The challenge to register shape trade marks in Australia is not made easier by the “Guylian” case. Nearly 20 years of use, Guylian’s support of a marine protection project called “Project Seahorse” and survey evidence showing that 40.6% of respondents identified the seahorse shape with Guylian, was insufficient to confer trade mark protection. See the case here. The Guylian seahorse will be familiar to many.
Following in the footsteps of the Full Federal Court in the BP case, Justice Sundberg emphasised that for a trade mark owner to establish distinctiveness through use, one must do more than use the trade mark over a long period. One must also educate the public to understand that the shape is being used as an indicator of the origin of the goods.
Like in BP, the Court appeared open to survey evidence, but was critical of that provided. Whilst there is little guidance about how best to proceed, in terms of what not to do:
- The survey should not test a general concept such as “brand recognition”. It should be directed to testing recognition of the origin of the specific goods.
- Online surveys might not be the most statistically sound method.
- It is risky for the subject of the survey to be a two dimensional representation of the trade mark, if the application is in fact for a three dimensional shape.
Justice Sundberg also found that the significance of the seahorse shape trade mark was diluted by use of the GUYLIAN trade mark on all the packaging, together with the “G” engraved into each piece of seahorse shaped chocolate. This approach can be contrasted against Justice Finkelstein’s first instance decision in the BP case. There, his Honour found that specific elements (such as colour) deserve trade mark protection if each element is capable of independent recognition.