Trinité-et-Tobago

This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

Session 4

High Court of Justice, Trinidad and Tobago [2005]: Nestlé Trinidad and Tobago v Dairy Distributors Ltd., H.C.A. No. Cv. 550

Date of judgment: July 27, 2005

Issuing authority: High Court of Justice of the Judiciary of the Republic of Trinidad and Tobago

Level of the issuing authority: First Instance

Type of procedure: Judicial (Civil)

Subject matter: Trademarks

Plaintiff: Nestlé Trinidad and Tobago

Defendant: Dairy Distributors Ltd.

Keywords: Trademark, Distinctiveness of trademark, Combined word marks and getup, Composite trademarks, Trade dress, Marks common to the trade

Basic facts: In 2003, Nestlé Trinidad and Tobago (the plaintiff) filed a claim challenging seven trademarks registered under the Trade Mark Act (TMA) in favour of Dairy Distributors Ltd.

The claim objected to three pure word marks (Nos. B 18927, B 28855 and 22362) and four word marks used in combination with particular get ups (Nos. B 27065, B28802, B28803, B27064). The applicant sought to have the marks expunged from the Register of Trademarks (RTM) pursuant to section 46 of the Act.

The plaintiff began its association with the food industry in Trinidad and Tobago in 1914. Up to 2002 the plaintiff never used on its products in the local market a (liquid) white pour and splash depiction of milk similar to the respondent’s challenged device.

The defendant commenced business in Trinidad and Tobago in 1991 and has since been producing and distributing powdered milk under the style “Dairy Dairy”. Since entering the powdered milk market, the defendant has allegedly expended about $37M TTD (approximately $6M USD) on advertising its products.

It is important to note that the respondent brought a claim for trademark infringement for Nestlé Trinidad and Tobago’s alleged use of a white splash of liquid into a glass on its products. One day later, Nestlé Trinidad and Tobago filed the instant application.

An interim injunctive relief application from using the get up, submitted against Nestlé Trinidad and Tobago, was refused, and a date was set for trial. The trial date of that case [H.C.A No. 528 of 2003] and the instant trial coincided.

Key evidence in the case includes affidavits sworn by both parties, with a 1998 catalogue exhibited by Nestlé showing the use of a white pour and splash device in the beverage industry internationally.

• Affidavits: Both parties provided affidavits detailing their arguments and evidence. No cross-examination of any of the deponents occurred, and no dispute as to the material facts was raised.

• 1998 Catalogue: The 1998 catalogue shows the use of a white pour and splash device in the beverage industry internationally. This evidence was used to argue that the device is common to the trade and non-distinctive.

Held: The Court decided not to expunge the combination marks from the Register and include, with respect to all of the respondent’s combination marks, a disclaimer on the right to the exclusive use of (liquid) white pour and splash device separate and apart from the said trade marks.

Relevant holdings in relation to the strength of trademarks:

The case raised interesting questions about the distinctiveness of trade marks.

• Distinctiveness of trade marks: The case explored the concept of distinctiveness in trademarks, particularly concerning the use of common or generic words and devices. The court’s decision provided insight into how distinctiveness is assessed in the context of trademark law.

The court's interpretation of Sections 13(b) and 16(b) of the TMA was also of note.

• Interpretation of the Trade Marks Act: The court interpreted sections 13(b) and 16(b) of the TMA by adopting a practical and purposive approach, considering context and usage in determining whether a mark is distinctive.

The Court thus examined distinctiveness and use in common trade when evaluating the marks.

• Distinctiveness: Distinctiveness is the hallmark of trade marks. It comes into play when a mark is associated with a product (goods or services) in a way that allows the owner of the mark to differentiate their product from others. From the perspective of the consumer, particularly an ordinary consumer in a relevant market for the type of product under consideration, a mark is distinctive if it helps them identify the source of the product.

• Common to the Trade: The court's interpretation of Section 16(b) indicated that there was no issue with the evidence that a (liquid) white pour and splash was not in use in Trinidad and Tobago to depict milk or milk related products when Dairy Distributors began using the same.

The only issue under Section 16(b) of the TMA, was whether the (liquid) white pour and splash is a device that is open to the trade for use in showing milk or milk related products.

In so far as the (liquid) white pour and splash device is concerned, the Court concluded that the evidence showed this device to be common to the trade and widely used internationally throughout the beverage industry to depict, among other things, milk and milk related products.

The Court thus stated that the device, as a pictorial representation of milk or milk products, is non-distinctive and descriptive of the product manufactured and sold by the respondent when considered in isolation from the rest of the get up.

However, the application brought by the applicants was to expunge the combination of the marks from the Register. The Court held that the combination of marks consisting of “get up” and the word “Dairy Dairy” are, in their totality, distinctive in character.

Given the reasons mentioned above, this Court ordered the combination marks to remain on the Register, provided that a disclaimer is given with respect to the exclusive use of the liquid white pour and splash. In other words, the registration gave no right to the exclusive use by the respondent of the white pour and splash, separate and apart from the marks.

Relevant legislation:

·         Trade Mark Act, Chapter 82:81 of the Laws of Trinidad and Tobago