Introduction  

In Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, the Federal Court of Australia confirmed the Trade Marks Office’s decision to refuse registration of Guylian’s seahorse shape as a trade mark on the basis that the shape was not capable of distinguishing Guylian’s goods.

This case demonstrates the difficulties of obtaining trade mark registration for shapes, even when an applicant is able to produce evidence of substantial use and consumer recognition.

Background  

Guylian is a Belgian manufacturer of boxed chocolates which are sold in over 132 countries, including Australia. Guylian is particularly renowned for its seashell range of chocolates, which includes an assortment of seashell and other marine shapes, including the seahorse shape.1 Guylian has been marketing and selling its seashell range of chocolates in Australia since the 1980s and it has become Guylian’s top confectionary brand.

After obtaining international registration for its seahorse shape mark, Guylian sought to extend trade mark protection to Australia. The application was made on 16 October 2002 in respect of goods in class 30, specifically pralines and chocolates.

The Registrar refused registration of Guylian’s seahorse shape mark on the basis that it was not capable of distinguishing Guylian’s goods. Guylian appealed the Registrar’s decision.

The decision  

Justice Sundberg of the Federal Court dismissed Guylian’s appeal, finding that Guylian’s seahorse shape:

  1. was not inherently distinctive to the degree required by section 41(3) of the Trade Marks Act 1995 (Cth) (TMA), and
  2. does not and will not distinguish Guylian’s chocolate and praline goods from those of other rival traders as required by section 41(5) of the TMA.  

Is Guylian’s seahorse shape inherently distinctive (section 41(3))?  

Guylian sought to rely on the decision in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 (Kenman Kandy), in which a bug shape for confectionery was held to be inherently distinctive within section 41(3) on the basis that it was ‘entirely concocted’. Guylian argued that its seahorse shape should be considered a ‘fanciful’ shape as it depicted features not possessed by real seahorses, such as a backwards curling tail and a stocky build. However, Justice Sundberg did not consider that Guylian’s seahorse shape was an ‘entirely concocted’ shape as in Kenman Kandy because on balance, an average consumer would see it as a relatively ordinary representation of a seahorse.

Justice Sundberg did not rule out the possibility that a shape reminiscent of a real animal or creature could be considered inherently distinctive. However, this would ultimately depend on whether other traders would want to use the shape for its ordinary significations (drawing on the well established test from Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55 (Clark Equipment)).

Applying this test, Justice Sundberg found that the seahorse shape was one that other chocolate manufacturers might want to use as part of a marine themed range of chocolates. Justice Sundberg considered it sufficient that there was evidence of other traders selling marine themed chocolates from at least the mid 1990s despite the lack of evidence of any competing seahorse shaped chocolates on the market as at the priority date. His Honour rejected Guylian’s suggestions that the subsequent use of similar shaped seahorses by other traders should be considered to be improperly motivated.

For these reasons, Justice Sundberg found that Guylian’s seahorse shape was inherently distinctive to some extent, but not to the degree required by section 41(3) of the TMA. Accordingly, Guylian’s seahorse shape had to be considered under section 41(5).

Does or will Guylian’s seahorse shape distinguish its goods (section 41(5))?  

Guylian pointed to evidence of the following uses of its seahorse shape as distinguishing its goods:

  • packaging including seahorse shaped boxes
  • marketing and promotion including widespread advertising and exhibition at trade fairs and conferences, and  
  • sponsorship and promotion of Project Seahorse, a marine conservation research project.  

However, Justice Sundberg did not accept that these uses were sufficient to educate the public to recognise the seahorse shape as a badge of origin.

Packaging and marketing material  

In relation to the use of the seahorse shape on packaging, Justice Sundberg accepted the Registrar’s submission that the use of other Guylian trade marks on the packaging (specifically the word ‘Guylian’ and the ‘G’ logo) had the effect of diluting any trade mark significance that might otherwise attach to the seahorse shape.

In these circumstances, Justice Sundberg considered that the use of the seahorse shape on the packaging should be considered as descriptive of the boxes’ contents, rather than as functioning as a trade mark. According to Justice Sundberg, much of the marketing material tended to confirm this as the seahorse shape was often used in combination with other marine shapes to promote and illustrate Guylian’s seashell range.

In relation to the seahorse shaped boxes, Justice Sundberg considered that these demonstrated, to some extent, trade mark use of the shape. However, the limited sales and availability of these boxes combined with the effect of trade mark dilution from the use of the shape with other Guylian trade marks diminished the weight of this evidence.

Project Seahorse  

Justice Sundberg accepted that Guylian’s association with Project Seahorse had an ability to promote Guylian’s products and enhance public recognition of the seahorse shape. However, in Justice Sundberg’s view, the partnership and promotional material did not demonstrate trade mark use of the seahorse shape beyond a mere association with Guylian.

Survey evidence  

Guylian also pointed to survey evidence which indicated that 40 per cent of survey respondents associated Guylian with the seahorse shape. However, Justice Sundberg considered this evidence to have limited bearing on the case.

While the survey results showed a large degree of public recognition of the shape, the results failed to prove that consumers actually treat the shape as a trade mark in the sense that they would rely upon the shape alone to identify the origin of the goods.

Further, as the survey respondents were shown an image of the seahorse shape, they may have made the association with Guylian based on the overall image, including features other than the shape such as the colour and marbled texture.

Accordingly, as Guylian’s evidence of use and survey evidence did not establish that the public had been educated to understand the seahorse shape as a badge of origin, Justice Sundberg held that the seahorse shape does not and will not distinguish Guylian’s chocolate and praline goods from those of other rival traders as required by section 41(5) of the TMA.

Implications of the decision

  • This case confirms the difficulties of obtaining trade mark registration for shapes, even when an applicant is able to produce evidence of substantial use and consumer recognition.
  • While the decision leaves open the possibility that shapes based on known objects (cf wholly concocted objects) can satisfy the criteria of inherent distinctiveness, this depends on whether other traders will want to use the shape for its ordinary significations.
  • In the event that a shape is to be considered under section 41(5) or (6), applicants must be able to produce evidence that shows that the public has been educated to understand the shape as a badge of origin. Consumer recognition evidence will not generally be persuasive unless it can be shown that the public would rely on the shape alone to identify the origin of the goods. Applicants need to be careful about relying on evidence of use of the shape with their other trade marks as the other trade marks could be interpreted as diluting any trade mark significance of the shape.