Although the most recent trademark legislation in Australia, Trade Marks Act 1995, permits the registration of shape marks, in Kenman Kandy Australia Pty Ltd v. Registrar of Trade Marks, the Federal Court denied registration of a shape mark described by the judge as a friendly, overfed spider with six stumpy legs, or a bug of some sort.

The Registrar of Trade Marks rejected the application covering non-medicated confectionery, notwithstanding a finding that the shape was not one that “... others needed to use” and that it was a “coined shape”. The Registrar was apparently not satisfied that the mark was capable of distinguishing the goods and, on appeal, the Federal Court agreed with this conclusion and ruled that the mark did not satisfy the test of inherent registrability. It should be noted that the limited evidence of use submitted was not considered sufficient by the Court.

The judge held that, although the mark was, in effect, invented ( i.e., it was not “a recognizable thing”), it was not inherently adapted to distinguish Kenman Kandy’s confectionery. The judge paid particular attention to the fact that the goods were non-medicated confectionery and that children were a significant part of the confectionery market. The judge therefore held that:

In reaching his conclusion, the judge stated that the principles of trademark law that have developed in respect of word marks do not apply equally to shape marks. He viewed shape marks and word marks as being very different in the sense that he regarded the possibility of devising animal-like shapes to be limited, whereas he thought that this was not the case with word marks. The judge considered that the registration of a shape mark should only be granted in circumstances where the registration did not restrict the possibilities available to other traders.

In this case, one could take the position that the nature of the shape should have made it unlikely that it would reasonably be required by other traders and that this should have provided the Trade Marks Office and the Court with sufficient grounds for accepting the mark for registration.

However, the Court’s decision tends to emphasize the Trade Marks Office’s reluctance, and in this case, that of the Court also, to register shapes as trademarks, except in special and limited circumstances. It will be appreciated that this position potentially weakens the value of what we had been led to believe would be considered a new range of registrable marks under the recent trademarks legislation in Australia.