Ferrero S.p.A

[2012] ATMO 79

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1364556 (30) - SHAPE OF A BOX- in the name of Ferrero S.p.A.

Delegate:	Heath Wilson
Representation:	Applicant: Russell Waters of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys.
Decision:	2012 ATMO 79 Ex parte – Section 41(6) – functional features of a shape trade mark – evidence of use not sufficient – trade mark application rejected.

Background

1. On 31 May 2010, Ferrero S.p.A (‘the Applicant’) applied to register a shape trade mark (allocated trade mark application no. 1364556) for confectionery (class 30) and described in the endorsement as:

   The trade mark consists of a transparent three dimensional box with a hinged lid and label over the lid, as shown in the representation of the trade mark attached to the application form.

2. The pictorial representations of the Applicant’s trade mark are shown below:

1. The trade mark was examined under the provisions of section 31 of the Trade Marks Act 1995 (‘the Act’). The first examination report which was issued on 25 August 2010 raised a ground of rejection under section 41(6) of the Act and indicated that the Applicant’s trade mark is not to any extent inherently adapted to distinguish the designated goods from the goods of other persons.

2. The response from the Applicant’s attorney submitted that the trade mark was an invented shape and therefore inherently adapted to distinguish the goods of confectionery. In the alternative, the attorney argued that the Applicant’s trade mark was to some extent inherently adapted to distinguish (under section 41(5) of the Act). The joint statutory declaration of Daniele Lingua and Massimo Gaidano dated 12 December 2011 with exhibits 1-10 (‘the Lingua & Gaidano declaration’) was submitted for the examiner’s consideration.

3. On 12 January 2012, a second examination report issued maintaining the ground for rejection under section 41(6). The Applicant did not respond to the second report, instead requesting on 24 April 2012 for the matter to be heard by a delegate of the Registrar.

4. Prior to the hearing, the attorney for the Applicant Russell Waters of Phillips Ormonde Fitzpatrick Patent and Trade Mark Attorneys provided written submissions and his statutory declaration dated 13 June 2012 with attached exhibits RJW-1 to RJW-17 (‘the Waters declaration’).

5. I subsequently heard the matter in Canberra on 14 June 2012 as a delegate of the Registrar of Trade Marks. Mr Waters appeared in person on behalf of the Applicant.

   Reasons

6. Section 41 of the Act relevantly provides:

   Section 41:Trade mark not distinguishing applicant’s goods or services

   (2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   (6)If the Registrar finds that 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, the following provisions apply:

   (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

7. At the hearing, Mr Waters argued that the Applicant’s trade mark was to some extent inherently adapted to distinguish confectionery products because of the following combination of features: the transparency of the box, the position of the hinged lid and the position of the label over the lid of the box. He further submitted that regardless as to whether sections 41(5) or 41(6) of the Act were appropriate, the Lingua & Gaidano declaration and Waters declaration contain evidence of use sufficient for the trade mark to be accepted.

8. The well-established test for the inherent adaptability of a trade mark as set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[1] is:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   [1] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555.

9. Justice Stone in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks[2] (‘Kenman Kandy’) referred to the similar test articulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks[3] and said:

   Kitto J was referring to word trade marks because that was the issue before him, but there can be no doubt that his Honour's test would equally apply to shapes or other signs forming "part of the common heritage".

   [2] Kenman Kandy (Australia) Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494; (2002) 56 IPR 30; (2002) AIPC 91-817 at [146].

   [3] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (at 514).

10. Accordingly, the test for the capability of a trade mark to distinguish its goods from those of other traders is the same for shape trade marks as it is for other kinds of signs. In Kenman Kandy[4] Stone J also said:

    Applied here, the question is whether, if the bug 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 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 bug shape but also any "sign that is substantially identical with, or deceptively similar to" the bug shape; s 120 of the 1995 Act.

    [4] Supra [at 161].

11. At the hearing, Mr Waters did not argue that the Applicant’s trade mark was inherently adapted to distinguish under section 41(3), and to remove any doubt in that regard I find that the Applicant’s trade mark does not satisfy that provision. The shape of the box is non-distinctive in relation to confectionery. While it is true that there may be other ways in which to package confectionery, the shape of a transparent box with a lid is one which other traders would ordinarily desire to use in relation to those goods. As a result, I am satisfied that there is a ground under the Act for rejecting the trade mark application. I will now turn to the issue of whether the elements that make up the trade mark provide it with any adaptation to distinguish.

    Extent of Inherent Adaptation to Distinguish

12. The question of whether the Applicant’s shape trade mark has limited (s41(5)) or no (s41(6)) inherent adaptation to distinguish is dependent on an assessment of whether the various elements or features of the trade mark are functional and/or common to the trade.  In Global Brand Marketing Inc v YD Pty Ltd[5] (‘Global Brand’) Sundberg J set out the following considerations:

    [5] Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; (2008) 76 IPR 161; [2008] AIPC 92-286 per Sundberg J at [61 to 64]

    The principles relevant to use of shape as a trade mark are now set out.

    (a) A special shape which is the whole or part of goods may serve as a badge of origin. However the shape must have a feature that is ‘extra’ and distinct from the inherent form of the particular goods: Mayne at [67], Remington at [16] and Kenman Kandy at [137]

    (b) Non-descriptive features of a shape point towards a finding that such features are used for a trade mark purpose. Where features are striking, trade mark use will more readily be found. For example, features that make goods more arresting of appearance and more attractive may distinguish the goods from those of others: All-Fect at [25].

    (c) Descriptive features, like descriptive words, make it more difficult to establish that those features distinguish the product. For example, the word COLA or an ordinary straight walled bottle are descriptive features that would have limited trade mark significance: All-Fect at [25] and Mayne at [61]-[62].

    (d) Where the trade mark comprises a shape which involves a substantial functional element in the goods, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark: Mayne at [63]. For example, evidence that a shape was previously patented will weigh against a finding that the shape serves as a badge of origin: Remington at [12] and Mayne at [69].

    (e) If a shape or a feature of a shape is either concocted compared to the inherent form of the shaped goods or incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This may point towards the shape being used as a trade mark: Kenman Kandy at [162] and Mayne at [69].

    (f) Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point: All-Fect at [35].

    (g) Context "is all important" and will typically characterise the mark’s use as either trade mark use or not: Remington at [19] and Mayne at [60]-[62].

    As is apparent from the foregoing propositions, a shape mark case may require consideration of different types of features in determining whether the mark is used as a trade mark for the purposes of the Act. At one end of the spectrum are shapes or features thereof that are purely functional. The features may have derived substantially from a patented product, such as the S-shaped fence dropper, or go to the usefulness of the product: Remington at [3] and [12]. Cases such as Mayne and Remington show that such features point away from trade mark use.

    At the other end of the spectrum are those features of a mark that are non-descriptive and non-functional. They ordinarily make the shape more arresting of appearance and more attractive, thus providing a means of distinguishing the goods from those of others. All-Fect and Remington show that non-functional features add something extra to the inherent form of the shape. A concocted feature will typically be considered non-functional: Kenman Kandy.

    Finally, there will be cases, such as the present, that fall between the ends of the spectrum. These cases are not black and white. They involve consideration of whether one set of features supersedes, submerges or overwhelms the other.

13. Mr Waters submitted that confectionery has been sold in glass jars or even in rectangular boxes in the past but not in the particular combination of features comprising the current trade mark application. This submission, however, does not adequately address the questions whether those elements are common to the trade at the time of filing, and whether other traders would ordinarily think of them and want to use them in connection with the goods. It is worth noting that the overall shape of the Applicant’s box is not unusual, and there are no decorations, colours or text forming part of the trade mark that may assist it in distinguishing the goods.   

14. The transparency element of the trade mark as set out in the endorsement is clearly a functional feature and is extremely commonplace for the packaging of foodstuffs in general and for confectionery in particular. A transparent box not only allows the consumer to view the contents of the box and to make a purchase on an aesthetic basis but it also allows the purchaser to see the remainder of the box’s contents (that is, how much the box holds at any given point in time). The transparency element is therefore a feature that other traders (without improper motive) are likely to want to use in relation to confectionery.

15. Mr Waters argued that the hinged lid in the trade mark is an unusual feature - both given its nature and its positioning halfway along the lid of the box. According to Mr Waters, the hinge featured in the trade mark is a plastic ‘living hinge’ which is essentially a hinge made from the material which it connects to and thinned in the middle to allow flexibility. Even if, as Mr Waters argues, the Applicant was the first trader in the industry to use a ‘living hinge’ in relation to packaging of confectionery, the assessment of a trade mark’s adaptation to distinguish is as at the filing date - in this instance 31 May 2010. I am not satisfied from the Applicant’s evidence that a ‘living hinge’ is (or was at the time of filing) uncommon for containers of confectionery. In any event, there is nothing in the representation or the endorsement of the Applicant’s trade mark to indicate that the hinged lid in fact comprises a ‘living hinge’ or that it engendered trade mark distinctiveness in relation to the goods.  

16. The position of the lid’s opening on the box is also primarily functional as it enables the small mints to spill from the box a couple at a time into the hands of the consumer rather than the entire contents of the box. Again, a lid on a box of confectionery is not an unusual feature and the fact that the lid is positioned halfway along the top of the box serves a functional rather than aesthetic purpose.

17. Mr Waters made the argument that the positioning of the ‘label’ was unusual and therefore contributed to the overall adaptation of the trade mark to distinguish confectionery. Generally speaking, the presence of a label on a box of confectionery itself is a common feature. In addition, the Applicant’s argument presumes that a particular aspect of the representation (absent any other material) would be identified as a ‘label’. The endorsement only indicates that the label is placed over the lid, but this also presumes knowledge of which part of the representation comprises the lid.

18. Accepting for the moment that the elements would be correctly identified, Mr Waters further argued a label placed over the end of the box rather than wrapped around the box was uncommon. I am not convinced by this argument. Putting aside the obvious function of displaying the Applicant’s brand name and information about the product, the label also has perforations along the edges of the lid. Positioning the label in this way means that it also functions as a tamper indicator for the Applicant’s product. This particular placement of the label does not preclude other traders (operating without improper motive) from wanting to place their labels in a similar fashion.

19. Applying the factors considered in the Global Brand case, I find that none of the features described by the Applicant (whether it is the position of the label, the position of the lid or the transparency of the box) is striking or makes the goods more arresting of appearance. Each one of the elements highlighted by the Applicant is predominantly functional. All of the aforementioned ‘features’ were either non-distinctive at the time of filing (and still are) or add nothing of significance to the overall impression of the trade mark. In addition, the purported features are superseded or overwhelmed by the overall shape of an oblong box with a lid.

20. While not in evidence, I do note from the publicly available Australian Patent database (AusPAT), that the Applicant’s box shape was previously the subject of an Australian Patent application (no. 51542/73). The patent application was in the name of the Applicant, but the patent has since expired. The shape of the Applicant’s trade mark was not merely incidental to the subject matter of a patent but the patent itself, and as Sundberg J commented in Global Brand (see above), the fact that “a shape was previously patented will weigh against a finding that the shape serves as a badge of origin.” On this point, Greenwood J in Mayne Industries Pty Ltd[6] made the following statements (with my emphasis in bold):

    The social compact underpinning the patent legislation is the encouragement of novel innovation by the grant, subject to qualifying criteria, of a term of exclusivity on the footing that upon the expiry of the monopoly, others are free to exercise the former monopoly. The 1995 Act by enabling shapes to be registered as a badge of origin did not establish a regime under which inventors might be able to secure enduring exclusive rights of use and foreclosure of others through infringement proceedings for the shape of a functional manner of new manufacture formerly the subject of a patent, as in this case. A shape essential to the very subject of the patent will almost always be largely functional as the invention must be novel and useful. If the shape is entirely incidental to the subject matter of the patent, it is unlikely to be a shape bearing any functional element. That is not this case.

    [6] Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27; (2008) 75 IPR 166; (2008) AIPC 92-277 at [69].

21. In Sebel Furniture v Acoustic & Felts[7], Foster J referred to Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd[8], stating (emphasis added):

    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.

    [7] Sebel Furniture Limited v Acoustic & Felts Pty Limited [2009] FCA 6 (2009) 80 IPR 244; (2009) AIPC 92-328 at [144].

    [8] Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA 876 (2000) 48 IPR 257; (2000) AIPC 91-573.

1. In general, functional features which go beyond distinguishing the wares of the owner transgress the legitimate bounds of a trade mark.[9] The Applicant’s shape trade mark has a substantial functional element in relation to the goods, broadly being a package and dispenser for the products. The shape of the packaging is necessary to obtain various technical results, as outlined above. Mr Waters argued that the elements would nonetheless provide the trade mark with some inherent adaptation to distinguish the goods stating:

   [A] combination of features, even those that may be common to the trade, move the mark closer to being capable of distinguishing. On a continuum that has ‘no inherent adaptation to distinguish’ at one end and ‘inherently adapted to distinguish’ at the other, a mark that has moved closer to ‘inherently adapted to distinguish’ must be considered to have some inherent adaptation to distinguish.

   [9] Koninklijke Philips Electronics NV v Remington Products (supra) per Burchett J.

2. It is a well-established principle that determining the adaptation of a trade mark to distinguish goods/services requires an assessment of the trade mark as a whole. Despite this consideration, I am not satisfied that in this instance the number of functional features in the trade mark combine to imbue the trade mark with a level of inherent adaptation to distinguish the goods. On the contrary, an analogous conclusion was reached by the Hearing Officer in the Saramar, LLC[10] decision where the shape of a bottle lacked any inherent adaptation to distinguish air freshening preparations. He commented (with added emphasis):

   In combination, the functional aspect of the features of the bottle and the general shape of the container do not combine to form a shape which has any inherent adaptation.  In fact, the functional aspects of the shape might be seen, as noted above, as detracting from any iota of inherent adaptation that the shape might have been held to have.

   The ground for rejection of the trade mark, is therefore, in terms of Branson J's analysis in Blount, above, one under section 41(6)…

   [10] Saramar, LLC [2000] ATMO 117.

3. In the present instance, other traders would have a legitimate need to use this shape in relation to these goods. While the specific elements may not have been used in this particular combination by other traders at the time of filing, it is worth adding that if registered the Applicant’s trade mark would enjoy protection against infringement by trade marks that are substantially identical and also by those marks which are deceptively similar.

4. I find that the trade mark is not to any extent inherently adapted to distinguish the goods of confectionery and the appropriate level of assessment is that under section 41(6) of the Act. The Applicant’s evidence must (as at 31 May 2010) demonstrate that the trade mark has the capacity to distinguish the Applicant’s goods from those of other traders.

   Evidence of Trade Mark Use

5. Section 17 of the Act sets out the nature of trade mark use as follows:

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

6. The Lingua & Gaidano declaration indicates that the Applicant’s confectionery has been sold in Australia packaged within the trade mark of the application and used in conjunction with the registered trade mark since around 1976. Despite evidence of television commercials where the ‘TIC TAC’ trade mark is not visible throughout the entire advertisement it is fair to say that in the promotional material the Applicant’s shape trade mark does not appear by itself. However, it does not necessarily follow from this fact that the Applicant is unable to demonstrate trade mark use. A product label, for example, may contain several trade marks which do not suffer from the company that they keep.[11]

   [11] See Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438; (2004) 61 IPR 242; (2004) AIPC 91-983.

7. The Applicant’s television and billboard advertising shows that the shape of the box is a major recurring feature of such advertisements. The television advertisements in particular show the Applicant’s trade mark used as maracas, dominoes, and a racing car or with the TIC TAC products stuck inside the transparent box. In addition, the Applicant’s trade mark was featured in the movie Juno and limited edition copies of the film were packaged inside a DVD-sized replica of the box. I note that the packaging of the DVD does not appear to make reference to the ‘TIC TAC’ trade mark.

8. Mr Waters also referred to a software application program for smart phones promoting the Applicant’s product. The program is a simulation of a full box of TIC TACS (bearing the product label) which can be opened using the hinged lid and dispensed complete with the rattling sound of the mints. I find that the Applicant’s shape trade mark is a feature of the promotional activities.

9. The evidence of the amount of confectionary bearing the ‘TIC TAC’ trade mark sold in Australia is substantial for the years 2007 until 2010. Given the nature of the evidence, I assume that the majority of these sales were of products packaged within the Applicant’s shape trade mark. There has also been an overwhelming amount of expenditure on advertising for the period 2005 to 2010. While the advertising expenditure is expressed in Australian dollars, neither the accompanying exhibit nor the statutory declaration states whether the expenditure reflects global advertising figures or advertising aimed specifically at the Australian consumer. 

10. In terms of whether the shape of the box is operating as a trade mark, the Waters declaration exhibits examples of trade mark use on web sites where third parties refer to ‘a TIC TAC box’ without further explanation. The implication from that evidence is that the reader would readily understand the nature of the Applicant’s shape trade mark from the use of the expression ‘TIC TAC’.

11. While I am satisfied that some of the evidence demonstrates trade mark use, the issue is whether that evidence is sufficient to establish that the shape trade mark absent any other material not only performs the function of a trade mark but distinguishes its goods from the confectionery of other Australian traders. Or, to put it another way, upon registration will the shape trade mark be instantly adapted to distinguish the Applicant’s goods in future trade?

12. In answering that question, I am also mindful of the cautionary comments made by Jacobs J in Unilever plc’s Trade Mark Applications[12] in relation to the shape of ice cream dessert products (Viennetta):

    There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled.

    I do not think that is what the European Trade Mark system is for. It is a system about trade marks, badges of trade origin. For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.

    [12] [2003] RPC 35 at [31]. While this is a United Kingdom decision, the following paragraphs have been quoted with approval in the Guylian case and also Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 90 IPR 117.

13. While there may be recognition among some consumers of the shape of the box in the Australian marketplace, I am not convinced that the use of the shape by itself before the priority date was sufficient for it to distinguish instantly the Applicant’s goods of confectionery. In addition, I am not satisfied on the balance of probabilities that the public recognition of the shape solus (i.e. in the absence of the words ‘TIC TAC’) is necessarily recognition as a trade mark or as the Applicant’s badge of origin. The Applicant has not established, through evidence of trade mark use, that the trade mark does in fact distinguish the goods of confectionery. Thus, the ground for rejection under section 41(6)(b) of the Act applies.

    Decision

    Section 33: Application accepted or rejected

    (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

    (a)the application has not been made in accordance with this Act; or

    (b)there are grounds under this Act for rejecting it.

    Note:For this Act see section 6.

    (2)The Registrar may accept the application subject to conditions or limitations.

    Note:For limitations see section 6.

    (3)If the Registrar is satisfied that:

    (a)the application has not been made in accordance with this Act; or

    (b)there are grounds under this Act for rejecting it;

    the Registrar must reject the application.

    Note:For this Act see section 6.

    (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

    Note:For applicant see section 6.

14. I reject trade mark application no. 1364556.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    13 September 2012