Paint effect held to lack distinctive character

• was devoid of distinctive character; and 
• appeared to have a merely decorative purpose in relation to the goods. 

• the mark was excluded under Section 3(1)(b); and
• the evidence provided had failed to demonstrate that Vibe’s use of the mark had resulted in the average consumer taking the mark to be a guarantee that goods bearing it originated from Vibe. 

• The hearing officer had applied the wrong test for acquired distinctiveness. The hearing officer’s view was that where a non-distinctive mark was used alongside a distinctive mark, there was a greater burden upon the applicant to show that the non-distinctive mark had come to be seen as a secondary trademark. Vibe argued that it was sufficient to show that use of the mark meant that the relevant class of persons perceived that the product on which the mark was placed originated from the applicant.
• The hearing officer had applied the wrong test in requiring evidence which demonstrated that the mark was relied upon as an indication of origin.
• The hearing officer had made a number of errors in her appraisal of the evidence filed by Vibe.

The appointed person referred to three propositions for determining the threshold for relying on the trademark as an indication of origin:

• Mere association between the applicant and the mark was insufficient;
• Use of the sign must establish, in the perception of the average consumer, that the product originates from a particular undertaking; and
• That perception must result from the use of the sign as a trademark (ie, the applicant must have done something to identify the mark as a trademark); mere extensive and exclusive use of a mark on its own was unlikely to achieve this.

The appointed person found that propositions one and two were correct. The test to be applied was whether it could be shown that a significant proportion of the relevant class of consumers rely upon the mark in question on its own as indicating the origin of the goods. It was not necessary for the applicant to have expressly promoted the mark as a trademark. However, consumers would be more likely to rely on the sign as indicating the origin of the goods had it been explicitly promoted as a trademark. 

In addition, the appointed person held that the hearing officer’s decision was a finding of fact arrived at after a detailed review of the evidence (with which the appointed person agreed). Despite it being apparent that Vibe had used the mark on its loudspeaker enclosures, it had also been shown that Vibe’s goods were sold primarily by reference to the trademark VIBE, which was predominantly used on its loudspeakers and advertising material. Vibe also promoted the pattern as one of a number of surface finishes in which the goods were available. There may have been an association between the mark and Vibe, but there was no evidence to suggest that consumers placed any reliance on the mark when making their purchasing selection.