Case: Unilever plc's Trade Mark Applications [2003] RPC 35 
Outcome: followed
Unilever plc's Trade Mark Applications [2003] RPC 35 ( Unilever ) (the Walls' "Viennetta" case), Jacob J considered survey evidence which demonstrated a "high degree of association" (approximately 67% of ice cream eaters) between an image of the "Viennetta" ice cream and its manufacturer, Walls. (Respondents were shown four ice cream products and asked if they recognised them). At 662, his Lordship said: Putting the other products on one side for the moment, there can be no doubt that the product appearance has achieved considerable recognition on its own as denoting Walls' "Viennetta" the product of a particular manufacturer. Is that enough to give it a "distinctive character" within the meaning of Art.3(3)? For what has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognise it but do not treat it as a trade mark. There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled. I do not think that is what the European Trade Mark system is for. It is a system about trade marks, badges of trade origin. For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a "distinctive character" for the purposes of trade mark law. Notably, his Lordship also considered it relevant that a not insignificant proportion of the survey respondents (approximately 15%) identified one or more of the other ice creams as the "Viennetta", as this showed the potential for infringement by other traders seeking to sell a similar product. In BP (No 2) [2006] FCAFC 132 ; 154 FCR 97 , the Full Court of the Federal Court held that BP Plc (BP) had failed to establish pursuant to s 41(6) that it had used a particular shade of green as a trade mark, either by itself or as the predominant colour in its branding. Two aspects of their Honour's reasoning are instructive. First, the Court took into account survey evidence indicating, on a weighted basis, that 85% of respondents identified BP when they were asked to look at a picture of a building (a service station) which was coloured substantially in green and were asked to describe what they saw. In considering an expert's conclusion that this showed a "strong association" between green and BP, the Court stated at [117]: This conclusion is hardly surprising. Green had been one of BP's company colours since at least 1956. After 1989 it had been used as the predominant colour with yellow. In particular, in circumstances where there were only a few oil companies, where all have used colour historically to distinguish themselves, where BP has been the only company before 1995 to use green in that way, it is hardly surprising that people shown this stimulus would associate the green service station with BP service stations which have been coloured with a predominant green and accompanying yellow. That association does not lead to the conclusion that the use of colour from 1989 has included use, as a trade mark, of either green alone, or green as the predominant colour accompanied by any other colour. The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6). Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount Incv Registrar of Trade Marks at [61G], citing with approval Jacob J in British Sugar Plc v James Robertson &amp; Sons Ltd at 286 and 302; and Koninklijbe Philips Electronics NV v Remington Products Australia Pty Ltd (200) FCR 90 ... at [13]. It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark. The learned authors of Kerly's Law of Trade Marks and Trade Names (14th ed, Maxwell Ltd, UK, 2005, at [8 025]) state, albeit in the European context, that to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source : compare Unilever Plc's Trade Mark Applications [2003] RPC 35 at [31]. (Emphasis added.) Finally, I have had regard to the survey evidence, and the expert evidence of Mr Callaghan, which indicates that a significant proportion of the survey respondents were able to identify Guylian when they were shown the seahorse shape. However I am of the view that this association on the whole is likely to be referable to Guylian's sale of the sea shell and seahorse shaped chocolates, over a long period of time, under the banner of the distinctive "Guylian" and "G" trade marks, rather than to the shape itself being used as a trade mark. The cases confirm that association evidence on its own does not prove distinctiveness; the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods: see BP (No 2) [2006] FCAFC 132 ; 154 FCR 97 and Unilever [2003] RPC 35. The Full Court's observations to this effect in BP (No 2) are just as relevant to a consideration of use under s 41(5) as they are to s 41(6). In essence, the survey in this case tested respondents' ability to recognise a shape and associate it with a manufacturer or brand. It tested "brand recognition", as Mr Callaghan suggested; "the ability of a consumer to confirm prior exposure to a brand when presented with one of the brand's identity elements". When regard is had to the way the shape has been used, the survey results do not in my view confirm that consumers actually understand the shape as an indicator of the origin of the goods. The results plainly show a large degree of public recognition of the shape, but as Jacob J said in Unilever [2003] RPC 35 at 662: "[W]hat has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognise it but do not treat it as a trade mark". In any event, I agree with the Registrar's submission that the results tend to confirm the view I have already come to that the shape has not been used as a trade mark, because almost half the respondents were in fact unable to identify the shape with any particular brand or manufacturer. Two other matters should be noted about the survey results. Out of those respondents who did associate the shape with a particular brand or manufacturer, almost a quarter believed it was manufactured by someone other than Guylian. Further, Mr Callaghan also attributed the association to more than just the shape itself. He said it was likely that many associations would have been based on recognition of the overall image and not simply its shape, for example colour and a perception of the texture of the object. I agree with the Registrar's submission that the marbled appearance on the surface of the shape is also likely to have contributed. As Guylian seeks registration of the shape alone, it must be able to demonstrate that the shape, regardless of its colour for example, has become distinctive of its goods. This is important, because it is the shape alone over which Guylian seeks a monopoly. In the circumstances as described by Mr Callaghan, it seems to me that the probative value of the association evidence is to some extent diminished by the way many of the respondents are likely to have made their association.