Shape TM survey evidence – Useful as a chocolate teapot?

The decision of Sundberg J in Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 has upheld the Trade Marks Office’s rejection of Guylian’s application to register the shape of its seahorse chocolate as a trade mark.

Onus and Standard of Proof

Before looking at the substance of Guylian’s appeal, Sundberg J considered the onus and standard of proof to be applied. On the question of onus, his Honour referred to a tension between the presumption of registrability mandated by section 33 and the text and structure of section 41.

Sundberg J held that while the presumption applied in considering whether a trade mark met the criteria of section 41(3) by being inherently adapted to distinguish, once the inquiry moved to either sections 41(5) or (6):

the presumption no longer has any operation, as the applicant is then required to either “satisfy” the Registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria set out therein is met.

On the question of the standard of proof, his Honour preferred the views of Gyles J in Clinique Laboratories v Luxury Skincare Brands Pty Ltd (2003) 61 IPR 130 and Pfizer Products Inc v Karam (2006) 70 IPR 599 to the effect that the standard was the conventional balance of probabilities rather than the higher burden suggested by the Full Court in Lomas v Winton Shire Council(2003) AIPC 91-839.

Adaptation to Distinguish

The Office had rejected the application on the basis that the shape was not capable of distinguishing the goods of Guylian from those of other traders.

In challenging this decision, Guylian firstly contended that its seahorse shape was fanciful and stylised and therefore not sufficiently similar to the shape of a real seahorse such that other traders might legitimately wish to use it. Guylian pointed to the fact that the tail of its seahorse shape wrapped up behind the spine of the creature rather than forwards as in a real seahorse and that it was of a solid and chunky appearance rather than the slender shape of a real seahorse. In consider whether the shape was inherently adapted to distinguish, Sundberg J noted that:

In cases where a shape depicts a known object or concept (cf. wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark.

His Honour concluded that while there would be other ways to depict a seahorse and Guylian’s shape had some distinctive features “I am satisfied that it is not so unique or imaginative that other traders, using a seahorse shape for its ordinary signification, will be able to avoid potentially infringing the mark if it were registered”.

Guylian also submitted evidence of the sales and marketing expenditure in relation to the seahorse shape, the use of that shape on packaging as well as survey evidence seeking to show an association in the minds of consumers between that shape and Guylian.

In relation to the use of the shape on packaging and other marketing materials, Sundberg J agreed with the Registrar’s submission that “the “Guylian” trade mark printed on Guylian’s packaging has the effect of diluting any trade mark significance that might otherwise attach to the seahorse shape” and that “any distinctiveness the shape has acquired is attributable to its use alongside the traditional Guylian trade marks, rather than as a trade mark itself”.

Regarding the survey evidence, his Honour referred to the decision of Jacob J in Unilever plc’s Trade Mark Applications [2003] RPC 35, quoting:

in the case of marks consisting of product shapes it is not enough to prove the public recognises them 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.

Sundberg J concluded that while the evidence plainly showed an association between the seahorse shape and Guylian, it was not sufficient to show that the association was referable to Guylian having used the shape as a trade mark.

This decision illustrates the difficulty in establishing sufficient inherent or actual distinctiveness in secondary shape trade marks and the care which needs to be taken in producing survey evidence if it is to fully answer the questions raised under section 41.