LIFESAVERS candy shape mark needs a whole lot more

In Cadbury Schweppes Pty Ltd v Société des Produits Nestlé SA, a delegate of the registrar of trademarks has upheld an opposition by Cadbury Schweppes and Effem Foods Pty Ltd (owned by Mars Inc) to Nestlé's application for registration of the shape of its LIFESAVERS-marked candy.

Nestlé's application was for the annular (or doughnut) shape of its candy. However, it did not include the embossed lettering that appeared on the candy in its application. Cadbury and Effem filed an opposition action with the registrar of trademarks.

The opposition was upheld on the grounds that the annular shape, minus the lettering, lacked inherent distinctiveness. The delegate found that Nestlé had only ever used the shape with the word 'lifesavers' embossed on it. Therefore, the delegate had to assess the registrability of the shape as an unused mark and decided that the shape could not in fact distinguish Nestlé's goods.

In considering whether the shape was capable of distinguishing, the delegate found strong evidence that other traders wanted and needed to use the annular shape in the ordinary course of business. Further, the coexistence of identically shaped candy in overseas markets indicated that the shape itself had no distinctive character. The opponents also put forward evidence that the annular shape was functional, in that it allowed for maximum flavour and enjoyment from small candy.

The delegate stated that even if Nestlé had proved that it had used the actual mark set out in the application, there was not enough evidence to show that it had used the shape to the extent that it functioned as a distinctive trademark. There had been some attempts by Nestlé to educate the public about "the candy with the hole" but the delegate considered this to be insufficient.

The delegate also made some interesting observations with regard to shape marks. Lettering on a large, strong shape mark, such as the word mark COCA-COLA on the distinctively shaped Coca-Cola bottle, can be separated from the shape mark itself. However, on a very small shape, such as the annular shape under consideration, the delegate considered that it is impossible to separate the embossed lettering from the shape itself.

The delegate was also critical of the representation of the shape in Nestlé's application: the pictorial representation was not clear and no dimensions were given as to the size of the hole in relation to the size of the candy. The delegate stated that all surfaces of the shape must be shown on the application in a form that can be readily reproduced.

Lisa Ritson and Cathy Papas, Blake Dawson Waldron, Sydney