Saramar, LLC

[2000] ATMO 117

TRADE MARKS ACT 1995

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

Re:Trade mark application number 757596(5, 11) - Bottle shape - in the name of Saramar, LLC.

Background

This ex parte matter has arisen out of the filing by Saramar Corporation ('the applicant'), on 18 March 1998, ('the relevant date') of an application to register the sign appearing below as a trade mark in respect of:

Air freshening preparations and deodorants not for personal use; preparations to neutralise bad odours.  (Class 5)

Air deodorising apparatus.  (Class 11)

 

The application carries a description of the bottle in the following terms:

The trade mark consists of the shape of a bottle as shown in the representations attached to the application form.

I believe that this description is inadequate and, if I were to accept the application, I would require the applicant to describe or depict the bottle with more attention to what it claims to be the extra features which have been added and are unique to this bottle.

A trade mark examiner reported on the application stating that:

¨The trade mark is the shape of goods specified in the application.

¨Other traders would be likely to use a similar shape in relation to similar goods.

The applicant, via its attorneys, Watermark of Melbourne, made submissions couched in terms to address the examiner's report; however, the examiner maintained the objections and, over the subsequent 5 reports, these grounds for rejection have grown to include:

The shape of the bottle is functional

The ground for rejection is one under section 41(6)

The applicant requested to be heard in this issue.  This matter was the subject of a hearing before me as a delegate of the Registrar of Trade Marks in Melbourne on 10 October 2000.  Mr Louis Gebhardt of Watermark represented the applicant.  I will address his concerns in the course of my reasons.

Evidence

There are two statutory declarations filed as evidence in these proceedings.  The first is by Denis John Shelley who was Managing Director of Sara Lee Household & Body Care (Australia) Pty Limited.  The other is by Stephen John Goodey who became Managing Director of of Sara Lee Household & Body Care (Australia) Pty Limited in July 2000.  I will consider the evidence of these gentlemen more closely in the course of these reasons.

The Act

Section 41 of the Act provides:

Trade mark not distinguishing applicant's goods or services

41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:  For applicant and predecessor in title see section 6.

Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account 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.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii) the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1:  For goods of a person and services of a person see section 6.

Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services.

Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

I will note now that section 41 couches its prescription in terms of a trade mark.  That is, the sign being assessed must be a trade mark within the statutory definition of a trade mark.  This may not be apparent until after all of the applicant's evidence has been assessed: Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 (25 February 2000).

The approach to the application of section 41 was discussed by Justice Branson in Blount Inc v Registrar of Trade Marks, (1998) 40 IPR 498; AIPC 91-408 (Blount).

In deciding whether a trade mark is capable of distinguishing, the Registrar has three options, says Branson J.  The Registrar may conclude:

(a)     that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b)     that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c)     that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of distinguishing the designated goods or services.

Branson J says:

The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41 (2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33 (1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41 (4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the registrar reaches conclusion (b) above, then the provisions of paras  (a) and (b) of s 41 (6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar will not reject the application pursuant to s 41 (2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33 (1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar must reject the application pursuant to s 41 (2).

If the registrar reaches conclusion (c) above, then the provisions of paras  (a), (b) and (c) of s 41 (5) are brought into operation. If the registrar, having considered the combined effect of the matters listed in subparas  (i), (ii) and (iii) of s 41 (5) (a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41 (2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33 (1). If the registrar, having considered the combined effect of the matter listed in subparas  (i), (ii) and (iii) of s 41 (5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the registrar must reject the application: s 41 (2).

In determining the issues of s 41, Branson J directs that the first step is:

to take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons.

Her Honour then addresses the question of inherent adaption and comments both in respect of the repealed Trade Marks Act 1955 (Cth) and the current law. In respect of word trade marks (and specifically geographic words) Branson J says:

The notion of a trade mark being inherently adapted to distinguish the designated goods was of primary significance under the 1955 Act.  There is no reason to think that the phrase “inherently adapted to distinguish the designated goods from the goods of other persons” appearing in s 41 (3) of the Act is not intended to be understood in the light of decisions under the 1955 Act, and comparable United Kingdom legislation which includes references to inherent adaptability.

Prior to applying the above to the instant sign, it is appropriate to note that it is a shape mark and to incorporate into these reasons some of the principles that apply in such instances.

In Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA 876 (30 June 2000), Burchett J, with whom Branson and Hill JJ agreed, observed:

13 The nearest the appellants came, in argument, to finding an instance of a use of the goods as the trade mark, which could be supported by existing authority, was not the The Coca-Cola Company (for there the mark was something added by being impressed on goods that already had their identity as sweets of a particular flavour and texture, which remained unchanged); rather, it was in the example suggested by Branson J of a bottle of perfume. But in the case of a perfume or a drink, it is just because the bottle is only a container for the product the purchaser is going to apply or consume, that features of its shape are sufficiently variable to be capable of being made distinctive (see Philips Electronics NV v Remington Consumer Products at 290), and may therefore be used as a mark, though not if the capacity for distinctiveness is not exploited: Procter & Gamble Ltd's Trade Mark Applications [1999] RPC 673 at 680-681, per Robert Walker LJ (with whom Peter Gibson and Tuckey LJJ agreed). The point may be illustrated by imagining a case where the bottle became the essence of the commodity sold, being an expensive imitation gourd or reproduction of a particularly beautiful Grecian urn. In such a case, other traders might legitimately wish to produce like imitations or reproductions, and the use of the shape could not in itself distinguish the products of one person. Cf. the passage from the judgment of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 which Branson J cited in Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 55. Whether the question of fact under s 41(6)(a) of the Trade Marks Act 1995, which is discussed in the last mentioned decision, could ever properly be answered in favour of the manufacturer of a gourd or urn of the kind I have postulated, if he sought to register its shape as a trade mark, does not need to be determined in this case. But when it does come up for determination, consideration will need to be given to the meaning of the expression "it does distinguish" in s 41(6)(a). The word "distinguish", as a glance at the Shorter Oxford English Dictionary will confirm, implies something other from which a differentiation is, or is to be, made. Where, therefore, a sole manufacturer uses a particular name or shape for a product no one else produces, how do we say whether it does in fact distinguish? Is it relevant that, if anyone else were to produce the same product, the name or shape could not differentiate between the two? Does that mean it never did distinguish, though it may have named or embodied a kind of product of which there was but one example? Despite the differences between the 1995 Act and the English legislation, it may be that some light will be found to be cast on the matter by the reasoning of Aldous LJ in Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 at 817-820; and of Jacob J at first instance in Philips Electronics NV v Remington Consumer Products at 292-293.

Further, Burchett J stated:

16 It does not follow that a shape can never be registered as a trade mark if it is the shape of the whole or a part of the relevant goods, so long as the goods remain distinct from the mark. Some special shape of a container for a liquid may, subject to the matters already discussed, be used as a trade mark, just as the shape of a medallion attached to goods might be so used. A shape may be applied, as has been said, in relation to goods, perhaps by moulding or impressing, so that it becomes a feature of their shape, though it may be irrelevant to their function. Just as a special word may be coined, a special shape may be created as a badge of origin. But that is not to say that the 1995 Act has invalidated what Windeyer J said in Smith Kline. The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded. For they are cases where the shape that is a mark is "extra", added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J's words, "an existence independently of the mark" which is imposed upon them. [Stress added].

And:

20 Although the relevant Canadian statutory provisions are significantly different from the provisions of our Act, in terms of the general principles relating to trade marks, similar conclusions were stated by MacGuigan JA, speaking for the Federal Court of Appeal, in Remington Rand Corp v Philips Electronics NV (1995) 64 CPR (3d) 467. That case involved a Canadian registration of Philips' so-called three dimensional trade mark. MacGuigan J said (at 477):

"It is clear that every form of trade mark ... is characterized by its distinctiveness."

He went on to refer (at 478) to "the public policy basis [of trade marks] ... to distinguish wares from those of competitors, by monopolizing, not the wares, but the mark as used in relation to them." And he concluded (ibid):

"A mark which goes beyond distinguishing the wares of its owner to the functional structure of the wares themselves is transgressing the legitimate bounds of a trade mark."

It is apparent to me that the relevant principles I am to apply to this sign are:

¨The bottle shape should only be a container for the product - not a product in itself

¨The trade mark should be something extra which is added to the inherent form of the particular goods

¨The goods should have an existence independent of the trade mark

¨The features of its shape should be sufficiently variable to be capable of being made distinctive

¨The capacity for distinctiveness should have been exploited

¨The bottle should not be or become the essence of the commodity being sold (if so, the meaning of the phrase 'it does distinguish' should be considered); and,

¨Any functional features transgress the bounds of what is a trade mark.

I believe that a shape may pass any of the above criteria yet fail to be assessed as having any inherent adaptation if it fails one or more of the others.  However, having one or more functional features does not detract from the possibility that a shape trade mark does have inherent adaptation to distinguish provided that those features are not the 'something extra'[1] which is added to the goods or such that their prominence overwhelms the something extra which is added to the goods.  I next should consider how these criteria, above, fit with those others that I have quoted from Blount, above.

[1] Distinct from the trade mark itself in the sense of James Trade Mark (1886) 3 RPC 340 at 344 or in Coca-Cola Trade Marks [1986] RPC 421; (1986) 6 IPR 275 at RPC 457; IPR 276–7.

Branson J in Blount, above, refers to whether a trade mark is 'inherently adapted to distinguish' in the three options or conclusions open to the Registrar in his or her assessment of a trade mark under section 41.  The expressions 'inherent distinctiveness' and 'inherently adapted to distinguish' are explained by Hearing Officer Williams in the, as yet, unpublished decision in Woolworths Limited v BP Amoco p.l.c., in the following way:

Branson J, in OREGON, supra, concluded that earlier law continues to be applicable, particularly a test set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511. For convenience, given that is so often quoted in TMO decisions, I will refer to this simply as "the Michigan test". It has been cited with approval many times, eg by the High Court in F H Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited, 112 CLR 555. As initially formulated, it reads:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing the goods from the goods of others.  In Registrar of Trade Marks v W. & G. Du Cros Ltd - (1913) 30 RPC 660 - Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in respect [i.e. in distinguishing his goods by means of the mark apart from the effects of registration] must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what other may legitimately desire to use."

That test is, however, a test for the overall registrability of a trade mark, in terms of it being, in the language of earlier legislation, "adapted to distinguish".

In terms of s 41, another element intrudes into the analysis: inherent adaptation to distinguish.  Under earlier legislation, this was an essential ingredient if a trade mark was to be judged as adapted to distinguish.  However, under the current act it is a preliminary question.  Its existence must be established and quantified, and the mark tested under the appropriate provision.  A mark found to be entirely lacking in inherent adaptation, for example, can still be judged capable of distinguishing, but only if it meets the specific factual test set out in s 41(6).

[…]

It seems to me a mistake to decide the inherent failing of a mark on the basis of a test aimed at the overall question of adapted to distinguish, not at the specific issue of inherent adaptation.  […].  The inherent nature of a mark cannot be changed by use, as the courts have stated over and over again.  It follows that, while a mark may be judged, objectively, in terms of the Michigan test (supra), not to be capable of distinguishing, it may yet have, inherent within it, the adaptation to do so at some future time if it is ever sufficiently used by the owner.  See the analysis of Gummow J in Oxford University Press v Registrar of Trade Marks, 17 IPR 509, from line 6 of page 524, to line 17 of p 526.  [Parenthetical material omitted].

In general outline, the bottle shape does not appear to me to be different to any that might be employed by other traders to hold deodorising scents or used in relation to scent dispensers.  There seems to be nothing extra or added to the goods within the shape.  The goods appear to have no existence, independent from the shape.  There is nothing specific about the shape which is unusual enough to suggest that it sets the goods of the applicant apart from those of other traders.  The general shape therefore is not inherently adapted to distinguish the designated goods in terms of subsection 41(3).

The attorney submitted at the hearing that the "Bottle Shape was one of the first such products to appear on the market".  I understand him as meaning, "the goods sold under the Bottle Shape trade mark were among the first such products on the market," as, in the light of judicial comment above, a shape cannot be the product and also be a trade mark: the shape should be something extra which is added to the product.  Novelty of a product onto the market, if this is what is being claimed, is not a factor that can be used in assessment of inherent adaptation: inherent adaptation must flow from the nature of the sign itself.  As was observed by Burchett J in the Philips case, above,

In Unilever Ltd.'s (Striped Toothpaste No. 2) Trade Marks [1987] RPC 13, Hoffmann J (as Lord Hoffmann then was) dismissed an appeal against a refusal of registration of device marks containing representations of red and white striped toothpaste. His Lordship said (at 19-20):

"There are many cases which speak of the extreme difficulty which faces a trader who produces a new article to which he attaches a descriptive name in proving that the name has acquired a secondary meaning denoting an article made by him. As Lord Davey said in the Cellular Clothing Company Ltd v Maxton & Murray [1899] AC 326 at 344:

`...the evidence of persons who come forward and say that the name in question suggests to their minds and is associated by them with the plaintiff's goods alone is of a very slender character, for the simple reason that the plaintiff was the only maker of the goods during the time that his monopoly lasted, and therefore there was nothing to compare with it...'.

Without any prior consideration of the evidence filed in relation to this matter by the applicant, it is immediately apparent that some of the features of the bottle shape are purely functional.  It is obvious from the specifications of goods and configuration of the bottle that it is a refill for an electrical scent dispenser of the type that plugs into a power socket.  The ridges on the front and back of the bottle are parallel with each other and aligned, or symmetrical, back with front.  These immediately suggest that they are, in fact, for guiding the dispenser bottle into the machine.  One face of the bottle is flattened, this too suggests that it is a functional aspect of the bottle, being a technical solution to enable the bottle to fit against a flattened surface of the machine.  The raised dome on one side of the bottle does not, on immediate impression, appear to have any function but is not sufficient, on its own, to add inherent adaptation to the shape of the bottle.  I find some support for this analysis within the examiner's third report where it was stated that "the flat face and recess on one side appear to have a functional purpose for assisting in attaching the bottle to a piece of air deodorising apparatus."  And the attorney's tacit agreement in response to the examiner that "The shape of the bottle is not entirely dictated by function.  Only part of the bottle has any functional purpose."

The attorney did not attempt however, to identify any feature of the bottle that does not have a functional purpose.

At the hearing of this issue, the attorney for the applicant impressed upon me that the functional features of the bottle shape are only one technical solution to facilitate attachment of the bottle to the dispenser.  There are, he submitted, numerous other technical solutions and possible designs of bottles that could result from these solutions.  I do not think that this helps his client's cause.  Firstly, it was pointed out in the Philips case, above, that there are other ways of making electric razors - the fact that there are other ways of configuring electric razors was of no assistance to Philips.  Secondly, I think that the very fact that a shape has strong functional elements detracts from the likelihood that it will ever be seen as a trade mark having any inherent adaptation.

In combination, the functional aspect of the features of the bottle and the general shape of the container do not combine to form a shape which has any inherent adaptation.  In fact, the functional aspects of the shape might be seen, as noted above, as detracting from any iota of inherent adaptation that the shape might have been held to have.

The ground for rejection of the trade mark, is therefore, in terms of Branson J's analysis in Blount, above, one under section 41(6) and the conclusion is, "that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons."

The evidence, which I now consider, shows that the sign has been used since 1997 - the sales appear to have been moderate since that time.  The evidence details the relationship between Sara Lee Household & Body Care (Australia) Pty Limited (for whom both declarants either work, or worked) and the applicant.  However, somewhat unusually, both declarants appear to avoid the question of who has been using the trade mark.  This, on its own, is enough to strike down the application since I do not know whose use of the sign the evidence shows and, in the assessment of the evidence and in light of the declarant's seeming avoidance of the issue, I lack any confirmation that use has been by the applicant and that any possible distinctiveness through use, or proof that the trade mark does distinguish, has accumulated to the applicant.  However, the evidence also damns the application for several other reasons.  Of primacy is the fact that the packaging and physical exhibits show that, on purchase, the bottle is sold within a cardboard box.  There is a range of fragrances, all of which are sold within cardboard boxes.  Some of these boxes have a small plastic window on the front and some do not.  The bottle and its shape are thus occasionally mostly obscured within this box and only partially visible with some difficulty through the plastic window on the front of the box.  The bottles otherwise sold within the boxes with no plastic window cannot possibly be seen by the purchaser.

Section 17 of the Act states:

What is a trade mark?

17. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:  For sign see section 6.

Section 6 of the Act defines the term sign:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

The Courts have consistently held that to qualify as a trade mark, a sign must be used as a trade mark and it is very apparent from the evidence lodged that the bottle shape here is not used as a trade mark.  As stated in Re: Johnson and Johnson Australia Pty Limited and: Sterling Pharmaceuticals Pty Limited No. G385 of 1990 FED No. 402 Trade Marks (1991) AIPC 90-823, 101 ALR 700, 21 IPR 1, 30 FCR 326 by Burchett J:

What is use as a trade mark?  In Estate of P.D. Beckwith, Inc. v Commissioner of Patents (1920) 252 US 538 at 543, the Supreme Court of the United States described "the function of a trade-mark" as being "to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied". An acceptance of this view is the foundation of the well known judgment of Kitto J. in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 Kitto J. (at 425) considered whether a mark had been used "as a trade mark" by asking whether it was used "for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol (the product there in question) and the appellant" and whether representations of it had been used "as being marks for distinguishing Shell petrol from other petrol in the course of trade". More colourfully, Whitford J. in Mars GB Ltd v. Cadbury Ltd (1987) RPC 387 at 402 pictured the use of a trade mark (in the sense under discussion) as the planting of a flag "to identify the fact that you are in a particular trader's territory". See also Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 at 683.

I do not believe that the shape of this bottle, mostly obscured and occasionally completely hidden, within a cardboard box, could function so as to indicate to purchasers the origin or ownership of this deodorising preparation which they might purchase - or for that matter the origin or ownership of the apparatus itself.  To follow Whitford J's analogy, if a flag is planted here, it is planted in commercial darkness.

Further, the packaging within which the bottle is sold bears the prominent trade mark AMBI-PUR.  The high visibility of this trade mark and the invisibility of the bottle in trade dictates that for this reason it is also unlikely that the bottle might be viewed as having any trade mark function.  (And adds to the applicant's problems in proving that, if the sign is a trade mark, the trade mark does distinguish).

The third problem with the evidence is that the declarants both refer to the bottle shape as the AMBI-PUR bottle.  The fact that the declarants find it necessary to identify the bottle shape by reference to another trade mark and not its own purportedly unique shape might be seen as telling. 

A fourth problem, and possibly the most crucial, is the paucity of the evidence.  There are no declarations from the public or from those in the trade - however, as the sign is obscured (or even hidden) within the packaging, perhaps this is not surprising. 

Fifthly, at the hearing I was shown a bottle made by Reckitt & Colman for containing deodorising scents for similar use within a plug-in dispenser.  I note that this bottle also has a flat back and curved front, albeit without the other functional elements of the applicant's bottle.

Sixthly, the applicant has not shown me that it has exploited the shape's capacity for distinctiveness.  In the sense that Burchett J refers to it in the quote from Philips, above, I take this as meaning as having promoted the shape to, and placed it before, the public as being a trade mark.

The seventh and final problem is that the evidence shows that the raised disc, or dome, on the front of the bottle is, in fact, functional and is used for holding the bottle into the dispenser where it engages in a corresponding hole.

The relevant date for the purposes of the assessment of the evidence is 18 March 1998 (the date of filing of the application).  At this time, the sign had been in use for a scant two years.  With the problems of invisibility in the market place, functionality and subsequent lack of any inherent distinctiveness, the quantum, duration and lack of any information as to public awareness and recognition of the use of the sign as a trade mark, or any evidenced use by the applicant of the sign as a trade mark, mitigate against any possibility of a conclusion of the sign that "it does distinguish."

I conclude that:

¨If this bottle shape were a trade mark it is one registrable only under the provisions of subsection 41(6)

¨The applicant has not established that, because of the extent to which the applicant has used the 'trade mark' before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant.  Therefore, in terms of subsection 41(6)(b), the 'trade mark' is taken not to be capable of distinguishing the designated goods from the goods of other persons. 

¨The bottle shape of the applicant is shown by the evidence to not be a trade mark

Accordingly, I must reject the application in terms of subsection 41(2).

Ian Thompson
Hearing Officer

27 October 2000