Trade mark application number 1854716 (28) Raccoon (Shape) in the name of Emma Kruger.

[2019] ATMO 79

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1854716 (28) – Raccoon – (Shape) – in the name of Emma Kruger.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Applicant: Acacia Law

DECISION:

2019 ATMO 79

Trade Marks Act 1995

Section 33 proceedings – section 41 – Shape trade mark – Trade Mark not capable of distinguishing the Applicant’s goods.

  Application rejected.  

Background

1. In these proceedings under section 33 of the Trade Marks Act 1995 (‘the Act’) Emma Kruger (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1854716

Priority Date:             27 June 2017

Goods:Battery operated toys (playthings); Children’s toys; Cuddly  toys; Fluffy toys; Musical toys; Plush toys; Plush toys with attached comfort blanket; Soft toys; Soft toys in the form of animals; Stuffed animals (toys); Stuffed plush toys; Toys (playthings); Toys for babies; Toys for babies when teething; Toys for use in prams; Toys in the form of teddy bears; Transportable toys

(‘the Goods’)

Trade Mark:

(‘the Trade Mark’)

Endorsements:           The Trade Mark consists of the shape of a Raccoon Soft Toy as shown in the representation(s) attached to the application form.

1. The Trade Mark was examined in compliance with section 31 of the Act and an examiner’s report issued stating that there is a ground for rejecting (‘the GFR’) the Trade Mark in terms of section 41 of the Act because:

Your trade mark is the shape of a toy raccoon incorporating a blanket.

This shape, with or without minor variations as to the type of animal or particular presentation of the animal, is commonly used in relation to the goods you are claiming.

Other traders should be able to use this shape, or one nearly resembling it, in connection with goods similar to yours.

1. The Applicant responded by submitting a declaration as to evidence of the use of the Trade Mark and submitted that:

   […] the shape is not commonly used as a toy. It is a unique shape specifically designed by the applicant to differentiate its goods from others in the marketplace and as such should be acceptable for registration.

1. The examiner maintained the GFR stating that the shape lacked inherent capacity to distinguish the Applicant’s Goods.

1. In turn the Applicant submitted:

We refer to the Examiner’s report dated 22 February 2019 and request a decision on the written record. The mere fact that other traders have created blankets with animal heads does not mean that the Applicant’s unique combination of shape, proportion and decorative features is not distinctive. The Applicant’s shape  is very different from anything that has gone before, and is immediately recognisable as the Riff Raff character call Bandit. The Applicant does not seek to monopolise the concept of a blanket with an animal headed toy, but wishes to prevent other traders from trading of the [sic] its unique design. Should this 3D mark be registered, it would not prevent other traders from doing what they already do, which is use designs very different from the Applicant’s distinctive design.

1. Subsequently, the Applicant requested to be heard and paid the appropriate fee. A formal hearing has, however, not been requested and now, as a delegate of the Registrar of Trade Marks, I am to decide this matter on the basis of the material mentioned in the foregoing paragraphs.

The Issue

1. The examiner’s research reveals that the shape of the goods is what amounts to a small blanket for a baby which incorporates the upper half of a plush (or knitted) toy. For convenience, I will term these “Comforters”. These Comforters (the research shows) are not uncommon and the plush-toy components thereof often take the shape of bears, mice, koalas, foxes, elephants, sheep, whales, deer, monkeys, puppies, rabbits, and raccoons.

1. Some of the several pictures of Comforters that incorporate raccoon toys which occur in the examiner’s “image” search on Google® appear below:

1. The evidence is in the form of a declaration by the Applicant, made on 6 February 2019.

10.The Applicant states that she runs a business named Riff Raff & Co and she has designed and sells a range of Comforters, these incorporating plush toys being a fox, a deer, and a raccoon the latter of which is called “Bandit”.

11.The Applicant states that she imported a small shipment of these Comforters from China in May 2016 (just over one year before the priority date of the Trade Mark). The Applicant states:

I initially designed a fox (orange toy shown below) and deer toy (fawn coloured toy shown below) and knew I wanted to design a third option for parents. I liked the idea of a racoon, particularly when I started the design process and realised that the size and shape of the racoon head could be created to be similar to that of the fox and deer. This was helpful because it meant that size  and  shape of the head did not have to change (which would have complicated the manufacturing

process). The consistent head shape and size also meant that the mechanical innards (sound player) used in my other sleep toys could easily fit into the new racoon toy design without any modification being required to the shape and size of the player.

12.It is not clear from the Applicant’s declaration whether the fox and deer shaped Comforters were designed and imported first and the raccoon Comforter was added to the range and imported later, or whether the entire range was imported at the same time.

13.The Applicant goes on to state:

The Bandit design has become synonymous with Riff Raff & Co sleep toys as we are one of the very few people to sell a racoon plush toy worldwide and have the only one designed in Australia, as far as I am aware.

Subsequently Gro Company has released the one below in Australia. It is quite different from our Bandit racoon, in that

•  it looks very much like a cat,

•  it does not look like a racoon,

•  it has no black features,

•   it has no sound box,

•  it has a tail (Bandit does not),

•  it is predominantly blue (not grey like Bandit),

•  it is anthropromorphic by the addition of the bow tie,

•  has hands on two of the corners of the blankets (and does not have arms, like Bandit does),

•   Unlike the Bandit toy, this toy does not have a Velcro loop at the end of one hand for holding of a dummy,

•  Includes yellow stars, which are not part of the Bandit design.

14.I also note that, whilst the Applicant provides sales figures, it is not clear from her declaration whether these relate to all of the Comforters she sold or relate only to those with the raccoon shape.

Consideration

15.Initially, before discussing the issues which arise under section 41 of the Act, I note that, in terms of the Goods as presently stated, it is not clear how “Toys in the form of teddy bears” within the Goods could be in the shape of a raccoon.

Section 41

16.Section 41 of the Act provides:

41 Trade mark not distinguishing applicant’s goods or services

(1)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 (the 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.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)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; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)     the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

(iii)     any other circumstances.

Note1:     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:     For goods of a person and services of a person see section 6.

Note 3: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 (5) and 7(3) and section 8).

(5)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).

17.In Campbell Soup Co the Registrar’s delegate observed:1

The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:2

The applicant’s chance of success in this 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 businesses 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 Act a monopoly in what others may legitimately desire.

In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) stated:3

[W]hether a mark is adapted to distinguish [will] be tested by reference to the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

1 [2018] ATMO 28 at [6].

2 1913] UKHL 588; (1913) AC 624, 634-5.

3 [1964] HCA 55, [5].

18.The Trade Mark here is a shape. It is useful, in this regard, to contrast the approach of the courts to shape trade marks which are abstract with that taken by the courts where the shape trade marks carry a resemblance to known objects. In doing so, I note that these differing approaches accord with the “ordinary signification” test used by the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd4 in that, by analogy, where the shape trade mark has a resemblance to a known object, that trade mark has an “ordinary signification”.

19.In relation to the abstract shape of a “Millennium Bug” in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks5 (‘Kenman’) Stone JJ made the following observations about the fact that the shape was an abstract one with no associations with, or significations to, a known object:

In my opinion it is the absence of these associations and significations that makes a sign inherently adapted to distinguish one trader’s goods from those of another.6

[…]

In the above examples the trade marks were held to be inherently adapted not because of any positive content but because they had no associations or significations that prevented them from being inherently adapted to distinguish a trader’s goods. In addition they show, especially in the comments made in Mark Foy’s and Wella, that, at least in relation to word trade marks, it is not an obstacle to inherent adaptation that the trade mark is also designed to elicit a positive emotional response. The fact that the “sign” that comprised the trade mark in those cases had a dual function was not seen to be inconsistent with the sign acting as a trade mark in respect of certain goods. I see no reason why the attractiveness of a shape should be considered differently. Moreover, I also see no reason why an invented shape should be regarded as different from an invented word in terms of assessing its inherent capacity to distinguish a trader’s goods.7

20.However, concerning a sign which was chocolate confectionery in the shape of a seahorse, in Chocolaterie Guylian N.V. v Registrar of Trade Marks (‘Guylian’) Sundberg J observed:8

The ultimate question on the issue of inherent adaptation is whether a sign – in this case, a shape – possesses any ordinary significations and, if it does, whether

4 [2014] HCA 48; (2014) 254 CLR 337; (2014) 315 ALR 4; (2014) 109 IPR 154; (2014) 89 ALJR 115.

5 [2002] FCAFC 273; (2002) 122 FCR 494; [2002] AIPC 91-817; 56 IPR 30.
6 Ibid at [147].
7 Ibid at [156].

8 [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [75].

or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of  the sign. In cases where a shape depicts a known object or concept (cf. wholly concocted or ambiguous shapes ), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar. An important consideration in all of this is the nature of the goods for which the shape mark is to be used.

[…]

In my view, it is quite possible that as at the priority date other traders might want to depict a seahorse, along with starfish, crabs, prawns for example, in a way that is similar enough to cause potential confusion in the minds of consumers. The evidence is that sea shell shaped chocolates were being sold by others from at least the mid 1990s. With other traders already selling sea shell chocolates, it seems to me reasonable to expect that, as at the priority date, other traders might wish to make chocolates in the shape of a seahorse, as well as other marine creatures. In any event, I think I can take judicial notice of the fact that confectionary manufacturers, here chocolate manufacturers, tend to make chocolates in a variety of novelty shapes, in particular shapes  representing animals (cf. the similar approach taken by Lindgren J in Kenman Kandy [2002] FCAFC 273; 122 FCR 494 at [86]). I give some weight to the fact that in 2004, two years after the priority date, there were various American traders selling chocolate moulds for a large range of marine animals (lobsters, starfish, prawns), including a seahorse. On the other hand, I note the lack of evidence of any seahorse shapes being sold in Australia as at the priority date, except by Guylian. The examiner’s Google searches (performed in 2002 and 2004) did not reveal any examples of seahorse shapes being sold in Australia at that time. It might be thought that that fact, together with the fact that Guylian had been selling its seahorse shape in Australia for a long time (since the 1980s), would diminish the likelihood that, as at 2002, other legitimately motivated traders might in the ordinary course of their business wish to sell seahorse chocolate shapes. However, the absence of other seahorses on the market does not in my view mean it was unlikely that others may in the future wish to depict that particular sea creature.9

21.The circumstances before me are analogous to those in Guylian. The Trade Mark is not abstract or grotesque; it is claimed by the Applicant to be a raccoon-shaped Comforter  and presents itself as such.

22.Raccoons are known (and not invented) animals, being, “… medium-sized mammals native to North America. The raccoon is the largest of the procyonid family, having a

9 Ibid at [77].

body length of 40 to 70 cm (16 to 28 in) and a body weight of 5 to 26 kg (11 to 57 lb). Its grayish coat mostly consists of dense underfur which insulates it against cold weather. Three of the raccoon’s most distinctive features are its extremely dexterous front paws, its facial mask, and its ringed tail. […]. The original habitats of the raccoon are deciduous and mixed forests, but due to their adaptability they have extended their range to mountainous areas, coastal marshes, and urban areas, where some homeowners consider them to be pests. As a result of escapes and deliberate introductions in the mid-20th century, raccoons are now also distributed across much of mainland Europe, Caucasus, and Japan.”10

23.The examiner’s research establishes that it is commonplace for traders to make Comforters with a plush toy attached. The presence or absence of other raccoon-shaped Comforters on the market in Australia is not determinative of this matter; however, there is at least one other trader in Australia that makes raccoon-shaped Comforters and the examiner’s research establishes that there are several others who do likewise elsewhere in the world.

24.There is accordingly, a likelihood that other legitimately motivated traders might in the ordinary course of their business wish to sell raccoon-shaped Comforters and, in fact, do so. The exact resemblance of the other raccoon-shaped Comforters to that of the Applicant is also not determinative of this matter – just as the resemblances of other seahorse-shaped chocolate to that of the applicant was not determinative in Guylian.

25.I observe that, to my eye, the raccoon-shaped Comforter of the Applicant has such a close semblance to a raccoon that the likelihood of another trader that makes Comforters legitimately wishing to use the likeness of a raccoon “nearly resembling it”11 must be adjudged as being high.

26.Accordingly, by analogy with both Guylian and Kenman, above, the Trade Mark was, at the filing date, not capable of distinguishing the Applicant’s Goods in respect of which  the Trade Mark is sought to be registered.

10 accessed on 21 May 2019.

11 See du Cros, above.

27.As I have previously stated, it is not clear that the retail figures supplied by the Applicant apply only to the Trade Mark or when the raccoon-shaped Comforter was first imported into Australia. The Trade Mark accordingly had indeterminate use over a period of possibly one year prior to the filing date. In terms of assessing distinctiveness (or capacity to become distinctive) in terms of subsections 41(3) and/or 41(4) of the Act I am to bear in mind the caveat sounded in Apple Inc v Registrar of Trade Marks by Yates J that:12

Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount v Registrar of Trade Marks at 61G, citing with approval Jacobs J in British Sugar plc v James Robertson & Sons Ltd at 286 and 302; and Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd at [13].

28.In my consideration, whichever of subsections 41(3) or 41(4) may apply here, the use of the Trade Mark by the Applicant was insufficient to establish that, at the filing date, the Trade Mark did distinguish the Applicant’s Goods or was capable of so doing at some future time.

29.I reject application 1854716.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 22 May 2019

12 [2014] FCA 1304; (2014) 227 FCR 511; (2014) 322 ALR 1; (2014) 109 IPR 187 at [228].