Chocolaterie Guylian N.V. v Registrar of Trade Marks

In the case of Chocolaterie Guylian N.V. v Registrar of Trade Marks, the primary issue was whether the seahorse shape used by Guylian in its sea shell chocolate products was distinctive enough to be registered as a trade mark. Guylian, an international seller of Belgian boxed chocolates, had been marketing its sea shell chocolates in Australia since 1980. The seahorse shape, which Guylian argued was a "fanciful stylised" representation of a seahorse, had become its top confectionary brand. The Registrar of Trade Marks, however, opposed the registration on the grounds that the seahorse shape was not distinctive enough to distinguish Guylian's goods from those of other traders.

The court had to determine if the seahorse shape was sufficiently distinctive to serve as a trade mark under section 41(3) of the Trade Marks Act 1995 (Cth), and if not, whether it met the requirements under section 41(5). The Registrar argued that the shape was not distinctive enough because other traders were already using similar shapes, and therefore, the shape could not distinguish Guylian's goods. Guylian countered that there was no evidence of other traders using the seahorse shape at the relevant priority date and that any later use was merely copying Guylian's product.

The court found that the evidence did not support the inference that other traders were using the seahorse shape at the priority date. Given the limited and imprecise evidence, the court was not prepared to infer that the shape was being sold by others at that time. The court also found that the evidence of Guylian's use of the seahorse shape on its packaging did not demonstrate that the shape had been used as a trade mark, as the images more obviously functioned as an illustration of the contents of the box. The shape of the box was also not distinctive enough because it was overwhelmed by the "Guylian" trademark.

Ultimately, the court held that the seahorse shape was not distinctive enough to distinguish Guylian's goods from those of other traders, and therefore, the application for registration was dismissed.