Dispute Resolution Partner, Tom Griffith, discusses the recent decision of the Federal Court in Guylian v Registrar of Trade Marks.

Chocolatier Guylian has been unsuccessful in its attempt to register a trade mark over the shape of its Seahorse Chocolates. The Federal Court (Justice Sundberg) concluded that the seahorse shape was not capable of distinguishing Guylian’s goods from the goods of other persons. There were three major issues in the case:

  • Whether the seahorse shape was “inherently adapted” to distinguish it as goods of Guylian (section 41(3) of the Trade Marks Act 1995);
  • Given some degree of inherent adaptation, does, or will, the seahorse shape distinguish Guylian’s goods by reason of the combination of the extent of the adaptation, the use of the trade mark and other circumstances (section 41(5));
  • If the trade mark is not sufficiently “inherently adapted” whether, because of the extent to which the applicant had used the trade mark before the filing date, it did distinguish the designated goods or services as being those of the applicant (section 41(6)).

An earlier decision Kenman Kandy offered some hope to Guylian in its quest to protect the seahorse shape as a trade mark. In that case the trade mark applicant successfully sought trade mark protection over a bug-shaped novelty chocolate. The bug bore no resemblance to any actual species of bug or insect, and was according to the Court in that case a concocted shape. Justice Sundberg accepted Guylian’s submission that the fact that the seahorse shape bore resemblance to an actual animal or creature did not thereby bar it from registration on the basis of it being inherently adapted. Guylian submitted that its seahorse shape had an unusually stocky build and that the tail of the seahorse curls backwards, forming an “S” shape rather than forwards, as in nature. Justice Sundberg accepted the seahorse had these distinguishing features but was satisfied that the shape as a whole was not so unique or imaginative that other traders, using the seahorse shape for its ordinary signification would be able to avoid potentially infringing the mark if it were registered.

A key relevant factor to the Court in refusing to grant the statutory monopoly conferred by a trade mark was the potential for confusion amongst consumers and competitors. Justice Sundberg took account of the likelihood that other traders, acting with proper motives, would think of the shape and wish to use the shape or one substantially identical or deceptively similar.

There was evidence before the Court that other chocolatiers had indeed marketed and sold chocolates in the shape of seashell chocolates from at least the mid 1990s and the Court concluded that those chocolatiers might, as at the priority date in 2002, have wished to make chocolates in the shape of a seahorse or other marine creatures.

There was also evidence before the Court that other rival chocolate companies currently sold other seahorse shaped chocolates, although those seahorses had forward-curling tails and less stocky builds than the Guylian seahorse.

Guylian relied on survey evidence in support of its attempts to establish that, if not sufficiently adapted for the purposes of section 41(3) of the Act, its proposed trade mark fell under either section 41(5) or section 41(6) of the Act. The survey was conducted by AC Nielsen and showed that just over 40% of respondents associated Guylian with the seahorse shape. Justice Sundberg noted that the survey was conducted on-line and that respondents were asked to respond to two dimensional images rather than a three dimensional shape. His Honour noted that Guylian’s market research expert had attributed the respondents’ association between the image and the brand or manufacturer to more than just the shape itself. Other factors such as colour and perception of texture came into play.

The Court also took into consideration that Guylian used other shapes on Guylian’s packaging such as seashells, in combination with the seahorse, and that Guylian also relied on its “Guylian” trade mark and stylised “G” lettering in its packaging.