Grolsch N.V., Re

This matter concerns an application by Grolsch N.V., a company organised under the laws of the Kingdom of the Netherlands, to register a device mark for "beers" in class 32. The application was lodged in Part A of the Register on 14 October 1985. The examiner objected to the mark's registrability under paragraph 24(1)(e) of the Act, asserting that it consisted of a non-distinctive representation of the goods and was not adapted to distinguish the applicant's beers from those of other traders. The applicant contended that the mark, a line drawing of a bottle, was distinctive of its goods and cited a previous decision concerning The Coca-Cola Company's application as precedent. The applicant also proposed an endorsement to clarify the scope of the registration as a line drawing and consented to a disclaimer of a device of a bottle per se, while also pointing to similar Part B registrations in the United Kingdom.

The legal issues before the delegate were whether the applicant's proposed mark was registrable in Part A of the Register, requiring it to be distinctive or adapted to distinguish the applicant's goods from those of other traders, or alternatively, whether it was registrable in Part B of the Register, requiring it to be capable of distinguishing the applicant's goods in the future. The delegate was required to determine if the specific features of the bottle depicted in the line drawing, including its concavity, shoulder configuration, and swing-top porcelain stopper, were sufficiently unique to be considered distinctive, or if they were common features that other traders might legitimately use. Furthermore, the delegate had to assess whether any evidence of use submitted by the applicant demonstrated that the mark had acquired distinctiveness in Australia.

In reaching a decision, the delegate applied the established test for distinctiveness, considering whether other traders would likely require the use of a similar device without improper motive in the normal course of their business. The delegate found that the bottle device, despite the applicant's proposed endorsement, did not possess sufficient uniqueness. The concavity was deemed barely noticeable, the blank ovals and shoulders were considered common features, and while the swing-top stopper was somewhat unusual, it was not novel and could be adopted by other traders. The delegate distinguished the present case from the Coca-Cola decision, noting that the Coca-Cola bottle had a demonstrably unusual shape and a long history of use establishing acquired distinctiveness, which was not evident here. The evidence of use in Australia, commencing only around the time of the application, was considered insufficient to establish distinctiveness in fact, particularly as the depicted use often included labels and embossed elements not present in the line drawing application.

Consequently, the delegate found that the applicant's mark failed to qualify for registration in Part A as it was not inherently distinctive and had not acquired distinctiveness through use. The delegate also concluded that the mark was not registrable in Part B, as the demonstrated use was insufficient to establish its capability of distinguishing the applicant's goods in the future. Accordingly, the application was refused.