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Nestle applied to register a trade mark consisting of a shape of a piece of confectionery. The endorsement read, “The trade mark consists of the shape of the goods, being four bars attached to one another by a thin base…”, and was accompanied by a representation of the shape shown below.

ALDI Stores however successfully opposed the application. The Delegate discerned a “solid thread” throughout the grounds of opposition that the shape was functional and not used as a trade mark at all. The key points of the decision are as follows:

Inherent distinctiveness

The opponent referred to earlier ‘shape cases’ which held that the shape must be something “extra” or a “special shape” added to the goods to be registrable as a trade mark.

While the Delegate found this to be an over simplification, he had regard to “ordinary chocolate blocks” (those divided into squares) which showed a “commercial desirability of being able to break portions into smaller portions”.

Nestle argued that the realisation of consumers that its KIT KAT product will break into convenient finger-like portions was coincidental, and made only after the applicant adopted the shape in Australia in 1948, and in England in 1935. It asserted that the shape of the confectionary was a “coined shape” (i.e invented shape) in that it has no inherent purpose apart from serving as a mark. The Delegate however was unconvinced and found that “however coined the shape may have been then, it must be seen, now, as a functional shape” and had no inherent distinctiveness.

Factual distinctiveness

Evidence of extensive use and survey evidence presented by Nestle showed that 77% of the surveyed population associated the shape with the KIT KAT product. The opponent was critical of the survey methodology and pointed out that 22% of the population did not associate the shape with the product.

The delegate however relied on the warning about the “unspoken and illogical assumption that use equals distinctiveness” from Jacob J in British Sugar p.l.c. v James Robertson & Sons [1996] RPC 281 , and held that a particularly high proportion of people need to make the association for factual distinction to be established

Decision

While the evidence of usage was compelling, the Delegate ultimately decided that “when I allow for the facts that the shape is invisible when the goods are sold, and that the manner of advertising stresses the functional aspects of the shape, I am hard put to find anything that suggests the shape is capable of distinguishing the applicants product from those of others,” and refused the application.

For further information please contact Tracey Berger at tracey.berger@sprusons.com.au

Alphapharm Pty Ltd (“Alphapharm”) applied to register a trade mark SOMIDEM in Class 5 for human pharmaceuticals. Sanofi-Aventis (Sanofi) opposed the registration of the mark on the basis that the trade mark did not distinguish Alphapharm’s goods and services specified from the goods and services of other traders and that its use was likely to deceive or cause confusion because of some connotation contained in the trade mark.

Sanofi argued that other traders were likely, and without any improper motive, to want to use the same mark as SOMIDEM or some other mark nearly resembling it upon or in connection with their goods. The trade mark SOMIDEM was designed to be used in relation to a human pharmaceutical consisting primarily of zolpidem tartrate. “Zolpidem” is an International Non-proprietary Name (“INN”) assigned by the World Health Organisation. Sanofi argued that when compared side by side there were a number of visual and phonetic similarities between the words ZOMIDEM and “Zolpidem”. The principle under Trade Marks law is that an application for registration will be rejected under Section 41(2) if the trade mark and an INN name are “substantially identical”. Alphapharm argued that the relevant test was whether the two marks were substantially identical rather than being of “close similarity” as argued by Sanofi. The Hearing Officer, however, favoured the test proposed by Sanofi and concluded that in an opposition the relevant test was whether the marks were of “close similarity”.

This decision is consistent with the 2005 decision of Aventis Pharma SA v. Alphapharm Pty Ltd (2005) 65 IPR 634 (Reg) in the case of the mark “ROXIMYCIN” which was said to resemble the antibiotic INN “Roxithromycin” where the Hearing Officer accepted that, at opposition, the relevant test under s41 was whether a comparison of the mark & INN revealed “close similarity” or whether they were “confusingly similar”.

In the present case, the Hearing Officer commented that since the signs involved were used in relation to pharmaceuticals and those involved in prescribing certain pharmaceuticals were of “great experience and habitual caution”, he thought that the differences in how these signs presented to the eye and ear outweighed any similarities that they might have. The initial letters and central structure of the signs were quite different from each other and it was unlikely that most people seeing the marks would think that the application mark “SOMIDEM” might have been coined from the INN “Zolpidem”. Furthermore, there was no visual or phonetic similarity between the trade mark and the INN so that the trade mark “nearly resembled” or was “confusingly similar” to the INN Zolpidem.

Consequently, whilst a mark for pharmaceuticals which closely resembles (but is not substantially identical) to an INN may achieve acceptance following the examination at the Trade Marks Office it may fail to achieve registration because of a successful opposition which establishes that the applied for mark and a recognised INN are “closely” or “confusingly similar” to the INN.

For further information please contact Hilary May Black at hilary.mayblack@sprusons.com.au