survey evidence

Having secured an International Registration, Guylain tried to register a chocolate in this shape

as a trade mark in Australia through the Madrid Protocol (TM App 936483).

Sundberg J, on appeal from the Registrar’s refusal, has also rejected it as incapable of distinguishing Guylain’s goods (pralines and chocolate, to be precise) under s 41.

Not inherently adapted — enough

First, Sundberg J was satisfied that the sea-horse shaped chocolate was inherently adapted to distinguish to some extent, but not enough to be distinctive.

Guylain argued:

31. … its shape is a “fanciful stylised” representation of a seahorse, which “depart[s] radically from the shape of seahorses found in nature”. The departure, it says, arises from two particular features of its chocolate shape:

(a) the tail that wraps up behind the spine of the creature, rather than forwards; and

(b) the solid and “chunky” appearance, as opposed to the more slender and elongate shape of a real seahorse. (my emphasis)

Accepting this to some extent, Sundberg J considered nonetheless:

[77] …. there is a danger that first impressions will be sidelined when an analysis of a shape’s individual components or features is undertaken. In this case, the immediate impression one has of the mark in suit is of an ordinary seahorse. I would not expect most ordinary consumers to know that the tails of seahorses do not curl backwards, only forwards. I think most would know that seahorses have a tail and expect that they curl up in some direction. Accepting that the tail and the stocky appearance might, to a studious observer, appear unusual, I consider on balance that the average consumer would see it as a relatively ordinary representation of a seahorse. The possibility for confusion therefore between Guylian’s shape and any other seahorse shapes is, I think, a real one. (my emphasis)

Test this for yourself: do you think either of these would be deceptively similar to Guylain’s shape (if it were registered)?

To those who might wonder who on Earth would want to sell a chocolate in a sea-horse shape if it hadn’t been for Guylain’s success, Sundberg J had earlier explained:

71   … 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. …. [after noting that no-one in Australia was in fact selling sea-horse shaped chocolates at the priority date, his Honour continued] ….  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. (His Honour’s emphasis)

Not qualified under s 41(5) either

Guylain has been selling its sea-horse shaped chocolates in Australia since 1980 as part of its sea shells range. In recent years, reatail sales of the sea shells range had exceeded tens of millions of dollars each year and millions of dollars were spent each year on advertising and promotion. The sea-horse shaped chocolate was not sold by itself, however. There seem to have been some rather small sales of sea-horse shaped chocolates by other brands, at various points, although they seem to have been after the priority date.

Nonetheless, survey evidence before the Court showed that 40% of the sample identified the sea-horse shaped chocolates as coming from Guylain, unprompted. Conversely, all the other brands mentioned accounted for only 13% of the sample; the highest of these, Lindt, reached 1.7% and no other brand reached 1%.

Given that level of association, why wasn’t the sea-horse shape distinctive of Guylain?

Because, following Woolworths v BP (No 2), the association must be shown to have arisen from use of the sea-horse as a trade mark, not just use. His Honour quoted with approval from Jacob LJ’s explanation of the distinction in the Vienetta case:

There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled.

As in that case, his Honour found that Guylain had not in fact used its sea-horse shape as a trade mark and the public would not have understood it as being used in that way. For example, his Honour found that this wasn’t use of the sea-horse shape as a trade mark:

The fact that other traders, such as Darrell Lea, sold sea-horse shaped products in boxes with their own brands on them contributed to this conclusion, as did the prominence of the Guylain and, in many case, a stylised ‘G’ on the packaging. Sales of Guylain’s sea shell range in sea-horse shaped boxes didn’t help either as the evidence did not suggest the sales were particularly significant.

The presumption of registrability

Sundberg J also addressed the “presumption of registrability” wars, which his Honour broke down into 2 parts.

First, his Honour explained that s 33 requires that the trade mark be registered unless the Registrar is satisfied that a ground of rejection exists. Thus, in the case, of the distinctiveness inquiry under s 41, the trade mark must be registered unless the Registrar is satisfied that the trade mark is not sufficiently inherently adapted to distinguish as to be capable of distinguishing. If the Registrar was satisfied that the trade mark had insufficient inherent adaptation, the words of s 41(5) and 41(6) plainly imposed the onus on the applicant to satisfy the Registrar that the trade mark had in fact become distinctive (s 41(6)) or otherwise did have the necessary capacity. See [21]. The wonders of plain English drafting!

Secondly, Sundberg J joined the gang (so far comprising Finkelstein and Gyles JJ) rejecting any standard other than the Registrar being satisfied on the balance of probabilities.

The role of the Registrar

Somewhat unusually, the Registrar went to the lengths of filing evidence about other uses of sea-horse shaped chocolate. Those practitioners who have seen their valiant efforts in scrambling around the internet to assemble evidence snidely dismissed will note that the Registrar was reduced to much the same course.

Interestingly, Sundberg J noted:

54. …. Although differing as to the weight such evidence should be given, the parties also appeared to accept more generally that evidence of events taking place after the priority date, whether that be the applicant’s use of the mark itself or use of other similar or otherwise relevant shapes by rival traders, may be relevant to whether the seahorse shape is capable of distinguishing Guylian’s goods. This was an appropriate course to take. In my view, evidence of what other traders were selling prior to, at or subsequent to the priority date has the ability to rationally affect, albeit with varying degrees of weight, the conclusion one might reach about the extent to which a mark is inherently adapted to distinguish under s 41(3) of the Act. ….

Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891