Guylian, Belgian’s most widely known chocolatier, have lost an appeal before the Federal Court of Australia against the decision of the the delegate of the Registrar of Trade Marks denying their application to have their praline shaped seahorse chocolates registered as trade marks.
The Federal Court in Chocolatiere Guylian N.V v Registrar of Trade Marks, held that the chocolate seashell shape was not sufficiently inherently distinctive to satisfy the requirements of S41(3) of the Act, and didn’t distinguish the origin of the goods as being exclusively associated with Guylian in the sense required by S41(5) of the Act.
The premium chocolate maker manufacturer’s boxed chocolates are sold in over 132 countries, with an $8 million annual advertising budget. The seashell remains the company’s number one product, accounting for 65% of all sales and was created with gift giving in mind.
Guylian’s sea shell chocolates are sold in boxes of various sizes and configurations, comprising an assortment of sea shell and other marine shapes, including the seahorse shape. Guylian has been marketing and selling its sea shell range, including the seahorse shape, in Australia for almost 30 years in Australia through supermarkets and specialty confectionary outlets catering to the sophisticated chocolate consumer.
Prior to obtaining their registration in Australian Guylian had obtained a Benelux registration of it’s chocolate seahorse shape as a trade mark pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989, known as the Madrid Protocol.
The Madrid Protocol streamlines the process for the registration of trade marks in multiple countries through the filing of one single international application with the International Bureau of the World Intellectual Property Organisation. Applicants make an Application through their own state office which is then transmitted to the International Bureau. The ‘International Registration Designating Australia’ was duly transmitted to the Australian Trade Marks Office for examination. Guylian’s international application sought to extend their trade mark registration over the seahorse shape to a three dimensional shape mark in Australia in respect of class 30, comprising chocolates and confectionary.
The Registrar rejected the application on the grounds that the seahorse shape was not inherently capable of distinguishing the goods under S41(3) and under S41(5) of the Act. On the latter point, the Registrar didn’t find that Guylian had used the sign ‘as a trade mark’ in the sense required by the Act and case law.
Evidence was put before the delegate at the hearing of rival traders having already sold chocolates in the shapes of other marine life long before the priority date of Guylian’s registration. There was evidence demonstrating sales of starfish, crabs, sharks, lobsters, fish, octopus and seahorse shapes. This evidence was contested by Guylian.
Guylian appealed the decision of the Registrar under S31 to the Federal Court of Australia.
The Appeal to the Federal Court
In the appeal to the Federal Court Sundberg J had to assess whether the trade mark satisfied the requirements of S41(3) or S41(5) of the Act.
Prior to the commencement of the Trade Marks Act 1995 (Cth) shape trade marks were not expressly recognised by statute as being capable of registration. However it was still possible to register a trade mark under the predecessor Act, the Trade Marks Act 1955 (Cth). In 1995 the ability to register a shape mark was expressly recognised in the Act within a category amongst other non-conventional trade marks. The definition of ‘signs’ as defined in S6 of the Act, including colour, scent, sound and shape amongst other things.
There have been a number of contentious decisions in Australia concerning the registrability of shape trade marks including Koninklijke Phillips Electronics N.V v Remington Products Australia Pty Ltd, in which it was held that the trade mark cannot be the article itself without evidence of substantial use, unless the mark was inherently distinctive under S41(3).
Trade marks have both functional and formative aspects, considerations which have been acknowledged in litigation over the registrability of shape trade marks in the previous Federal Court case of Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks . In the Kenman Kandy case, the Federal Court of Australia allowed the registration of a piece of confectionary as a trade mark, being a highly imaginative and inventive stylised three-dimensional six legged insect.
Sundberg J addressed the issue of whether there is a presumption of registrability of trade marks under the Trade Marks Act 1995 (Cth). The Judge acknowledged that under S33 of the Act there is a presumption of registrability of trade marks which applies when considering the registration of a trade mark. However once it is determined that a trade mark doesn’t meet the requirements set out in S41(3), the presumption of registrability no longer applies.
The focus of the enquiry then shifts to whether the trade mark has acquired trade mark status by virtue of S41(5) or S41(6), the onus resting with the Trade Mark Applicant to demonstrate the criteria for registrability of the trade mark have been satisfied on the balance of probabilities.
Registrability under S43(1)
Guylian contended that it’s seahorse shape was inherently distinctive, in a similar way to the Kenman Candy bug.
Guylian argued that whilst it’s seahorse was designed with a real seahorse in mind, it’s highly imaginative and unique rendition of the seahorse was only reminiscent of a seahorse found in nature. The contours of it’s design and it’s overall configuration resulted in a fanciful stylised version of a seahorse, radically different from a real seahorse.
Just like the bug shaped confectionary in Kenman Candy, Guylian contended their seahorse wasn’t a representation of a real seahorse and couldn’t be mistaken for one. Their reasoning was that normal seahorses are elongated, not chunky in appearance, and their tails extend out downwards and forwards, rather than being curled up behind them. According to Guylian their seahorse represented a depiction or modification of a real seahorse, and it’s registration shouldn’t stop other chocolate manufacturers being able to legitimately adopt shapes recognisable as or reminiscent of seahorses.
Whilst Sundberg J acknowledged that Guylian’s chocolate seahorse shape was to some extent inherently distinctive, he held it was not sufficiently so to the degree that is required by section 41(3) Trade Marks Act 1995 (Cth). In response to Guylian’s argument that its seahorse shape was imaginary or concocted, the Court noted Guylian’s rendition did have distinctive features with a level of “stylisation or abstraction”.
However these relatively minor differences, did not have any significant impact on the ordinary association or signification that the shape establishes in the mind of the observer. The Court stated that the shape before it was different than the shape before the court in the Kenman Candy case, in that the seahorse conveyed a particular meaning, and was not entirely imaginary.
Guylian contested the evidence that there were other seahorses which were being sold as at the priority date of their earlier registration. It argued no other traders were in fact using such a shape prior to the relevant date.
Guylian submitted that the Court should discount the evidence adduced by the defendant of traders using the seahorse shape in 2008, as this use wasn’t motivated by good faith traders. Guylian asserted that the traders who had used the seahorse shape had in fact copied their design, and were therefore driven by improper motives, in trying to assert a connection between their goods and those of Guylian.
Sundberg J accepted that other manufacturers were presently selling chocolates in the shape of a seahorse either identical or very similar to Guylian’s seahorse chocolate, and at the very least the evidence of traders selling similar shapes since 1990 was evidence that other traders may have wanted to use a similar shape as part of a novelty marine shell range.
The Court considered extensive evidence adduced by Guylian, including corporate marketing documents, brochures, annual sales figures and survey evidence containing market research data demonstrating the perception and understanding of ordinary consumers. This survey evidence is often designed to establish the level of recognition of a particular trade marks in the minds of consumers.
The Court concluded that the survey evidence presented did not demonstrate that the chocolate seahorse shape was capable of distinguishing the relevant goods from those of other traders, and could not be regarded as sufficient to demonstrate use as a trade mark. The evidence didn’t satisfy the court that the chocolate seahorse shape had acquired trade mark status such that it constituted a badge of origin.
The Court also agreed with the delegate’s finding that the use of the shape on the chocolate’s packaging, including the prominence of a stylised G on the packaging and other marketing materials had the effect of diluting or detracting from the trade mark significance which might have otherwise attached to the shape itself. The Judge said “any distinctiveness the shape has acquired is attributable to its use alongside the traditional Guylian trade marks, rather than as a trade mark itself“.
The survey evidence put before the Court by Guylian was extensive, and demonstrated a high level of association in the minds of the consumers surveyed between the chocolate seahorse shaped shells and Guylian. Forty percent of consumers sampled identified the seahorse presented to them as sea horse shaped chocolates made by Guylian without prompting from the persons conducting the survey. Other brands accounted for only 13% of the sample, with the highest being Lindt which reached only 1.7%.
However, the Judge was still not persuaded that the high level of association was sufficiently high to render the trade mark distinctive, based on previous case law. The association must be shown to have arisen from the use of the seahorse as a trade mark, rather than just use. The level of association between the image and Guylian must lead to a conclusion that a particular shape mark has in fact become capable of distinguishing Guylian’s goods from those of others.
This case highlights the practical difficulties and limitations in successfully registering shape trade marks for food products, demonstrating the high threshold of distinctiveness required, whether in terms of the inherent adaptation to distinguish or by way of trade mark usage. As with all trade mark cases it highlights the role that survey evidence, if flawed, can play in being able to demonstrate use of a trade mark to demonstrate origin under S41(5). There were some comments made by the Judge as to the conditions under which the survey evidence was collected which cast doubts upon it’s reliability.
By way of contrast in Japan in Chocolaterie Guylian NV v Commissioner of Japan Patent Office 2008, the Intellectual Property High Court of Japan found that the three dimensional shape was inherently distinctive.
Other chocolate/confectionary trade mark cases
There have been a host of other similar applications for trade marks over chocolate products in other countries, such as the registration of the triangular peaks of Toblerone chocolate, the 3D shape of Cadbury’s Freddo frogs and Arnott’s teddy bear biscuits.
Mars’ registration of it’s three dimensional European community trade mark was overturned and deemed invalid, having earlier obtained a registration over the bar for it’s rounded edges and three decorative arrows or chevrons appearing on it’s top. It was successfully argued before the European Court that the trade mark was devoid of distinctive character. The company opposing the registration prevailed before the Court with it’s argument that chocolate bars are in fact typically bar-shaped with rounded edges.
The recent Bounty case in 2009 is the second chocolate bar ruling of the European court, following upon the Lindt chocolate bunny ruling which has been remitted back to an Austrian court for a final decision.
Other shape marks which have been refused registration include Nestle’s application for its symmetrical trapezoid shaped bar, (“four chocolate bars attached to one another with a thin base“). A delegate of the Registrar of Trade Marks found that the bar didn’t qualify as a trade mark in the sense that it designated origin, but served a functional purpose.
Aldi successfully opposed the registration arguing that there were other chocolate products on the market that ‘have a break’ or, put more simply, could be divided up into small sections or bars, plainly just a matter of consumer desirablity and convenience. One of these was it’s Dairy Fine Double Time Wafer Bar. This element of convenience, Aldi successfully pointed out, meant consumers wouldn’t be left with one large ungainly block of crumbly water material, an argument which found favour with the decision maker.
Nestle had wanted the exclusive trade mark rights to use the four bar shape for chocolate. Nestle claimed albeit unsuccessfully, that consumers were aware of the advantageous shape of the applicant’s products, which readily snapped into convenient finger-like portions, but that this perception was merely a co-incidental discovery made by an earlier generation of consumers long after the shape had been adopted in Australia in 1948. The shape was, it was argued, at the time of its adoption in England in 1935, and subsequently in Australia, a coined shape, worthy of trade mark status. The delegate however agreed that the four fingered shape was merely a functional aspect of the product, upholding Aldi’s opposition to the registration by Nestle.
Not bad article, but I really miss that you didn’t express your opinion, but ok you just have different approach
Hi there,
Thanks for your candid comments. I can’t be objective about this so my comments aren’t very informative
If you take something that is close to nature or meets people’s expectations of something close to nature, I think granting a monopoly over those kinds of images is questionable. That is what happened in the millenium bug (Kenman Kandy) case. We all know that kids like big bug eyed insects. To me that is all that the millenium bug was.
Every lemon juice trader would want to use the shape of a lemon as a container to sell their lemon juice, clearly a desirable shape which is suggestive of it’s contents. The fact is that manufacturers of lemon juice have in some cases been able to monopolise the shape of a lemon as a container for their lemon juice. In some cases they have achieved this through obscene advertising budgets (or passing off actions, not dissimilar to modern trade mark law now)
I think Guylian were downplaying the amounts of money spent on trying to educate the public to associate the seahorse shape exclusively with their brand.
It doesn’t convince me that they say they relied upon the distinctive appearance to the extent that they did to do the work of indicating origin, particularly where they plastered the packaging with other marine shapes and a G logo. I suspect they did that to tell people the package contains seahorse shaped chocolates, which seems like descriptive use to me. At the very least it detracts from the credibility of their argument that the shape was doing all of the work of the trade mark.
My understand was that the level of recognition required needs to be such that people will be certain with that information alone (whether the mark be a shape, colour or word) that it has to be a ‘Guylian’
My views don’t necessarily accord with others or even the law, but for what it’s worth, I think an important discriminating factor is whether the person is able to see the shape or mark at the time they are making the purchasing decision, and this influences them.
However, I don’t necessarily believe that people remember company or brand names, or at least that they always know what company a particular product and/or service is associated with in today’s world.
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Thanks. You are absolutely correct.
Good posts should elicit strident debate on an issue, even if that debate is polarised.
It makes for a much more lively discussion.
Otherwise a post such as this is just a bland re-iteration of a series of decisions, without actually being a critique or stating a point of view. I will have to start injecting some of my personal views, for what they are worth, into the debate, so that people feel moved to either agree or disagree.
I have always thought shape trade marks were a little ridiculous although I don’t think that really comes through.
Appreciate your candid comments. Constructive feedback is always welcomed.
Hi Michael,
…yes, I know…I wouldn’t bother checking whether I rank at all in the SERPs for relevant keywords relating to the subject matter of the blog. This isn’t surprising as I havn’t done any SEO or SEM!
I have done a lot of reading, and a great course from the Keyword Academy; covering everything from the basics eg keyword searching, through to article submission, link building etc.
There are so many quality sources on seo. I am also a big fan of Lis Sowerbutts and Victor Franqui.
However realistically, I don’t think this is the type of site that could be monetised.
I recall running a search through market samurai and google adwords and noting the biggest search in IP law seemed to be in the area of patents, with high competition. The other factor is that you can’t underestimate good quality content IMO. I’m not producing good content.
There is lots of information about SEO and you have reminded me to turn my mind to it one day. I appreciate the advice. There are a lot of unexploited profitable niches to write about which would be better suited to monetisation. It comes back to basics I guess, doing sound keyword research to see what is worth going after re: search volume, competition analysis and what keywords you can rank for. Registering multiple domains and monitoring multiple campaigns seems like a good way to learn.
Thanks again. Appreciate your input and the video.
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Look forward to your comments. In the meantime Nestle’s appeal against the Registrar’s decision was successful (In Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218) The parties agreed to resolve the appeal by consent, and the decision of the delegate was therefore set aside. They have therefore prevailed in their application for a trade mark described as ‘four bars attached to one another by a thin base‘ in respect of chocolate confectionary being chocolate-coated confectionary blocks or bars and chocolate-coated wafer biscuits.
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I Will have to come back again when my class load lets up – nonetheless I am taking your RSS feed so I can read your site offline. Thanks.
Hi, thanks so much for these tips! My blogs usually do bring readers and responses. One thing I do is engage with the readers. Answer questions in responses and make clarifications where needed. I think they appreciate that I take the time to talk to them.
Hi, thanks for your kind comments and suggestions. Agree that it is important to engage with readers and bloggers, particularly where they express a particular viewpoint on an issue, ask questions or respond. I am new to blogging and respect your views.
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Being professional and showing them there’s more to come I think are the most important. You need to give them a great article, that makes them want to come back. And then make sure you don’t disappoint.
hi Miguel,
Thanks for the tip. I know I should use Twitter. I ‘think’ I registered once with the intention of using it….that’s a shamefully candid admission. I have played around with Camtasia but never considered using videos for this kind of site. I guess it would take a bit of creativity to make something entertaining on this kind of subject matter which could be considered kind of dry subject matter. I guess it couldn’t make it worse
Hi Turismo,
Thanks.
I am not sure what jurisdiction you are in but I am writing mainly in the capacity of an ex Masters student in IP who is admitted as a Solicitor in Australia. Obviously there are limitations to the value of what I write. Trademarks are inherently territorial as you would probably know if you are studying some kind of IP law relating to trademarks. However, having said that, given the advent of the internet the world is becoming smaller and the interests of trademark owners, businesses and domain name owners are starting to collide. Therefore it seems as though it is useful to have some notion of how trademarks operate on a global scale. Even if you only intend to operate within a given territory it is still useful to know how some of the other jurisdictions operate in relation to trademark protection.
Hi Miller,
Thanks. Nice to see a blog emphasizing the need for encryption.
Hi Emerald,
Thanks for your comments. It is nice to know you are finding something of value. Of course the feedback is very generous, but it would be nice to know specifically what kind of information people are looking for or find useful, or what connects with them.
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