FEDERAL COURT OF AUSTRALIA

Kenman Kandy Australia Pty Ltd v The Registrar of Trade Marks

[2001] FCA 1047

TRADE MARKS – Application for registration of “shape” trade mark in relation to non-medicated confectionery – Concocted mark in shape reminiscent of a bug or spider – Whether mark is not capable of distinguishing the applicant’s goods from the goods of others – Whether mark is inherently adapted to distinguish the goods from those of others – Discussion of proper approach to determination of these issues in respect of shape marks, as compared with word marks.

Trade Marks Act1995 ss 6, 17, 41.

KENMAN KANDY AUSTRALIA PTY LIMITED v THE REGISTRAR OF TRADE MARKS

N 1248 of 2000

WILCOX J

3 AUGUST 2001

SYDNEY

THE COURT ORDERS THAT:

1.                  The application be dismissed.

2.                  The applicant, Kenman Kandy Australia Pty Ltd, pay the costs of the respondent, the Registrar of Trade Marks.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

WILCOX J:

1                     This is an application by Kenman Kandy Australia Pty Limited (“Kenman”) challenging a decision of the Registrar of Trade Marks (“the Registrar”) to reject an application for registration of a “shape” trade mark.  I understand from counsel this is the first occasion upon which registrability of a shape trade mark has had to be considered by the Court.

The application for registration

2                     On 15 January 1999 Kenman lodged with the Registrar application 783465, by which it sought registration of the mark, in class 30, in respect of numerous foodstuff items.  However, Kenman now seeks registration only in relation to “non-medicated confectionery”.

3                     The mark was described in the application as “SH; Six-legged creature shaped biscuit, ovals are eyes”.  Having regard to the subsequent restriction to non-medicated confectionery, the reference to “biscuit” now seems inappropriate, but the rest of the description remains apt.  The illustration on the application shows a six-legged creature with oval eyes.  It could be a friendly, overfed spider with six stumpy legs; or a bug of some sort.

4                     An endorsement to the application reads:  “The trade mark consists of the three-dimensional shape of the goods as shown in the representations attached to the application form”.

5                     The application was considered by an examiner of trade marks who reported there was a ground for rejection under s 41 of the Trade Marks Act 1995: the shape had no inherent adaptation to distinguish the applicant’s goods.

6                     Kenman requested a hearing and the matter was heard by a delegate of the Registrar on 21 July 2000, when counsel appeared on behalf of Kenman.

7                     On 25 October 2000 the delegate published a decision rejecting the application for registration.  In that decision the delegate referred to some earlier decisions of both this Court and the Registrar.  I need not traverse that ground.  However, it is appropriate immediately to set out s 41 of the Trade Marks Act, with which the delegate was concerned.  That section reads:

“ (1)    For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

  (2)     An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (‘designated goods or services’) from the goods or services of other persons.

  (3)     In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

  (4)     Then, if the Registrar is still unable to decide the question, the following provisions apply.

  (5)     If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)           the Registrar is to consider whether, because of the combined effect of the following:

(i)        the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)               the use, or intended use, of the trade mark by the applicant;

(iii)             any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)           if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services – the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)           if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services – the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

(6)       If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)                 if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant – the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)                 in any other case – the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.”

8                     The critical part of the delegate’s decision was as follows:

“To return to the question of the extent of inherent adaptation to distinguish of the proposed trade mark, and applying the considerations discussed above, I conclude that it is not a shape that others need to use and that it is a coined shape.  It nevertheless does not satisfy me, prima facie, that it is capable of distinguishing.

The reason for this was explained by D R Shanahan in Australian Law of Trade Marks and Passing Off [(2^nd Ed), The Law Book Company Limited, 1990 p 117]:

            ‘Where the alleged trade mark involves the very shape or colouring of the goods, there will be the initial problem of deciding whether it even falls within the definition of “mark” provided by s 6(1).  [Due to the Coca Cola decision] it is now most unlikely that the shape of the product or of its container will be regarded as a mark, but a colour scheme may constitute a mark, as perhaps may some aspect of shape that might be regarded as something “additional” to the product or container.  However, to be registrable the mark must also be distinctive, and prima facie at least such features may appear to have no trade mark significance, particularly when at all decorative or functional in nature.  [Delegate’s emphasis]

Mr Shanahan was of course referring to the 1955 Act, but the same holds true under its successor.  It is because the features of the proposed trade mark do not appear, at first instance, to have trade mark significance that I consider that the trade mark does not have sufficient inherent adaptation to distinguish for acceptance under the provisions of s 41(3).  I am therefore unable to decide the matter on the basis of the extent of inherent adaptation to distinguish alone.  However, as the proposed trade mark does have some inherent adaptation to distinguish, it is the provisions of s 41(5) rather than of s 41(6) that apply.

That being the case, has the applicant discharged the onus upon it to show that by the combination of the extent to which it is inherently adapted to distinguish, and/or the use or intended use of the trade mark by the applicant, and/or any other circumstances, the trade mark does or will distinguish the designated goods in terms of s 41(5)?

No evidence of use or intended use, apart from an empty confectionery packet, has been provided and no other circumstances have been put before me.  This is not sufficient for me to be satisfied that, on the balance of probabilities, the proposed trade mark does or will distinguish the goods from those of others.

I therefore find that the applicant has not met the onus on it to show that the proposed trade mark meets the requirements for acceptance under the provisions of 41(5).”

9                     The Coca-Coladecision, referred to by the delegate, was Coca-Cola Trade Marks [1986] RPC 421, a decision in which, to quote Mr Shanahan at page 14 of his work, “the House of Lords rejected in peremptory manner the notion that the shape of the well-known bottle could constitute a ‘mark’ for the purposes of registration.”

Contentions of the applicant

10                  Counsel for Kenman, Mr Richard Cobden, criticises the reasoning of the delegate, as set out in para 8 above.  He says it was erroneous to apply views expressed by Mr Shanahan in 1990 without taking account of subsequent developments, especially the commencement of the 1995 Act and recent judicial decisions.  In particular, he mentions a more recent Coca-Cola case: Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107.  That case concerned a cola-flavoured confectionery imported distributed and sold by the respondent.  Laid out flat, the confectionary somewhat resembled the contour drawing of the traditional Coca-Cola bottle, which was itself a registered trade mark.  The primary judge rejected the appellant’s case of infringement on two bases: first, the importation, distribution and sale of the cola bottle confectionary was not use of the confectionary “as a trade mark”; and, second, the respondent’s cola confectionary was not substantially identical with, or deceptively similar to, the appellant’s mark.  The Full Court (Black CJ, Sundberg and Finkelstein JJ) overruled both reasons.  Importantly in the present context, the Full Court held a mark may be a “trade mark”, at least under the 1995 Trade Marks Act, even though it covers the whole of one of the visible sides of the goods.  The Full Court explained the position (in para 24) in this way:

“In the 1955 Act ‘trade mark’ was defined as ‘a mark used or proposed to be used in relation to goods’.  The word ‘mark’ included ‘a device, brand, heading, label, ticket, name, signature, word, letter or numeral, or any combination thereof’. …  In the 1995 Act the distinction between a mark and the goods in relation to which it is used is less clear.  The definition of ‘trade mark’ in s 17 does not contain the contrast between a ‘mark’ and ‘goods’ in relation to which the mark is to be used that was in the definition in the 1955 Act.  Instead, a trade mark is a sign used to distinguish goods dealt with by one person from goods dealt with by another.  Further, ‘sign’ is defined in a manner which adds to the items in the former definition of ‘mark’ the word ‘shape’, amongst others.  Thus a trade mark can be a shape used to distinguish the goods of one person from those of another.  On the other hand there are several provisions, including s 120, which continue the distinction between ‘mark’ and the goods in relation to which it is used.  We need not decide whether, under the current Act, the bottle that was refused registration in the Coca‑Cola case could be registered as a trade mark, that is to say, as a shape which is used to distinguish the appellant’s beverage from those of others.  It is sufficient for the resolution of the present case that we adopt the view that a mark can be a trade mark even if, as in the present case, it covers the whole of one of the visible sides of the goods.”  [Original emphasis]

11                  In his outline of submissions before me, Mr Cobden suggested the delegate “fell into error in confusing two distinct steps that need to be taken”: first, “whether the mark of the application is capable of being used as a trade mark at all”; and, second, “whether the trade mark is inherently adapted to distinguish the applicant’s goods from the goods of other traders”.

12                  As to the first point, Mr Cobden noted the term “trade mark” is now defined, by s 17 of the 1995 Act, as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.  The word “sign” is defined (by s 6 of the Act) in this way:

“sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.”

13                  Mr Cobden argues that, although there has been past controversy as to whether a shape can function as a trade mark, that controversy has been laid to rest by the 1995 Act; the recent Full Court Coca-Cola decision confirms that.  Mr Cobden mentioned, but only to distinguish the case, Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA; 100 FCR 90.  A Full Court there held it was not a use of a mark for the respondent to produce and deal with an electric shaver that reproduced the configuration of the cutters in the appellant’s shaving head, this configuration being necessitated by functional considerations.

14                  In relation to the second issue, Mr Cobden challenges the delegate’s observation that “the features of the proposed trade mark do not appear, at first instance, to have trade mark significance”.  He argues the Full Court’s decision in Coca-Cola shows this is not a matter that requires evidence.  Mr Cobden argues the critical question is that posed by s 41(2) of the Act: whether “the trade mark is not capable of distinguishing the applicant’s goods … in respect of which the trade mark is sought to be registered … from the goods … of other persons”.  Mr Cobden says the mark is to be registered unless the Court is satisfied that the mark is not capable of distinguishing Kenman’s non-medicated confectionery from that of other persons.  In deciding that question, the Court must first take into account “the extent to which the trade mark is inherently adapted to distinguish” the confectionery from that of other persons (s 41(3)).  Mr Cobden does not rely on s 41(5) or s 41(6).  As there is no evidence before the Court of either intended use or actual use, Mr Cobden accepts that, if the mark is not inherently adapted to distinguish its confectionery from that of others, his client must fail.

15                  In relation to inherent adaptability, Mr Cobden referred to my decision in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; 47 IPR 579.  In paras 19 to 24 of that decision, I mentioned the leading cases on inherent adaptability.  Those cases were all concerned with words, rather than shapes.  But Mr Cobden contends this makes no difference; the principles they state apply equally to a mark that is a shape.

16                  Mr Cobden listed eight features of the subject mark which he says were found by the delegate:

“•        The proposed shape of the present mark is not one that is in common use.

•          It does not represent a recognisable animal or insert or other living or mythical thing.

•          No really descriptive word comes to mind in viewing it.

•          It is an invented shape.

•          It strikes the eye as distinguishable from other shapes, being not so amorphous or ordinary as to be unmemorable even though no name readily attaches to it.

•          it carries the stamp of an individual imagination.

•          It is not a shape that others need to use.

•          It is a coined shape.”

17                  Mr Cobden went on:

“There can be little doubt that were this a word mark, and it had been found it was not in common use, or stylised, did not represent a recognisable thing, did not have any descriptive reference, was invented and was distinguishable, it would be found to have a sufficient degree of inherent adaptation for the enquiry under s 41 to stop at sub-s 41(3) and for the mark to proceed to acceptance without further consideration.

Curiously, the present applicant’s two-dimensional mark for the same device has been accepted without evidence of use or intended use …  Applying Coca-Cola, that mark would be infringed by a confectionary in the shape of the present three-dimensional mark.

Of course, with many decades of practice in relation to word marks and other two-dimensional marks the Trade Marks Office (and the Courts) may have a higher level of confidence in applying these tests appropriately to applications for registration of trade marks.  However, there should be no distinction in principle in the way in which they are applied to marks that have three-dimensional features.

Here, there is no real prospect of another trader wishing to use the sign ‘for the sake of the signification which it ordinarily possesses’.”

18                  In his oral submissions, Mr Cobden observed the subject shape mark would not necessarily be used as the shape of the item of non-medicated confectionery itself; it might be used in connection with the packaging of the product – for example, a plastic medallion in the shape of the mark could be appended to the packaging.  The mark might also be used as part of an item of confectionery.

Contentions of the respondent

19                  Counsel for the Registrar, Mr Stephen Burley, does not dispute that a shape mark is capable of being registered as a trade mark.  However, he says the introduction of the word “shape” into the statutory definition of “sign” should not be regarded as a radical change in trade mark law.  In that regard, Mr Burley cites the discussion by Burchett J (with whom Hill and Branson JJ agreed) in Koninklijke Philips.  At para 14 Burchett J quoted the statement of Windeyer J in Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks (1967) 116 CLR at 639-640 about the necessity for a mark, for the purposes of the Act, being “something apart from the goods to which it is to be applied, or in relation to which it is to be used”.  Burchett J observed this same view was expressed by Lord Templeman, on behalf of a unanimous House of Lords, in Re Coca-Cola Company.

20                  At para 15 of his reasons, Burchett J considered “whether the 1995 Act has changed all that”.  He thought it was not intended to do so:  “this is the reason there is so little assistance to be gained from ministerial statements or explanations.  The amendment was simply not seen as important.”  Burchett J went on (at para 16-17):

“It does not follow that a shape can never be registered as a trade mark if it is the shape of the whole or a part of the relevant goods, so long as the goods remain distinct from the mark.  Some special shape of a container for a liquid may, subject to the matters already discussed, be used as a trade mark, just as the shape of a medallion attached to goods might be so used.  A shape may be applied, as has been said, in relation to goods, perhaps by moulding or impressing, so that it becomes a feature of their shape, though it may be irrelevant to their function.  Just as a special word may be coined, a special shape may be created as a badge of origin.  But that is not to say that the 1995 Act has invalidated what Windeyer J said in Smith Kline.  The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded.  For they are cases where the shape that is a mark is ‘extra’, added to the inherent form of the particular goods as something distinct which can denote origin.  The goods can still be seen as having, in Windeyer J’s words, ‘an existence independently of the mark’ which is imposed upon them.

The conclusion of this discussion is not that the addition of the word ‘shape’ to the statutory definition calls for some new principle, or that a ‘shape’ mark is somehow different in nature from other marks, but that a mark remains something ‘extra’ added to distinguish the products of one trader from those of another, a function which plainly cannot be performed by a mark consisting of either a word or a shape other traders may legitimately wish to use.  That proposition has commonly been stated in connection with marks that seek to appropriate the actual name of the product or an apt description of it; but the principle equally applies in the case of a shape or picture representing the very form and appearance in which another trader might legitimately wish to make the product.” [Original emphasis]

21                  Mr Burley applies that approach to the present case by saying the subject three-dimensional shape is of a bug; the shape mark will be applied to the goods themselves; the goods will be bug shaped items of confectionery.  In his outline of submissions, Mr Burley goes on:

“Common experience indicates that confectionary products are capable of being made in a large variety of shapes and forms.  In shops one typically could encounter confectionary in the shape of snakes, frogs, teeth, shells, bullets, berries, buttons, dinosaurs, lizards and legion other forms.

The task of the Registrar, in maintaining the purity of the register, is to place reliance on possibilities as to what traders might wish to do …

In the case of the Kenman Application, the difficulty lies in the fact that the mark will also be the product.  To the extent that the product has any attractiveness to the consumer that is not as a result of it being a trade mark, other traders should be entitled to use it.”

22                  Mr Burley argues it remains the rule that the mark must be something distinct from the goods in relation to which it is used or intended to be used; the goods are assumed to have an existence independently of the mark.  He goes on:

“In the case of the current application it is submitted that the use of novelty shapes for confectionary is well known.  The Registrar’s task is to consider whether the mark is distinctive by reason of being inherently adapted to distinguish, firstly by looking at the mark in the context of its proposed use.  In so considering it, the Registrar must consider the possibility that other traders may wish to use novelty shapes, including the shape of the application, without improper motive.  Given the variety of shapes available and potentially available, it is legitimate for the Registrar to wonder: why should the ‘great common’ of potential shapes for use in Australia be limited?  It is submitted that it should only be limited where there is evidence to demonstrate that the use or intended use of the Kenman Application would be distinctive of the applicant.

In practical terms, the Registrar is, in the absence of evidence, concerned with hypothetical possibilities.  Whilst the provision of evidence might indicate that a possibility is so remote as to be irrelevant, in circumstances where:

(a)               the Kenman Application is for a shape made of non-medicated confectionary;

(b)               non-medicated confectionary is capable of being made in a large variety of shapes;

(c)               traders do in fact employ a wide variety of shapes or non-medicated confectionary; and

(d)               there is no evidence that the Kenman Application is or is proposed to be used in a manner which renders its use distinctive;

it is submitted that the Registrar ought to withhold acceptance under section 41 of the Act.”

23                  Mr Burley also submits that a direct comparison between the tests applied to invented word marks and invented shapes is not apposite:

“Where an invented or inappropriate word is applied to goods, that word is likely to be inherently adapted to distinguish.  Where a shape is applied to malleable goods such as confectionary, there is no basis in logic to say that such a shape, however unique or novel, is ‘inappropriate’ or ‘inventive’ in such a way as to distinguish goods inherently.  Confectionary can theoretically be produced in any form and the onus (under section 41(5) or 41(6)) lies on the applicant to demonstrate that other traders would not seek to use that shape.”

24                  Mr Burley says there is nothing incongruous in the Registrar’s acceptance of Kenman’s two dimensional mark; the question whether a three-dimensional version of that mark would infringe the registered two-dimensional mark would turn on issues of trade mark use such as those explored in Coca-Cola v All Fect and Koninklijke Philips, not the issue of inherent distinctiveness raised by s 41 of the Act.

25                  Mr Burley accepts Mr Cobden’s statement that the mark would not necessarily be used as the shape of the confectionary itself; but he says this use would be open to Kenman, if registration were obtained, and the application has to be assessed on that basis.

Conclusions

26                  In Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 504-505, Branson J analysed and explained the scheme of s 41 of the Act.  The exposition is helpful but I need not repeat it here.

27                  It appears to be accepted, in both Coca-Cola v All-Fect and Koninklijke Philips, that a shape mark may be used as the configuration of the goods themselves.  So it seems counsel are correct in arguing the present case on the basis that, if registration were granted, Kenman would acquire an exclusive right to produce, distribute and sell non-medicated confectionery manufactured in that configuration.  Although Mr Cobden is correct in saying registration does not necessarily mean the mark will be used in that manner, Mr Burley is correct in saying it may be so used.  Section 41 of the Act must be applied on that basis.

28                  The first question for me is whether the subject shape mark “is not capable of distinguishing the applicant’s goods … from the goods … of other persons”.  In deciding that matter, I am required by s 41(3) to take into account “the extent to which the trade mark is inherently adapted to distinguish” Kenman’s goods from those of others.  If I am unable to decide the matter of capability of distinguishing Kenman’s goods from those of others, I am theoretically required by s 41(4) to consider (under s 41(5)) the use, or intended use, of the trade mark by Kenman.  However, in this case there is no evidence of intended use or actual use.  So the case turns on s 41(2), and the application thereto of s 41(3).

29                  In Ocean Spray I discussed the legal concept of capability of distinguishing goods or services.  I need not repeat what I there said.  However, it is desirable to recall the often cited statement of Kitto J, in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514; the question whether a mark is inherently adapted to distinguish must:

“… be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”

30                  Both the present parties accept this statement of principle applies to shape marks; the issue between them relates to its manner of application.  Mr Cobden accepts that a shape which relates to functionality could never be inherently adapted to distinguish the goods of a particular person; other traders, actuated only by proper motives, might equally wish to use that shape in connection with their goods.  Mr Cobden also concedes that the shape of an animal associated with the product – he gave the example of an elephant shape for ivory products – would not, for the same reason, be inherently adapted to distinguish one trader’s goods from those of others.  He did not make a similar concession in relation to shapes of identifiable animals not related to the particular product.  However he contended there was no problem of inherent adaptability in relation to a “concocted” shape, like that proffered for registration in the present case; as in the case of a concocted word, the very artificiality of the shape renders it unlikely legitimately to be required by other traders.

31                  Mr Burley, on the other hand, argues a grant of exclusive use to even a “concocted” shape impermissibly narrows the “great common” of shapes available to traders generally; in the case of confectionery, it would be but a short time before so many shapes were registered that new traders would have difficulty putting out a product that avoided identicality, or deceptive similarity, to one or other of them.

32                  The test stated in Clark Equipment depends, for its application, upon resolution of a question of fact: is it likely that other traders will legitimately wish to use the mark in connection with their own goods?  Mr Cobden understandably presses upon me the finding of the delegate of the Registrar that the subject shape “is not a shape that others need to use”.  Mr Cobden argues that, if this is correct, the application of Clark Equipment must result in a finding that the mark is capable of distinguishing Kenman’s confectionery from that of others.  However, as Mr Cobden recognises, the hearing in this Court is a hearing de novo.  Although weight is to be given to the view of the delegate, as a person experienced in the administration of the Act, I am not bound by that view.  I must, in the end, reach my own conclusion, even about factual matters: see Ocean Spray at 16.

33                  I have reached the conclusion that the subject mark is not inherently adapted to distinguish Kenman’s confectionery from that of others.  I agree the mark is concocted; so far as I am aware, no real insect has this shape.  However, the shape is reminiscent, to a greater or lesser degree, of a variety of insects.  That fact is important, especially when it is remembered that the mark is intended to be registered in respect of confectionery.  Children constitute a significant part of the confectionery market; and children relate spontaneously and strongly to animals and animal-like creatures.  Moreover, confectionery is highly malleable.  Taken together, these factors make it likely that confectionery manufacturers will, from time to time, wish to put out products in various shapes reminiscent of animals.  To allow registration, for confectionery, of the shape of a real or readily-imagined animal would be to commence a process of “fencing in the common” which would speedily impose serious restrictions upon other traders.

34                  Although it is appropriate to apply to shape marks the principles that have been developed in respect of word marks, there is at least one major difference between words and shapes.  Possible concocted words are almost infinite in number.  A trader who uses an undescriptive concocted word for its product will take nothing away from other traders.  However, the possibilities for concoction of animal-like shapes are finite.  They are limited to shapes reminiscent of known animals.  A trader who establishes an exclusive right to one of those shapes inevitably limits the possibilities available to others.

35                  The essential problem about the applicant’s case is that, if accepted, it would give Kenman the exclusive right to use the shape as the configuration of its goods.  If the subject application were confined to use in relation to packaging, it might not be open to the same objection; other traders would probably not be unduly restricted by being forced to package differently their bug-like confectionery products.  However, the application is not so confined.  It must be evaluated on the basis of the use that may be made of the mark, if registered, whether or not that use will eventuate.

Disposition

36                  As I have indicated, the only issue before the Court is the application of s 41(2) of the Act.  As the applicant fails on that issue, the application must be dismissed.  The applicant must pay the respondent’s costs.

Associate:

Dated:              3 August 2001