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

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.

Lea Lewin

(a)       No chair in Australian classrooms has been manufactured to a European Standard.

(b)       The Titan chair is the only one-piece polypropylene chair that has attained EN1729 Part 1 and Part 2 Certification.

(c)       EN1729 Part 1 supersedes all other standards in Australia for chairs used in classrooms.

(d)       the Titan chair is the first one-piece chair that conforms to EN1729 Parts 1 and 2 in the United Kingdom.

Held

Trade Mark Infringement

Sebel failed to prove, even to a prima facie level, that Reed Furniture had used a shape as a trade mark in relation to goods of the relevant class by reason of its promotion and sale of the Titan chair. However, because it was an interlocutory application, the court assumed (without deciding) that even if Sebel’s activities did constitute the use of a shape as a trade mark in relation to goods, it failed to establish that it has a prima facie case or a serious question to be tried that the shape so used by Reed Furniture is deceptively similar to Sebel’s trade mark.

The court stated that this conclusion is reinforced when regard is had to the fact that the chairs are likely to be purchased in bulk by reasonably well-informed purchasing officers who would not be confused. It also held that a one-off example of what may have been actual confusion on the part of a potential purchaser does not, of itself, establish deceptive similarity.

Passing Off

Sebel’s passing off claims did not prove fruitful either.  Despite having evidence that Sebel is the source or the origin of the Postura chair, the court held that Sebel failed to establish a prima facie case in passing off.

The court took the following matters into consideration as a whole in determining passing off:

(a)    Appearance and shape of the product – The court held (i) that Reed Furniture did not use as a trade mark the shape of the Titan chair, to promote, supply and sell Titan chairs; and (ii) even if Reed Furniture had used the shape as a trade mark, Sebel failed to establish that the shape used by Reed Furniture is deceptively similar to that used by Sebel.

(b)   Distinguishing markings – The court held that there are clear distinguishing markings (embossing) on the Titan chair and the Postura chair such that consumers are easily able to distinguish between the origins of the two products.

(c)    Level of knowledge of potential purchasers – The court held that Sebel failed to establish even a prima facie case that the promotion, supply and sale of the Titan chair has led or is likely to lead a substantial number of persons in Australia to believe that the Titan chair is associated with Sebel.  

(d)   The market into which the products are to be sold – The court held that because of the form or method of introducing the Titan chair into the market, namely that (i) the brochure of Reed Furniture used to promote the Titan chair is in electronic form on the Reed Furniture website and (ii) the paper form of the brochure is only distributed by Reed Furniture representatives, consumers from the market is not likely to be led to believe that the Titan chair is associated with Sebel.

Trade Practices Act (TPA)

Sebel made two TPA claims in this proceeding. The first TPA claim was that Reed Furniture had engaged in misleading and deceptive conduct pursuant to Section 52 of the Trade Practices Act. Sebel failed to establish this claim even on a prima facie basis. The Court cited the same difficulties it had with finding for Sebel on the basis of common law passing off.

The second TPA claim made by Sebel concerned an alleged misrepresentation in Reed Furniture’s brochure promoting the Titan chair. In the brochure, Reed Furniture had represented that the Titan chair is the first one-piece chair in Australia that conforms to the UK standard EN1729 Parts 1 & 2. The court held that because the brochure represented to the effect that the Titan chair is presently the only chair in Australia that meets the UK standard, the use of present tense in the representation implies that the Titan chair is in the present time, the only chair in Australia which conforms to the UK standard EN1729 and that Sebel had made out its second TPA claim on a prima facie basis.

Remedies

The court held that on the balance of convenience and justice, the granting of an interlocutory injunction prohibiting Reed Furniture to continue to represent that the Titan chair is the first chair in Australia that conforms to the UK standard will not cause significant financial hardship to Reed Furniture, therefore, interlocutory injunction pertaining to Sebel’s second TPA claim is granted. 

The court ordered Sebel to pay Reed Furniture’s costs because it had failed to make out most of its claims at this stage of the proceeding.

Where to from here

A hearing of the substantive case is to be listed for March or April this year. According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, the case is a good survey of the law on shape mark protection.

Sebel’s case needs to focus on use by both parties of the concocted, non-functional elements of Sebel’s trade mark if it hopes to do better than it did in this round.

At paragraph 61, the Court set out the principles relevant to use of shape as a trade mark, as follows:

(a) A special shape which is the whole or part of goods may serve as a badge of origin. However the shape must have a feature that is ‘extra’ and distinct from the inherent form of the particular goods: Mayne at [67], Remington at [16] and Kenman Kandy at [137].

(b) Non-descriptive features of a shape point towards a finding that such features are used for a trade mark purpose. Where features are striking, trade mark use will more readily be found. For example, features that make goods more arresting of appearance and more attractive may distinguish the goods from those of others: All-Fect at [25].

(c) Descriptive features, like descriptive words, make it more difficult to establish that those features distinguish the product. For example, the word COLA or an ordinary straight walled bottle are descriptive features that would have limited trade mark significance: All-Fect at [25] and Mayne at [61]-[62].

(d) Where the trade mark comprises a shape which involves a substantial functional element in the goods, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark: Mayne at [63]. For example, evidence that a shape was previously patented will weigh against a finding that the shape serves as a badge of origin: Remington at [12] and Mayne at [69].

(e) If a shape or a feature of a shape is either concocted compared to the inherent form of the shaped goods or incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This may point towards the shape being used as a trade mark: Kenman Kandy at [162] and Mayne at [69].

(f) Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point: All-Fect at [35].

(g) Context "is all important" and will typically characterise the mark’s use as either trade mark use or not: Remington at [19] and Mayne at [60]-[62].

According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, the case should be noted by product designers aiming for shape mark protection because when the designer's choices for the goods to achieve a certain function are limited, they will need a combination of elements for the important functional features of a product to be overwhelmed by the concocted, non-functional elements. The firm cautions that if the goods simply reflect the product or a feature itself, the design representation will be unregisterable as a shape mark.

Nick Weston

The Court held that the features of the droppers' shape is predominantly dictated by function, and found against Mayne. It found that the defences under s 122(1) were made out and Greenwood J exercised his discretion (conferred by s 87(1)) to cancel the registration of Mayne's trade mark.

So what?

The applicant was on the back foot from the get-go.

The act of registering a shape mark in an attempt to extend the term of exclusivity lost when a patent expires will work against an attempt to satisfy a Court that the ground relied upon by an applicant under s 87 had ‘not arisen through any act or fault of the registered owner’, and will be taken into account (under s 89) in the exercise of the Court’s discretion under s 87(1) of the Act.

Also, the Court stated that once a respondent puts the elements of s 25 in issue and adduces evidence of those matters, the persuasive onus falls upon the applicant.

The Trade Marks Act is not a means to protect an article formerly exploited under a patent where the sign, in substance, describes the article.