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The Australian courts have continued to restrict the ability of applicants to obtain shape trade marks. In the latest case of Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, the Federal Court has agreed with the Registrar's refusal to register Guylian's well-used shape of a seahorse despite substantial use and high levels of consumer recognition.
His honour held that: "the ultimate question I must consider is whether there is a likelihood that other traders, acting with proper motives, will think of the shape and wish to use the same shape or one substantially identical or deceptively similar. In my view, it is quite possible that as at the priority date other traders might want to depict a seahorse,...... With other traders already selling sea shell chocolates, it seems to me reasonable to expect that, as at the priority date, other traders might wish to make chocolates in the shape of a seahorse, as well as other marine creatures."
The case highlights the difficulty of obtaining a trade mark for an object's shape, especially where other traders have a legitimate right to use the shape. Previous cases have also refused shape trade marks where the shape has some functional aspects to them.
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