Binggrae Co Ltd

Binggrae Co Ltd sought to register a three-dimensional shape of a bottle as a trade mark for milk beverages and related products. The application was initially examined and rejected by the Examiner on the grounds that the shape was not capable of distinguishing the applicant's goods from those of other traders, primarily due to its functional nature and the common use of various container shapes in the milk product industry. The applicant requested a hearing by written submissions to argue for the registrability of the mark.

The delegate of the Registrar of Trade Marks was required to determine whether the trade mark application should be rejected under section 41 of the *Trade Marks Act 1995* (Cth). Specifically, the delegate had to assess whether the trade mark was inherently adapted to distinguish the applicant's goods, and if not sufficiently so, whether its use or intended use, along with other circumstances, would lead it to distinguish the goods. The core legal issue was whether the shape of the bottle, with its particular features, was so unique and non-functional that it would be recognised by consumers as indicating the origin of the goods, rather than merely serving a functional purpose or being a shape that other traders might legitimately wish to use.

The delegate applied the principles established in cases such as *Clark Equipment Co v Registrar of Trade Marks* and *Chocolaterie Guylian NV v Registrar of Trade Marks*, which require consideration of whether other traders, acting honestly, would likely desire to use the mark or a similar mark for their own goods. The delegate noted that shapes dictated by function or the nature of the goods cannot operate as trade marks. While the applicant argued that the bottle's specific features, including its "Bicone Shape," "Flat Band," and "Embossed Pattern," were not functional and contributed to its inherent distinctiveness, the delegate found that these features, along with the "Flat Cap," were not sufficiently unique or visually arresting. The delegate concluded that the shape, despite some distinguishing features, was not inherently adapted to distinguish the goods to a sufficient degree and that other traders might legitimately wish to use a similar shape for their milk products.

Consequently, the delegate determined that the trade mark application should be rejected under section 41(4) of the Act. This decision was based on the combined effect of the trade mark's limited inherent adaptation to distinguish, the lack of persuasive evidence of actual use in Australia that had established distinctiveness, and the circumstances indicating that the shape was not so fanciful as to prevent other traders from using similar forms for their goods.