HONEST not registrable for beverages

In Charlie's Trading Company Limited v Frucor Beverages Limited (Case T25/2007), the assistant commissioner at the Intellectual Property Office of New Zealand has upheld an opposition against the registration of the mark HONEST.

Charlie's Trading Company Limited applied to register the word mark HONEST in relation to "smoothies and smoothie mixes" in Class 29 of the Nice Classification, and "fruit drinks and fruit juice, fruit smoothies and smoothie mixes" in Class 32. Frucor Beverages Limited opposed. Its main ground of opposition was that HONEST has no distinctive character. The other grounds of opposition were as follows:

• The mark comprises a sign that is not a 'trademark' within the meaning of the Trademarks Act 2002, in that the mark is incapable of being represented graphically, and/or it is not capable of distinguishing the applicant's goods from those of other traders.
  
  
• The mark consists only of signs or indications that may serve in trade to describe, among other things, the kind, quality or some other characteristic of the goods.
  
  
• The mark consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.
  
  
• At the date of the application, the mark had not acquired a distinctive character through use or any other circumstances.

The assistant commissioner first noted that the word 'HONEST' is clearly capable of being graphically represented. In response to Frucor's submission that HONEST is not capable of distinguishing the goods of one person from another, the assistant commissioner held that the sign is not a pure description of any of Charlie Trading's goods. The assistant commissioner commented that a well-developed and well-executed advertising campaign running over considerable time with wide coverage would be capable of turning HONEST into a trademark.

In relation to the question of whether HONEST has distinctive character, Charlie's Trading submitted that when HONEST is used in relation to fruit juices and smoothies, the word is meaningless. Charlie's Trading also submitted that honesty is a characteristic or trait associated with human beings, rather than inanimate objects. It could even be associated with the truthfulness of (and hence a characteristic of) advertising claims or slogans.

In response, Frucor argued, among other things, that:

• the mark has no distinctive character;
  
  
• the mark is a well-known adjective and no reference is needed for an explanation of its meaning;
  
  
• 'honest' is a word that other traders are likely to wish to use in the ordinary course of business; and
  
  
• there was evidence of third-party descriptive use of the word 'honest' in relation to food and beverages, prior to the filing date of the application. (However, the assistant commissioner did not consider this to be persuasive.)

The assistant commissioner held that while Charlie Trading's use showed that HONEST is an important element of its brand image, it had not used it as a product brand name, nor as a trademark. It was used as a descriptor only. Further, there was no evidence to show that HONEST had become distinctive through use. Thus, the assistant commissioner held that HONEST had no distinctive character as at the date of application.

Turning to the question of whether HONEST consisted only of a sign or indication which serves in trade to designate a characteristic of the goods, the assistant commissioner held that the evidence showed that Charlie's Trading's use of the HONEST mark was a reference to the character or quality of its goods, or to the ingredients used in those goods being genuine, natural or healthy. No evidence had been submitted to show that HONEST could function as a badge of origin. However, the assistant commissioner dismissed Frucor's argument that HONEST is a customary way of referring to the qualities of food and drink products.

In light of the evidence submitted, the assistant commissioner allowed the opposition and refused registration.

Carrick Robinson, James & Wells, Auckland