+ Seahorses and Trademarks

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One of the issues before the court in Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 was whether a seahorse shape when used in respect of chocolate was a mark inherently adapted to distinguish under section 41(3) of the Trade Marks Act 1995.

As to s41(3), the court said that where a shape depicts a known object or concept (as compared to a wholly concocted or ambiguous shape), it is likely to signify the same to most if not all consumers, and so a subsidiary question arises as to whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar.

The Court decided that the seahorse shape was not so unique or imaginative that other traders, using a seahorse shape for ordinary signification, would be able to avoid potentially infringing the trade mark if registered.

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