- Steve Davey
Can I register the shape of my product as a trade mark?
A three-dimensional shape is registrable as a trade mark if it meets the requirements of the Trade Marks Act.
Shapes may be capable of distinguishing
The test for whether a shape is a trade mark was set out by Kitto J in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd, (the Barrier Cream case (1965) 112 CLR 537 at 555) and is paraphrased as follows:
"The question to be asked in order to test whether a [shape] is adapted to distinguish one trader's goods from the goods of all others is whether the [shape] is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods."
The Kenman Kandy decision (Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks,  FCAFC 273) confirms that a shape may be capable of functioning as a trade mark and it is not appropriate to object prima facie that a shape is not a trade mark because it is a shape trade mark and as a shape trade mark the public will need to be educated to see it as a badge of origin. Effectively the decision was acknowledging that the shape of the goods could operate as an indicator of trade source in the same way that words or symbols applied to goods had done so for many years. As with all trade marks, a shape must be considered in the context of the market in which it is placed, and a decision on its adaptation to distinguish then made using the usual tests.
Shapes which are common to the trade
Any shape which is commonplace for the goods in question is likely to be legitimately needed by other traders. It is therefore unlikely to be registrable prima facie. The conclusion that something is common to the trade should only be reached after research reveals that the shape, or some minor variation of it, is commonly used within the relevant market.
Examples of these types of shapes are standard wine bottles for wines; ordinary cylindrical shaped jars for sauces; a standard umbrella shape for sun umbrellas; a cylindrical mug shape with a standard handle for coffee mugs and egg shaped or rabbit shaped Easter chocolates.
Shapes of these kinds which are commonly used by many competing traders are likely to attract grounds for rejection. It will be necessary for the applicant to supply evidence of use demonstrating that the shape, at the date of filing, did distinguish the applicant's goods/services from those of other traders. In such situations, it will be the responsibility of the applicant to show convincingly that the trade mark has acquired a secondary meaning and has come to identify the goods or services of the owner in a trade mark way.
Shapes and functionality
There are a number of issues which must be looked at when considering whether other traders are likely to need to use a shape in respect of their own goods/services and thus whether it is adapted to distinguish. The first of these is the issue of functionality.
If a shape has significant functional features there is a strong likelihood that other traders will need to use that shape for their similar goods. No one owner should have exclusive ownership of words, devices, symbols or three dimensional shapes which are common to the trade. One way of testing this from a shape mark perspective, is to consider whether the shape is made up of the sort of functional elements that are commonly used in the relevant industry.
A shape can be regarded as functional if:
it is a shape essential to the use or purpose of the article. For example, the shape of the handles and blade assembly for a pair of scissors, necessary for the functioning of the article.
it is a shape needed to achieve a particular technical result. For example, the shape of vanes in a fan which will create a particular air flow pattern.
it is a shape which has an engineering advantage, resulting in superior performance. For example, a new invention for opening a bottle that is easier to use than existing devices.
the shape results from a comparatively simple, cheap method of manufacture. For example, simple extruded or cut shapes for biscuits, such as discs or rectangles.
The presence of functional features need not be fatal to an application. In some cases, the other features of a mark may be sufficient to allow for acceptance where it is obvious that the applicant is not seeking or gaining rights in functional aspects. If something extra has been added to the inherent form of the goods, that will weigh in favour of acceptance. For example, a wheelie bin shaped like a lighthouse is functional in that it is a receptacle designed for waste products. However, the presentation of the bin in the form of a lighthouse is not something that other traders are likely "without any improper motive, to desire to use upon or in connection with their goods". The shape of the bin as a whole would be capable of distinguishing, and registration would not give the owner rights to the functional features of the receptacle.
If the shape of the trade mark is intrinsically functional with an engineering advantage that has yet to become commonplace, but nevertheless, because of its utility, should remain open for all to use, it is appropriate to raise grounds for rejection. An example could be a new shape for a bottle opener which is easier to use than those currently on the market.
Such a shape is unlikely to have sufficient adaptation to distinguish for prima facie acceptance, because the shape is highly functional and there is an identified need for others to use it. In this case, if there is reason to conclude that a new shape for a bottle opener having a functional advantage, whilst not commonplace now, is likely to become so, that could still be a viable basis for objection.
There have been a few court decisions issued in respect of shape trade marks. Particularly relevant to the functionality issue is the decision in respect of the “fence dropper” case – Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd  FCA 27. Justice Greenwood said the following:
“There is no element of the S shape that is invented or concocted to make the article more appealing. The shape helps to render comparatively dysfunctional wire droppers functional in an improved novel way. … Here the inverted U shapes forming an S bend are the functional solution to problems in the prior art. So much so that a statutory monopoly in the form of a patent was granted to the applicant’s predecessor for inventing the novel solution. There can be no doubt that the S shape takes its features from the function to be performed by the loop and thus the nature of the work the article does. Other shaped loops might also catch a wire just as other shaped containers might hold fluid, but the S shape of this loop owes its shape quite precisely to the functional solution its shape serves.”
Shapes and aesthetics
There is no reason to object to a shape merely because it is attractive or aesthetically pleasing, and therefore other traders might want to use it.
Most traders would hope that their trade marks, whether or not they are shapes, are attractive to the consumer. The test for a shape mark must be the same test applied for any other mark - whether the shape is one which other traders are likely to want to use, in the ordinary course of their business, without any improper motive.
The question of aesthetics will, generally only be of relevance if the goods are purpose built with that in mind i.e glass ornaments where ornamentation is the purpose of the goods and is unlikely to be seen by potential purchasers as a trade mark indicating brand origin.
This view is supported by the comments of Justice Stone in Kenman Kandy:
In the above examples the trade marks were held to be inherently adapted not because of any positive content but because they had no associations or significations that prevented them from being inherently adapted to distinguish a trader's goods. In addition they show, especially in the comments made in Mark Foy's and Wella, that, at least in relation to word trade marks, it is not an obstacle to inherent adaptation that the trade mark is also designed to elicit a positive emotional response. The fact that the "sign" that comprised the trade mark in those cases had a dual function was not seen to be inconsistent with the sign acting as a trade mark in respect of certain goods. I see no reason why the attractiveness of a shape should be considered differently. Moreover, I also see no reason why an invented shape should be regarded as different from an invented word in terms of assessing its inherent capacity to distinguish a trader’s goods.
Shapes and invention
An invented shape should be treated in a similar manner to an invented word, and is equally entitled to prima facie acceptance. Refer to the comments by Stone J above. Kenman Kandy gives some guidance on what may be regarded as invention in the confectionery trade, but does not offer clear guidance on what amounts to invention in other trades. A starting point for all trade marks including “shape” trade marks is the question “what is common to the trade”? This can be assessed through research into the shape applied for in the relevant trade. If research shows a number of parties using a shape in a non-trade mark sense, this will tend to support a view that the marketplace does not regard it as a trade mark and objections are in order.
It may be difficult to "invent" shape in some trades. For example, toys in class 28 already incorporate as commonplace a great variety of shapes. In this class it is unlikely that a simple shape such as a bear or tractor will be registrable unless there is considerable additional get up of the sort not normally found in the marketplace. Merely clothing a toy bear or doll will not be sufficient to identify the shape as registrable. The get up of the clothing, and the whole combination would need to be most unusual.
In a similar vein, the shapes of decorative items such as ornaments or jewellery will be unlikely to be acceptable prima facie because it is normal within these trades to provide unusual and imaginative creations. The applicant will need to be able to demonstrate that it is using the shape in a trade mark sense, rather than just producing an item in that shape, before it can be accepted for possible registration.
In some other classes of goods, while a shape per se might not strictly speaking be a new or different shape, it may be unusual enough in respect of the particular goods of interest to be capable of distinguishing. An example of such a shape is the lighthouse shaped wheelie bin.
This matter was touched upon by Justice Sundberg in the Seahorse decision, Chocolaterie Guylian NV v Registrar of Trade Marks  FCA 891At paragraph 75:
“The ultimate question on the issue of inherent adaptation is whether a sign – in this case, a shape – possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign. In cases where a shape depicts a known object or concept (cf. wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar. An important consideration in all of this is the nature of the goods for which the shape mark is used.”
Unusual shapes are, by definition, more likely to be acceptable. If, after the examiner has carried out a reasonable level of research, the shape does not appear to be either functional or common to the trade and is likely to be able to perform a trade mark function, the shape may be considered as capable of distinguishing.
Shape of packaging or aspect of packaging
The same considerations as to functionality and capability to distinguish that apply to the shape or configuration of the goods themselves also apply to the shape or configuration of the packaging of goods. Packaging may include the container in which the goods are sold or the outer packaging which covers the goods and the container. Shape is just one aspect of packaging and the more unusual the shape of the container or box applied for as a trade mark, the more likely it is to be capable of distinguishing the applicant’s goods. However, there are currently many different ways of styling and presenting containers and packaging and so most variations on the ordinary will not meet registrability requirements.
Applications for shapes may face difficulties in demonstrating an adaptation to distinguish. All goods have shapes, and containers for goods come in shapes. Customers expect a variety of shapes for goods within many trades. If a trade mark consists of any one of these shapes, or minor variations on them, it is unlikely to be easy for the applicant to persuade the Registrar that the shape applied for does, or will be able to perform a trade mark function.
For a shape to have acquired recognition as a trade mark, it will need to have been promoted as something apart from the goods. Entries in catalogues or brochures showing pictures of the goods in the shape claimed are not definitive, even if the applicant is able to show many years of such material. To be of more weight, the use should show examples of how the applicant has referred, promoted or demonstrated to potential purchasers that the shape being claimed is intended to have a trade mark function. What may be more useful are examples of advertising text referring specifically to the shape in respect of the goods in ways which would lead the examiner to conclude that the shape was not only unusual and different from others available in the particular market, but it was also being promoted as a brand.
Statements such as "Look for the star shaped box" or "Attractive colours; unusual shape" are the type of promotional terms that may assist an applicant in demonstrating that the shape has a capacity to distinguish.
In the Seahorse decision, Sundberg J considered the matter of trade mark use and said, at paragraph 96:
[M]y impression is that the seahorse shape (or, more correctly, an image of the shape) is used on Guylian’s packaging to attract consumers and provide an example of the box’s contents. It is by no means the only shape that features on Guylian’s packaging. Many of the other sea shell shapes are displayed with equal prominence and on the back of most boxes, almost all of the shapes are shown, some sitting inside a picture of the box and others outside. … On these boxes, the seahorse shape does not in my view function as a trade mark. It is not used in any sense to identify Guylian but to illustrate some examples of the elegance of the chocolates and the contents of the box more generally … The evidence is that other traders were selling sea shell chocolates for some time before the priority date. In that context, it does not seem to me likely that consumers would conceive of the seahorse shape on Guylian’s boxes as a trade mark, so much as simply an example of the novelty shapes that Guylian manufactures.”
Consumer surveys based on recognition of the shape as denoting the applicant, declarations from the trade and declarations from consumers relating to recognition of the shape as an indicator of trade source may also be useful.
Registered design as a trade mark
There should be no grounds for rejecting an application for registration of a trade mark that is or contains a shape (that is, a three-dimensional object) merely on the grounds that the applicant has a design registration, or a pending application for registration of a design, for the same three-dimensional object. However, the fact that features of shape and configuration of a container for goods have been registered under the Designs Act, does not mean that they are necessarily adapted to distinguish as a trade mark. The usual tests for capacity to distinguish will apply for these applications as for any other.