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Bathroom Tissue Must be in View to be Distinctive

Published: 09/20/2010

In Scott Paper Limited v. Georgia-Pacific Consumer Products LP, the Federal Court of Canada set aside a decision of the Trade-marks Opposition Board and allowed a trade-mark application for registration of a trade-mark design used on bathroom tissue.

Scott Paper Limited (“Scott Paper”) filed an application to register the following daisy flower pattern design:

Daisy flower pattern design

Georgia-Pacific Consumer Products LP (“Georgia-Pacific”) owned a registration for the following wallpaper design registered for use in association with bathroom tissue:

Wallpaper design

Georgia-Pacific opposed the Scott Paper application on the basis that it was confusingly similar to its registration, that Scott Paper was not entitled to registration of the mark because it was confusingly similar to Georgia-Pacifics prior registration for the wallpaper design, and that the mark was not distinctive.

The Trade-marks Opposition Board agreed with Georgia-Pacific and refused registration of the daisy flower pattern design applied to bathroom tissue on the basis that it lacked distinctiveness.

The Board, in its decision, rejected the opposition ground based on confusion as there was evidence that use of marks of this general nature was quite common in the market, resulting in small differences between the marks in issue being sufficient to distinguish them, and making confusion unlikely. Some of the marketplace samples filed as evidence were considered by the Opposition Board to be more similar to the Georgia-Pacific mark than the applicant’s mark was.

With respect to the entitlement ground of opposition, the Opposition Board concluded that because the mark was not visible to consumers at the time of purchase, the opponent’s mark was not “used” in the context of the Trade-marks Act because purchasers did not see the mark until after purchase. As a result, this ground of opposition was dismissed.

However, the Opposition Board ruled in Georgia-Pacific’s favour, holding that although the opponent’s mark had become known to some extent through extensive sales, Scott Paper had not provided any evidence of its mark having become known or having established a reputation. Georgia-Pacific was therefore successful in its opposition to the application based on the lack of distinctiveness of the Scott Paper mark.

On the appeal to the Federal Court, additional evidence was filed by Scott Paper to show that certain designs on bathroom tissue were commonly used in the industry. The issue before the Court was whether the Opposition Board erred in concluding that the opponent had met its burden to prove the distinctiveness issue.

The Federal Court concluded that the evidence filed by Georgia-Pacific was insufficient to show that its bathroom tissue design had become distinctive, since the design was apparent to consumers only after the package was opened, not prior to sale. As a result, the opponent’s mark was not an indicator of source. The opponent’s mark was held to be merely ornamentation, not a trade-mark. The Court ruled that the Opposition Board erred in concluding without evidence that post-purchase viewing of the wallpaper design used on the bathroom tissue resulted in the opponent’s wallpaper design having become known to consumers as a trade-mark.

As the opponent failed to discharge its evidentiary burden of proving the reputation of its mark, it could not succeed on the distinctiveness ground. The appeal was allowed and the Scott Paper application was allowed for registration.

The decision of the Federal Court suggests that trade-mark owners should ensure that their marks are brought to the attention of consumers prior to purchase in order to ensure that their marks are distinctive.