Kenman court changes approach to shape marks

In Kenman Kandy Australia Pty Ltd v Registrar of Trademarks, the Full Federal Court has allowed the registration of a shape trademark, thereby shifting the country's approach to such marks.

The Trademarks Act 1995 expanded the definition of 'trademark' to expressly include shapes, colours, sounds and scents. Then, in 2000, the Full Federal Court considered the issue of shape marks in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd. The court held that "a mark consisting of nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a mark". In effect, the decision meant that a shape could only be registered as a trademark in circumstances where it remained distinct from the goods (eg, a container for liquid).

In the Kenman Case, Kenman sought to register a stylized six-legged bug-like creature in relation to confectionery. The substantive question to be decided by the court was whether Kenman's bug shape was adapted in such a way as to distinguish the confectionery from the goods of others.

By a majority of two-to-one, the court ruled in favour of Kenman. In rendering its decision, the majority stated that an application for the registration of a shape as a trademark (i) must be assessed in accordance with the same principles applied to other kinds of trademark, and (ii) does not fail merely because the shape is the whole shape of the goods in question.

To date, the Australian Trademark Office has rejected the vast majority of shape trademark applications, in keeping with the restrictive approach taken in the Philips Case. The Kenman Case removes part of the impediment created by Philips. Therefore, Kenman should signal a shift in the Trademark Office's approach to shape marks, making it easier to register shapes in Australia. The decision may also result in a softening of the Trademark Office's approach to sound, scent and colour trademark applications as it may be implied from Kenman that applications for these marks must also be treated in the same way as traditional trademark applications.

Stephen Stern and Luke Merrick, Corrs Chambers Westgarth, Melbourne