For a pattern or shape to be eligible for trade mark protection, traders must educate the relevant market that the pattern or shape is being used as a trade mark and not simply as a functional feature of a particular product. Steps should be taken to actively encourage consumers, through branding and advertising, to recognise the pattern or shape as a sign which demonstrates the source of origin of the goods.
In a recent decision of Fin Control Systems Pty Ltd  ATMO 75, the Registrar of Trade Marks rejected an application by Fin Control Systems Pty Ltd (‘FCS’) to register a trade mark for a pattern mark, on the basis that it was not capable of distinguishing FCS’s product (section 41 Trade Marks Act 1995 (Cth)).
The trade mark consists of a pattern of three pairs of dots located on the rear portion of the underside of a surfboard. The dots indicate the positions in which fins should be attached to the board and the holes or plugs through which the fins are attached to the surfboard.
The relevant details of the trade mark appear below:
Click here to view the image.
Although the trade mark has appeared on surfboards since the mid-1990s, the Registrar was not satisfied that the mark was being used as a trade mark. The mark was deemed not to be sufficiently distinctive and no attempts had been made to educate consumers in the market to recognise the pattern as a badge of origin for FCS’s goods.
Where did FCS go wrong?
FCS failed to convince the Registrar that the features of the pattern (such as the shape and colour of the fin plug holes) were adopted for purely aesthetic reasons. FCS argued that the trade mark is suitable for registration because other traders in the industry could choose to use alternative, more effective options for each of the features. For example, other traders could use a shape other than a circle for the fin plugs.
However, the Registrar found the features of FCS’s dot pattern to be largely functional. Taking the shape of the fin plug as an example, although other shapes could be used, other traders are likely to adopt a circular shape due to the fact that a drill, used to make the holes, will naturally create a circular hole.
What lessons can be taken away from this decision?
The key point of this decision is that just because a shape or pattern has been used on a product for an extended period of time, this alone does not necessarily make the shape or pattern appropriate for registration as a trade mark.
Consumers must be educated about the mark. FCS failed to cement the pattern of dots into its branding and advertising and as a result, it could not establish that consumers recognise the dots as being a badge of origin for its products. Instead, the majority of its advertising examples show ‘FCS’ (usually in an elliptical logo) to be the indicator of the origin of the goods.
To educate the market, the pattern or shape should feature at the front and centre of any advertising campaigns. Traders should adopt the pattern or shape as a badge of origin (throughout the branding for the product) and use it to designate their goods from those of other traders. Brand owners should attempt to create consumer awareness of the sign by adopting the sign in all packaging, stationary and online material associated with the product.