Nicholas Weston - Guylian sells chocolate sea shells, but Court not so sure
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’.
There are a large number of registered shape marks on the Register but since the Federal Court decision in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 (the Phillips case) such marks have come under closer scrutiny. Shape marks that comprise the entire shape of an article have been harder to register without substantial evidence of use unless the shape is so unlikely that the public would not wonder why a trader would have adopted it in the first place.
In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 (the Kenman case) the Full Federal Court departed from other cases by allowing registration of the Kenman Kandy ‘millennium bug’ confectionary on the basis that its stylised, six-legged 'creature' was an invented shape. The Kenman case appeared to slightly relax the path to registration of shape marks. But the more recent cases have proven the difficulties associated with registering these marks, particularly showing use of the shape ‘as a trade mark’.
Background to the Guylian decision
Guylian, the Belgian manufacturer of boxed chocolates distributes its chocolates to 132 countries. Particularly well-known, at least to those consuming large amounts of chocolates at dinner parties in 1985, is its sea-shell range which comprise marine life shapes, filled with a praline hazelnut centre; yum.
Guylian obtained international registration as a trade mark pursuant to the Madrid Protocol for one member of its sea shell range: the seahorse. On 16 October 2002, Guylian sought to extend protection of its seahorse as a three dimensional shape mark in Australia in respect of goods in class 30, to cover pralines and chocolates. Based on the international registration in Benelux (as its 'home' registration), the priority date of the Australian application was 16 April 2002.
On 31 May 2007, after a Hearing, a delegate of the Registrar of Trade Marks refused registration of the seahorse shape first on the basis that the seahorse shape ‘is not prima facie capable of distinguishing’ under Section 41(3) of the Act and, secondly, for the reason that the evidence of Guylian’s use of an image of the seahorse shape on its packaging did not demonstrate that the shape had been used as a trade mark in order to satisfy the requirements under Section 41(5).
The present case related to an appeal of the Registrar’s decision by Guylian to the Federal Court.
The Decision
The first substantive issue considered by Sundberg J., was whether the seahorse shape was inherently adapted to distinguish Guylian’s goods under Section 41(3) of the Act?
On this point, Guylian put forward the argument that its seahorse shape is a ‘fanciful stylised’ representation of a seahorse, which ‘departs radically from the shape of seahorses found in nature’. Guylian pointed to the position of the seahorse’s tail and its solid and chunky appearance as distinguishing features. Guylian further contended that the question of whether a shape, reminiscent of an animal, is sufficiently adapted to distinguish, must be determined by reference to any existing or likely renditions of such an animal in the marketplace.
Guylian went on to argue that there was no evidence that seahorse shapes were being used as at the priority date and the evidence of use of the shape or similar shapes in 2008 (adduced by the Registrar) should be given no weight at all, because the six years between the priority date and 2008 was too great and that the inferences made by the Registrar – namely, that other traders as at April 2002 were using, or might wish to use, the shape or a similar shape – could not reliably be drawn. Guylian regarded these later examples as copies.
By way of contrast, the Registrar contended that unlike the ‘bug’ in the Kenman case, the seahorse shape is not concocted but is clearly a representation of a real seahorse. The Registrar argued that the seahorse shape clearly possesses an ordinary signification which others traders might want to use.
Justice Sundberg found the ultimate question to be tried was ‘whether there is a likelihood that other traders, acting with proper motives, will think of the shape and wish to use the same shape or one substantially identical or deceptively similar’. His Honour noted that seashell shaped chocolates had been sold in Australia since at least 1990 and as such ‘it seems to me reasonable to expect that, as at the priority date, other traders might wish to make chocolates in the shape of a seahorse, as well as other marine creatures’.
The second substantive issue considered by the Federal court, was does or will the seahorse shape distinguish Guylian’s goods – Section 41(5) of the Act?
Sundberg J., expressed the approach to Section 41(5) as a ‘balancing exercise’ involving two specific matters (1) the extent to which the mark is inherently adapted to distinguish and (2) the use, or intended use, of the mark by Guylian.
Guylian made submissions based on extensive and continuous sales, advertising and promotion since 1980 of its seashell range. They also sought to rely on survey evidence which showed just over 40% of survey respondents recognised the seahorse shape as belonging to Guylian.
The crux of the Registrar’s submission was that Guylian had failed to demonstrate use of the seahorse shape as a trade mark. The Registrar argued that the seahorse shape had not been used as a badge of origin but rather ‘simply one of the chocolate shapes out of a number of sea shell/marine shapes that Guylian sells and markets as one collection’.
The Court found against Guylian, His Honour making the following points:
- the image of the seahorse shape is used on Guylian’s packaging to attract customers, alongside many other sea shell shapes;
- the ‘Guylian’ trade mark and the stylised engraved ‘G’ logo appearing on the packaging dilutes the trade mark significance of the seahorse shape;
- the survey evidence shows a significant proportion of respondents associated Guylian with the seahorse shape. However, this was not sufficient to show that the association was referable to Guylian having used the shape as a trade mark because ‘the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods’; and
- His Honour agreed with the Registrar that the survey results themselves did not favour protection since almost half of the respondents were unable to identify the shape with any particular brand or manufacturer.
So What?
According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, while the decision might be surprising to some, and there is nothing much new in it, it does highlight the complexities and drawbacks associated with relying on survey evidence to address the issues raised under Section 41 of the Act. Survey questions need to focus beyond just asking whether a consumer recognises a shape as a product of a particular manufacturer and needs to ask whether they would rely on that shape alone as an indication of trade origin. Also, whilst the requirements for registration of shape marks are the same as for other types of marks, this decision emphasises the difference between simply using a shape and actually using it as a trade mark.
To my mind, Guylian were the pioneers of the lovely “Perles d’Ocean” chocolate range but their trade marks department appears to be a bit cute by saying, in effect: 'oh, we did not rely on those 'Perles d'Ocean' advertising campaigns to become well known, just the shape of that delicious seahorse right there'. Regardless, the writer will remain loyal.
