Binggrae Co Ltd
[2024] ATMO 165
•6 September 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2337475 (class 29) – Shape: three dimensional shape of a bottle - in the name of Binggrae Co., Ltd
Delegate:
Tracey Berger
Representation:
Applicant: King & Wood Mallesons
Decision:
2024 ATMO 165
Trade Marks Act 1995 (Cth) – request to be heard under s 33(4) – s 41 ground for rejection considered – trade mark to some extent inherently adapted to distinguish – insufficient evidence of use – application rejected
Background
1. This matter is an ex parte proceeding pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] concerning an application by Binggrae Co Ltd (‘Applicant’) to register the trade mark detailed below:
Number: 2337475 (‘Application’)
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade Mark: (‘Trade Mark’)
Filing Date: 24 February 2023
Goods: Milk beverages (milk predominating); milk; milk products (‘Goods’)
2. The Application was examined pursuant to s 31 and a ground for rejection was raised by the Examiner under s 41. The Examiner objected that the Trade Mark is not capable of distinguishing the Goods because the mark is the shape of a container with a wide mid-section that tapers towards the base and has a narrow top, and is predominantly functional in nature. The Examiner opined that it is common for traders of milk products to use varying shapes and sizes of beverage containers and other traders should be able to use this shape in connection with their similar goods and services.
3. In response, the Applicant filed submissions, but the Examiner maintained the objection noting Part 21.3.8 of the Trade Marks Manual of Practice and Procedure which reads:
Packaging may include the container in which the goods are sold or the outer packaging which covers the goods and the container. Shape is just one aspect of packaging and the more unusual the shape of the container or box applied for as a trade mark, the more likely it is to be capable of distinguishing [the Goods]. However, there are currently many different ways of styling and presenting containers and packaging and so most variations on the ordinary will not meet registrability requirements.
4. The Examiner considered that whilst the Trade Mark had some ‘slight nuances’ from the standard containers used for the Goods, the ordinary signification of the mark is a container and the particular shape ‘is not so fanciful as to stand out to consumers as indicating the origin of the contained goods.’
5. Further submissions by the Applicant did not persuade the Examiner to withdraw the objection and a third examination report issued. Following this further adverse report, the Applicant request a hearing by written submissions which were filed on 29 August 2024 with a declaration of James Henry Blaxland Parker made on 27 August 2024 with Exhibits JP-1 and JP-2 (‘Parker’).
6. This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks based on the aforementioned materials. My decision is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection under s 41.
Legal Framework
7. Under s 33(1)(b), the Registrar must accept an application for registration of a trade mark unless satisfied that there exists a ground for rejection under the Act. Accordingly, unless the Registrar is satisfied on the balance of probabilities that a ground for rejection exists, the Application will be presumed to be registrable.[2] The date at which the Trade Mark must be assessed is the filing date of 24 February 2023.
[2] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).
8. Section 41 provides:
Trade mark not distinguishing Goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the Goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
The Trade Mark must first be assessed under s 41 having regard to the level of ‘inherent adaptation’ to distinguish. All trade marks examined will fall into one of three categories:
i.trade marks that are sufficiently inherently adapted to distinguish and are therefore prima facie capable of distinguishing ‘First Category’);
ii.trade marks that have some limited inherent adaptation to distinguish but are not prima facie capable of distinguishing (‘Second Category’);
iii.trade marks that have no inherent adaptation to distinguish (‘Third Category’).
If the Trade Mark falls in the First Category, there will be no grounds for rejecting the mark under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Goods, I must then determine whether the mark has any inherent adaptation to distinguish. If the Trade Mark falls into the Third Category, the Application must be rejected only if I am satisfied that that the Trade Mark did not in fact distinguish the Goods based on the extent of the use of the mark at the Relevant Date (s 41(3)). If the Trade Mark falls in the Second Category, the mark must be rejected only if I am satisfied due to the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Goods (s 41(4)).
11. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks:[3]
[The] ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others … the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[3] (1964) 111 CLR 511, 514.
12. The principle equally applies to shape trade marks as it does to other types of signs.[4] In Chocolaterie Guylian NV v Registrar of Trade Marks Sundberg J stated:
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, that is, without requiring use of the same shape or one substantially identical or deceptively similar. An important consideration in all of this is the nature of the goods for which the shape mark is to be used.[5]
[4] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (‘Kenman Kandy’) [2002] FCAFC 273 (French, Lindgren and Stone JJ).
[5] Chocolaterie Guylian NV v Registrar of Trade Marks (‘Guylian’) [2009] FCA 891, [75].
13. In applying the test, I must consider the likelihood of other traders desiring to use the Trade Mark, or something nearly resembling it, in connection with their own goods.[6]
[6] W&G Du Cros Ltd’s Appn (1913) 30 RPC 660, 672 (Lord Parker)
14. In Sebel Furniture v Acoustic & Felts Pty Ltd Foster J, referring to Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (‘Philips’),[7] stated:
A shape which is dictated by the nature of the goods or by the need to achieve some particular technical result or functional outcome cannot operate as a trade mark.
In order to function as a trade mark, the shape must be something which is extra or which is added to the inherent form of the particular goods as something distinct which can denote origin. A shape cannot function as a trade mark if it is something that other traders may legitimately wish to use either because it is inherent to the particular goods (ie it is of their nature) or because it provides some technical or functional benefit to the goods.[8]
[7] [2000] FCA 876 (Burchett, Hill & Branson JJ).
[8] [2009] FCA 6, [144] (emphasis in original).
15. Justice Burchett commented further in Philips that ‘[a] shape may be applied… in relation to goods, perhaps by moulding or impressing, so that it becomes a feature of their shape, though it may be irrelevant to their function’.[9]
[9] (n 7), [16].
Discussion
16. The Applicant contends that the Trade Mark is inherently distinctive and disputes that the ordinary signification of the Trade Mark is a container. Rather, the Applicant argues the ordinary signification of the mark is not readily apparent and even if the Trade Mark is recognisable as a container, it does not make a direct reference or allude to the Goods. In the Applicant’s submission, the Trade Mark has the following distinguishing features:
(a) the predominant shape, being an asymmetric conical bifrustum or truncated bicone (‘Bicone Shape’);
(b) the flattened band around the middle section (‘Flat Band’);
(c) the encircling series of short narrowly-spaced vertical ridges, resembling stitching, running along either side of the flattened band (‘Embossed Pattern’); and
(d) the flat circular cap with rounded edges protruding slightly beyond the narrower lip at the top of the predominant shape (‘Flat Cap’).
17. The Applicant submits that the above combination of essential features ‘contribute materially to the totality of the Trade Mark’ and render the mark inherently distinctive. In support of this contention, the Applicant refers to the articles exhibited to Parker which refer to the Trade Mark as being perceived as ‘unique’,[10] ‘iconic,[11] ‘distinctive,[12] ‘endearing’,[13] and ‘easily recognisable’.[14] These perceptions of the Trade Mark, according to the Applicant, are indicative of the ‘practical evaluative judgment about the effects of the relevant mark in the real world’.[15]
[10] World Branding Awards, Binggrae’s Banana Flavoured Milk, at Creatrip, Guide to Binggrae’s Many Milk Flavours | From Classic Banana to Mulberry!, at Bokksu Market, Everything You Need to Know About Korean Banana Milk, at TastingTable, How Banana Milk Became A Staple South Korean Treat, at
[14] Branding in Asia, Innored Redefines the Straw in Milennial Campaign for Korea’s Binggrae Banana Flavored Milk, at Kenman Kandy (n4), [47] (French J).
18. In the Applicant’s submission, none of the essential features serve a functional purpose and ‘may even hinder its technical utility’ in that the Goods bearing the Trade Mark:
a. will not tessellate efficiently for storage or transport;
b. are not ergonomic to hold, drink or pour from;
c. requires more materials (plastic or glass) than a typical rectangular container to achieve the same volume; and
d. has no advantage in usability, sustainability or structural soundness.
19. It is the Applicant’s view that the Trade Mark is analogous to that in Application by Freshfood Holdings Pte Ltd where the hexagonal prism container for coffee was found to be inherently distinctive and the Delegate considered that the shape does not have ‘any function other than that common to all such containers’.[16]
[16] (2005) 64 IPR 607, [2005] ATMO 8 (Delegate I. Thompson)
20. In my view, determining the ‘ordinary signification’ of a three dimensional mark as required by the test in Cantarella Bros Pty Limited v Modena Trading Pty Limited[17](‘Cantarella’) will often be of limited assistance where the relevant trade mark is a three dimensional shape of the packaging or goods themselves. To reduce the representation of the three dimensional mark into words to describe its ordinary signification merely detracts from the question of whether that particular shape is sufficiently distinctive so as to distinguish the applicant’s goods or services. Cantarella did not alter the longstanding principles for determining whether a trade mark is inherently adapted to distinguish but provided guidance on how to decide the issue in relation to a mark comprised of non-English words or word marks more generally. The ultimate question I must consider is whether the Trade Mark, or something nearly resembling the Trade Mark, is one which other traders are likely to desire to use in the ordinary course of their business without improper motive.[18]
[17] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).
[18] Guylian (n 5) [75].
21. The Trade Mark is the shape of a container for milk products. It is apparent from the examiner’s research and the Applicant’s submissions that milk products typically come in various sizes and forms. The Applicant’s submissions identify four standard forms being cartons with a foldable spout, cartons with a screw lid, plastic cylindrical bottles and plastic jugs with a handle, all of which come in different sizes and vary somewhat in their shape or other features such as lids, embossed or impressed patterns. These forms of packaging are used for many milk products offered for sale in Australia but such goods come in an array of other packaging such as cans, individual serve cartons with a foil seal and straw, sachets, and bottles of varying shapes. Examples of different packaging are illustrated below:
22. It is apparent that containers for milk products do not have one inherent form and many possess different characteristics in terms of the lid, shape and/or indentations or embossed patterns. In my view, the Flat Cap of the Trade Mark is not a distinctive or unique feature. In the past, when it was common for milk to be sold in glass bottles, all such bottles had a foil sealed cap similar to the Flat Cap of the Trade Mark. Although such caps or seals are less common now, there are other beverage products on the market with a similar foil seal such as Yakult.
23. The other features of the Trade Mark being the Bicone Shape, Flat Band and Embossed Pattern were obviously chosen to be visually appealing to consumers but in my opinion, the Flat Band and Embossed Pattern are low in prominence and not very visually arresting. I consider that given the wide variety of packaging used for milk products, many of which have patterns embossed or indented on the containers, other traders may wish to use a similar shape to the Trade Mark for their similar goods. Further, consumers are unlikely to recognise the combination of the shape and features as a trade mark until educated to do so.[19]
[19] Re Conewich Enterprises Ltd Partnership (2002) 59 IPR 558, [2002] ATMO 64, [58] (Delegate H. Hardie).
24. The Applicant’s submissions have not persuaded me that the Trade Mark is prima facie capable of distinguishing, but I consider that the mark does have some level of inherent adaptation to distinguish the Goods. Accordingly, I must determine whether the Trade Mark should be rejected having regard to the matters set out in s 41(4), namely the combined effect of the extent of the inherent adaptation to distinguish, the use or intended use of the Trade Mark and any other circumstances.
25. The Applicant contends that the Trade Mark should be accepted under s 41(4) given the ‘reasonably high degree of inherent distinctiveness’ and the evidence in Parker that the Applicant argues shows that the Trade Mark has come to distinguish the Goods in foreign markets and reflects the intended use in Australia.
26. Parker attests to online searches conducted in August 2024 which revealed 6 articles commenting on the shape of the Trade Mark and describing it in the terms outlined above at [17]. These articles also mention that the Trade Mark was inspired by the shape of traditional Korean jars. None of these articles are directed to the Australian public but they do disclose that the Applicant’s Goods are popular in Korea. According to the 2014 article in Korea.net,[20] 800,000 bottles of the Applicant’s Goods are sold daily in Korea, with about 6 billion bottles sold since the product launched in 1974, with revenue amounting to over USD100 million in 2013. This article states that the Applicant’s product was first exported to the United States of America in 2004 and by 2014, was available in Canada, China and the Philippines. However, the article also indicates that whilst the Applicant’s Goods were initially exported in containers with the Trade Mark shape, it is now exported in a ‘sterilized paper package to lengthen its shelf life’ as shown below:
[20] Parker, [4a].
27. The articles do not provide any details about the use of the Trade Mark outside of Korea and suggest that in fact the mark has only been used in Korea in the last 10 years. Whilst Parker also exhibits examples of the Applicant’s milk products being sold on Australian websites including Woolworths, all of these products are sold in the cardboard boxes illustrated above. There is no evidence of the level of intended use of the Trade Mark in Australia or that the mark has been used to any extent outside of Korea in the last 10 years.
28. I am not satisfied based on the extent that the Trade Mark is inherently adapted to distinguish the Goods and the evidence that there is any basis to accept the Trade Mark under the provisions of s 41(4).
Decision
29. I am satisfied that there is a ground for rejecting the Application under s 41; accordingly, I reject trade mark application 2337475. However, if the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the Court’s order or direction.
Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
6 September 2024
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