Chocolaterie Guylian N.V. v

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:International registration designating Australia 936483 (International Registration No. 790851) (30) - Seahorse shaped chocolate - in the name of Chocolaterie Guylian N.V.

Delegate:

Alison Windsor

Representation:

Bruce Caine of counsel, instructed by Anne Makrigiorgos of Griffith Hack, Patent and Trade Mark Attorneys of Melbourne

Decision:

2007 ATMO 30

Section 41 – provisions of subsection 41(5) applicable – evidence insufficient to show capacity to distinguish – protection refused

Background

Chocolaterie Guylian N.V. (‘the holder’), requested protection in Australia for the following international registration designating Australia (‘IRDA’):

Application Number:	936483
Priority Date:	16 April 2002 (as a result of a Convention claim in Benelux, Convention number 712653)
Goods:	Class 30: Pralines, chocolate
Trade Mark:
Kind of Mark	Shape

Provisions for dealing with an IRDA are covered in Division 3 of Part 17A of the Trade Mark Regulations (‘the Regulations’). The IRDA must, in broad terms, comply with the Trade Marks Act 1995 (“the Act”) and its Regulations. For present purposes, section 41 applies in relation to the IRDA because of the terms of regulation 17A.28, though the terminology of subsection 41(6) is modified by subregulation 2(b).
The application was examined as required by the Regulations, and on 9 January 2003 the holder was notified of provisional refusal of the IRDA for all the goods claimed. The provisional refusal was based on the grounds available under subsection 41(6) of the Act, namely that the trade mark was not capable of distinguishing the specified goods because it consisted of a shape which other traders were likely to need to use for their own similar goods.
The holder nominated Griffith Hack, Patent and Trade Mark Attorneys of Melbourne as their address for service in Australia, as required by subregulation 17A.17(3).
The examination process was prolonged, with a number of reports issuing, and the holder providing lengthy submissions as well as evidence of use. The examiner was not satisfied and, after several reports, issued a Notice of Intention to Reject. This notice allowed the holder two months in which to apply for a hearing or a decision on the written record, or to withdraw the application, else the IRDA would be rejected. Following further unsuccessful submissions, on 17 January 2007 the holder requested a hearing.
The matter came before me as a delegate of the registrar, in Melbourne on 8 March 2007. The holder was represented by Bruce Caine of counsel, instructed by Anne Makrigiorgos of Griffith Hack, patent and trade mark attorneys.

Evidence of use

The evidence of use provided is set out in the following table:

Declarant and position	Date	Exhibits
Dominique Krefting-Foubert, President of Chocolaterie Guylian NV	2 April 2004	Annexures A to M
Lyndell Rouzaire, Manager, Customised Research at ACNeilsen (Holdings) Pty Ltd	25 February 2005	Annexures A and B
William Michael Callaghan, academic and marketing consultant	21 September 2006	Annexures A and B

Krefting-Foubert declaration

The Krefting-Foubert (“KF”) declaration provides a history of the holder company, and states that chocolates in the shape relevant to this IRDA (“the seahorse shape”) were first marketed in Australia in 1980 as part of the company’s seashell range. Since that time, the seashell range of boxed chocolates has become extremely successful, becoming Guylian’s top brand in their confectionery portfolio. In Australia in 1992, the seashell range was ranked first in Woolworths (New South Wales) capturing 18% of their boxed chocolate market. In 1999 the seashell range of chocolates was sold in a special seahorse-shaped box over the Christmas season.
The KF declaration makes reference to a brand awareness survey of boxed chocolates conducted by an independent research organization known as Censydiam. The results of this survey indicate that the brand Guylian is known by 84% of Australians surveyed as a brand which produces boxed chocolates.
Sales figures were given for boxed chocolates “featuring the seahorse-like shape”, and for chocolates in a box “designed in the same seahorse shape”. The sales in the first category are extremely large, with those in the second, in comparison, being quite small. Attached to the declaration are examples of advertising materials, and examples of the packaging boxes in which the holder sells its products.

Rouzaire declaration

Lyndell Rouzaire is an officer of ACNielsen (Holdings) Pty Ltd, a market research organization which claims to be the world’s leading organization of this type. The declaration refers to a relevant survey, known as the “Chocoholic” survey, undertaken by ACNielsen on commission from the holder. The survey specifically asked questions about the holder’s seahorse shape. The intention of the survey was an evaluation of the level of consumer recognition of the shape in the market place in respect of chocolate. Annex A to the declaration consists of the survey questions in context, being a print-out of a computer screen as it appeared in the original survey. Annex B consists of the tabulated results of the survey. No analysis of the results was provided.

Callaghan declaration

William Callaghan is currently a marketing consultant but in previous years regularly taught marketing to large numbers of students studying for their master qualifications in the fields of business administration and business (marketing). His declaration goes to an analysis of the “Chocoholic” survey referred to in the Rouzaire declaration. Such analysis, he says, is his core expertise, and is used to assist management decision making.
Mr Callaghan gives his opinion that the results of the survey indicate that Australian consumers show a very high level of recognition of the seahorse shape as being associated with “a particular manufacturer”. He says of the overall sample, 40.7% nominated Guylian as the brand or manufacturer that they associated with the image presented. He considers this result shows a very high strength of association between the image and the Guylian brand. In his experience, he says, a 10% market association with a particular brand would be regarded as a very high level.

Submissions

In this section I shall briefly look at the submissions received from the holder during the examination process, and those given verbally at the hearing. As there were eight official letters prior to the request for a hearing, the submissions provided are quite lengthy. I will briefly outline the main points here, and refer to them and other matters during my discussion later in this decision.
The main arguments the holder put forward, as I see them, are these:
- The shape is an invented shape and as such is inherently adapted to distinguish the holder’s chocolates and pralines. (Kenman Kandy[1])
- The trade mark consists of a seahorse-like shaped chocolate, features of which are shown in the representation attached to the application form. A letter G does not form a part of the shape claimed.
- The shape of the trade mark is not to any extent dictated by function. The adoption of this shape was entirely fanciful. There is no need for any rival trader to employ the particular shape or any shape which closely resembles it. Any such use by other traders points to improper use. (Chunky[2].)
- The shape has been registered in a number of overseas jurisdictions, including Benelux, the European community, Singapore, Norway and the United States of America. This is information persuasive of the trade mark’s capacity to distinguish. (Clean-N-Soak[3].)
- The shape is no less distinctive than other shape marks in respect of class 30 goods which have been accepted for registration previously. The Trade Marks Office should exercise consistency in dealing with similar marks. (Phoenix[4].)
- The holder has provided evidence of highly significant sales and promotion of the sea horse shaped chocolates in Australia over a long period of time. The evidence indicates the shape has appeared prominently on packaging, and that some packaging is designed in the same shape. Such evidence should satisfy the requirements of subsection 41(5). (Oregon[5])
- The word GUYLIAN is a separate and distinct trade mark to the holder’s shape. The fact that it appears on packaging does not exclude the possibility that the shape mark is entitled to protection. (Colour purple[6].)
- There is little evidence to show that the seahorse shape is common to the chocolate and confectionery trade. This casts doubt on the viability of the examiner’s original ground for rejection.
- The “Chocoholic” survey undertaken by ACNielsen shows a very significant recognition of the shape as denoting the holder company’s goods. This information is supportive of the holder’s claim that the shape is functioning as a trade mark.

Discussion

There are two matters to be decided here. Firstly, it is necessary to decide which subsection of section 41 is applicable to this trade mark application, and secondly, whether the evidence and submissions provided is sufficient to allow acceptance under the relevant subsection.

Subsection 41(2) specifies that a trade mark must be rejected unless it is capable of distinguishing the holder’s goods from those of other traders. The provisions of subsection 41(3) underlie this consideration, and indeed, any consideration of section 41. The primary matter the registrar has to decide before he or she can go further is the extent to which the trade mark is inherently adapted to distinguish the holder’s goods. If the decision is that the trade mark is to some extent lacking in inherent adaptation, then the provisions of subsection 41(5) apply. If the decision is that the trade mark is devoid of inherent adaptation, the provisions of subsection 41(6) come into play.
The question of inherent adaptation to distinguish has been considered many times over the years. In the Whopper[7] case, Gibbs J said, in relation to paragraph 26(2)(a) of the repealed Act, in discussing the concept:
Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 515 - the Michigan case - and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.
[7] Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 428
Gibbs J is only one of the members of the judiciary who have referred to the Michigan case with approval. It is worthwhile quoting the words of Kitto J in that case as they set out the criteria upon which a judgement about inherent adaptation to distinguish should be made:
That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the holder's goods"]. 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 holder is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v W. and G. Du Cros Ltd. (1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the holder's goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The holder's chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
The final sentence above was quoted with approval by Stone J in Kenman Kandy, supra. Justice Stone noted that Kitto J was referring to word trade marks “because that was the issue before him”, but went on to say “there can be no doubt that his Honour’s test would equally apply to shapes or other signs forming ‘part of the common heritage’”.
Stone J in Kenman said the following, paraphrased to fit this particular case:
Moreover, I also see no reason why an invented shape should be regarded as different from an invented word in terms of assessing its inherent capacity to distinguish a trader’s goods. … Applied here, the question is whether, if the [seahorse] shape were to be registered as a trade mark, other persons trading in confectionery and “being actuated only by proper motives” would think of this shape and want to use it [in] connection with their goods in any manner that would infringe the appellant’s trade mark. That question must be answered bearing in mind that infringement would include using as a trade mark in relation to confectionery, not only the [seahorse] shape but also any “sign that is substantially identical with, or deceptively similar” to the [seahorse] shape; s120 of the 1995 Act. A subsidiary and difficult question is whether the appellant’s [seahorse] shape, by virtue of it being recognisable as a [“seahorse”], has associations that deprive it of the inherent capacity to distinguish the appellant’s confectionery from that of other traders.
A shape (or word) that is entirely concocted does not have the associations that would lead to confusion. I do not regard such a shape as being part of the “great common” any more than does a concocted word or a novel combination of common words.
The holder claims the seahorse shape is an invented shape, and supports this claim by comparing the features of its chocolate shape with those of a real seahorse. Quoting from the holder’s first response to the examiner’s grounds for rejecting the trade mark:
… the International registration is in respect of the representation of a SEAHORSE-like shaped confectionery, which departs radically from the true shape of a seahorse as its “tail” curves upwardly at the back of its main body rather than forwardly, and which is particularly distinctive of a true seahorse recognisable by most people. …
It will also be apparent from the attachment, and any observation of a true seahorse, that they are relatively thin, elongate and elegant, creatures, whereas the shape of the present trade mark is quite to the contrary.
The examiner responded by stating that despite the differences between the chocolate shape and that of a true seahorse, people “of average eyesight and intelligence” would instantly recognize the shape as that of a seahorse. I agree with this assessment of the shape. The shape is not an “entirely concocted” shape, as was the “bug” shape in Kenman. That shape was not recognisable as a modification of the shape of any particular insect. What pointed to it being a “bug” was that it had six protuberances, three on each side of the body, which could be seen as being six legs, the number definitive of insects.
The holder’s seahorse-like shape, however, is clearly recognizable as being a modification of the shape of a seahorse. This connection is boosted by the particular chocolate being sold in close relationship to the shapes of other sea creatures – shell shapes and the modified shape of a prawn or shrimp. The somewhat chunky shape the holder has chosen appears to me to be a practical approach to casting a seahorse in chocolate – the fine and elongate shape of a true seahorse, as shown in the image below, would be simply too fragile to be a successful shape for a chocolate.
That said, an obvious modification of this nature need not be a fatal flaw in the trade mark shape. If the shape is not one which other traders “will think of … and want to use … in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it”, then there is no reason it should not be accepted prima facie. And here lies the difficulty with this particular trade mark. Other traders are already using the shape, or shapes very similar to it, for their own chocolates. The examiner provided examples of such use to the holder during the course of examination of the trade mark, both as extracts from the Internet, and as photocopies of actual confectionery boxes.
Branson J, when discussing the functioning of section 41 in the Oregon case, supra, commented as follows:
It is ... not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the holder's goods or services from the goods or services of other persons then he or she must accept the application. The question whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) - (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an holder from the goods or services of other persons unless the Registrar is satisfied of certain matters or the holder establishes a certain matter, in the sense discussed above.
I am satisfied that this shape is not prima facie capable of distinguishing the holder’s goods from the similar goods within the market because other traders are already using the same or a similar shape for their own similar goods. I consider the trade mark falls into the category of one which requires some additional support before the registrar can be satisfied it has the requisite capacity to distinguish the holder’s goods from those of others using the same or a similar shape. The provisions of subsection 41(5) are thus applicable to this shape. The onus is on the holder to show, via evidence of use, that use of the shape as a trade mark demonstrates it has the capacity to distinguish the holder’s goods from those of others on the market. Given that other traders are already using the same or similar shapes, this is a heavy onus.

The holder says it has been using the shape as part of its boxed chocolate range in Australia since 1980. It has provided examples of packaging showing the shape clearly depicted on the boxes. Most of these examples, are however, quite recent, and there is nothing that dates back to the earliest days of use. I am not satisfied that these examples of use show use as a trade mark, so much as use as an illustration of the contents of the box. The seahorse is depicted on the box along side the images of one or two of the shell shapes which form part of the range. There are eleven separate shapes in this particular range - nine shells, the seahorse and a prawn or shrimp. A picture of the seahorse on the box does not necessarily point to use of the shape as a trade mark, so much as a simple indication of one of the shapes of chocolates you can find in the box.
Further evidence shows the development of the seahorse motif into a seahorse-shaped box to hold the range of chocolates. Again, this kind of expansion does not necessarily point to use or recognition of the shape of a chocolate as a trade mark. The boxes are prominently labeled with the word Guylian and this word tends to overwhelm the significance of the box shape. In any event, the shape which is to function as a trade mark is not that of a box, but that of a chocolate. I am not satisfied the two dimensional representation of the chocolate appearing on a box which is only approximately the same shape as the chocolate is a basis for the claim of trade mark use for the shape itself.
Relevant here, I consider, are the following words of Jacob J in British Sugar[8] at p303 where he referred to the value of evidence of use:
There is an unspoken and illogical assumption that "use equals distinctiveness". The illogicality can be seen from an example; no matter how much use a manufacturer made of the word "Soap" as an unsupported trade mark for soap the word would not be distinctive of his goods …. I do not consider that the evidence filed to support the registration was anywhere near enough to support the conclusion that when the mark was registered, it was distinctive … it was not proved that the public regarded it as a trade mark … a reliable badge of trade origin …
[8] British Sugar plc v James Robertson & Sons [1996] RPC 281 at 305
At p 306 he said:
The phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark? A meaningless word or a word inappropriate for the goods concerned (‘North Pole’ for bananas) can clearly do. But a common laudatory word such as ‘Treat’ is, absent use and recognition as a trade mark, in itself (I hesitate to borrow the word from the old Act but the idea is much the same) devoid of any distinctive inherently (sic)character.
While the holder has provided examples of the chocolate shape being in the public eye, it has not provided any specific evidence pointing to that particular shape being promoted as a trade mark, nor being recognized as such.
Apart from the above examples, the evidence upon which the holder has put significant weight is the ACNeilsen “Chocoholic” survey. The results of this survey suggest that just over 40% of the population who took part recognized the seashell shape as coming from the holder company. This is indeed a significant result but it leaves over half of the buying public unsure of, or mistaken as to, the producer of the particular shape of chocolate. I consider this to be an important result since other traders are also making chocolates in this shape. The majority of the buying public does not connect the shape with the holder. Therefore, while the holder has a strong presence in the market under its well known Guylian name, it has not shown that the seahorse shape itself is capable of doing the work of distinguishing the holder’s goods from the similar goods of other chocolate makers.

Decision

I am satisfied the seahorse-shaped chocolate is not capable of distinguishing the holder’s goods in terms of subsection 41(5). As required by regulation 17A.24, I therefore refuse to extend protection in Australia in respect of all goods listed in the IRDA.

Alison Windsor

Hearing Officer

Trade Marks Hearings

31 May 2007

[2007] ATMO 30

31 May 2007

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