Overcoming Problems with the Registration Shape Trade Marks

The Trade Marks Act 1995 (Cth) (“the 1995 Act”) broadened the definition of a trade mark, in part, by adding “shape” as a new type of sign¹⁾ that could 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.²⁾ Under the Trade Marks Act 1955 (Cth) (“the 1955 Act”), shape trade marks were generally not registrable because a trade mark was considered to be something separate and apart from the goods, which would be affixed to the goods or their container.³⁾

The case law which arose under the 1955 Act , prevented shapes from being registered as a trade mark as the shape of a good was seen to be a characteristic of the good itself rather than a trade mark. For example, an application to register the shape of a ‘lifesaver’ candy was refused⁴⁾.

The definition of a trade mark in the 1995 was broadened to encompass the requirement of the TRIPS Agreement⁵⁾ that the subject matter which is able to be protected by a trade mark should include:

Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

It is interesting to note that shapes are specifically referred to in the Act whereas the TRIPS Agreement makes no express mention of this type of trade marks.

Although shapes are now expressly included in the definition of a trade mark, to be registrable, like all other forms of trade mark, a shape must be distinctive;⁶⁾ it must not be substantially identical or deceptively similar to a trade mark with priority over it;⁷⁾ and it must not be scandalous, contrary to law⁸⁾ or likely to deceive or cause confusion.⁹⁾ It is the requirement that the shape be distinctive that has been the most problematic. In part, this is because most goods have shape and colour as natural attributes.¹⁰⁾

In early cases after the commencement of the 1995 Act, decisions of the Registrar involving shape trade marks commonly found that where the trade mark was a commonly occurring shape, or “perennial favourites” such as sea shells¹¹⁾, such marks lacked inherent adaptability to distinguish and other traders should be at liberty to use them. Therefore to be able to register such a mark, the applicant will have to provide evidence of use in order to satisfy s41(6).¹²⁾

A well known shape that is often referred to as an example of a shape mark capable of distinguishing goods is the distinctively shaped contoured Coca-Cola bottle. The fact that consumers know the name of the product that is sold in such a bottle from its shape demonstrates that the shape acts as a trade mark as it indicates to the consumer that the bottle will contain a particular brand of soft drink. The Coca-Cola Company has indeed registered this bottle shape as a trade mark in Australia¹³⁾, along with many other bottle shapes used for their products¹⁴⁾. However, it is interesting to note that the shape trade marks for many of their newer products, are registered as composite marks, such as the trade mark used for their “Pump” water product. This trade mark consists of the combination of the word PUMP and the shape of a bottle,¹⁵⁾ which may suggest there is still a high degree of difficulty getting a shape trade mark registered in its own right.

The 2:1 majority Full Federal Court decision in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks¹⁶⁾ confirmed that a shape may be capable of functioning as a trade mark and that the usual tests for capacity to distinguish should apply, as for other types of trade mark.

An earlier view in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd¹⁷⁾ was that where the shape consists of the shape of the goods and nothing more, it cannot function as a trade mark to distinguish the commercial origin of the goods. However, unlike the Kenman Kandy case, the trade mark in the Philips case was only a two dimensional representation of a shape.

In the Kenman Kandy case, the Registrar had requested the applicant to provide evidence of use, in order to satisfy s41(5) or (6), which the applicant declined to do. After the application for registration was rejected, the applicant appealed to the Federal Court, relying solely on the alleged distinctiveness of the mark, but the appeal was dismissed.

The majority decision of the Full Federal Court clarified that shapes should not be regarded by default as lacking inherent adaptability to distinguish and thereby required evidence of use to enable registration. This means that a shape trade mark is entitled to the same presumption of registrability¹⁸⁾ as any other application.¹⁹⁾

The commonly cited test for determining whether a mark is adapted to distinguish was formulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks:
“… whether a mark is adapted to distinguish [must] be tested by reference to the likelihood that 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.²⁰⁾

The main problem with the test of inherent adaptability to distinguish is that it is a subjective test and therefore prone to inconsistent decisions. This is demonstrated by the decisions in the Kenman Kandy case in which the decision makers applied the same tests and authorities, but came to different conclusions.²¹⁾

It is clear that a shape can become recognised as a badge of origin, as shown by the Coca-Cola bottle²²⁾ or the ridged, triangular Toblerone chocolate bar²³⁾, as consumers learn that the shape is an indictor or origin. However, it is not necessarily the case that at first sight, the shape will be inherently adapted to distinguish rather than being considered merely the form of the goods.²⁴⁾ In the Kenman Kandy case, Lindgren J doubted whether a shape mark could ever be inherently distinctive as consumers would be unlikely to perceive the shape as indicator of origin²⁵⁾.

The Kenman Kandy case lead to a change of office practice. Examiners are now directed to consider the shape “in the context of the market in which it is placed, and a decision on its adaptation to distinguish then made using the usual tests”.²⁶⁾ However, a number of issues are raised in the Trade Marks Office Manual of Practice & Procedure (“the Manual”) to be considered when examining shape marks. These include:

• Whether the shape is commonplace for the goods in question – for example egg shaped Easter chocolates;²⁷⁾
• Whether the shape has significant functional features – for example, the shape of the handles and blade assembly for a pair of scissors, necessary for the functioning of the scissors;²⁸⁾
• Whether the shape is one which other are likely to want to use without any improper motive, which involves a peripheral question of aesthetics on a relatively minor basis in the consideration of whether a shape is adapted to distinguish;²⁹⁾ and
• Whether the shape is an invented shape and is equally entitled to an invented word to prima facie acceptance.³⁰⁾

Of these issues, the most contentious is the question of functionality. Where the shape results from the nature of the goods or is required to achieve a technical result, that shape will not be capable of distinguishing the designated goods of one trader from those of another trader in goods of that shape.³¹⁾ Such “descriptive” shapes will be registrable only if they have acquired a secondary meaning of denoting goods from one source.³²⁾

In the same way that a descriptive word for a new product is likely to be viewed as merely the name or description of the product rather than as a trade mark³³⁾, so too will it be difficult for a functional shape to be used as a trade mark as it is likely that the shape will be associated with the product itself rather than as an indicator or origin.³⁴⁾

The Manual states:
“If a shape has significant functional features there is a strong likelihood that other traders will need to use that shape for their similar goods. Therefore, the shape will not be inherently adapted to distinguish, and grounds for rejection should be raised. … The presence of functional features need not be fatal to an application. In some cases, the other features of a mark may be sufficient to allow for acceptance where it is obvious that the applicant is not seeking or gaining rights in functional aspects. If something extra has been added to the inherent form of the goods, that will weigh in favour of acceptance. … If the shape of the trade mark is intrinsically functional with an engineering advantage that has yet to become commonplace, but nevertheless, because of its utility, should remain open for all to use, it is appropriate to raise grounds for rejection.”³⁵⁾

Lahore considers that these tests are not easy to apply because an examiner is unlikely to have enough information “to allow him/her to assess the engineering advantage of a shape or the technical result which it might or might not achieve”.³⁶⁾ This appears to be a valid argument as an applicant is only required to give a description of the trade mark, they are not required to give any details about its functionality.

The main problem with the issue of functionality is that although there is an almost infinite number of word marks that could be used to distinguish, for example a cork remover, there is a limit as to the number of different shapes that can be used as a cork remover and therefore, public policy issues come into play to ensure that this limited number of shapes is available to all traders, who may want to use the shape for functional reasons, without improper motive. This is less of a problem when there is no obvious connection between the function of the goods and the mark itself.

Evidence of use should not have to be supplied for every trade mark application involving a shape mark as there is a presumption of registrability that applies to all trade marks.³⁷⁾ It should only be required where the examiner has decided 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 services³⁸⁾ or that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons.³⁹⁾

In these cases, the application will only succeed if the applicant can show that because of the extent to which the applicant has used the trade mark before the filing date the trade mark the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

The Manual states that: “For a shape to have acquired recognition as a trade mark, it will need to have been promoted as something apart from the goods. …. What may be … useful are examples of advertising text referring specifically to the shape in respect of the goods. Statements such as “Look for the star shaped box”.⁴⁰⁾

It does not seem surprising that registration of shape marks is difficult without the supplying of such evidence of use. As stated above, it is unlikely that a shape trade mark will be accepted for registration if the shape is commonplace for the goods in question, or has significant functional features, or is a shape which other traders are likely to want to use without any improper motive. Therefore, the more abstract the shape and the less it has to do with the goods in question, the more registrable the shape mark should be.

However, this means that the easiest shapes to register as trade marks are those that are harder for consumers to recognise, therefore requiring greater expenditure to educate consumers to recognise the shape as an indicator of trade source. This is likely to mean that the shape more commonly used as trade marks are those that are either only to some extent inherently adapted to distinguish or not to any extent inherently adapted to distinguish the designated goods or services, thereby requiring evidence of use under ss 41(5) or (6) respectively if an application for registration is to succeed.

Unlike other types of trade marks, there is the potential for a shape trade mark to also qualify for protection under patent, design and copyright laws. Each of these other forms of intellectual property protection is for a finite period, whereas trade mark protection is potentially unlimited in duration.

As Burchett J commented in Koninklijke Philips Electronics NV v Remington Products (Aust) Pty Ltd⁴¹⁾ a permanent monopoly for a product obtained by registering one of its vital features as a trade mark places a trade mark owner in a better position than a patentee or an owner of a registered design, both of whom only enjoy a monopoly of finite duration. In the Kenman Kandy case, Stone J agreed that such concerns were well founded.⁴²⁾

The UK Court of Appeal has held that to enable monopolies granted in relation to patents and registered designs and the like to be extended by a trade mark registration would be contrary to public interest.⁴³⁾

Faced with multiple forms of intellectual property protection, a trader should select the regime best suited to the shape being used, having regard to the nature of the relationship between the shape and the designated goods or services. It may be that the shape itself is worthy of protection in its own right, for example if it has significant functional features, rather than as a trade mark used to distinguish other goods or services. In such a case, the shape will be protected for a monopoly period, during which any potential for the shape to become capable of distinguishing as a trade mark can be explored.

Registered trade marks are a very strong form of intellectual property, particularly in light of the fact that there is, in theory, no limitation on the period for which a registration may be maintained.

As a result of the powerful monopoly which is created when a trade mark is registered, the requirement that a trade mark be distinctive or capable of distinguishing is very important. If applicants were able to register non-distinctive, commonly used signs as a trade mark, the pool of signs available to competing traders would be significantly reduced and this would have a flow on effect on competition as traders would be in effect unable to use commonly used signs in relation to their goods and services and therefore face greater difficulty in marketing their goods and services in competition with trade mark owners.

It should also be considered that a person’s ability to remember and recognise a shape it less than our ability to remember a word that can be recognised by sight and sound. Although technically, the number of possible shapes available for use as a trade mark is seemingly as large as the number or possible word or device marks, not every amorphous blob is going to be capable of acting as a useful trade mark, so the pool of shapes that can feasibly used as a trade mark is much more limited than for word or device marks.

With a smaller pool of possible shape trade marks to choose from, which is further compounded by the restrictions placed by manufacturing and cost constraints as to which of these shapes is commercially feasible to use, it is justifiable that registration of a shape mark is difficult without evidence of use as with a smaller number of possible choices, the inherently ability of a shape trade mark to distinguish the designated goods or services must be similarly reduced.

Further justification comes from the fact that a trader could potentially register the shape under the Designs Act 2003 (Cth), thus obtaining up to a 10 year monopoly over the shape, during which time the trader could develop a reputation in relation to the shape, thus making the shape distinctive and therefore more easily registrable under the 1995 Act. Although it should be noted that where there has been only one source of goods, it can be difficult to maintain that the shape has functioned as an indicator of origin.⁴⁴⁾

It is should not be viewed that it is difficult to obtain acceptance for registration of a shape trade mark without evidence of use of that shape as a trade mark per se, rather that it is more likely that such evidence will be required than for other types of trade mark as it is less likely for the reasons stated above that a shape trade mark will be inherently adapted to distinguish the designated goods or services from the goods or services of other traders as compared with other types of trade mark.

SARAH PIKE
WHITE SW COMPUTER LAW
JUNE 2006

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© White SW Computer Law 2006

This paper is a guide only and should not be used as a substitute for legal advice, readers should make their own enquiries and seek appropriate legal advice.