Belgian chocolate manufacturer Guylian recently lost its appeal against the Registrar of Trade Marks to register and protect its seahorse shape in its selection of marine-shaped chocolates.

Guylian’s chocolates are sold in more than 132 countries, including Australia, and its marine-shaped chocolates are its top confectionery brand.

Guylian had already secured an international registration for its seahorse shape and had hoped to extend trade mark protection to Australia. However, in Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891 (18 August 2009), the Federal Court of Australia confirmed the decision of the Registrar of Trade Marks to refuse registration of Guylian’s seahorse shape as a trade mark on the basis that the shape was not capable of distinguishing Guylian’s goods.

Justice Sundberg of the Federal Court had to determine whether Guylian’s seahorse shape was distinctive enough and able to distinguish its chocolates under the Trade Marks Act 1995 (Cth) (TMA).

Guylian argued that its seahorse shape was a distinctive one with special “fanciful” features and not just an ordinary seahorse shape. As such, it came within s41(3) of the TMA and should be registered.

It relied on a previously successful case where registration of a bug shape by candy manufacturers was upheld on the basis that the shape was a “concocted imaginary shape”.

Justice Sundberg disagreed, deciding that the Guylian seahorse was a relatively ordinary one with no distinctive features and, given that other chocolate manufacturers might want to use the seahorse shape in a marine theme for their chocolates, refused to consider it distinctive enough to warrant registration.

Guylian then tried to argue that its seahorse shape was a distinguishing feature of Guylian’s goods and should be registered under s41(5) of the TMA. Guylian referred to its seahorse shaped boxes, widespread marketing and advertising of the seahorse shape, including consumer survey results showing shape and brand recognition, and even sponsorship of specific conservation research, Project Seahorse.

Justice Sundberg examined all of this evidence and concluded that, while it showed public recognition of the seahorse shape as part of Guylian’s brand, Guylian had not established that the seahorse shape distinguished its chocolates from its competitors.

The case demonstrates how difficult it is to obtain trade mark registration for shapes, even when there is evidence of substantial use and consumer recognition of them within a particular brand.