Re Chocolaterie Guylian N.V.

This matter concerned a trade mark application by Chocolaterie Guylian N.V. for a sea-shell shaped mark in Class 30 for non-medicated confectionery, chocolates, and pralines. The application was opposed by the examiner on the substantive ground that the mark was not inherently adapted to distinguish the applicant's goods. A hearing was held before a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the sea-shell shape mark was capable of distinguishing Chocolaterie Guylian N.V.'s confectionery from that of other traders, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved determining the extent to which the mark was inherently adapted to distinguish the goods, and if that was insufficient, considering the use of the mark and other circumstances. The delegate also considered the applicant's submissions regarding the spirit of the *Trade Marks Act 1995*, which presumes registrability, and comparisons with other shape marks that had been accepted for registration.

The delegate reasoned that the test for inherent distinctiveness, as established in *Clark Equipment Co v Registrar of Trade Marks* and applied to shape marks, required considering whether other traders, acting with proper motives, would likely wish to use the same shape for their own goods. Applying this test, the delegate found that sea-shells are a popular design element in confectionery, and other manufacturers would likely wish to use such a shape in their novelty ranges to compete. Therefore, the sea-shell shape was not inherently adapted to distinguish the applicant's goods. The delegate also noted that there was insufficient evidence to demonstrate that the public perceived the shape as a trade mark denoting origin, rather than simply an attractive product design.

Consequently, the delegate concluded that the trade mark application must be rejected as the sea-shell shape was not capable of distinguishing the applicant's goods and fell within the provisions of subsection 41(6) of the *Trade Marks Act 1995*. The delegate disregarded comparisons with other marks on the register, citing precedent that such comparisons are generally irrelevant to the assessment of a particular mark's registrability.