A recent Federal Court decision on chocolate sea shells highlights the pitfalls associated with "shapes" in trademarks cases, according to a legal expert.
Long-time chocolaterie Guylian has been unsuccessful in its attempt to register as a trade mark its seahorse-like shape praline chocolate. Justice Sundberg dismissed the application, and found that the chocolate seahorse shape was not sufficiently inherently distinctive to the extent required by the Trade Marks Act 1995.
Lea Lewin, an IP lawyer at Nicholas Weston, a Melbourne law firm, wrote on the firm's blog that Guylian chocolates are "particularly well-known, at least to those consuming large amounts of chocolates at dinner parties in 1985, is its sea-shell range which comprise marine life shapes, filled with a praline hazelnut centre; yum".
In a bitter debate for the chocolate maker, the registrar argued that the "fanciful stylised" representation of a seahorse, which the chocolatier said "departs radically from the shape of seahorses found in nature", possesses an ordinary signification which other traders might want to use.
Lewin wrote: "Justice Sundberg found the ultimate question to be tried was ‘whether there is a likelihood that other traders, acting with proper motives, will think of the shape and wish to use the same shape or one substantially identical or deceptively similar’.
"His Honour noted that seashell shaped chocolates had been sold in Australia since at least 1990 and as such ‘it seems to me reasonable to expect that, as at the priority date, other traders might wish to make chocolates in the shape of a seahorse, as well as other marine creatures’," Lewin wrote.
Lewin, who writes on the Australian Trade Marks Law Blog, said that while the requirements for registration of shape marks are the same as for other types of marks, this decision emphasises the difference between simply using a shape and actually using it as a trade mark.
Clearly a chocolate lover, Lewin added: "To my mind, Guylian were the pioneers of the lovely “Perles d’Ocean” chocolate range but their trade marks department appears to be a bit cute by saying, in effect: 'oh, we did not rely on those 'Perles d'Ocean' advertising campaigns to become well known, just the shape of that delicious seahorse right there'. Regardless, the writer will remain loyal."