The Federal Court of Australia has recently provided further guidance on the registrability of shape marks. In Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, the Court dismissed Guylian’s application for registration of its seahorse shape as a trade mark for chocolates finding that the seahorse shape was not capable of distinguishing Guylian’s chocolates.
Many lessons can be learned from the Guylian case. First and foremost, a carefully thought through and implemented strategy as to how to educate the public that the shape or colour of a product functions as a trade mark will usually need to precede any application.
The law on shape marks before the Guylian decision
In Australia, it has been possible to register shapes as trade marks since the introduction of the Trade Marks Act 1995 (Act). Nevertheless, the number of registered shape marks is small, a fact that can largely be attributed to the difficulties in obtaining such registrations. The 2002 decision in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, in which the Full Court allowed the registration of a bug-shaped confectionery item, was widely seen as relaxing the strict approach taken by the Australian Trade Mark Office (TMO) towards the registration of shape marks. In Kenman Kandy, the Court confirmed that the registrability of shape marks must be determined by reference to the same test applied to ordinary trade marks, namely whether others trading in goods of the relevant kind and being actuated by proper motives will think of the shape and want to use it or a very similar shape in connection with similar goods. The Guylian decision does not depart from the law set in Kenman Kandy, but rather focuses on the facts of Guylian's case and in doing so provides valuable guidance as to what businesses need to do to secure a registration for a shape mark.
The facts of the Guylian case
Guylian is a Belgian manufacturer of boxed chocolates which it sells in more than 130 countries, including Australia. Guylian is particularly well-known for its sea shell range of chocolates sold in Australia since 1980 and comprising 11 novelty marine life shapes, including a seahorse shape. In 2002, Guylian obtained international registration of its chocolate seahorse shape as a trade mark for pralines and chocolates pursuant to the Madrid Protocol and in the same year applied to the TMO to have its international registration extended to Australia. In May 2007, the Registrar refused registration of the seahorse shape on the basis that it was not capable of distinguishing Guylian’s goods and had not been used by Guylian as a trade mark. Guylian appealed the Registrar’s decision and the matter came before the Federal Court.
The Court’s decision
Sundberg J considered whether the seahorse shape was registrable under two provisions of Act, namely sections 41(3) and 41(5).
Registrability under section 41(3) of the Act
A trade mark is registrable under section 41(3) of the Act if it is inherently adapted to distinguish the applicant's goods. As the Court said, a trade mark that is inherently adapted to distinguish goods is one "that can do the job without first educating the public that it is a trade mark”. The ultimate question for the Court to answer in this context was whether the seahorse shape “possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the [shape]”. In this regard Guylian had argued that while its seahorse shape was not an entirely concocted or invented shape (as the Kenman Kandy bug was), it was nevertheless fanciful and partly concocted as it had a backward curling tail and was of stocky build (whereas seahorses in nature have a forward curling tail and are of a more elongated appearance). It further alleged that no other traders had sought to use a seahorse shape for chocolates prior to Guylian’s promotion of the seahorse shape over the last 20 years.
This did not convince the Court which found that Guylian's seahorse shape is to some extent inherently adapted to distinguish but not to the extent required by section 41(3) of the Act. It took the view that the shape was not sufficiently unique or imaginative to enable other traders legitimately wanting to use a seahorse shape for chocolates to do so without potentially infringing the Guylian mark if it was registered. The Court took into account uses of seahorse shapes for chocolates by other traders after the priority date of the application even though it conceded that such uses were to a large extent likely to be attributable to the promotion of that shape by Guylian. In the absence of contrary evidence, the Court regarded such use as legitimately competitive and actuated by proper motives only and as evidence suggesting that other traders at the priority date may have wanted to adopt and use such shapes without improper motives.
Registrability under section 41(5) of the Act
The Court then turned its mind to the question whether the shape would be registrable on the basis that the combined effect of the extent to which the mark was inherently adapted to distinguish and its use by Guylian would be such as to make it capable of distinguishing. To succeed, Guylian needed to demonstrate that it had used its seahorse shape as a trade mark, and more specifically that consumers regard the seahorse shape as a badge of origin in the sense that they would see the shape alone as an indication of trade origin (particularly, when buying goods).
According to the Court, Guylian clearly failed to establish that its use had made the seahorse shape capable of distinguishing, for reasons including:
- the use of the seahorse shape on its packaging (generally alongside other sea shell shapes) merely informs consumers as to the content of the packaging, it is descriptive rather than trade mark use. Why did the seahorse shape operate as a trade mark if other shapes did not?;
- the fact that the GUYLIAN trade mark is prominently displayed on all packaging and that the letter G mark appears on each individual piece of chocolate dilutes any trade mark significance which may otherwise attach to the shape and it is the use of these two trade marks (rather than the shape) that does the work of distinguishing the goods; and
- the survey evidence tendered by Guylian was insufficient to warrant registration in that it merely showed an – albeit strong (40%) – association between the seahorse shape and Guylian, but failed to show that such association is the consequence of Guylian having educated the public to recognise the shape as a badge of origin as opposed to the product being a market leader in that shape.
What does this mean for your business?
At first sight this decision seems a major setback for brand owners who wish to strengthen the protection of elements like shape and colour that are strongly associated with their brands. Some seven years after filing an application and the expense of conducting a survey and litigation the applicant has no registration and its competitors have a message that they can adopt and use seahorse shapes in connection with their own brands. And this was an applicant that had used its seahorse shape for more than 20 years, a shape that surveys showed consumers identified with the brand.
However, the facts of Guylian were unusual and the use of the shape did not extend much beyond sales of the product and depictions on packaging. The fact that it was one of many shapes for chocolates comprising the same boxed assortment made it very difficult to establish that consumers had come to see that shape alone as operating as a trade mark. The need to educate the public as to the trade mark significance of a shape has been long established but the applicant had done little to meet this requirement.
What might a strategy to educate consumers about the trade mark significance of a shape involve? The Federal Court requires that the end point must be that the shape alone could signify that the product came from a particular source, and that it could do this without any word or other mark appearing nearby. However, this does not necessarily mean that the shape must be used or advertised without reference to other brands or marks but rather that it must be emphasised and its trade mark significance made known. When in 2000 Mars Petcare Australia launched its WHISKAS cat food in new purple packaging, the launch advertising told consumers that "Cats Prefer PURRRPLE" and that the particular shade of purple signified the WHISKAS brand. This was an education campaign. Likewise, Kraft's advertising for its TOBLERONE brand emphasises its triangular shape in memorable ways in an effort to educate the public that the shape signifies that brand alone. It is not just a product shape, it is a brand signifier. The homepage (
www.toblerone.com) provides examples from the advertising campaign.
Having said this, the necessary education strategy and campaign will take a lot of time and money. In the meantime competitors' uses of similar shapes and colours will be very hard to stop without a registration. If they multiply and have trade mark significance then they will make it even harder to establish that the shape is capable of distinguishing one maker and deserves registration. Still, valuable and rare prizes have always required planning, energy, perseverance, resources and some luck to secure!