Van Ruth Pty Ltd  ATMO 60 (8 August 2016)
The Australian Trade Marks Act allows for the registration of non-traditional trade marks, such as shape marks, although the path to registration is not always smooth for the owners of such marks. A recent Australian Trade Marks Office decision highlights the challenges that can be faced in registering a shape trade mark, if the Trade Marks Office takes the view that the shape is at all functional.
The Applicant applied to register the shape mark represented below in respect of its bore hole plugs, with the mark described as follows on the application form: “The Trade Mark consists of the shape of a three-dimensional design, comprised of a solid circular and grooved cylindrical base, a tapered shaft with 3 indentations, topped by a tapered circular cup, as displayed in the drawings accompanying the application as shown in the representation(s) attached to the application form” (the Claimed Mark).
During examination of the application, the Trade Marks Office objected to the trade mark on the strictest registrability ground possible, on the basis that the shape mark lacked any distinctiveness and that other traders should be able to use such a shape in connection with their own plugs. Evidence of use of the Claimed Mark filed by the trade mark Applicant did not overcome the objection and the Applicant requested a hearing.
The Applicant’s case
It is accepted practice that shapes that are functional are unlikely to be capable of distinguishing the designated goods. However, in this case, the Applicant submitted that the Claimed Mark does not contribute any engineering advantage to the goods, that it is unique, that it incorporates various aesthetic features (the skirt of the cup, a solid and grooved cylindrical base, a tapered shaft with indentations, etc.) and thus that it is not functional. To support this argument, the Applicant provided about twenty examples of other traders’ bore hole plugs of varying shapes and also pointed out that certain features of the Claimed Mark (such as the grooves on the base and tapered cup) could be replaced by any other pattern without affecting the functionality of the Claimed Shape.
The Applicant also filed a seemingly extensive range of evidence showing that it had been using the Claimed Mark since 1972.
The delegate’s decision
Despite the Applicant’s submissions as to the distinctiveness of the Claimed Mark and its evidence demonstrating that it had been using the Claimed Mark in Australia in relation to the designated goods for over 40 years, the delegate rejected the application, finding that the Claimed Mark is not distinctive and that the evidence did not establish that it had been used as a trade mark (i.e., as a badge of origin).
On distinctiveness, the delegate noted:
- The fact that there are different shapes available to other traders does not, of itself, mean that the Claimed Mark is registrable. The question is whether the Claimed Mark, or something so nearly resembling it, is one which other traders are likely to desire to use in the ordinary course of their business without improper motive.
- Each of the elements referenced in the endorsement carries out a function (for example, the solid circular base enables the plug to stand upright and the grooves on the cylindrical base assist it to wedge in place). Other traders are likely to desire to use the Claimed Mark because of this functionality.
- Even if some or all of the features are aesthetic, they are not so remarkable as to render the Claimed Mark, as a whole, capable of distinguishing the designated goods.
- One of the features of the Claimed Mark, which the Applicant argued was aesthetic, is not mentioned in the endorsement for the application and as such is not a part of the Claimed Mark. It is not clear to what extent this made any difference to the delegate’s decision in this case but it does highlight the importance of getting things right at the time of filing.
On the evidence, the delegate said that it fell short of establishing that the Claimed Mark acts as a badge of origin for the Applicant’s goods for a number of reasons:
- The evidence of the two supporting declarants attesting to associating the features of the Claimed Mark with the Applicant was not considered, on its own, to demonstrate that the Claimed Mark did act as a badge of origin. The Applicant also needed to show that this association in the minds of the declarants had arisen because the Claimed Mark has been used as a trade mark.
- The examples of use of the Claimed Mark merely showed it used to illustrate or represent the designated goods, rather than as a badge of origin in its own right.
- The evidence did not show that the Claimed Mark has been promoted as something apart from the goods, or that there had been any deliberate intent by the Applicant to educate the public as to the trade mark significance of the Claimed Mark.
- The promotional materials showed the Claimed Mark in close proximity to other (word/logo) marks and it was these marks which actually acted as the badge of origin for the goods.
- As the Claimed Mark appeared alongside other marks in the evidence, the revenue figures could not be taken as being solely attributable to the Claimed Mark.
The decision has been appealed to the Federal Court, so further guidance for shape mark applicants may follow. In the meantime, we note that the Trade Marks Office continues to take a strict approach to shape trade marks where there is a suggestion that the shape has any functionality.
Although not all shape marks encounter objections during examination, various issues may need to be considered with these non-traditional marks (from assessing whether the mark is registrable in the first place, deciding which features to claim and describing the mark correctly at the time of filing, to being able to demonstrate that a shape mark has properly been used as a trade mark). Please contact us for advice if you are interested in registering a shape mark.
Please contact us with any questions.