In Re Ferrero SpA (2012) 98 IPR 250;  ATMO79 (13 September 2012), the Registrar of Trade Marks rejected an application to register the Tic Tac box as a shape trade mark.
The application was to register a shape trade mark for confectionery (class 30). The trade mark was described as follows:
The trade mark consists of a transparent three dimensional box with a hinged lid and label over the lid, as shown in the representation of the trade mark attached to the application form. The pictorial representation included the images shown in Figure 1.
This application was always going to be difficult given the generally non-descript and functional nature of the Tic Tac box. In other circumstances, if starting from scratch, an unusual or striking (non-functional) element could be added to the shape to improve the prospects of registration. In addition, if there had been further evidence available of use of the box without the Tic Tac label, this may also have improved the applicant’s prospects of registration under s 41(6)(a) of the Trade Marks Act 1995 (Cth) (the Act) (discussed below).
Registration under the Trade Marks Act
Section 41 of the Act sets out the criteria to be applied in determining whether or not there are grounds for rejecting an application for registration of a trade mark. In this case, in a nutshell, the applicant based its claim to register its trade mark on the following:
- the shape trade mark is inherently adapted to distinguish the applicant’s goods (s 41(3));
- the trade mark is to some extent inherently adapted to distinguish the applicant’s goods and, because of the use to which the trade mark has been put, the trade mark does distinguish the applicant’s goods (s 41(5)); or
- if the trade mark is not to any extent inherently adapted to distinguish the designated goods from those of other persons, then, by reason of the extent to which the applicant has used the trade mark, the trade mark does distinguish the applicant's goods s (s 41(6)(a)).
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