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.

McDonald's loses trademark appeal after 8 year battle for the 'Mc' prefix

Malaysia's Federal Court has dismissed an appeal from McDonalds from the Court of Appeal's decision that the use of the prefix 'Mc' by a Malaysian chicken curry chain, McCurry did not amount to infringement (overturning the previous decision of the High Court in favour of McDonalds).

Chief Judge Ariffin Zakaria found that the court had to dismiss the appeal with costs as McDonald's failed to properly frame its questions when challenging the Appeals court's prior decision.

Under the Australian Trademark law, it would be interesting to see how an Australian court would have approached the issue, in light of the decision in McDonalds v Macri Fruit distributors
(2000) AIPC 91-583, where the trade mark office found that the use of 'Mc' was deceptively similar to the family of 'Mc' marks owned by McDonald's (the opponent was attempting to use McSalad and McFresh).

Sony Music raided for 'stolen' songs: Unauthorised use may lead to mammoth damages

Sony music entertainment Mexico has been raided after one of their ex-artist's complained that Sony's use of their music was unauthorised. Alejandro Fernandez signed with Sony in 1998, before leaving in 2008, in which time he recorded 7 albums. During this time, he recorded numerous songs which were never included in the 7 authorised albums, which Sony then sold on an 8th 'unauthorised' album. The Feds seized 6,397 music, videos and photos following the artist's complaint. Fernadez's attorney is claiming that what Sony did was illegal, as they contractually had the rights to the songs contained on the 7 albums but not the 8th album, while Sony is claiming that their use of the music on the 8th album was lawful.

If Sony is unsuccessful, I will be interested to know how damages are calculated. Considering in the previous RIAA cases, infringement and distribution by Jammie Thomas was worth $80,000 per song and in Sony vs. Joel Tenenbaum, the damage calculated was $22,500 per song. Sony might get a taste of their own medicine.

Myspace conviction overturned: ToS violation too broad for prosecution

A conviction of a woman who allegedly 'cyber-bullied' a 13 year to girl, who subsequently committed suicide, has been overturned. The conviction was based on the Computer Fraud and Abuse Act, which is aimed at computer hackers, and the judge found that it could not be stretched to include mere violations of a terms of service.

However, judge Wu did not rule out the possibility of a ToS violation resulting in conviction, just that the ToS violation here was not a circumstance in which conviction under the Act was appropriate.