Federal Court takes hard line on shape registration

In Chocolaterie Guylian NV v Registrar of Trademarks ([2009] FCA 891, August 18 2009), the Federal Court of Australia has held that Chocolaterie Guylian NV's chocolate seahorse shape was not registrable as a trademark.

Belgian chocolate manufacturer Guylian sought to register the shape of its chocolate seahorse as a trademark in Australia. The registrar of trademarks refused and Guylian appealed. Guylian's appeal was dismissed on the basis that:

• the chocolate seahorse shape was inherently adapted to distinguish to some degree, but not to the extent required by Section 41(3) of the Trademarks Act 1995; and
• the chocolate seahorse shape did not and would not distinguish the designated goods as being Guylian's, as required by Section 41(5) of the act.

With regard to the issue of whether the seahorse shape was inherently adapted to distinguish Guylian's goods, the court accepted Guylian's argument that a shape should not be considered to be inherently not adapted to distinguish just because it is reminiscent of a real animal. However, the court concluded that:

• the shape at issue was clearly that of a seahorse; and
• at the priority date, it was possible that other traders might have wished to depict a seahorse in a way potentially causing confusion among consumers.

The evidence that other traders were already using seashell and other sea life shapes (but not seahorse shapes) at the priority date was found to be significant. Further, the evidence that other traders had used a seahorse shape after the priority date was also held to be relevant, as it confirmed that other traders may have wished to use a seahorse shape at the priority date. This was despite the fact that the court acknowledged that one of the main reasons why other traders included a seahorse shape in their range was to compete with Guylian.