IP Wars
notes the Federal Court decision in
Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891.
The
judgement by Sundberg J, upholding the Registrar's decision to refuse trade mark registration of Guylian's seahorse-shaped chocolate, includes the comment that
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
and that
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. ... 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.
(2009) 4(7)
Journal of Intellectual Property Law & Practice 461-463 reported on
Chocolaterie Guylian NV v Commissioner of Japan Patent Office, Case No. H-19 (gyo-ye) No. 10293 in the Intellectual Property High Court of Japan (IPHCJ), where that court found that Guylian's more famous seashell-shape chocolate was inherently distinctive and registrable without secondary meaning evidence. The decision was described by John Tessensohn & Shusaku Yamamoto as
a significant pro-trade mark development, being the first time that an appellate Japanese court has held that a 3D shape was inherently distinctive and registrable, outlining the distinctiveness criteria which will control future 3D trade mark examinations.
The IPHCJ revoked the Japanese Patent Office (JPO) Board of Appeals' non-distinctiveness decision and held that the 3D shape of a seashell-featured chocolate bar was inherently registrable, the JPO having failed to discharge its evidentiary burden to support its non-distinctiveness rejection.
