Are judges wary of new trade marks? Guylian, Nestle shape marks not distinctive enough

Following Guylian's loss in the Federal court regarding a 'seahorse' trade mark, Nestle have now lodged an appeal against the decision that the 'four finger' shape of a Kit Kat is not distinctive. The judge thought that the shape was the functional shape of the goods (see Phillips v Remington - here the Australian court found that the shape had to be conceptually different to the goods. Burchett J referred to the judgement of Lord Templeman in Re the Coca-Cola Company (1986) 6 IPR 275, in which he stated 'The word `mark' both in its normal meaning and in its statutory definition is apt only to describe something which distinguishes goods rather than the goods themselves.')

Despite surveys which show that consumers associate the four bars shape to a Kit Kat bar, with Guylian taking similar efforts to show consumer association between the shape and their brand, the court has nevertheless found that these marks are not distinctive enough for consumers to see the link between these shapes and the respective brands.

But these decisions are hard to reconcile with the decision in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, where it was held that it was allowable to register the shape of the good. In essence, the trade mark did not have to be separate from the good.


Kenman Kandy shape

Is it that judges are wary about conferring monopolies to well known companies like Nestle and Guylian (effectively stopping competitors from using attractive and desirable shapes and colours in their marketing), while less concerned about doing the same for less well known companies, like Kenman Kandy.

Colour is also a new comer to the trade mark world, and is just as controversial as shape trade marks. Cadbury and Darrell Lea have only recently ended a long time battle over a shade of purple, settling out of court (Cadbury has allowed Darrell Lea to use purple in their stores). BP had similar troubles trade marking the colour 'green' as the 'predominant' colour for their petrol stations, with opposition from Woolworths supermarkets.