Kenman Kandy Australia Pty Ltd v The Registrar of Trade Marks

WILCOX J: 1 This is an application by Kenman Kandy Australia Pty Limited ("Kenman") challenging a decision of the Registrar of Trade Marks ("the Registrar") to reject an application for registration of a "shape" trade mark. I understand from counsel this is the first occasion upon which registrability of a shape trade mark has had to be considered by the Court.

The application for registration 2 On 15 January 1999 Kenman lodged with the Registrar application 783465, by which it sought registration of the mark, in class 30, in respect of numerous foodstuff items. However, Kenman now seeks registration only in relation to "non-medicated confectionery". 3 The mark was described in the application as "SH; Six-legged creature shaped biscuit, ovals are eyes". Having regard to the subsequent restriction to non-medicated confectionery, the reference to "biscuit" now seems inappropriate, but the rest of the description remains apt. The illustration on the application shows a six-legged creature with oval eyes. It could be a friendly, overfed spider with six stumpy legs; or a bug of some sort. 4 An endorsement to the application reads: "The trade mark consists of the three-dimensional shape of the goods as shown in the representations attached to the application form". 5 The application was considered by an examiner of trade marks who reported there was a ground for rejection under s 41 of the Trade Marks Act 1995: the shape had no inherent adaptation to distinguish the applicant's goods. 6 Kenman requested a hearing and the matter was heard by a delegate of the Registrar on 21 July 2000, when counsel appeared on behalf of Kenman. 7 On 25 October 2000 the delegate published a decision rejecting the application for registration. In that decision the delegate referred to some earlier decisions of both this Court and the Registrar. I need not traverse that ground. However, it is appropriate immediately to set out s 41 of the Trade Marks Act, with which the delegate was concerned. That section reads: " (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. (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. (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 not 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. (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." 8 The critical part of the delegate's decision was as follows: "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 [(2nd 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. [Delegate's emphasis] 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 41(5)." 9 The Coca-Coladecision, referred to by the delegate, was Coca-Cola Trade Marks [1986] RPC 421, a decision in which, to quote Mr Shanahan at page 14 of his work, "the House of Lords rejected in peremptory manner the notion that the shape of the well-known bottle could constitute a 'mark' for the purposes of registration."