Lack of Distinctiveness Wipes Out Application

In Waterwipes Unlimited Co v Church & Dwight Co Inc 2021 NZIPOTM 2 the Assistant Commissioner held that Waterwipes Unlimited (WU) has not discharged its onus of demonstrating that its stylised application for WaterWipes is either inherently or factually distinctive for wipes consisting mainly of water.

WU created the wipes containing 99.9% water by a proprietary process and were first to market them noting their suitability for people and particularly babies with skin sensitivities. They were launched in Ireland in 2003 and entered the New Zealand market in 2011. They were initially marketed with a stylised WaterWipes being part of a device mark (as shown here), and that mark was applied for and registered in New Zealand in 2010.

However, WU also sought to register an essentially stylised version. On 8th June 2017 WIPO informed IPONZ that WU’s 12th September 2016 Madrid Protocol application for a stylised WaterWipes device (as shown here) designated New Zealand. The application covered various wipes or tissue products in classes 3, 5 and claimed priority back to July 2016 and was readily accepted by IPONZ on 28th June 2017. Church & Dwight (C&D) opposed the application arguing that it is descriptive and that other traders would legitimately want to use the phrase in relation to the same goods (sections 18(1)(b)&(c)) and that the mark had not achieved distinctiveness through use at the application date (section 18(2)).

While both parties agreed the onus is on the applicant to establish the distinctiveness of its mark, the issue of where onus lies was discussed on account of divergence from that position by a recent High Court decision and UK practice diverging. In Beiersdorf AG v Unilever Plc [2019] NZHC 44 at [25] – [29] the Judge considered there is no clear law on the point and that during the standard trade mark application process the applicant does not have to put forward evidence of distinctiveness. In the UK the Trade Marks Act 1994 introduced a presumption of validity when an application is examined and case law has extended this to oppositions as well. While noting that arguably there is no onus on the applicant either during examination or opposition, the Judge also noted that in Australia the onus is on the applicant in oppositions and considered that without express legislative direction or consistent higher court direction that the traditional approach of the applicant having the onus should remain.

Another preliminary issue was whether WU’s counterstatement noting that the mark is in widespread use in New Zealand was sufficient to put C&D on notice that WU have pled the section 18(2) acquired distinctiveness provision. The Assistant Commissioner considered that the regulation 80(1)(d) ‘brief statement’ requirement for counterstatements is particularly important for section 18(2), but that compliance can be established provided it is sufficiently clear to the opponent what the applicant’s position is. The Assistant Commissioner considered that WU’s widespread use statement sufficiently put C&D on notice, but that specifically pleading 18(2) would have been preferable.

The Assistant Commissioner also noted that while the Evidence Act 2006 is a useful guide strict compliance with it is not required as Assistant Commissioner hearings are not a Court and that strict compliance would be inconsistent with the purpose of providing just, speedy, and inexpensive determination of proceedings.

Regarding inherent distinctiveness WU argued that its mark is the sort of stylised logo that consumers expect to denote trade origin and that it is not a limping mark used in conjunction with a house mark. However, the Assistant Commissioner rejected that since having the style or feel of a trade mark does not establish distinctiveness if the words are descriptive. WU also argued that water is the primary ingredient of many products, but that using water to describe them such as “water lemonade”, or “water shaving foam” would be unusual. However, the Assistant Commissioner rejected that too on the basis that an uncommon use of a descriptive word does not make it distinctive. Given that the wipes contain 99.9% water it is apt to describe them using the word “water” and other traders are not taking advantage of WU’s reputation, even though their product was innovative and led to copycat products. The Assistant Commissioner also considered it would be inappropriate to allow the mark to be registered with a disclaimer to the words “water wipes” as the stylisation in the mark is insufficient to establish registrable distinctiveness.

Regarding acquired distinctiveness the Assistant Commissioner found the evidence lacking in various respects, such as not specifying market share, not providing independent supporting evidence, and some evidence relating to the device mark or to markets outside New Zealand. The Assistant Commissioner though considered that the mark is capable of acquiring distinctiveness, but had not been shown to have done so at its filing date.

Author: Quinn Miller

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