Case: British Sugar plc v James Robertson &amp; Sons Ltd [1996] RPC 281
Outcome: followed
parties were not in dispute about the applicable principles, only the application of those principles to the facts. The question whether a trade mark is inherently adapted to distinguish is directed at the nature of the trade mark itself and is not concerned with the mark's capability to distinguish arising from its actual or intended use: Burger King Corporation v Registrar of Trade Marks (The Whopper case) [1973] HCA 15 ; (1973) 128 CLR 417 ( Burger King ) at 424; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [83] (Lindgren J). A trade mark that is inherently adapted to distinguish goods is one that can "do the job of distinguishing without first educating the public that it is a trade mark": British Sugar plc v James Robertson &amp; Sons Ltd [1996] RPC 281 ( British Sugar ) at 306 (Jacob J); see also Austereo [2004] FCA 968 ; 61 IPR 257 at [48] (Finn J). Although in dissent on the ultimate outcome, Lindgren J observed in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [84] that: While inherent adaptation to distinguish requires attention to be focused on the mark itself, and is intended to stand in sharp contrast to a mark's capacity to distinguish arising from use, the notion of "the mark itself" does not exclude from consideration the nature of the range of goods within the class or classes in respect of which registration is sought, or the various ways in which the mark might, within the terms of the registration, be used in relation to those goods. Indeed, those matters must be taken into account. Section 41(5) permits the registration of trade marks that are not, by their inherent qualities, sufficiently adapted to distinguish, but which have as at the priority date in fact acquired a capability to distinguish the relevant goods: see Austereo [2004] FCA 968 ; 61 IPR 257 ; see also Clark 111 CLR at 515; British Sugar [1996] RPC 281 at 306; Nestle [2006] FCA 782 ; 154 FCR 165 at [29] . In other words, s 41(5) recognises that marks which are insufficiently inherently adapted to distinguish may nevertheless by their use have become distinctive in the minds of consumers so that they will be able to "do the job of distinguishing" the applicant's goods, that is, they will in fact serve as a badge or an indicator of origin. Accordingly, under s 41(5) an applicant relying on use prior to the priority date will need to point to evidence that the mark has been used as a trade mark , so as to have acquired the requisite capability to distinguish the applicant's goods: see, in the context of s 41(6), Woolworths Ltd v BP Plc (No 2) [2006] FCAFC 132 ; (2006) 154 FCR 97 at [72] and [77] ( BP (No 2) ); Ocean Spray [2000] FCA 177 ; 47 IPR 579 at [38] - [41] , in particular [40]. Guylian's submissions The Registrar contends that Guylian's evidence of use fails to demonstrate that the shape has been used as a trade mark . The Registrar referred to the observations of Jacob J in British Sugar [1996] RPC 281 at 303, where his Lordship dealt with evidence of the use of the word "Treat" by the applicant in relation to its desert sauce and syrup products: There is an unspoken and illogical assumption that "use equals distinctiveness". The illogicality can be seen from an example: no matter how much use a manufacturer made of the word "Soap" as a purported trade mark for soap the word would not be distinctive of his goods. ... I do not consider that the evidence filed to support the registration was anywhere near enough to support the conclusion that when the mark was registered, it was distinctive. Yes it had been used for about 5 years in conjunction with Silver Spoon, but it was not proved that the public regarded it as a trade mark a reliable badge of trade origin on its own. In the case of a three dimensional shape mark, the Registrar said, the necessity to show clear evidence that consumers have been educated to perceive the shape as a trade mark, an indicator of origin, is all the more important. While the shape of goods might distinguish the goods as goods , the shape will not necessarily distinguish the goods as originating from one trade source rather than another. In this case, says the Registrar, the shape has been used not as a badge of origin but rather as simply one of the chocolate shapes out of a number of sea shell/marine shapes that Guylian sells and markets as one collection. Where Guylian uses the shape on its packaging and promotional material, it is more often than not displayed alongside the other sea shell shapes. It is not given such a prominence as to educate the public that it is being used as a trade mark. Rather, it is used in a descriptive or informative manner, identifying to the public examples of the novelty shapes included in Guylian's sea shell chocolate range. The Registrar makes two main submissions about the survey evidence. First, it says the results fail to establish that consumers see the seahorse shape as a badge of origin. It referred to BP (No 2) [2006] FCAFC 132 ; 154 FCR 97 and British Sugar [1996] RPC 281 , where surveys indicating 85% and 60% recognition of the mark in suit nevertheless failed to demonstrate distinctiveness. Those cases, it said, show that there is a difference between mere association and the perception of a sign as a trade mark. Evidence of an association between a sign and a manufacturer, even a high one, will not necessarily mean that consumers rely on the sign to identify the origin of the goods. Here, the survey question tested association and no more. It did not test whether consumers have in fact come to perceive and understand the seahorse shape as a trade mark, by, for example, asking whether or not respondents believed that the shape belonged to one particular manufacturer and, if so, whether they could identify the manufacturer. Secondly, the Registrar relied on the survey results themselves, referring to the fact that (1) less than half of the respondents associated the shape with Guylian (or, putting it the other way, over half did not associate it with Guylian) and, (2) of those that did associate it with a particular manufacturer, approximately 25% associated it with someone other than Guylian. While the degree of association with an applicant's goods may in itself be relevant to the overall assessment whether the mark has acquired a capacity to distinguish, the results here, said the Registar, are manifestly insufficient so as to be satisfied that the shape alone distinguishes Guylian's goods in the minds of the chocolate buying public. Resolution