New Zealand Law Society - The shape of sweet victory

The shape of sweet victory

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Do you recognise a Whittaker’s SANTE® bar when you see it? If you do, you know what you are buying. After successfully defeating a third party opposition to their application, Whittaker’s SANTE® bar recently became the 231st shape on the New Zealand Register of Trade Marks.

What is a “shape” trade mark?

A trade mark is a sign that is capable of distinguishing the goods of one trader from those of another.1 It is designed to function as a “badge of origin”.

What these legal tests mean in practical terms is that when you see a trade mark, you know who has made that product. Sometimes the shape of the packaging, or even of the product itself, is sufficiently distinctive that consumers recognise the product as coming from one particular manufacturer.

You can probably recognise these products by their shapes (each of which is registered in New Zealand as a trade mark and owned by their respective proprietors): 2

Sketches of a Coca Cola bottle, a bottle of toilet cleaner and a Bic pen 

There are also a number of alcoholic beverages that consumers could locate and select based solely on the shape of their bottles.

Registration of shape marks

Although the Trade Marks Act 2002 formally introduced shape marks into the New Zealand legislation, this was in fact mere recognition of the fact New Zealand had been registering shape marks for some time.

A leading New Zealand case is Fredco Trading Ltd v Miller [2006] NZCA 151, the “Vine Tie” case. The criteria for determining whether a shape qualifies for registration as a shape mark are the same as for any other trade mark. A staged approach is envisaged:

  • Is the sign a trade mark (ie, capable of distinguishing the goods of one trader from those of another)?
  • If so, does it have a distinctive character?
  • If it does not have a distinctive character, has it acquired that character by use?

Sketch of a vine tie
NZ TM 661428 and associated rights
owned by Robert Peter Miller
t/a Klipon Associates

The Court of Appeal confirmed that the shape of the goods themselves can be a trade mark. Although the shape of the vine tie was found to be “largely” functional, the Court of Appeal upheld the finding that the evidence was sufficient to show that the mark is being used as a “badge of origin”.

The evidence established that customers recognised the product based on its shape, and this was how they knew it was a “Klipon”.

Whittaker’s application

Whittaker’s has sold its SANTE® bar chocolate since the early 1950s. Originally these were sold as unwrapped bars. In 2001, they started selling a wrapped version. The wrapping was designed to “hug” the shape of the bar, so that consumers would still recognise it.

The shape was graphically represented in the application in a series of views:

sketch showing the shape of a chocolate bar 

Whittaker’s were not seeking to gain a monopoly over the idea of a chocolate stick or finger, but the specific shape shown in these drawings.

The application was eventually accepted by IPONZ, but was opposed by a rival confectioner. In her decision, [2015] NZIPOTM 4, Assistant Commissioner Alley referred to, and applied, the three-step enquiry from Fredco.

She found that the shape was capable of distinguishing the goods, but that found that the shape does not possess enough of a distinctive character to be regarded as an indication of trade origin by the trade and the average consumer of chocolate bars in New Zealand. For this reason, she found the mark fell marginally short of the requirement for having inherent distinctive character.

However, that was not the end of the matter, because the third stage of the enquiry was then relevant. Evidence was presented including relating to market share, methods of promotion and volumes of sales. This evidence was found to be sufficient to meet the required level of acquired distinctiveness.

Points to remember:

the distinctive shape of a product may be registered as a shape trade mark;

it may be necessary to prepare and file evidence establishing that; and distinctiveness has been acquired through use in order to succeed.

* No SANTE® bars were harmed in the production of this article.

  1. Paraphased from s 5 Trade Marks Act 2002
  2. NZ TM 244906 and associated rights owned by The Coca-Cola Company; NZ TM 278216 and associated rights owned by Duck Global Licensing AG; NZ TM 251215 and associated rights owned by Bic (NZ) Limited

Virginia Nichols is a senior associate at Saunders & Co. She specialises in intellectual property law, including trade marks.

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