Federal Court takes hard line on shape registration

Australia

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.

The court then turned to the issue of whether the seahorse shape did or would distinguish Guylian's goods. Although the court considered extensive evidence of use (including survey evidence), it was not satisfied that Guylian had educated the public to understand that the seahorse shape was a badge of origin. Therefore, it took the view that use of the seahorse shape on packaging was not use as a trademark, but rather informed consumers as to the contents. Further, such use in conjunction with the GUYLIAN trademark and the 'G' Logo diluted any trademark significance which might attach to the seahorse shape.

In addition, the court found that the survey evidence was detrimental to Guylian because the results confirmed that the seahorse shape could not be said to distinguish Guylian's goods from those of other traders if the majority of the buying public did not connect the seahorse shape with Guylian.

This case once again raised the problems faced by applicants seeking to register shapes of products as trademarks. Even where the shape is well known and entirely non-functional, applicants still face an uphill battle to convince the registrar that the shape is recognized by consumers as a badge of origin. The decision also deals a blow to applicants buoyed by the Full Federal Court's judgment in Kenman Kandy (Aust) Pty Ltd v Registrar of Trademarks, in which it was held that the presumption of registrability must be applied to shape signs as it is to be applied to other signs. The decision also highlights the pitfalls of including survey evidence in submissions before the registrar or the court. Although it is now easier for survey evidence to be admitted, the applicant runs the risk that findings from the survey will be used against it.

Lisa Ritson and Amy Reynolds, Blake Dawson, Sydney

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