Ferrero S.p.A [2012] ATOMO 79

Trade Marks Office rejected an application to register the shape of the Tic Tac box as a trade mark on the grounds that the shape was not ‘inherently adapted to distinguish’ the goods from those of other traders. In making that decision, the Trade Marks Office of the registrar of trade marks succinctly concluded that:

it is not enough to prove the public recognises [the shape mark] … as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.”

The shape mark application

Ferrero SpA (Ferrero), the manufacturer of Tic Tacs, sought the registration of a trade mark in Australia covering confectionery (class 30) for the Tic Tac box shape with the following representation and endorsement:

“The trade mark consists of a transparent three dimensional box with a hinged lid and label over the lid, as shown in the representation of the trade mark attached to the application form.”

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What was argued?

Ferrero submitted that the features of the Tic Tac box were ‘inherently adapted to distinguish’ their goods from those of other traders. They drew particular attention to the fact that:

  • the combination of features comprising the Tic Tac box (including the overall shape and transparency of the box) was a shape that had not otherwise been used for confectionery
  • confectionery was ordinarily sold in glass jars or rectangular boxes unlike the Tic Tac box
  • the hinged lid on the Tic Tac box was an unusual and unique feature for confectionery given its nature and positioning halfway along the lid of the box, and
  • the positioning of the label on the Tic Tac box was unusual in that the label had been placed at the base of the Tic Tac box and over the top of the Tic Tac box.

Evidence submitted in support of the application for registration of the Tic Tac box included, amongst other things, that confectionery in the Tic Tac box had been sold and promoted in Australia (albeit in conjunction with the “Tic Tac” name) since around 1976.

The principle - ‘inherently adapted to distinguish’

The Trade Marks Office followed the principles laid out by Justice Sundberg in Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 (Global Marketing) in determining whether a shape was inherently adapted to distinguish as a trade mark. Such principles provide that:

  • the shape must serve as the badge of origin and have a feature that is ‘extra’ and distinct from the inherent form of the particular goods
  • non-descriptive, striking and unique features of a shape will ordinarily suggest that the shape may be used as a trade mark
  • descriptive features (such as descriptive text on a label) can make it difficult to establish that the feature distinguishes the product
  • substantial functional features will ordinarily suggest that the shape is not used as a trade mark
  • a concocted shape or a feature will ordinarily suggest that the shape may be used as a trade mark
  • whether a shape is a trade mark is a matter for the court to determine. Evidence from third parties (including consumers) is not conclusive that the shape has been used as a trade mark, and
  • context “is all important” and will typically characterise whether the shape has been used as trade mark.

How was it decided?

The Trade Marks Office did not accept that the shape of the Tic Tac box was inherently adapted to distinguish Ferrero’s goods from other traders noting that:

  • the see-through/transparent feature of the Tic Tac box was purely a functional feature, which simply allowed consumers to view the contents of the goods and was an “extremely commonplace” feature for confectionery packaging
  • there was insufficient evidence provided by Ferrero to assess whether the hinged lid on a Tic Tac box was a common or uncommon feature for confectionery packaging
  • the location of the hinged lid on the Tic Tac box was a functional feature that simply allowed “mints to spill from the box”
  • the positioning of the label on the Tic Tac box was also a functional feature as it acted as a tampering indicator
  • none of the features were striking or made the goods more “arresting of appearance”
  • whilst a combination of common features can still permit a shape to function as a trade mark, in this instance, all the features of the Tic Tac box were observed to have been overwhelmed by the main feature being the “overall shape of an oblong box with a lid”, and
  • Tic Tac box had previously been the subject of an Australian patent and that the shape patent was an integral part of the patent itself.

Taking into account the reasoning in Global Marketing, the Trade Marks Office held that as the features comprising the shape were predominantly functional, rather than distinctive, the overall impression of the Tic Tac box did not lead to a finding that the shape was used as a badge of origin and, therefore, the shape was not registrable as a trade mark.

Guidance for registration of shape marks

The decision gives guidance to some of the difficulties in obtaining trade mark protection for shapes which have functional features and how particular packaging features may be viewed by the Trade Marks Office in these sorts of decisions. It is also worth noting that despite the shape being rejected in this instance, Ferrero has obtained trade mark registrations for 15 shapes including the Ferrero Rocher, Kinder Surprise egg and Nutella jar (with labelling). Ferrero’s trademark application for the shape of its Nutella jar (without labelling) is currently pending before the Trade Marks Office.