 This is not a case where, to paraphrase Kitto J in Clark Equipment at 513, a mark that seems unadapted for the purpose of signifying trade origin has come by actual use or special circumstances to be so closely associated with Nestlé’s goods in the mind of the public that its apparently disqualifying signification is effectually obscured and distinctiveness in fact achieved. In such a case, the extent of inherent lack of adaptation is weighed against the degree of acquired distinctiveness in determining the question whether the mark is registrable as being adapted to distinguish the goods. The question also arises whether other persons are likely to want to use the mark, legitimately, in connection with goods for the sake of the signification that the words ordinarily possess. If the words of the trade mark fall into that latter category, the mark will not be adapted to distinguish although it may be distinctive as a common law mark (Oxford at 525).

58 In TGI Friday’s, the Full Court at 368 distinguished between the expressions “TGI Friday” and “Thank God It’s Friday”, the latter being an expression regularly used in relation to and expressing notions of relaxation and refreshment (and, it can be deduced, not inherently adapted) and TGI Friday’s which is not idiomatic English. The presence of the apostrophe to indicate the possessive form of Friday, Friday’s, was sufficient to ‘give the mark inherent distinctiveness’. Nestlé submits that the ellipsis in the trade mark is similarly sufficient. Nestlé submits that, in determining capacity to distinguish, expressions such as “Go On...”, “Go On –”, and “Go On” with no punctuation following, are separate and no notice should be taken of the desire of traders to use forms that differed from the trade mark. Similarly, it submits, use for different and well separated classes of goods should be disregarded.

59 Does the punctuation make a difference? Nestlé has used the ellipsis to create a pause in anticipation of the action the reader is being exhorted to undertake. The variants of “Go on” used by other traders prior to the registration date, frequently used punctuation such as a comma, a dash or an ellipsis following the words to indicate a pause. In each such case, with one exception, there was a punctuation mark or indication of a pause after the “go on”, the same pause indicated by “…”. There were numerous examples in evidence of use after the registration date of “go on” with different punctuation devices to indicate a pause including an advertisement for a Donna Hay Magazine, “go on…give in to temptation” that prompted a letter from Nestlé’s solicitors. No distinction can be drawn aurally with the punctuation device of an ellipsis, a comma or a dash. For example, GO ON…, “Go On” and “Go On (pause)” are common English expressions that other traders would be likely, without improper motive to desire to use.

60 Continued registration of the trade mark would limit the rights of Unilever and other traders to use the phrase “Go on”. It may also limit their right to use “Go on” with other punctuation that indicates a pause, as does an ellipsis, without fear of infringement. In this respect, aural representations of the trade mark in television or radio advertisements are relevant and the different devices indicate the same pause. Potential infringement by a mark substantially identical or deceptively similar to the trade mark is relevant to a consideration of inherent adaptation to distinguish (Kenman Kandy at [95] per Lindgren J and at 161 per Stone J).

61 The ellipsis does not provide a source of distinction. TGI Friday’s does not stand for the general proposition that all grammatical differences are significant or sufficient to provide an inherent adaptation to distinguish (Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285), let alone where different forms of punctuation convey the same pause without a different meaning.

62 An ellipsis indicates an ‘omission from a sentence of a word or words which would complete or clarify the construction’. The three dots do not indicate words necessary for an understanding of the phrase but simply make the complete syntactical construction. In Cycling Is… reference was made at [7] to an extract from “Mind The Stop. A Brief Guide to Punctuation with a Note on Proof-Correction” by G V Carey which noted that ‘“[t]hree full-stops in combination are used to mark the point where words are omitted in a quotation” and “[t]his symbol is also occasionally convenient in ordinary narration when something is left for the reader’s imagination to supply”’.

63 The use of the ellipsis in GO ON… could be an indication that additional words or phrases are needed to complete the sentence. Those words may be supplied or used so that the missing words are to be completed by the reader/listener. This is in contrast, for example, to the expression “Go on!” which has a different meaning, ‘an exclamation of astonishment verging on disbelief’ (Macquarie Dictionary) and does not suggest the addition of words.

64 It is not suggested that the capital letters provide a source of distinctiveness.

65 The expression “GO ON…” is commonly understood, and would have been commonly understood as at the date of registration, as being the first part of a two part exhortation, linked by a “pause”. Moreover, that interpretation accords with the Nestlé’s intended meaning of those words and that punctuation. The use of one part of a phrase with variations does not necessarily render the constant part, GO ON… incapable of being a trade mark alone rather than as a composite phrase (cf blank space undertakings DR Shanahan, Australian Law of Trade Mark and Passing Off, 3rd edn, LBC (2003) at [10.35] – [10.40]).

66 Nestlé relies upon the availability of a multiplicity of tag lines to support the capacity of GO ON… to distinguish the goods. The second part of the expression, for which registration is not sought, is not defined or limited and could include, for example, “try it” or “buy this” as well as “indulge”. The fact that the possible tag lines are not limited and that, as the evidence demonstrates, different tag lines have been used by other traders with a variety of goods, argues against such support. If the registered trade mark were, for example, “Go On…Indulge” or “Go On…Have a Drumstick” or “Go On…Go Fruity”, each of which are used by Nestlé, it could be said that there was a greater extent to which each mark was inherently adapted to distinguish the designated goods. However, they are not the registered marks.

Conclusion on inherent adaptation to distinguish

67 The fact that a word or expression is emotive does not preclude registrability (the Tub Happy Case; Wella; Kenman Kandy) but there should be no association or signification which prevents it from being inherently adapted to distinguish (Kenman Kandy at [155]), such as currency in ordinary usage and an accepted meaning (Wella at 376), even if the mark says nothing tangible about the character of the goods to which it was to be applied (Wella at 377). GO ON… does not directly refer to the character or quality of the designated goods but it does have an association or connotation with goods of an indulgent nature.

68 GO ON… is a common expression which was to be used and has been used by Nestlé, as it has commonly been used by traders, as an exhortation to indulge. There is no adaptation of the expression itself or the context of its use to change that common expression into a trade mark. The context of use was for a class of goods, an indulgence, with which the expression was commonly associated. The tag lines which were always to follow reinforced that context. The proposed reduction in the class of goods for which the trade mark is registered does not affect that conclusion.

69 The ellipsis indicates a pause or a “lead in” to the tag line to follow. That punctuation is not sufficient to adapt the expression so that it had a capacity to distinguish Nestlé’s ice creams as at the date of registration.

70 It follows that GO ON… is not inherently adapted to distinguish the designated goods.

Nestlé’s intended use of GO ON…

71 If the trade mark is, to some extent inherently adapted to distinguish the designated or proposed designated goods, and had a capacity to distinguish the goods, Nestlé’s intended use of the trade mark becomes relevant (s 41(5)). The case was argued on that alternative basis, so I will deal with the intended use.

72 The application for registration is prima facie evidence of an intention to use (Aston v Harlee Manufacturing Co. (1960) 103 CLR 391 at 403). Nestlé checked the availability of the trade mark and rejected a first choice because of perceived difficulties with registrability.

73 Unilever does not dispute that, as at the date of registration, Nestlé intended to use GO ON… but contends that such use was not trade mark use. Nestlé does not suggest that its intention was to use the mark other than as set forth in the evidence.

74 Unilever contends that the requisite intention on the part of Nestlé, to use the mark as a trade mark as at the registration date in relation to the goods in class 30 (or the proposed narrower class), was absent. Unilever has the onus of demonstrating the absence of intention but submits that inferences should be drawn, from the absence of evidence from Nestlé, specifically evidence of an appropriate officer of Nestlé and the absence of the complete authorised user agreement, as to its actual intention or its intention to use of GO ON… as a trade mark.

75 A Nestlé document entitled the “Call to Action” (‘CTA’), which predated the date of registration, detailed plans for the use of GO ON…. The totality of the evidence presented by Nestlé indicated that the intended use of GO ON… was as set forth in the CTA and the “Visibility Strategy”, which accompanied the CTA. GO ON… was not designed to stand alone. Nestlé submits that individual usage should not be considered in isolation because Nestlé’s campaign of planned use shows that the consistent and dominant branding element was to be GO ON…. Nestlé’s intention was to use GO ON… as an exhortation to use its products. The intended use was always in conjunction with an open-ended series of tag lines, with additional words such as “Treat Yourself” or “Indulge” or “Have a Drumstick”, to convey a second message.

76 Nestlé’s evidence includes details of the strategy for, promotion of and adoption of GO ON… in connection with Peters ice cream. This was to enable the requisite distinctiveness of GO ON… to develop, particularly by ‘its association with Nestlé as the trade source of the goods in the Nestlé ice cream range’. GO ON… was to be and was used in close association with ice cream. It was to be and was used as part of an exhortation such as “Go on…Treat Yourself!”. In some cases the tag line, such as “Treat Yourself!”, took prominence. In others there was emphasis on the GO ON… rather than on the completing phrase. In many of the examples GO ON… was in close proximity to the completing phrase.

77 GO ON… was an element of the “Blue Water” or “Project Blue” campaign (the terms are used interchangeably) for the marketing of Nestlé Ice Cream worldwide and an important element of the development of several product brands within the parent NESTLÉ PETERS brand. GO ON… was to be applied consistently using the same font, similar angle, blue background, a photograph of a person or persons eating ice cream and the Nestlé Peters brand. The “Visibility Strategy” referred to three phrases associated with ice cream: “GO ON…indulge!” and “GO ON…Have it Both Ways!” and “GO ON…be cool!”. An email of 14 April 2004 refers to an intention to use “GO ON…taste it today!”. There were examples of the use of GO ON… from 18 September 2002 to 7 September 2004 with numerous and diverse phrases:

‘Spoil Them!; TREAT YOURSELF!; Enjoy NESTLÉ PETERS Ice Cream!; Treat Yourself!; Shake It!; Go Fruity!; Indulge!; Get Fresh!; It’s Awesome!; Be Sinful!; Enjoy!; Indulge!; Be Surprised; You’ll Love It!; Try a PETERS Ice Cream at Caltex!; Be Refreshed!; Maximise Your Profits; Take Advantage of our Point of Sale Kits!; Enjoy Ice Cream!; Cool Down!; Chill Out!; Get Refreshed!; It’s TrEat Time!; Join the fun!; Select your own Ice Cream Menu!; Enjoy An Ice-Cream At the Zoo!; Dive In!; Grab a Drumstick; Share the Fun!; Serve Up More Profit!; Energise; Ask for the Ice Cream Menu!; Enjoy the Moment!; Have Fun!; Enjoy the Moment! Thank You!; Scoop it up at the Show!; Enjoy an Ice Cream at the MCG!; Hire Me for your next function; Choose One!; Grab a Pack!’

The parties referred to the actual use after the date of registration to inform the intention to use as at that date.

78 The intended use was always to use GO ON… as the first of two lines, with the separation by three dots implying a continuation and the second part changeable. There is no indication of an intention to use GO ON… without such qualifying phrases. While most of the phrases were non-distinctive, as emphasised above, GO ON… was used in conjunction with Nestlé trade marks.

79 GO ON…, as used, is the constant element, appearing with NESTLÉ PETERS and other Nestlé trade marks and as well with a variety of phrases. GO ON… is sometimes placed near the NESTLÉ PETERS trade mark and other times closer to the tag line. The latter is generally on a separate line. There is no constant pattern of association or of a constant, unusual juxtaposition of words.

80 The CTA emphasised that the message was about the ‘consumer not the product’ and that the object was to persuade the reader to purchase the product and not to indicate trade origin. That is, the words were intended to be understood as having their ordinary English meaning. Ice cream was regarded by Nestlé as an “impulse purchase”, an item “eaten for pleasure” for which permission is required and which can be stimulated by advertising and use of slogans.

81 The CTA distinguished the ‘corporate identity’, GO ON…, as the invitation and the second part of the slogan, such as “indulge!” as indicating the benefit to the consumer and the resolution of the message. A blue swimming pool was to be displayed as a ‘core value and key visual property’ of the Nestlé Ice Cream brand. “Go on” was always to be used with the ellipsis as a build-up to a second message of three words or fewer with an exclamation mark. The second phrase was intended to be ‘about the consumer not the product’, ‘evoking emotion’.

82 The intention, as recorded in the CTA, was to utilise a ‘synergy of communication’ where ‘showing a brand and product is not enough’. Specifically, GO ON… was envisaged as a ‘call to action for Nestlé Ice Cream (NIC), not individual product brands’. The CTA recorded that it was ‘not intended for, and should not be used as a brand signature of Nestlé Ice Cream’ (emphasis in original). The stated intention was that, by consistent use over time, GO ON… would become a ‘recognisable property of the Nestlé Ice Cream brand’ and Nestlé did seek trade mark protection.

83 The intended use of GO ON… was for its ordinary signification as a persuasive phrase, as a “call to action” and not as a brand signature for Nestlé ice cream.

84 Unilever contends that the only possibility envisaged for the use of the trade mark was as a composite mark and that Nestlé’s intended use of, for example, “GO ON…Indulge” or “GO ON…Grab a Drumstick” could not be regarded as a use of GO ON…. Composite marks have been recognised, such as WOOLWORTHS METRO (Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411), BUDEJOVICKý BUDVAR (Anheuser-Busch Inc v Budejovický Budvar, Národnì Podnik (2002) 56 IPR 182), FUN SHIP and FAIRSTAR the FUNSHIP (Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495).

85 GO ON… was not designed to stand alone. The tag lines were variable, non-distinctive matter that may be market specific. However, the intention was that GO ON… would be the constant and characteristic expression used in connection with Nestlé ice cream. Two trade marks can be used together and still remain separate, rather than represent a composite mark (Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242at [22]–[28]). The intended use, if it was trade mark use, was not of a composite mark.

Was the intended use of GO ON… use as a trade mark?

86 Unilever accepts the onus to demonstrate that Nestlé did not have an intention to use GO ON… as a trade mark. The intention is to be determined as at the date of registration (Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 at [59] – [61].

87 Use must be use in the course of trade to distinguish one trader’s goods from another. It is ‘use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person’(Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 432). Accepting that Nestlé’s intention was to use the registered mark, did Nestle intend to use it for the purpose of distinguishing those goods from the goods of other traders (Johnson & Johnson at 351), for the purpose indicating that the goods are those of Nestlé and not for another purpose (In the Matter of an Application for Registration of a Trade Mark by Magdalena Securities (1931) 48 RPC 477 at 488-490)?

88 The registered trade mark is GO ON…, not “GO ON…Enjoy Ice Cream” or “GO ON…Treat Yourself” or any other variation that may be added to the registered trade mark. Unilever contends that there was no intention to use GO ON… as a trade mark but only ever as an exhortation, rather than for the purpose of indicating a connection in the course of trade with Nestlé.

89 Was GO ON… intended to be used to indicate the origin of the goods with which it was associated? The context of use and the way it has been displayed in relation to the goods and in advertisements is relevant to infringement (Johnson & Johnson at 347) and also to use as a trade mark. The way that GO ON… has been positioned in the advertisements in relation to distinguishing words (trade marks) and non-distinguishing words (emotive phrases) is relevant to the determination of whether GO ON… was intended to distinguish the designated goods as being those of Nestlé.

90 Other evidence of use by Nestlé demonstrated:

On at least one occasion, the use was “Go On…Enjoy Ice Cream!”: associated with not only the Nestlé and Peters trade marks but also Bulla and Streets.
The copy-line on the advertisements was intended to ‘empower and invite’ with the background showing the ‘corporate identity, ie swimming pool and corp. logo’.
In advertisements from other countries, such as Thailand, a two line expression is used, in the language of that country. The pictorial concept is similar to that in Australia and the Nestlé brand is included. The exact translation is not generally provided, except for Israel where the expression is “go for licking it”. In South Africa, “Go On…” is used.

91 Unilever also applied itself for registration of the mark GO ON…. Nestlé submits that Unilever’s adoption of its GO ON… campaign and its application for a trade mark is an indication that the phrase can be used as a trade mark and that it was not necessarily devoid of any distinctive character. Evidence of use by Unilever demonstrated:

“Go on…treat yourself” in association with the Streets logo.
In a TV script it is written as “Go On, treat yourself”.
Placement of GO ON… by Streets in a way that co-ordinated the colouring and typeface with its Streets Blue Ribbon ice-cream branding elements.
T-shirts were suggested, designed with “Go on…treat yourself” on the front, with the Streets brand only on the back but, as produced, the Streets logo and “Blue Ribbon. The Cream of Ice Creams” were also on the front below the slogan.

92 Use of a trade mark with another word or as a composite mark does not preclude use of that trade mark as a trade mark, as long as the trade mark does not lose its identity and remains recognisable (Canada (Registrar of Trade Marks) v Cie internationale pour L’informatique CII Honeywell Bull, SA I [1985] 2 FC 766). The question is whether a purchaser would be likely to infer that, with the different forms of use, the identified goods had the same origin.

93 A trade mark which is clearly inherently adapted to distinguish is unlikely to be affected by additional material in its ability to distinguish (DR Shanahan, Australian Law of Trade Mark and Passing Off, 3rd edn, LBC (2003) at [10.35]). GO ON… is not such a trade mark.

94 While the intended use was of the constant, GO ON…, the different tag lines may have an effect on the distinctiveness of the mark as no single complete exhortation was intended to be in constant use. Even if GO ON… had a degree of inherent adaptation to distinguish or acquired some distinctiveness by association with other Nestlé marks, the intended use as part of a two part expression with a multiplicity of tag lines would reduce the capacity of the trade mark in those different expressions to distinguish the goods as those of Nestlé. Further, use in connection with a clear trade mark such as NESTLÉ or PETERS detracts from a conclusion of acquisition of distinctiveness (British Sugar at 303; Austereo at [51] to [52]).

95 A reader of GO ON… or a listener of “Go on” followed by a pause, the consumer of the trade mark as used, would not infer, as at the application date, that those words, used alone or together with the additions such as “treat yourself” or “indulge” would make the link with Nestlé.

96 Nestlé envisaged that GO ON… would be standardised and ‘become an ownable property’. The intention was to use GO ON… as at the registration date as a marketing tool but not as a badge of origin. Nestlé’s intention was to use GO ON… in a way that the expression may, over time, become a trade mark, a badge of origin. Despite evidence of the extensive use of “go on”, there is no evidence of a particular association of those words as at the application date with Nestlé or any other particular trader. The intention was that, by association with the NESTLÉ PETERS trade mark, the expression would acquire distinctiveness. That would, presumably, come about as a result of extensive, marketing and advertising in connection with Nestlé’s goods, so that the exhortation comes to distinguish those goods and denote their origin. That, however, comes within the rubric of s 41(6).

97 Use in connection with another trade mark does not preclude trade mark use (Wellness; Chris-Telle Pty Ltd v Australian Swimming Inc (2005) 64 IPR 110). However, the intended use as recorded in the CTA was not a use of the trade mark to indicate, of itself, a connection with Nestlé or to denote the origin of the ice cream. One use, “Go On…Enjoy Ice Cream!” is not associated with any brand and indicates that the use was, as in I CAN’T BELIEVE IT’S YOGURT, no more than an exhortation to buy some innominate ice cream, rather than as a trade mark.

98 Nestlé did not intend to use GO ON… as a badge of origin for Nestlé Peters ice creams as at the registration date.

conclusion

99 GO ON… is not inherently adapted to distinguish the goods in respect of which it is registered or the class of goods for which registration was proposed. The trade mark is not capable of distinguishing the designated goods. There was no use of the trade mark before the filing date. Even if GO ON… were to some extent inherently adapted to distinguish the designated goods, the intended use of GO ON… by Nestlé was not use as a trade mark. It follows that GO ON… should not remain registered as a trade mark.

I certify that the preceding ninety nine (99) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bennett.

Associate:

Dated: 22 June 2006

Counsel for the Applicant:	A J L Bannon SC, D T Kell

Solicitor for the Applicant:	Baker & McKenzie

Counsel for the Respondent:	R Cobden SC

Solicitor for the Respondent:	Banki Haddock Fiora

Date of Hearing:	26 and 27 September 2005

Date of Judgment:	22 June 2006

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