Toyota Jidosha Kanushiki Kaisha

This matter concerned trade mark application number 2061366, filed by Toyota Jidosha Kabushiki Kaisha, seeking registration for a trapezoidal shape in the central part of the front face of a vehicle. The application was heard by Katrina Brown, a delegate of the Registrar of Trade Marks, on 1 March 2022, following a request for a hearing after the third examination report and the submission of a supplementary declaration.

The primary legal issue before the delegate was whether the trade mark, being a shape, was capable of distinguishing the applicant's goods (vehicles) from those of other persons, as required by section 41 of the *Trade Marks Act*. Specifically, the delegate had to consider whether the trade mark was not inherently adapted to distinguish the goods and had not acquired distinctiveness through use, or whether it was only to some extent inherently adapted but did not, and would not, distinguish the goods when considering the combined effect of its inherent distinctiveness, the applicant's use, and other circumstances.

The delegate applied the principles established in *Clark Equipment Company v Registrar of Trade Marks* and *Chocolaterie Guylian N.V. v Registrar of Trade Marks* to assess the inherent adaptation of the shape trade mark. This involved considering whether other traders, acting honestly, would be likely to want to use the trapezoidal shape in connection with similar goods for its ordinary significations. After weighing the evidence and the extent to which the claimed mark was inherently adapted to distinguish the designated goods, the delegate concluded that the combined effect did not overcome the ground for rejection under section 41(4) of the Act.

Consequently, the delegate was satisfied that there was a ground for rejecting the claimed mark under section 41 and, in accordance with section 33(3) of the Act, rejected trade mark application number 2061366. However, a direction was made that if a notice of appeal was served on the Registrar within one month of the decision, the disposition of the application would be in accordance with the Court's order or direction.