By Senior Associates Lester Miller, Nicky Shanks and Deborah Jackson and Trade Marks Attorney Daniel Wilson
A recent case joins others in showing the difficulties in obtaining shape trade mark protection.
Ferrero SpA applied to register the shape of its Tic Tac box as an Australian trade mark on 31 May 2010. IP Australia examined the application and objected, under s41(6) of the Trade Marks Act 1995, asserting that it was not to any extent inherently adapted to distinguish the goods from those of other traders. A delegate of the Registrar of Trade Marks recently heard Ferrero on the matter.
s41(5) or 41(6)?
Ferrero argued that the box was to some extent inherently adapted to distinguish its goods by setting out the combination of features in the application, but the Delegate viewed the features as 'not unusual' (box shape), 'extremely commonplace' (transparency of the box), functional (lid position and label) or completely absent from the application (the nature of the hinge).
Also, a patent had been granted for the box in 1977, which claimed many of the features of shape. The Delegate took this patent into account, finding that all features of the box were central to the subject matter of the patent and therefore only functional.
Finally, after applying the factors considered in the Global Brands decision, the Delegate concluded that the features described in the application were non-distinctive, functional and overwhelmed by the overall impression of an oblong box with a lid. As none of the features was striking or made the goods 'more arresting of appearance', the box was considered to lack any inherent adaptation to distinguish, falling under s41(6).
Use of the mark
Ferrero also argued that the application should be accepted on the basis of evidence of use which it had filed. The evidence showed that the 'Tic Tac' box had been used since around 1976, (although mostly in conjunction with Ferrero's 'Tic Tac' trade mark) that there had been 'substantial' sales of 'Tic Tac' confectionery and 'overwhelming' amounts of advertising expenditure. There was also evidence of popular culture references to the 'Tic Tac' box (it featured in the movie Juno and in its merchandising) and there was evidence of people referring to 'Tic Tac boxes' on websites.
The Delegate found that the shape trade mark was a feature of certain promotional activities, that some of the evidence demonstrated use of the shape as a trade mark and that there is recognition among some consumers of the shape of the box in the Australian market-place. Despite this, the Delegate was not convinced that the public recognised the shape on its own (without the words 'TIC TAC') as a trade mark, or a 'badge of origin'. The Delegate quoted Jacobs J in the UK Vienetta case, suspecting this kind of case involves 'trickiness' on the applicant's part, trying to secure shape protection for confectionery boxes to stop third parties without impure motive from using their own word marks on confectionery boxes which might look box-like.
Tactics for shape mark registration
The decision highlights the difficulty of registering shape marks on the basis of factual distinctiveness. In principle, Australian law recognises that a shape is able to be registered as a trade mark if, because of the extent to which the shape has been used as a trade mark before the filing date, the shape mark is capable of distinguishing the goods from those of other traders. In this case, 45 years of use of the shape of the box was considered insufficient to demonstrate that the shape was distinctive. In practice, shape marks are difficult to register unless they are particularly imaginative, unique or contain striking features that are not commonly used or not purely functional. Even when registered (there are 701 registered in Australia) their scope is often likely to be narrow. Many endorsements on the Register for those shape marks include reference or description of colours or other striking features and often shapes are registered in combination with word marks applied to their surfaces. Ferrero would not, for example, have the same difficulty registering its Tic Tac box with the words 'Tic Tac' applied to the label but, of course, this would not protect the shape on its own. Nevertheless, the registration of a label-less shape trade mark is possible as a number of companies have been successful in registering shape trade marks for well known label-less beverage and coffee containers.
Traders who wish to register a shape that lacks inherent registrability on its own without any other identifying words or signs will need to educate consumers that the shape itself functions as a trade mark and show that it is recognised as a badge of origin for their products.