Review of the Important Trade Mark Issues Arising out of 2009: Shape Trade Marks, Bad Faith as Ground for Opposition and Deceptive Similarity.

Best Trade Mark Cases of 2009 By Chris Bevitt and Michael Deacon February 2009

In this article, we review some of the important trade mark issues arising out of the following significant trade mark cases of 2009:

Chocolaterie Guylian N.V. v Registrar of Trade Marks - considering a shape trade mark's capacity to distinguish, trade mark use and survey evidence Sebel Furniture Limited v Acoustic & Felts Pty Limited - considering the use of shapes as trade marks and deceptive similarity Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited - considering bad faith as a ground for trade mark opposition E & J Gallo Winery v Lion Nathan Australia Pty Limited - considering trade mark use, deceptive similarity and the effective date of removal of trade marks for non-use Bavaria NV v Bayerischer Brauerbund eV - considering a trade mark's capacity to distinguish, confusion and the use of geographical indications Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 - shape trade marks: use and capacity to distinguish

The Registrar of Trade Marks refused trade mark registration of the seahorse shape of chocolates sold by Guylian on the basis that it was incapable of distinguishing Guylian's chocolates. Guylian appealed to the Federal Court.

The facts

Guylian applied for trade mark registration of the seahorse shape in Australia on 16 October 2002, claiming priority from an earlier international registration filed on 16 April 2002.

Guylian has sold chocolates in the seahorse shape in Australia since 1980. It has also included images of the seahorse chocolate on its chocolate boxes and in other promotional materials in conjunction with stylised "Guylian" and "G" trade marks. Guylian sells the seahorse chocolates as part of a marine-shaped chocolate range, including seashell and prawn shaped chocolates. Evidence presented to the court confirmed that other traders were selling seashell-shaped chocolates since at least the mid-1990s. The results of a public survey commissioned by Guylian indicate that 40.6% of those surveyed associate Guylian with the seahorse shape, 13.3% with another brand or manufacturer, and 46.1% did not associate the shape with any manufacturer or brand.

Section 41(2) of the Trade Marks Act 1995 states that the Registrar must reject an application for registration of a trade mark if the mark is not capable of distinguishing the applicant's goods from those of others. If the Registrar considers that the mark is to some extent adapted to distinguish the applicant's goods, section 41(5) provides that the Registrar must consider the combined effect of (1) the extent to which the mark is inherently adapted to distinguish; (2) the use, or intended use, of the mark by the applicant and (3) any other circumstances, to determine if the trade mark does or will distinguish the applicant's goods.

The decision

The Federal Court upheld the Registrar's decision. Although the seahorse shape was to some extent inherently adapted to distinguish Guylian's goods, the evidence did not establish that Guylian had used the shape as a trade mark or that the shape does or will distinguish Guylian's chocolates from those of others for the purpose of section 41(5). In particular, the court noted the following:

whether a trade mark is adapted to distinguish is determined by reference to the likelihood that other traders actuated by proper motives will want to use the same or a deceptively similar mark for the relevant goods as at the priority date of the trade mark application;

given there was already a tendency for traders to sell seashell/marine shaped chocolates before the priority date, there is some degree of likelihood that those traders might legitimately wish to use a seahorse shape for their chocolates as at that date; competition resulting from other traders selling similar shaped chocolates should not necessarily be considered improper, particularly if such traders do not assert a connection with Guylian or if they sell the chocolates in a way that clearly identifies the manufacturer; there was no evidence that Guylian sought to restrain other traders selling seahorse shape chocolates; the seahorse shape used by Guylian was not so unique or distinct that other traders selling chocolates in an ordinary seahorse shape would avoid potentially infringing the Guylian seahorse shape if it were registered as a trade mark; the survey only tested association between the seahorse shape and Guylian - it did not prove that consumers relied on the seahorse shape alone to identify Guylian as the source of the chocolates; evidence of use of the shape did not establish that Guylian had used the shape as a trade mark or in such a way that educated consumers to recognise the shape as a badge of origin of the chocolates; and the "Guylian" and "G" trade marks used in conjunction...