The Sea Horse goes unprotected…

Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009)

The Federal Court has upheld a decision by the Registrar of Trade Marks to refuse to register an application for the three dimensional shape of the Guylian’s chocolate sea horse.

The Court first found that the sea horse shape was not inherently adapted to distinguish under Subsection 41(3) for the following reasons:

1. The shape in suit is that of an ordinary sea horse. If chocolate manufacturers who tend to make chocolates in a variety of novelty shapes, in particular shapes representing animals, wish to depict a sea creature such as a sea horse, the possibility of confusion with Guylian’s sea horse would be a real one.
2. Guylian’s sea horse is not an entirely imaginary shape, such as was the shape in the Kenman Kandy case (Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273). There is evidence of sale of chocolates in the shape of a sea horse by other traders. Given the exclusive rights that a registration of the sea horse shape in suit would give Guylian, the other manufacturers of chocolate sea horses may have some difficulty in avoiding infringement proceedings.

Interestingly, the Court acknowledged that one reason, if not the main reason, why other traders “have included a sea horse shape in their range of chocolates is to compete with Guylian’s long standing shape”. However, after noting that the evidence did not show that Guylian had ever protested about the rival sales of sea horse shaped chocolates, the Court found that “competition should not readily be consider improper, particularly in circumstances where the shape in suit bears an ordinary signification and is not distinctive as to stand out in the minds of consumers, at least without first educating them to recognise the shape as a trade mark”.

On the question of whether Guylian’s sea horse shape does or will distinguish Guylian’s goods under Subsection 41(5), the Court found that it does / will not, for the following reasons:

The Court said that “it was not at all clear what use, in a trade mark sense, was made of the seahorse shape by Guylian” and that the following factors had contributed to dilute any trade mark significance that might otherwise have attached to the sea horse shape:

1. Other marine creatures are depicted on the packaging,
2. The word mark Guylian and the “G” logo are prominently displayed on said packaging.

The Court acknowledged that the evidence showed a large degree of public recognition of the shape, but said that it was insufficient to prove distinctiveness, as it did not establish that the public had been educated to treat the shape as a trade mark.

Finally, the Court agreed with the Registrar’s submission that the marbled appearance on the surface of the shape was also likely to have contributed to the recognition of the shape by consumers as originating from Guylian. However, no description of the appearance was made in the application.

CONCLUSION:

The above decision will not make it any easier for manufacturers to protect a three dimensional object as a trade mark. It shows that substantial use resulting in reputation and public recognition is not necessarily enough to secure registration of a shape trade mark. What is required by the Court is that the public be “educated” by the manufacturer to perceive the shape as a trade mark…

What should manufacturers do to “educate” the public is not clear to us. It is not required of word marks that the public be “educated” to perceive the latter as trade marks and we fail to see why shape trade marks should be treated any differently. When it is acknowledged, as in the present case, that because of a long and substantial use of the shape in question the Australian public has come to associate that shape with a particular origin, the requirement that the public be “educated” to see the shape as a trade mark appears questionable, especially when the Court does not provide any clues as to how to educate the public. It seems to us that a great deal had been done towards establishing a link between Guylian and its sea horse in the public’s mind, including Guylian’s association with Project Seahorse, and that this would have contributed to educate the public. But obviously, this was not enough for Sundberg J.

It would certainly have helped, had Guylian not used the sea horse shape on the packaging with other signs (such as the word Guylian and the letter “G”), but the reality is that shapes are rarely used on their own, without at least the manufacturer’s house mark (word and/or device).

However, one important thing transpires from the Guylian decision, which should be born in mind when lodging an application for the registration of a shape as a trade mark: a clear description of the shape and of its distinctive features should be provided. The description will help determining the exact nature of the trade mark. Without it, there may be questions raised about the scope of the applicant’s claim.

In the case of the Guylian’s application, no verbal description of the shape had been provided at the time of the application. Had Guylian offered an endorsement as part of the application, describing the sea horse’s features that Guylian considers the most distinctive, for instance along the lines of “sea horse of chunky appearance sitting in profile with a tail wrapped up behind the spine, and a marbled appearance on the surface of the shape”, we believe that this may have facilitated the acceptance of the application. Indeed, with such a description, the scope of protection of the trade mark would have been clearer and it could no longer be said that there is a high potential for “other traders who wish to use a similar shape to do so in a manner that would infringe that monopoly”. Indeed, a clear description of the distinctive features of the shape would help other traders to “draw the line” in order not to infringe Guylian’s shape trade mark, by not reproducing its distinctive features, as described in the endorsement.

If you have any queries in relation to the above decision, please do not hesitate to contact us.

Florence McFarlane