Guylian's Box Of Chocolates: Shape Trade Marks And Their Capacity To Distinguish

Chocolaterie Guylian N.V. (Guylian) last week

lost its Federal Court appeal against IP Australia's rejection

of its "seahorse" shape trade mark. The Federal

Court's decision1 confirms the high hurdle to

registration faced by non-traditional trade marks such as shapes

and further casts doubt on the utility of survey evidence in

establishing distinctiveness of shape marks.

Guylian's Box of Chocolates

Guylian is a Belgian manufacturer of boxed chocolates. This case

concerned its range of sea shell chocolates called "Perles

d'Océan" that comprise eleven marine life shapes

each filled with a hazelnut praline centre and a blend of white,

milk and dark Belgian chocolate. The range includes different types

of shells and shell-fish, a prawn and a seahorse shape.

Guylian has sold its sea shell range in Australia for

approximately 30 years through retailers such as Coles, Woolworths,

K-Mart, Target, Big W, Myer, David Jones and City Convenience

stores. It provided evidence of annual retail sales of this range

in the order of tens of millions of dollars in Australia between

1988 and 2004 and millions more in marketing and advertising in

Australia over a similar period.

In 2002, Guylian filed an application for registration of a

trade mark comprised of a particular shape of a seahorse.

Registration was sought in respect of pralines and chocolates.

Trade Marks and the Requirement of Distinctiveness

If a mark is to be registered under the Trade Marks Act

1995 (Cth) (Act), it must be capable of

distinguishing the applicant's goods from those of other

businesses.

An applicant can demonstrate the capacity to distinguish either

by showing that the mark is inherently adapted to

distinguish or that through use the mark has become

distinctive in the minds of consumers so that the mark can "do

the job of distinguishing" the applicant's goods (i.e.

they will in fact serve as a "badge or an indicator of

origin").

On the first issue (i.e. whether the trade mark is inherently

adapted to distinguish), the High Court has made it clear that it

is necessary to consider, among other things, whether traders other

than the applicant may legitimately want to use the trade

mark2. The second issue (i.e. whether the trade mark

does in fact distinguish), is essentially a question of

evidence: does the evidence establish that the mark has in fact

come to distinguish the applicant's goods?

Guylian's Survey Evidence

Guylian tendered evidence from a market survey in an attempt to

show that the seahorse had come to distinguish its chocolates. The

survey demonstrated that 40.6% of respondents associated Guylian

with the seahorse; 13.3% associated another brand or manufacturer

with the seahorse shape; and 46.1% did not associate the seahorse

shape with any brand.

Guylian's marketing expert gave evidence that the strength

of association between the...