Ferrero S.p.A

This matter concerned trade mark application number 1364556, filed by Ferrero S.p.A. The application sought to register a shape trade mark for confectionery. The Hearing Officer, Heath Wilson, was required to determine whether the trade mark was inherently adapted to distinguish the applicant's goods, or whether it had, through use, acquired the capacity to distinguish them.

The primary legal issue was whether the shape trade mark, as used by Ferrero S.p.A. in Australia as at 31 May 2010, had acquired distinctiveness. This involved assessing whether the evidence demonstrated that the shape alone was capable of distinguishing the applicant's confectionery from that of other traders, as required by section 41(6) of the relevant Act. The court considered the nature of trade mark use under section 17 of the Act and the sufficiency of evidence relating to sales and advertising expenditure.

The Hearing Officer found that while the shape of the confectionery box was a recurring feature in promotional materials and had been sold in Australia since around 1976, the evidence did not establish that the shape, used independently of the "TIC TAC" branding, was sufficient to distinguish the applicant's goods. The court was not satisfied that public recognition of the shape *solus* necessarily indicated recognition as a trade mark or as Ferrero S.p.A.'s badge of origin. Consequently, the ground for rejection under section 41(6)(b) of the Act was applied.

Trade mark application number 1364556 was rejected.