Effem Foods Pty Ltd

Effem Foods Pty Ltd (Effem) applied to register three shape marks for a grooved glass jar with a lid, intended for use with a wide range of food products in class 30. The applications were opposed by the Examiner of Trade Marks on the grounds that the shapes lacked inherent adaptation to distinguish the goods. Effem sought to overcome this objection by adducing evidence of use.

The primary legal issue before the Registrar was whether the applied-for shape marks were capable of distinguishing Effem's goods from those of other traders, as required by section 41(2) of the *Trade Marks Act 1995* (Cth). This involved determining whether the shapes were inherently adapted to distinguish the goods, and if not, whether they had acquired distinctiveness through use prior to the filing date of the applications, pursuant to section 41(6).

The Registrar reasoned that the grooved jar's features, including its shape, fluted sides for easier handling, measurement scales, and a label space, were functional and attractive aspects of the packaging. Such features are likely to be desired by other traders in the ordinary course of business, meaning the shapes were not inherently adapted to distinguish Effem's goods. While Effem provided evidence of significant use of the jars since 1993, the Registrar found that the jars themselves were not promoted or referred to as trade marks, and were largely concealed by labels bearing Effem's existing "Dolmio" or "Kan Tong" trade marks. Consequently, the Registrar concluded that the evidence did not establish that the shapes, in fact, distinguished Effem's goods as being from that applicant.

Accordingly, the Registrar determined that the trade mark applications were not capable of distinguishing the designated goods and must be rejected.