Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks

In the case of Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, the applicant sought registration of a distinctive shape of a confectionery product as a trade mark. The central issue before the court was whether the shape of the confectionery, specifically a six-legged creature, was inherently adapted to distinguish the applicant's goods from those of other traders. This determination hinged on whether the shape could function as a trade mark under the Trade Marks Act 1995 (Cth), particularly focusing on whether the shape had the capacity to distinguish the goods in question from those of other traders. Additionally, the court had to consider whether the registration of this shape would unduly restrict the "great common" of shapes available to other confectionery manufacturers.

The legal issues revolved around the interpretation and application of the inherent adaptation test for trade marks, as established in Clark Equipment Co Ltd v Al-Nasr Export Import Co, and whether the registration of the shape would "fence in the common" of shapes available to the confectionery industry. The primary judge's decision leaned towards the view that the registration of the shape could limit the availability of similar shapes for other traders, thus narrowing the "great common". The court had to balance the applicant's right to exclusive use of the shape against the broader interest of preventing undue restriction on the shapes available to other traders in the confectionery market.

The court reasoned that the shape in question, while distinctive and concocted, was reminiscent of a variety of insects, which could lead to potential confusion and imitation by other confectionery manufacturers. The court emphasised the malleable nature of confectionery products and the strong association children have with animal-like shapes, which could lead to other traders adopting similar shapes to capture the confectionery market. The court concluded that the registration of the shape as a trade mark would indeed "fence in the common", restricting the shapes available to other confectionery manufacturers and potentially stifling innovation and variety in the market. The court thus found that the shape was not inherently adapted to distinguish the applicant's goods from those of other traders, leading to the refusal of the trade mark registration.

Accordingly, the court upheld the Registrar's decision to refuse the registration of the shape as a trade mark, finding that it would not serve the purpose of distinguishing the applicant's goods from those of other traders and would unduly limit the shapes available to other confectionery manufacturers. The registration application was therefore dismissed.