Kenman Kandy Pty Limited

[2000] ATMO 113

TRADE MARKS ACT 1995

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

Re:Trade mark application number 783465(30) - Bug Shape- in the name of KENMAN KANDY AUSTRALIA PTY LTD.

Background

On 15 January 1999, Kenman Kandy Australia Pty Ltd ("Kenman") filed an application to register a shape trade mark.  The description and representation of the proposed trade mark, as they now stand, are as follows:

The trade mark consists of the three-dimensional shape of the goods as shown in the representations attached to the application form.

The application is in class 30, and covers the following goods:

Rice, pasta; cereal and cereal preparations; tea, coffee, cocoa; coffee essences, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; pastries, cakes, biscuits; ices, ice cream products, frozen confections; chilled desserts, mousses, sorbets (ices); bread; pastry; sweet spreads, savoury spreads, snack foods, prepared meals, chocolate, chocolates, chocolate products, sauces including toppings for ice cream and desserts; pizzas, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressings; mayonnaise; dips

The application was examined in terms of the Trade Marks Act 1995 ("the Act"). On 26 April 1999, an examiner of trade marks reported that there was a ground for rejection in terms of s 41, because it had no inherent adaptation to distinguish. This ground for rejection was maintained through three further reports. The applicant provided no evidence of use. Ultimately, the matter was set down for a hearing by the Registrar in terms of s 203 and reg 21.15 of the Act.

The applicant chose to make representations at the hearing, which took place on 21 July 2000 in Sydney.  Mr Michael Hall, of Counsel, instructed by Mr Brett Doyle of the firm of Baker & McKenzie, Solicitors and Attorneys, appeared on behalf of Kenman.  As delegate of the registrar, having been appointed to hear those submissions, it is now my task to decide whether the application should be accepted or rejected.

Submissions

As his starting point, Mr Hall referred me to the judgement of the Full Court of the Federal Court in Koninklijke Philips Electronics NV v Remington Products Australia Pty Limted[1] ("Philips N^o 2").  He argued that the proposed trade mark is not "the shape of the product" in the sense used in that case, but was on a par with the shape in Coca-Cola Co v All-FectDistributors Limited[2].   At this point, a package containing a moulded gum confectionary featuring the proposed trade mark was tabled.  This showed, Mr Hall said, that the shape was a sign separate from and applied to a confectionary in the same way that the Coca-Cola bottle shape had been applied to a confectionary.  The decision of the Registrar in Re Application by Chocolaterie Guylian NV [3] had, he said, been wrongly applied to consideration of this application.  Guylian should not be read to mean that, as a first general proposition, a sign becomes descriptive merely by forming the shape of an article, nor that, as a second general proposition, any element of aesthetic appeal in the selection of the shape renders the trade mark functional.  Those general propositions were not to be drawn from Guylian, he submitted, had no application to the proposed trade mark, and were at variance with the law. 

[1] [2000] FCA 876

[2] [1999] FCA 1721

[3] 46 IPR 201

Whereas Guylian concerned a chocolate sea shell, which was a commonplace "novelty" shape which others in the trade should be able to use in the normal course of their business, the bug was clearly a "coined shape" in the sense used by Burchett, J in Philips (N^o 2).    Neither was the bug the shape of the goods, for it was impressed onto the goods in the same way that the Coca Cola bottle shape was impressed onto confectionary.  By contrast, in Guylian the goods were chocolate seashells, so that the trade mark  which had been proposed in that case was indeed the shape of the goods. 

On the issue of descriptiveness, Mr Hall argued that a shape has no descriptive quality unless it is a shape suggested by the goods.  He supported his argument by analogy with word marks: "sugar cane" for sugar is descriptive but "football" for ice-cream is not; likewise, a sugar-cane shape for sugar has a descriptive quality, but a football shape for ice-cream does not. 

Functionality did not, in his submission, encompass aesthetic appeal.  He directed my attention to the judgement in Philips (N^o 1), in which s 39 of the Trade Marks Act 1994 was discussed before Lehane J[4].  Aesthetic appeal had no part in functionality as His Honour had considered it, he said.  Aesthetic appeal was irrelevant to "a shape..that the goods must have if a particular technical result is to be obtained"[5].  Again, he submitted, there was a useful analogy with word marks.  "Dove" may be more attractive than "Vulture" as a word mark for chocolate, but that does not stand in its way as a trade mark.

[4] Koninklijke Philips Electronics NV v Remington Products Australia Pty Limted [1999] FCA 816 at paragraphs 20-26.

[5] Trade Marks Office Draft Manual of Practice and Procedure, Part 21, para 3.3

There was, he contended, an underlying problem in the recasting, in Guylian [6], of the classic test[7] for inherent capacity to distinguish.  In the delegate's decision, he said, a consideration of the signification that a sign ordinarily possesses seems to have been lost or at least subsumed into "proper motives", which may have been intended as a catch-all shorthand for all of the aspects of the test.  It is wrong, he submitted, to relegate all possible shapes of food and confectionery to the category of trade marks having no inherent adaptation to distinguish, just on the basis that traders like variety and novelty in the shape of these goods.  Such an approach could not, in his submission, be in accordance with a proper consideration of each application on its individual merits.

[6] supra, at 205

[7] Kitto J, in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514

Reasons

The Act, at s 33, establishes as follows:

Application accepted or rejected

33.(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 for rejecting it.

Note:  For the grounds on which an application may be rejected see Division 2.

(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 for rejecting it;

the Registrar must reject the application.

The meaning of this provision, and its interaction with the provisions of s 41, have been judicially considered in Blount Inc v Registrar of Trade Marks [8].  In that decision, Branson J said:

Section 33(1) provides that the Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or that there are grounds for rejecting it. The 1955 Act, by s 44, required the Registrar to accept the application only if satisfied that there was no lawful ground of objection to it. The terms of s 33(1) of the Act are presumably intended to reflect the recommendation of the Working Party that the Act "should be expressed in terms which make it clear that there is to be a presumption of registrability when examining an application for registration" (p 42 of the Report). However, by reason of the terms of s 41 of the Act, it is doubtful that s 33(1) can have any practical effect so far as the specific question of capacity to distinguish is concerned.

Each of s 33(1) and s 41 involves the concept of the Registrar being "satisfied". Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

Her Honour then proceeded to analyse the process by which the Registrar is to reach a conclusion as to whether or not a trade mark is capable of distinguishing. The key issue in this process is "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."  Having considered this, the Registrar can reach one of three possible conclusions, each of which entails its own specific consequences.  These conclusions, and their consequences, are:

[8] 40 IPR 498 at 503

1. That the trade mark has sufficient inherent adaptation to distinguish to be capable of distinguishing. No ground for rejection under s 41 then exists and s 33(1) binds the Registrar to accept the trade mark.

2. That the trade mark has no inherent adaptation to distinguish. The onus is then on the applicant to demonstrate to the Registrar's satisfaction that the trade mark nevertheless does distinguish the designated goods or services, by reason of use. If this is demonstrated, the Registrar must find that the trade mark is capable of distinguishing in terms of s 41(6). If so, s 33(1) binds the Registrar to accept the trade mark. An applicant's failure to demonstrate this means that the Registrar must reject the application in terms of s 41(2) and s 33(2).

3. That the trade mark has some inherent adaptation to distinguish, but insufficient to be capable of distinguishing on that basis alone. The onus is then on the applicant to demonstrate to the Registrar's satisfaction that, by the combination of the extent to which it is inherently adapted to distinguish, and/or the use or intended use of the trade mark by the applicant, and/or any other circumstances, the trade mark does or will distinguish the designated goods or services in terms of s 41(5). If so, s 33(1) binds the Registrar to accept the trade mark. An applicant's failure to demonstrate this means that the Registrar must reject the application in terms of s 41(2) and of s 33(2).

Inherent adaptation to distinguish means the qualities possessed by a trade mark that cannot be changed or altered.  As expressed by Gibbs, J, in Burger King Corporation v Registrar of Trade Marks[9]:

[9] [1973] 128 CLR 417 at 424

Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co. v Registrar of Trade Marks - and is therefore not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.

Unlike the seashell shape considered in Guylian, the proposed shape is not one that is in common use.  It is a stylised six-legged "creature".  It does not represent a recognisable animal or insect or other living or mythical thing of which I am aware, and no ready descriptive word comes to mind in viewing it.  It is, in my view, an invented shape. It strikes the eye as distinguishable from other shapes, being not so amorphous or ordinary as to be unmemorable, even though no name readily attaches to it.  It could be said that it carries the stamp of an individual imagination. 

It might be argued that even an invented "creature" has little adaptation to distinguish in a field where traders commonly devise new and novel shapes, in the hope of attracting custom from their competitors.  However, I do not think that it is appropriate to treat invented shapes as equivalent to well-known, ordinary shapes. Ordinary, well-known shapes means shapes which are frequently encountered in use in the marketplace on goods of the relevant kind.  Thus, in relation to confectionery, ordinary well-known shapes could include

Þeasily recognisable shapes that occur in nature (eg animals, flowers, insects, people, teeth);

Þreproductions of common man-made objects (eg pillows, buildings);

Þshapes familiar to everyone because they are commonplace solid geometric forms (eg cubes, globes, rectangular solids); and

Þshapes neither natural nor geometric that form part of our common mythological heritage (eg mermaids, angels, dragons).

In Guylian, the delegate stated[10]:

[10] Supra, at 206

Many products are designed primarily on the basis of visual appeal and the shape of these goods is likely to reflect contemporary style and current trends and fashions. The success of such products (shoes, lampshades, ice-cream cakes, teddy bears …) depends on their pleasing design and will accordingly be bought (or not bought) largely on the success (or otherwise) of their configuration. Where an aspect of shape is designed to capture market appeal that shape must then be regarded as functional. It is an adaptation which other traders should be free to compete with and, as held by the draft manual at Pt 21 3.3, functionality of this kind “has no inherent adaptation to distinguish the applicant’s goods … from the same or similar goods … of other traders”.

However, taken in context, this passage does not amount to the enunciation of a general principle which equates attractiveness, or market appeal, with functionality.  The delegate went on to state that the essential question was "whether the sign is one which other traders would normally expect to be freely available and which, for the sake of fair competition, they should be at liberty to use."  Clearly, not all attractive shapes will be signs that others should be at liberty to use.

Attractiveness was judicially mentioned before the Full Federal Court in a passing off action, Coca Cola, above, where their Honours said[11]:

[11] at para 25

The confectionary has three features which are not descriptive of the goods.  They are the silhouette, the fluting at the top and bottom, and the label band.  It is not necessary for the respondent to adopt any of those features in order to inform consumers that its product is a cola flavoured sweet.  It could do so by using the cola colour, the word COLA and the shape of an ordinary straight-walled bottle.  The silhouette, fluting and band are striking features of the confectionary and are apt to distinguish it from the goods of other traders.  The primary function performed by these features is to distinguish the goods from others.  That is to use those features as a mark.  It is true, as the respondent said, that the fact that a feature is not descriptive of goods does not necessarily establish that it is used to distinguish or differentiate them.  But in the present case we are compelled to the conclusion that the non-descriptive features have been put there to make the goods more arresting of appearance and more attractive, and thus to distinguish them from the goods of others.

In Philips No 2, supra, Burchett J discussed the law in relation to trade marks of the present kind.  At paragraph 12, he said:

The mark is added, as something distinct from the goods.  It may be closely bound up with the goods, as when it is written upon them, or stamped into them, or moulded onto them (see The Coca-Cola Company v All-Fect Distributors Limited trading as Millers Distributing Company (2000) AIPC 91-534), or, in the case of a liquid, it may be sold in a container so formed as to constitute both the container and the mark. But in none of these cases is the mark devoid of a separate identity from that of the goods.

Further, at paragraph 16, his Honour states:  "Just as a special word may be coined, a special shape may be created as a badge of origin."  And he concludes his discussion as follows, at paragraph 17:

The conclusion of this discussion is not that the addition of the word "shape" to the statutory definition calls for some new principle, or that a shape mark is somehow different in nature from other marks, but that a mark remains something "extra" added to distinguish the products of one trader from those of another, a function which plainly cannot be performed by a mark consisting of either a word or a shape other traders may legitimately wish to use.

It is my view that Guylian does not deviate from the principle stated by His Honour in the Philips No 2 decision.

To return to the question of the extent of inherent adaptation to distinguish of the proposed trade mark, and applying the considerations discussed above, I conclude that it is not a shape that others need to use and that it is a coined shape. It nevertheless does not satisfy me, prima facie, that it is capable of distinguishing.

The reason for this was explained by D.R. Shanahan in Australian Law of Trade Marks and Passing Off [12]:

[12] Australian Trade Mark Law and Practice, (2^nd Ed), The Law Book Company Limited, 1990 p 117

Where the alleged trade mark involves the very shape or colouring of the goods, there will be the initial problem of deciding whether it even falls within the definition of "mark" provided by s. 6(1).  [Due to the Coca Cola decision] it is now most unlikely that the shape of the product or of its container will be regarded as a mark, but a colour scheme may constitute a mark, as perhaps may some aspect of shape that might be regarded as something "additional" to the product or container.  However, to be registrable the mark must also be distinctive, and prima facie at least such features may appear to have no trade mark significance, particularly when at all decorative or functional in nature. (Emphasis added.)

Mr Shanahan was of course referring to the 1955 Act, but the same holds true under its successor. It is because the features of the proposed trade mark do not appear, at first instance, to have trade mark significance that I consider that the trade mark does not have sufficient inherent adaptation to distinguish for acceptance under the provisions of s 41(3). I am therefore unable to decide the matter on the basis of the extent of inherent adaptation to distinguish alone. However, as the proposed trade mark does have some inherent adaptation to distinguish, it is the provisions of s 41(5) rather than of s 41 (6) that apply.

That being the case, has the applicant discharged the onus upon it to show that by the combination of the extent to which it is inherently adapted to distinguish, and/or the use or intended use of the trade mark by the applicant, and/or any other circumstances, the trade mark does or will distinguish the designated goods in terms of s 41(5)?

No evidence of use or intended use, apart from an empty confectionery packet, has been provided and no other circumstances have been put before me.  This is not sufficient for me to be satisfied that, on the balance of probabilities, the proposed trade mark does or will distinguish the goods from those of others.

I therefore find that the applicant has not met the onus on it to show that the proposed trade mark meets the requirements for acceptance under the provisions of s 41(5).

Decision

I reject application 783465.

Arminel Ryan
Senior Examiner

25 October 2000