Australian Trade Marks Law Blog : Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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In a recent decision handed down by the Federal Court, long time chocolate manufacturer, Chocolaterie Guylian N.V. (Guylian) has been unsuccessful in its attempt to register as a trade mark its seahorse-like shape praline chocolate: (Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009). Sundberg J., dismissed Guylian’s application, finding that the chocolate seahorse shape was not sufficiently inherently distinctive to the extent required by Section 41(3) of the Trade Marks Act 1995 (Cth) (the Act), and that the seahorse shape did not distinguish the designated goods as being Guylian’s to satisfy Section 41(5) of the Act.

A Brief Word on Shape Marks

Although previously registrable as 'devices', the Act introduced shape marks as a separate category of protectable marks in Australia. Section 17 defines a ‘trade mark’ as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ and a ‘sign’ in defined in Section 10 of the Act as including a ‘shape’.

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Bah! No trade marks decisions of significance have been handed down by the Federal or High Court in weeks, so I am resorting to a Federal Court case my firm acted in earlier this year that resulted in a non-confidential settlement entirely in our client’s favour. The settlement was deliberately not confidential so as to send a loud signal to other member organisations in the federation of Japan Karate Associations throughout the world not to help themselves to intellectual property belonging to head office in Japan.

In Japan Karate Association v. Japan Karate Association of Australia (JKA) Pty Ltd (Federal Court No. VID 1039 of 2008) Nicholas Weston Lawyers & Trade Marks Attorneys, the law firm behind the Australian Trade Marks Law Blog, acted for the Applicant, the Japan Karate Association (“JKA”). JKA was established in Japan in 1958 to promote the martial art of karate (“the JKA business”) and since about 1963 had conducted that business throughout the world by:

• providing karate education, exams and training to pupils:
• training, ranking and accrediting karate instructors;
• sponsoring accredited instructors to travel overseas to teach and promote   karate;
• arranging and conducting karate tournaments and exhibitions;
• producing and selling publications and videos/DVDs relating to karate;
• producing and selling clothing and equipment for use in karate.

(“the JKA goods and services”).

JKA had also used the name NIHON KARATE KYOKAI or its English translation JAPAN KARATE ASSOCIATION and the acronym JKA in relation to the JKA business and the JKA goods and services since around 1963 and since at least 1958, used a “Sun and Moon” device (illustrated below) created by and for JKA in 1958 in relation to the JKA business and the JKA goods and services:

JKA also claimed copyright in the  “Sun and Moon” device. Collectively, “the JKA marks” comprised the name JAPAN KARATE ASSOCIATION, the acronym JKA and the “Sun and Moon” device.