case_text: of these chocolate boxes was purchased in May or June 2008, well after the priority date (16 April 2002). This raises a question about the acceptable use of this evidence. It is clear that the relevant date for assessing whether a trade mark is capable of distinguishing the goods for which it is used is the priority date: Austereo [2004] FCA 968 ; 61 IPR 257 at [30] . The parties both accepted that evidence of use by Guylian of the seahorse shape after the priority date is relevant for the purposes of s 41(5) of the Act, because it is open to draw rational inferences from such evidence as to whether the shape in fact had the required capacity to distinguish as at the priority date. That proposition was accepted by Finn J in Austereo , where his Honour referred to Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 and Burchett J's reference to actual events as being "capable of illuminating the probabilities already inherent in [a prior] situation". Although differing as to the weight such evidence should be given, the parties also appeared to accept more generally that evidence of events taking place after the priority date, whether that be the applicant's use of the mark itself or use of other similar or otherwise relevant shapes by rival traders, may be relevant to whether the seahorse shape is capable of distinguishing Guylian's goods. This was an appropriate course to take. In my view, evidence of what other traders were selling prior to, at or subsequent to the priority date has the ability to rationally affect, albeit with varying degrees of weight, the conclusion one might reach about the extent to which a mark is inherently adapted to distinguish under s 41(3) of the Act. As Kitto J said in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 ( Clark ) at 514: [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. In assessing as at the priority date the "likelihood" that other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been "actuated only by proper motives". In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the "evaluative judgment" (see French J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [47] ) required under s 41(3). In Kenman Kandy , the Full Court in the context of a shape mark recently endorsed the test articulated by Kitto J in Clark 111 CLR at 514, which is set out at [54]: see Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [47] (French J), [146] and [161] (Stone J), and [85] (Lindgren J), but note [87]-[89] (Lindgren J). The application of this test, as French J observed at [49], is "largely a matter of evaluative judgment within the broad principles laid down by [the] authorities". The reference to "likelihood" by Kitto J in Clark was described by Gibbs J in Burger King 128 CLR at 425 as a reference to whether another trader "might", without improper motive, want to use the mark in relation to his or her goods: see also Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51 at [33] (Wilcox J). The Registrar contends that, unlike the "bug" shape in Kenman Kandy , the seahorse shape is not a concocted or invented shape, but is clearly a representation of a seahorse. It is referred to by Guylian as a seahorse and would not be mistaken for any other animal. Although it has some level of "stylisation or abstraction" (the stockier torso and the backwards curling tail), these relatively minor differences, it said, do not have any significant impact on the ordinary association or signification that the shape establishes in the mind of the observer. The Registrar relied on the observations of Stone J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 who, after referring to Kitto J's statement of the test in Clark , said at [147]: In my opinion it is the absence of these [ordinary] associations and significations that makes a sign inherently adapted to distinguish one trader's goods from those of another. In other words the concept is negative not positive. Applying this "negative" test, said the Registrar, the shape in suit does not lack, but rather quite clearly possesses, an ordinary signification which another trader in chocolates might want to use. When regard is had to the fact that (a) chocolate confectionary is manufactured in a wide variety of novelty shapes, including animals, (b) other manufacturers have been selling chocolates in the shape of sea shells and other marine life since well prior to the priority date (16 April 2002), and (c) other manufacturers are currently selling chocolates in the shape of a seahorse that is the same or very similar to Guylian's, the Court should be satisfied, on the Clark test, that the shape in suit is one that, as at the priority date, other traders might think of and want to use in a manner which would infringe a registered trade mark granted in respect of it. The Registrar also referred to the survey evidence, which indicated that almost a quarter of the respondents who associated the image of the shape with a manufacturer, associated it with someone other than Guylian. On that basis, having regard also to the evidence that others were selling sea shell shaped chocolates as at the priority date, the Registrar asked the Court to infer that similar seahorse shapes were already in fact being sold at the priority date, or that at the very least other traders might have wanted to use a similar seahorse shape as part of a novelty sea shell range. Guylian's submissions The Registrar submits that any trader using a seahorse shape simply to denote a seahorse should, in the absence of evidence to the contrary, be considered to be acting with proper motives for the purposes of the Clark test. The Registrar referred to both Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525 at [51] and [53], where Mansfield J referred to the "concept of a properly motivated trader" as including the use of a mark to denote a meaning that the mark might ordinarily possess, and Clarke 111 CLR at 517, where Kitto J identified an improper motive on the part of a rival trader as a "desire to get for themselves a benefit" from the applicant's reputation. Here, said the Registrar, there was no evidence at all, including any witness evidence, that traders now using a seahorse shape are acting with improper motives, for example to assert a connection between their goods and Guylian. There is also no evidence that Guylian has in any way objected to, or sought to restrain, the use by other traders of any similar seahorse shapes. Resolution These are cases of degree and I must make an evaluative judgment after giving due weight to the assessment made by the Registrar's delegate. The degree of likelihood in this case I think turns very much on the extent to which this particular seahorse shape is distinctive or unique. As Kitto J said in Clark , "[t]he interests of strangers and of the public are ... bound up with the whole question" of whether a mark is inherently adapted to distinguish: see Clark 111 CLR at 514. As best as possible, an assessment should be made as to the ability of other traders to depict a seahorse in a way that would not infringe the mark in suit, if it were registered. In my view, while the shape has some distinctive features, I am satisfied that it is not so unique or imaginative that other traders, using a seahorse shape for its ordinary signification, will be able to avoid potentially infringing the mark if it were registered. Accordingly, I am satisfied that it is to some degree inherently adapted to distinguish, but not sufficiently so to decide the matter under s 41(3), for the following reasons. First, there is a danger that first impressions will be sidelined when an analysis of a shape's individual components or features is undertaken. In this case, the immediate impression one has of the mark in suit is of an ordinary seahorse. I would not expect most ordinary consumers to know that the tails of seahorses do not curl backwards, only forwards. I think most would know that seahorses have a tail and expect that they curl up in some direction. Accepting that the tail and the stocky appearance might, to a studious observer, appear unusual, I consider on balance that the average consumer would see it as a relatively ordinary representation of a seahorse. The possibility for confusion therefore between Guylian's shape and any other seahorse shapes is, I think, a real one. Second, the evidence of other seahorse shapes now on the market tend to confirm rather than deny the likelihood that other traders wishing to depict a seahorse may have some difficulty in avoiding infringement proceedings. Guylian said that the seahorse shapes sold by Royalle and Duc d'O (depicted below and referred to at [53(c)] above) are examples of shapes that would not infringe: Fig. 6 Royalle's seahorse shape. Fig. 7 Duc d'O's seahorse shape. In my view these are not so significantly different from Guylian's shape that there is no room for confusion in the eyes of the public or an infringing of the mark if it were registered. Given the exclusivity of the rights that would be granted to Guylian upon registration, it is difficult to see how other traders will know where to draw the line. Third, this is not a case where the shape in suit is "entirely concocted" and thereby lacks "the associations that would lead to confusion": see Stone J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [162] . The shape does have an ordinary association and the association is one that other traders might wish to draw upon. Given the mark sought to be registered is simply the three dimensional shape itself, without any other stipulation as to its use, the application for registration must be assessed on the basis that it would give Guylian a monopoly over that shape as the entire shape of one of its chocolate pieces. There is therefore a higher potential for other traders who wish to use a similar shape to do so in a manner that would infringe that monopoly. In other words, infringement might occur simply by the selling of a similar shaped chocolate, even where the shape does not feature significantly on, for example, the packaging of the product. Related to this is a submission the Registrar made regarding the type of "use" contemplated by the test in Clark . It would be wrong, said the Registrar, to construe the test as being whether or not other traders might wish to use the mark or a similar mark "in an infringing way", in other words as a trade mark for themselves. Instead, the test should be understood as whether other traders might wish to use the mark or one resembling it for the sake of the signification of the mark itself and not necessarily to denote trade origin. However, in Clark Kitto J quite clearly referred to use "in any manner which would infringe a registered trade mark granted in respect of [the relevant word or shape]." I agree with Lindgren J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [95] that the Clark test does not go so far that any kind of innocent use at all, including innocent non-trademark use, would necessarily deprive a shape of being inherently adapted to distinguish. However, in a case where the mark is simply the three dimensional shape of the good itself, it is more difficult to see how the distinction made by the Registrar is a relevant one. Both parties proceeded on the basis that simply selling the same or a deceptively similar shaped chocolate would be an infringing use of the mark. It certainly was not suggested that the same shape might be sold by another trader but in some manner that would avoid infringement. Given the scope of the application for registration, the monopoly granted would be over the shape generally and use of the shape as a chocolate would be a manner of use that would be likely to infringe for the purpose of the Clark test. Fourth, while I have taken into account the more recent evidence of similar sea shell and seahorse chocolate products (six years after the priority date), I have done so mainly for the purpose of considering the extent to which other representations of seahorses might be considered "substantially identical with, or deceptively similar to," the seahorse shape (see [79] above). However, in addition, the recent evidence seems to me to lend further support to the view I take that, as at the priority date, other traders might have wished in the future to adopt the same shape or one closely resembling it. I accept that as at 2008 the use by others of the same sea shells and, in some cases the same seahorse, is likely to be attributable to a large extent to the promotion of those shapes by Guylian over a long period of time. However, it seems to me that a tendency for competition in the manufacturing of sea shell/marine creature chocolates was already evident at the priority date. I do not consider that the sale by others in 2008 of similar seahorse shapes can, on the evidence, be considered illegitimately or improperly motivated for the purposes of the Clark test, and therefore disregarded. There is no evidence that the other traders, in selling a seahorse shape, have sought to assert a connection between their chocolates and Guylian. To the contrary, each of the other traders' seahorse shapes is contained in a chocolate box which clearly identifies the relevant manufacturer (eg. Darrell Lea). There is also no evidence that Guylian has in any way protested about these rival sales. I accept that one reason, if not the main reason, that these traders have included a seahorse shape in their range of sea shell chocolates is to compete with Guylian's long standing shape. However, competition should not readily be considered improper, particularly in circumstances where the shape in suit bears an ordinary signification and is not so distinctive as to stand out in the minds of consumers, at least without first educating them to recognise the shape as a trade mark. Accordingly, I am satisfied that, viewed as at the priority date, there is some degree of likelihood that other traders acting with proper motives would want in the future to use the same seahorse shape or one substantially identical or deceptively similar. Accordingly, I am satisfied that the shape is to some extent inherently adapted to distinguish, but not to the degree required by s 41(3). Does or will the seahorse shape distinguish Guylian's goods s 41(5)? Applicable principles As I consider the shape is to some extent inherently adapted to distinguish, then s 41(5) is applicable. Section 41(5) involves a balancing exercise. With a view to deciding whether the mark does or will distinguish the goods as being Guylian's, the Court is required to consider, in combination, two specific matters: (1) the extent to which the mark is inherently adapted to distinguish, and (2) the use, or intended use, of the mark by Guylian (cf. Kitto J's approach in Clark 111 CLR at 513). The Registrar, and on this appeal the Court, must be "satisfied" that the mark does or will distinguish the goods as being Guylian's: pars 41(5)(b) and (c). It is a balancing exercise in that, for example, a mark that is inherently adapted only to a small degree is thereby likely to require greater evidence that it has been (or will be) used in such a way as to distinguish the relevant goods: see, eg, the approaches of Bennett J in Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782 ; (2006) 154 FCR 165 ( Nestle ) at [57] and Wilcox J in Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51 at [42] . Section 41(5) permits the registration of trade marks that are not, by their inherent qualities, sufficiently adapted to distinguish, but which have as at the priority date in fact acquired a capability to distinguish the relevant goods: see Austereo [2004] FCA 968 ; 61 IPR 257 ; see also Clark 111 CLR at 515; British Sugar [1996] RPC 281 at 306; Nestle [2006] FCA 782 ; 154 FCR 165 at [29] . In other words, s 41(5) recognises that marks which are insufficiently inherently adapted to distinguish may nevertheless by their use have become distinctive in the minds of consumers so that they will be able to "do the job of distinguishing" the applicant's goods, that is, they will in fact serve as a badge or an indicator of origin. Accordingly, under s 41(5) an applicant relying on use prior to the priority date will need to point to evidence that the mark has been used as a trade mark , so as to have acquired the requisite capability to distinguish the applicant's goods: see, in the context of s 41(6), Woolworths Ltd v BP Plc (No 2) [2006] FCAFC 132 ; (2006) 154 FCR 97 at [72] and [77] ( BP (No 2) ); Ocean Spray [2000] FCA 177 ; 47 IPR 579 at [38] - [41] , in particular [40]. Guylian's submissions


case_outcome: cited

case_text: J has on two occasions expressed a different view: see Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130 at [132] and Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599 at [6] - [26] ( Pfizer ). His Honour considered the higher Lomas standard in some detail in Pfizer . After an exhaustive review of the authorities, and noting that the observations in Lomas itself were "plainly obiter dicta without the benefit of argument", his Honour stated at [21]: The fundamental difficulty with [the respondent's] argument is that it is inconsistent with the language of s 55. Whether a ground of opposition has been "established" is a conventional concept requiring no particular elucidation. In my opinion, there is no basis upon which the section can be read as "the extent (if any) to which any ground on which the application was opposed has been clearly established", particularly where that implication changes the practical operation of the section by imposing a special high onus of proof. It is also worth noting that the construction favoured in Torpedoes is not rooted in the words of the section at all. The precise finding in that case was that the opposition "should be upheld only if the court is satisfied that the trade mark should clearly not be registered": at [22]. With all respect, that test is not to be found in the statute. I cannot find anything in the structure or content of other provisions of the 1995 Act that would point to reading s 55 other than according to its ordinary meaning.


case_text: of these chocolate boxes was purchased in May or June 2008, well after the priority date (16 April 2002). This raises a question about the acceptable use of this evidence. It is clear that the relevant date for assessing whether a trade mark is capable of distinguishing the goods for which it is used is the priority date: Austereo [2004] FCA 968 ; 61 IPR 257 at [30] . The parties both accepted that evidence of use by Guylian of the seahorse shape after the priority date is relevant for the purposes of s 41(5) of the Act, because it is open to draw rational inferences from such evidence as to whether the shape in fact had the required capacity to distinguish as at the priority date. That proposition was accepted by Finn J in Austereo , where his Honour referred to Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 and Burchett J's reference to actual events as being "capable of illuminating the probabilities already inherent in [a prior] situation". Although differing as to the weight such evidence should be given, the parties also appeared to accept more generally that evidence of events taking place after the priority date, whether that be the applicant's use of the mark itself or use of other similar or otherwise relevant shapes by rival traders, may be relevant to whether the seahorse shape is capable of distinguishing Guylian's goods. This was an appropriate course to take. In my view, evidence of what other traders were selling prior to, at or subsequent to the priority date has the ability to rationally affect, albeit with varying degrees of weight, the conclusion one might reach about the extent to which a mark is inherently adapted to distinguish under s 41(3) of the Act. As Kitto J said in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 ( Clark ) at 514: [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. In assessing as at the priority date the "likelihood" that other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been "actuated only by proper motives". In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the "evaluative judgment" (see French J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [47] ) required under s 41(3).


case_outcome: applied

case_text: applying the provisions of the Act, and in particular the various grounds for rejecting an application (for example, s 41), the task of construction should be approached so as to give effect to the clear legislative intention that a wide variety of trade marks, including shapes, ought be capable of registration: see Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494 ( Kenman Kandy ) at [46] (French J). Nature of appeal Section 35 of the Act provides: The applicant may appeal to the Federal Court against a decision of the Registrar: (a) to accept the application subject to conditions or limitations; or (b) to reject the application. The nature of an "appeal" to the Federal Court under s 35 (and in respect of a decision in an opposition proceeding under s 56) has been discussed at length in several cases: see Blount 83 FCR at 58D-59A (Branson J); Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [21] - [22] (French J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 ( Woolworths ) at [32]-[34] (French J). In hearing an appeal pursuant to s 35, the Court exercises its original jurisdiction and conducts a hearing de novo. It is to determine on the merits the same question that was before the Registrar namely, whether or not the trade mark should be accepted and in doing so, it is to apply the same legal criteria that the Registrar is required to adopt under the Act. The Registrar's decision is not to be presumed correct but the Court is entitled to have regard to the Registrar's opinion as that of a skilled and experienced person in the field of trade mark registrations: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [33] (French J). Presumption of registrability and standard of proof In Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 , the Full Court considered an application for registration of a shape mark where the only ground of possible rejection was s 41(2). The applicant adduced no evidence of use of the mark and did not rely on either s 41(5) or (6). As a result the case turned on the sole question whether the mark was inherently adapted to distinguish the applicant's goods under s 41(3). In discussing the nature of appeals against decisions of the Registrar, French J stated at [22]: Since the enactment of the 1995 Act the onus is no longer on the applicant to establish registrability as it was under the 1955 Act: Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 at 372 3 ... The application must be accepted unless the court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it. If the matter is in doubt then the application should be accepted. The possibility of refusal after a contested opposition with evidence and closer scrutiny remains open. The acceptance stage is not the time for detailed adversarial examination of the application that might be involved in an opposition: Registrar of Trade Marks v Woolworths at FCR 377 .... Acceptance for registration involves an initial screening process albeit it requires the application of statutory criteria and evaluative judgments by the Registrar and the Registrar's delegates. (Emphasis added.) Reconciling s 41(4) and Branson J's decision in Blount , with the presumption and French J's decision in Kenman Kandy , is not entirely free from difficulty. The matter is further complicated by the fact that the onus is reversed under s 41(5) (the Registrar must be "satisfied" that the mark does or will distinguish) and s 41(6) (the applicant must "establish" that the mark does distinguish). In its submissions, the Registrar accepts that the presumption applies in relation to s 41(3), but says that the use of the term "satisfied" in s 41(5) suggests that the presumption no longer applies once the inquiry moves to s 41(5). I agree. Sections 41(3)-(6) contemplate that there are degrees to which a mark might be inherently adapted to distinguish: see Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [82] (Lindgren J); Austereo [2004] FCA 968 ; 61 IPR 257 at [35] (Finn J). The ultimate question under s 41(3) is whether the mark is inherently adapted to a sufficient degree to conclude that it is "capable of distinguishing". In my view, the effect of the presumption of registrability on s 41(3) is that, in considering whether a mark is capable of distinguishing by reason of the "inherently adapted" criteria, it should be presumed that the mark is sufficiently adapted unless the Registrar is satisfied otherwise on the balance of probabilities. If the Registrar is otherwise satisfied, then he or she will be "unable to decide the question" (see s 41(4)) whether the mark is capable of distinguishing on the basis of any inherent adaptation alone, and must then proceed to consider s 41(5) or (6). Under those provisions, the presumption no longer has any operation, as the applicant is then required to either "satisfy" the Registrar (s 41(5)), or "establish" (s 41(6)), that the relevant criteria set out therein is met. As Branson J said in Blount 83 FCR at 56, referring to Rejfek v McElroy [1965] HCA 46 ; (1965) 112 CLR 517 at 521, a test of satisfaction requires the Registrar to "be persuaded of the matter according to the balance of probabilities". Guylian did not seek to justify in a substantive way the approach of the Full Court in Lomas . It sought to rely on the decision, and those that have followed it, but it acknowledged that other decisions run counter to it. In my view, there is nothing in the relevant provisions that supports the imposition of a higher standard, even at the acceptance stage. The "presumption of registrability" arises from s 33 of the Act: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [24] ; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [50] . Section 33 does not speak of being "clearly satisfied"; it mandates acceptance of an application unless the Registrar " is satisfied that ... there are grounds for rejecting it". On this point, I prefer the views expressed by Gyles J and in particular his Honour's observations that an acceptance that there is a presumption of registrability "says nothing as to the standard of proof" and does not import a higher threshold than the conventional balance of probabilities: see Pfizer [2006] FCA 1663 ; (2006) 70 IPR 599 at [18] . The presumption as it is gives effect to the general position under the Act that an applicant is not required to establish an absence of grounds to refuse or object to registration. It should also be noted that in both Woolworths [1999] FCAFC 1020 ; 93 FCR 365 and Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 (both acceptance stage cases) there is no suggestion that any special higher standard was applicable. Each of these chocolate boxes was purchased in May or June 2008, well after the priority date (16 April 2002). This raises a question about the acceptable use of this evidence. It is clear that the relevant date for assessing whether a trade mark is capable of distinguishing the goods for which it is used is the priority date: Austereo [2004] FCA 968 ; 61 IPR 257 at [30] . The parties both accepted that evidence of use by Guylian of the seahorse shape after the priority date is relevant for the purposes of s 41(5) of the Act, because it is open to draw rational inferences from such evidence as to whether the shape in fact had the required capacity to distinguish as at the priority date. That proposition was accepted by Finn J in Austereo , where his Honour referred to Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 and Burchett J's reference to actual events as being "capable of illuminating the probabilities already inherent in [a prior] situation". Although differing as to the weight such evidence should be given, the parties also appeared to accept more generally that evidence of events taking place after the priority date, whether that be the applicant's use of the mark itself or use of other similar or otherwise relevant shapes by rival traders, may be relevant to whether the seahorse shape is capable of distinguishing Guylian's goods. This was an appropriate course to take. In my view, evidence of what other traders were selling prior to, at or subsequent to the priority date has the ability to rationally affect, albeit with varying degrees of weight, the conclusion one might reach about the extent to which a mark is inherently adapted to distinguish under s 41(3) of the Act. As Kitto J said in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 ( Clark ) at 514: [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. In assessing as at the priority date the "likelihood" that other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been "actuated only by proper motives". In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the "evaluative judgment" (see French J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [47] ) required under s 41(3). The parties were not in dispute about the applicable principles, only the application of those principles to the facts. The question whether a trade mark is inherently adapted to distinguish is directed at the nature of the trade mark itself and is not concerned with the mark's capability to distinguish arising from its actual or intended use: Burger King Corporation v Registrar of Trade Marks (The Whopper case) [1973] HCA 15 ; (1973) 128 CLR 417 ( Burger King ) at 424; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [83] (Lindgren J). A trade mark that is inherently adapted to distinguish goods is one that can "do the job of distinguishing without first educating the public that it is a trade mark": British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 ( British Sugar ) at 306 (Jacob J); see also Austereo [2004] FCA 968 ; 61 IPR 257 at [48] (Finn J). Although in dissent on the ultimate outcome, Lindgren J observed in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [84] that: While inherent adaptation to distinguish requires attention to be focused on the mark itself, and is intended to stand in sharp contrast to a mark's capacity to distinguish arising from use, the notion of "the mark itself" does not exclude from consideration the nature of the range of goods within the class or classes in respect of which registration is sought, or the various ways in which the mark might, within the terms of the registration, be used in relation to those goods. Indeed, those matters must be taken into account. In Kenman Kandy , the Full Court in the context of a shape mark recently endorsed the test articulated by Kitto J in Clark 111 CLR at 514, which is set out at [54]: see Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [47] (French J), [146] and [161] (Stone J), and [85] (Lindgren J), but note [87]-[89] (Lindgren J). In Kenman Kandy , the appellant had sought registration of its "bug" shaped confectionary as a three dimensional shape mark. Although capable of description as a "bug" (and indeed described that way in the appellant's application for registration), the Full Court accepted that the trade mark was a concocted, imaginary shape, constituted quite simply by a circular centre with two recesses (possibly eyes) and three projections on each of the two sides of the centre (possibly legs). In concluding that the shape was inherently adapted to distinguish the appellant's confectionary, Stone J stated at [163]: Although the bug shape is suggestive of insect life it is not the shape of any specific insect or bug. Indeed, were it not for the description given by the appellants, it might as easily be seen as some extra-terrestrial object or space equipment such as a modified lunar landing module. Registration of the bug shape as a trade mark would not give the appellant a monopoly over all bug or insect shapes only this particular shape and any substantially identical or deceptively similar shape. In agreement with Stone J, French J concluded at [50]: Theoretically it may be the case that the number of possible symmetrical arrangements of projections and recesses is not infinite. Assuming that to be so, it is speculative, absent evidence, to draw conclusions about that number and whether the particular arrangement has any significant impact upon the access of other traders to the use of insect like shapes as trade marks. In that connection it is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s 33. To the extent that critical criteria upon which registration might be rejected are in doubt, the application should be accepted. There was no evidence of use or intended use by the applicant of the shape mark (save for an empty packet) and neither subs 41(5) nor subs 41(6) was relied upon to justify registration. Registrar's submissions The Registrar contends that, unlike the "bug" shape in Kenman Kandy , the seahorse shape is not a concocted or invented shape, but is clearly a representation of a seahorse. It is referred to by Guylian as a seahorse and would not be mistaken for any other animal. Although it has some level of "stylisation or abstraction" (the stockier torso and the backwards curling tail), these relatively minor differences, it said, do not have any significant impact on the ordinary association or signification that the shape establishes in the mind of the observer. The Registrar relied on the observations of Stone J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 who, after referring to Kitto J's statement of the test in Clark , said at [147]: In my opinion it is the absence of these [ordinary] associations and significations that makes a sign inherently adapted to distinguish one trader's goods from those of another. In other words the concept is negative not positive. Guylian submits that the seahorse shape should be considered a "fanciful" shape, with its backward curling tail and stocky build, which are features, it said, absent in an ordinary seahorse found in nature. Relying in particular on French J's judgment in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 , Guylian contends that the mere fact the seahorse shape is based on an existing creature and cannot be said to be wholly concocted (as compared to the "bug" shape in Kenman Kandy ), should not automatically lead to a conclusion that the shape is inherently unadapted to distinguish. At [46], French J said: [T]he established test must be construed so as to be applicable to shapes. To say that a shape cannot ever pass the test of being "inherently adapted to distinguish" would be to read into the statute a limitation not warranted by its terms. In considering pre-1995 cases, generalisations must not be drawn based on the narrower range of signs to which those cases related. Such generalisations might not give effect to the legislative intent that from 1995 "shapes" were to be capable of registration as trade marks. Accordingly, Guylian contends that the question whether a shape, which is reminiscent of an existing animal, is sufficiently adapted to distinguish, must be determined by reference to any existing or likely renditions of such an animal in the marketplace and the extent of any relevant differences between those renditions and the shape in suit. In this case, while the seahorse shape is based on a well known marine creature, the creature is capable of depiction in a variety of ways, only one of which is the particular seahorse shape Guylian has chosen to adopt. Other traders, it said, are free to depict a seahorse in a way that is different to the particular shape Guylian uses and there is no reason why another trader might legitimately wish to use the same shape as Guylian's or one closely resembling it. As examples, Guylian said that other traders would remain free to adopt shapes recognisable as or reminiscent of a seahorse which, however, might not sit in profile (as does Guylian's) or which do not employ the same proportions as Guylian's. In any event, Guylian emphasised that no other traders had in fact sought to use a seahorse shape for chocolates, prior to Guylian's promotion of the shape over the last 20 years. Further, the seahorse shape, Guylian said, is not like a laudatory or descriptive word, which other traders might legitimately wish to use to describe the character or quality of their goods. Nor is it like a colour that might be used to denote a particular meaning (eg danger) or serve a particular function (eg heat absorbing black). Weight of the evidence As I referred to earlier (see [54]), the parties disagreed as to the weight that should be given to the evidence of other similar marine chocolate shapes in the market, and in particular seahorse shapes. Guylian contends that there is no evidence that seahorse shapes were being used as at the priority date and the evidence of use of the shape or similar shapes in 2008 (see [53]) should be given no weight at all, because the six years between the priority date and 2008 was too great that the inferences sought by the Registrar namely, that other traders as at April 2002 were using, or might wish to use, the shape or a similar shape could not reliably be drawn. To the contrary, Guylian contends that the safer inference is that the seahorse shapes on the market in Australia in 2008 (aside from the two with forward curling tails) are simply examples of traders copying Guylian's product, rather than using the shape in the ordinary course of their business, being "actuated only by proper motives", for the signification which it ordinarily possesses. Further, Guylian said, the better evidence for assessing the likelihood that other traders were using or might wish to use a similar shape to Guylian's are the Google searches performed by the Registrar in December 2002 and April 2004, purporting to show the types of shapes on the market as at those dates and, by extension, the priority date. These searches did not reveal any evidence of the use of a chocolate seahorse shape in Australia as at the priority date, other than by Guylian. I accept Guylian's submission that a shape, which is reminiscent of a real animal or creature, should not for that reason alone be considered inherently unadapted to distinguish. The Act permits the registration of shapes as trade marks and, just as with words, there are likely to be many shapes that invoke ordinary connotations, which nevertheless are capable of distinguishing when regard is had to the class of goods for which the shape mark is to be registered and the extent to which the shape is otherwise distinctive in appearance. Both parties proceeded in this case on the basis that a trade mark may be the whole of the shape of the goods which the mark is intended to distinguish (cf the discussion by Lindgren J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494). It was not contended that the seahorse shape, being the entire shape of one of Guylian's chocolate pieces, is incapable thereby of constituting a "trade mark" for the purposes of s 17. The ultimate question on the issue of inherent adaptation is whether a sign in this case, a shape possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign. In cases where a shape depicts a known object or concept (cf. wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is 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. An important consideration in all of this is the nature of the goods for which the shape mark is to be used. As I said, both parties understood the relevant questions to be as I have stated them. However, Guylian, in reference to Stone J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [145] , invited the Court to accept that the seahorse shape "does not have any significations or associations that invite confusion in the eyes of consumers, or would preclude use by others whose goods have similar characteristics or qualities or connections with relevant areas". I do not agree. The shape is clearly a seahorse. It is dissimilar to the shape confronted by the Court in Kenman Kandy , as it conveys a particular meaning and is not entirely imaginary. Though the evidence about the appearance of real seahorses was minimal, I accept that the seahorse shape has some features that distinguish it from a seahorse existing in nature. It is relatively stocky and the tail is curled up all the way backwards, giving it an overall "S" shape. The evidence, minimal as it was, is that seahorses are fairly elongate and their tails extend out downwards and forwards, rather than curled up behind. I note however that Webster's describes the tail as prehensile and so it is to be expected that they have the ability to curl up generally, although I am prepared to accept for the purposes of Guylian's application that it would be unusual for the curling to occur behind the spine. Guylian has also chosen to depict the seahorse in profile with a relatively thick middle section, so that the overall shape appears as two opposite side profiles joined together. Putting the tail to one side, I agree that there will be ways to depict a seahorse other than that chosen by Guylian. However, the ultimate question I must consider is whether there is a likelihood that other traders, acting with proper motives, will think of the shape and wish to use the same shape or one substantially identical or deceptively similar. In my view, it is quite possible that as at the priority date other traders might want to depict a seahorse, along with starfish, crabs, prawns for example, in a way that is similar enough to cause potential confusion in the minds of consumers. The evidence is that sea shell shaped chocolates were being sold by others from at least the mid 1990s. With other traders already selling sea shell chocolates, it seems to me reasonable to expect that, as at the priority date, other traders might wish to make chocolates in the shape of a seahorse, as well as other marine creatures. In any event, I think I can take judicial notice of the fact that confectionary manufacturers, here chocolate manufacturers, tend to make chocolates in a variety of novelty shapes, in particular shapes representing animals (cf. the similar approach taken by Lindgren J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [86] ). I give some weight to the fact that in 2004, two years after the priority date, there were various American traders selling chocolate moulds for a large range of marine animals (lobsters, starfish, prawns), including a seahorse. On the other hand, I note the lack of evidence of any seahorse shapes being sold in Australia as at the priority date, except by Guylian. The examiner's Google searches (performed in 2002 and 2004) did not reveal any examples of seahorse shapes being sold in Australia at that time. It might be thought that that fact, together with the fact that Guylian had been selling its seahorse shape in Australia for a long time (since the 1980s), would diminish the likelihood that, as at 2002, other legitimately motivated traders might in the ordinary course of their business wish to sell seahorse chocolate shapes. However, the absence of other seahorses on the market does not in my view mean it was unlikely that others may in the future wish to depict that particular sea creature. Third, this is not a case where the shape in suit is "entirely concocted" and thereby lacks "the associations that would lead to confusion": see Stone J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [162] . The shape does have an ordinary association and the association is one that other traders might wish to draw upon. Given the mark sought to be registered is simply the three dimensional shape itself, without any other stipulation as to its use, the application for registration must be assessed on the basis that it would give Guylian a monopoly over that shape as the entire shape of one of its chocolate pieces. There is therefore a higher potential for other traders who wish to use a similar shape to do so in a manner that would infringe that monopoly. In other words, infringement might occur simply by the selling of a similar shaped chocolate, even where the shape does not feature significantly on, for example, the packaging of the product. Related to this is a submission the Registrar made regarding the type of "use" contemplated by the test in Clark . It would be wrong, said the Registrar, to construe the test as being whether or not other traders might wish to use the mark or a similar mark "in an infringing way", in other words as a trade mark for themselves. Instead, the test should be understood as whether other traders might wish to use the mark or one resembling it for the sake of the signification of the mark itself and not necessarily to denote trade origin. However, in Clark Kitto J quite clearly referred to use "in any manner which would infringe a registered trade mark granted in respect of [the relevant word or shape]." I agree with Lindgren J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [95] that the Clark test does not go so far that any kind of innocent use at all, including innocent non-trademark use, would necessarily deprive a shape of being inherently adapted to distinguish. However, in a case where the mark is simply the three dimensional shape of the good itself, it is more difficult to see how the distinction made by the Registrar is a relevant one. Both parties proceeded on the basis that simply selling the same or a deceptively similar shaped chocolate would be an infringing use of the mark. It certainly was not suggested that the same shape might be sold by another trader but in some manner that would avoid infringement. Given the scope of the application for registration, the monopoly granted would be over the shape generally and use of the shape as a chocolate would be a manner of use that would be likely to infringe for the purpose of the Clark test.


case_text: observations have been followed in several first instance decisions, albeit with varying degrees of caution: see Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 ( Torpedoes ) at [16]-[22], Finn J in Austereo [2004] FCA 968 ; 61 IPR 257 at [4] - [5] and Lander J in Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131 at [123] - [141] . In Austereo , Finn J considered that he ought "as a matter of comity" apply the Lomas standard as adopted by Bennett J in Torpedoes . In Kowa , Lander J expressed some doubt about the point but considered he was bound by Lomas and the Full Court decision in Woolworths [1999] FCAFC 1020 ; 93 FCR 365.


case_outcome: considered

case_text: parties raised two issues concerning the onus and standard of proof. The first is whether the "presumption of registrability", as it has come to be known, applies when the relevant ground to refuse registration is s 41(2), having regard to the interrelation of s 33 and s 41(3)-(6). Assuming the presumption does apply, the second issue concerns the proper standard of proof. Relying on the Full Court decision in Lomas v Winton Shire Council [2002] FCAFC 413 ; (2003) AIPC 91-839 ( Lomas ), Guylian says that the Court should only refuse registration if it satisfied that the mark should clearly not be registered. In reliance on Lomas [2002] FCAFC 413 ; (2003) AIPC 91-839 , Guylian contends that the proper standard to be applied on an appeal under 35 of the Act in respect of a refusal to register is that the refusal should be upheld only if the Court is satisfied that the mark should clearly not be registered. Lomas was an appeal from a single judge's decision to uphold an opposition to registration. At [17], the Full Court said: No submissions were addressed to the Court concerning the standard to be applied by a single judge in considering an appeal under s 56 of the Act. The presence of s 195(2) [which imposes a leave requirement for appeals from a single judge decision] suggests that a parallel should be drawn with the scheme of appeals in opposition proceedings under the Patents Act 1990 (Cth). On that basis, on appeal under s 56 , the Court should consider whether the trade mark should clearly not be registered. Only if so satisfied should the Court decide to uphold an opposition. These observations have been followed in several first instance decisions, albeit with varying degrees of caution: see Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 ( Torpedoes ) at [16]-[22], Finn J in Austereo [2004] FCA 968 ; 61 IPR 257 at [4] - [5] and Lander J in Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131 at [123] - [141] . In Austereo , Finn J considered that he ought "as a matter of comity" apply the Lomas standard as adopted by Bennett J in Torpedoes . In Kowa , Lander J expressed some doubt about the point but considered he was bound by Lomas and the Full Court decision in Woolworths [1999] FCAFC 1020 ; 93 FCR 365. Gyles J has on two occasions expressed a different view: see Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130 at [132] and Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599 at [6] - [26] ( Pfizer ). His Honour considered the higher Lomas standard in some detail in Pfizer . After an exhaustive review of the authorities, and noting that the observations in Lomas itself were "plainly obiter dicta without the benefit of argument", his Honour stated at [21]: The fundamental difficulty with [the respondent's] argument is that it is inconsistent with the language of s 55. Whether a ground of opposition has been "established" is a conventional concept requiring no particular elucidation. In my opinion, there is no basis upon which the section can be read as "the extent (if any) to which any ground on which the application was opposed has been clearly established", particularly where that implication changes the practical operation of the section by imposing a special high onus of proof. It is also worth noting that the construction favoured in Torpedoes is not rooted in the words of the section at all. The precise finding in that case was that the opposition "should be upheld only if the court is satisfied that the trade mark should clearly not be registered": at [22]. With all respect, that test is not to be found in the statute. I cannot find anything in the structure or content of other provisions of the 1995 Act that would point to reading s 55 other than according to its ordinary meaning. Guylian did not seek to justify in a substantive way the approach of the Full Court in Lomas . It sought to rely on the decision, and those that have followed it, but it acknowledged that other decisions run counter to it. In my view, there is nothing in the relevant provisions that supports the imposition of a higher standard, even at the acceptance stage. The "presumption of registrability" arises from s 33 of the Act: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [24] ; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [50] . Section 33 does not speak of being "clearly satisfied"; it mandates acceptance of an application unless the Registrar " is satisfied that ... there are grounds for rejecting it". On this point, I prefer the views expressed by Gyles J and in particular his Honour's observations that an acceptance that there is a presumption of registrability "says nothing as to the standard of proof" and does not import a higher threshold than the conventional balance of probabilities: see Pfizer [2006] FCA 1663 ; (2006) 70 IPR 599 at [18] . The presumption as it is gives effect to the general position under the Act that an applicant is not required to establish an absence of grounds to refuse or object to registration. It should also be noted that in both Woolworths [1999] FCAFC 1020 ; 93 FCR 365 and Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 (both acceptance stage cases) there is no suggestion that any special higher standard was applicable.


case_text: Blount 83 FCR at 58C, Branson J took the view that the question under s 41(2) whether a mark is capable of distinguishing is "governed entirely" by subss 41(3) (6). Accordingly, her Honour considered that it is not the case, as might be expected from the terms of s 33, that the Registrar must accept an application if he or she is uncertain whether the mark is capable of distinguishing an applicant's goods. Her Honour's analysis of s 41 has been followed in a number of cases, including Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 ; (2000) 47 IPR 579 ( Ocean Spray ) and Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968 ; (2004) 61 IPR 257 ( Austereo ). Section 41(5) permits the registration of trade marks that are not, by their inherent qualities, sufficiently adapted to distinguish, but which have as at the priority date in fact acquired a capability to distinguish the relevant goods: see Austereo [2004] FCA 968 ; 61 IPR 257 ; see also Clark 111 CLR at 515; British Sugar [1996] RPC 281 at 306; Nestle [2006] FCA 782 ; 154 FCR 165 at [29] . In other words, s 41(5) recognises that marks which are insufficiently inherently adapted to distinguish may nevertheless by their use have become distinctive in the minds of consumers so that they will be able to "do the job of distinguishing" the applicant's goods, that is, they will in fact serve as a badge or an indicator of origin. Accordingly, under s 41(5) an applicant relying on use prior to the priority date will need to point to evidence that the mark has been used as a trade mark , so as to have acquired the requisite capability to distinguish the applicant's goods: see, in the context of s 41(6), Woolworths Ltd v BP Plc (No 2) [2006] FCAFC 132 ; (2006) 154 FCR 97 at [72] and [77] ( BP (No 2) ); Ocean Spray [2000] FCA 177 ; 47 IPR 579 at [38] - [41] , in particular [40]. Guylian's submissions


case_outcome: followed

case_text: J has on two occasions expressed a different view: see Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130 at [132] and Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599 at [6] - [26] ( Pfizer ). His Honour considered the higher Lomas standard in some detail in Pfizer . After an exhaustive review of the authorities, and noting that the observations in Lomas itself were "plainly obiter dicta without the benefit of argument", his Honour stated at [21]: The fundamental difficulty with [the respondent's] argument is that it is inconsistent with the language of s 55. Whether a ground of opposition has been "established" is a conventional concept requiring no particular elucidation. In my opinion, there is no basis upon which the section can be read as "the extent (if any) to which any ground on which the application was opposed has been clearly established", particularly where that implication changes the practical operation of the section by imposing a special high onus of proof. It is also worth noting that the construction favoured in Torpedoes is not rooted in the words of the section at all. The precise finding in that case was that the opposition "should be upheld only if the court is satisfied that the trade mark should clearly not be registered": at [22]. With all respect, that test is not to be found in the statute. I cannot find anything in the structure or content of other provisions of the 1995 Act that would point to reading s 55 other than according to its ordinary meaning. Guylian did not seek to justify in a substantive way the approach of the Full Court in Lomas . It sought to rely on the decision, and those that have followed it, but it acknowledged that other decisions run counter to it. In my view, there is nothing in the relevant provisions that supports the imposition of a higher standard, even at the acceptance stage. The "presumption of registrability" arises from s 33 of the Act: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [24] ; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [50] . Section 33 does not speak of being "clearly satisfied"; it mandates acceptance of an application unless the Registrar " is satisfied that ... there are grounds for rejecting it". On this point, I prefer the views expressed by Gyles J and in particular his Honour's observations that an acceptance that there is a presumption of registrability "says nothing as to the standard of proof" and does not import a higher threshold than the conventional balance of probabilities: see Pfizer [2006] FCA 1663 ; (2006) 70 IPR 599 at [18] . The presumption as it is gives effect to the general position under the Act that an applicant is not required to establish an absence of grounds to refuse or object to registration. It should also be noted that in both Woolworths [1999] FCAFC 1020 ; 93 FCR 365 and Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 (both acceptance stage cases) there is no suggestion that any special higher standard was applicable.


case_text: Registrar submits that any trader using a seahorse shape simply to denote a seahorse should, in the absence of evidence to the contrary, be considered to be acting with proper motives for the purposes of the Clark test. The Registrar referred to both Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525 at [51] and [53], where Mansfield J referred to the "concept of a properly motivated trader" as including the use of a mark to denote a meaning that the mark might ordinarily possess, and Clarke 111 CLR at 517, where Kitto J identified an improper motive on the part of a rival trader as a "desire to get for themselves a benefit" from the applicant's reputation. Here, said the Registrar, there was no evidence at all, including any witness evidence, that traders now using a seahorse shape are acting with improper motives, for example to assert a connection between their goods and Guylian. There is also no evidence that Guylian has in any way objected to, or sought to restrain, the use by other traders of any similar seahorse shapes. Resolution


case_text: nature of an "appeal" to the Federal Court under s 35 (and in respect of a decision in an opposition proceeding under s 56) has been discussed at length in several cases: see Blount 83 FCR at 58D-59A (Branson J); Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [21] - [22] (French J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 ( Woolworths ) at [32]-[34] (French J). In hearing an appeal pursuant to s 35, the Court exercises its original jurisdiction and conducts a hearing de novo. It is to determine on the merits the same question that was before the Registrar namely, whether or not the trade mark should be accepted and in doing so, it is to apply the same legal criteria that the Registrar is required to adopt under the Act. The Registrar's decision is not to be presumed correct but the Court is entitled to have regard to the Registrar's opinion as that of a skilled and experienced person in the field of trade mark registrations: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [33] (French J). Presumption of registrability and standard of proof Dealing firstly with the issue of onus, it is now well understood that s 33 of the Act had the effect of reversing the previous position on onus under the 1955 Act. Whereas under that Act an applicant had to satisfy the Registrar that there were no grounds to object to registration, the position now is that an application must be registered, unless the Registrar is satisfied that there is a ground for rejecting it: see s 33 and reg 17A.24; see also the discussion by French J in Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [15] and [20]-[24]. An applicant is thus said to have the benefit of a "presumption of registrability" under the Act. In other words, a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists. In Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 , the Full Court considered an application for registration of a shape mark where the only ground of possible rejection was s 41(2). The applicant adduced no evidence of use of the mark and did not rely on either s 41(5) or (6). As a result the case turned on the sole question whether the mark was inherently adapted to distinguish the applicant's goods under s 41(3). In discussing the nature of appeals against decisions of the Registrar, French J stated at [22]: Since the enactment of the 1995 Act the onus is no longer on the applicant to establish registrability as it was under the 1955 Act: Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 at 372 3 ... The application must be accepted unless the court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it. If the matter is in doubt then the application should be accepted. The possibility of refusal after a contested opposition with evidence and closer scrutiny remains open. The acceptance stage is not the time for detailed adversarial examination of the application that might be involved in an opposition: Registrar of Trade Marks v Woolworths at FCR 377 .... Acceptance for registration involves an initial screening process albeit it requires the application of statutory criteria and evaluative judgments by the Registrar and the Registrar's delegates. (Emphasis added.) Later, in addressing whether the mark was inherently adapted to distinguish, his Honour said at [50]: [I]t is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s 33. To the extent that critical criteria upon which registration might be rejected are in doubt, the application should be accepted. Closer adversarial scrutiny may occur in opposition: Registrar of Trade Marks v Woolworths at FCR 377 .... There is a tension between the operation of the presumption and the text and structure of s 41. Section 41(3) requires the Registrar to "take into account" the extent to which a mark is inherently adapted to distinguish in deciding whether or not it is "capable of distinguishing" the applicant's goods. Section 41(4) then directs the decision-maker to subs 41(5) and subs 41(6), if they are "still unable to decide the question". Section 41(5) will be applicable if there is a finding that the mark is to some extent inherently adapted, but the Registrar is "unable to decide, on that basis alone, that the mark is capable of ... distinguishing". Accordingly, where there remains some doubt after considering s 41(3) about a mark's capability to distinguish, rather than resolving that doubt in favour of an applicant (by operation of a presumption), the statute expressly directs the decision-maker to consider the criteria in subs 41(5) or subs 41(6) (whichever is applicable). These observations have been followed in several first instance decisions, albeit with varying degrees of caution: see Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 ( Torpedoes ) at [16]-[22], Finn J in Austereo [2004] FCA 968 ; 61 IPR 257 at [4] - [5] and Lander J in Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131 at [123] - [141] . In Austereo , Finn J considered that he ought "as a matter of comity" apply the Lomas standard as adopted by Bennett J in Torpedoes . In Kowa , Lander J expressed some doubt about the point but considered he was bound by Lomas and the Full Court decision in Woolworths [1999] FCAFC 1020 ; 93 FCR 365. Guylian did not seek to justify in a substantive way the approach of the Full Court in Lomas . It sought to rely on the decision, and those that have followed it, but it acknowledged that other decisions run counter to it. In my view, there is nothing in the relevant provisions that supports the imposition of a higher standard, even at the acceptance stage. The "presumption of registrability" arises from s 33 of the Act: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [24] ; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [50] . Section 33 does not speak of being "clearly satisfied"; it mandates acceptance of an application unless the Registrar " is satisfied that ... there are grounds for rejecting it". On this point, I prefer the views expressed by Gyles J and in particular his Honour's observations that an acceptance that there is a presumption of registrability "says nothing as to the standard of proof" and does not import a higher threshold than the conventional balance of probabilities: see Pfizer [2006] FCA 1663 ; (2006) 70 IPR 599 at [18] . The presumption as it is gives effect to the general position under the Act that an applicant is not required to establish an absence of grounds to refuse or object to registration. It should also be noted that in both Woolworths [1999] FCAFC 1020 ; 93 FCR 365 and Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 (both acceptance stage cases) there is no suggestion that any special higher standard was applicable.


case_text: s 41(4) and Branson J's decision in Blount , with the presumption and French J's decision in Kenman Kandy , is not entirely free from difficulty. The matter is further complicated by the fact that the onus is reversed under s 41(5) (the Registrar must be "satisfied" that the mark does or will distinguish) and s 41(6) (the applicant must "establish" that the mark does distinguish). In its submissions, the Registrar accepts that the presumption applies in relation to s 41(3), but says that the use of the term "satisfied" in s 41(5) suggests that the presumption no longer applies once the inquiry moves to s 41(5). I agree. Sections 41(3)-(6) contemplate that there are degrees to which a mark might be inherently adapted to distinguish: see Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [82] (Lindgren J); Austereo [2004] FCA 968 ; 61 IPR 257 at [35] (Finn J). The ultimate question under s 41(3) is whether the mark is inherently adapted to a sufficient degree to conclude that it is "capable of distinguishing". In my view, the effect of the presumption of registrability on s 41(3) is that, in considering whether a mark is capable of distinguishing by reason of the "inherently adapted" criteria, it should be presumed that the mark is sufficiently adapted unless the Registrar is satisfied otherwise on the balance of probabilities. If the Registrar is otherwise satisfied, then he or she will be "unable to decide the question" (see s 41(4)) whether the mark is capable of distinguishing on the basis of any inherent adaptation alone, and must then proceed to consider s 41(5) or (6). Under those provisions, the presumption no longer has any operation, as the applicant is then required to either "satisfy" the Registrar (s 41(5)), or "establish" (s 41(6)), that the relevant criteria set out therein is met. As Branson J said in Blount 83 FCR at 56, referring to Rejfek v McElroy [1965] HCA 46 ; (1965) 112 CLR 517 at 521, a test of satisfaction requires the Registrar to "be persuaded of the matter according to the balance of probabilities".


case_text: application of this test, as French J observed at [49], is "largely a matter of evaluative judgment within the broad principles laid down by [the] authorities". The reference to "likelihood" by Kitto J in Clark was described by Gibbs J in Burger King 128 CLR at 425 as a reference to whether another trader "might", without improper motive, want to use the mark in relation to his or her goods: see also Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51 at [33] (Wilcox J). As I consider the shape is to some extent inherently adapted to distinguish, then s 41(5) is applicable. Section 41(5) involves a balancing exercise. With a view to deciding whether the mark does or will distinguish the goods as being Guylian's, the Court is required to consider, in combination, two specific matters: (1) the extent to which the mark is inherently adapted to distinguish, and (2) the use, or intended use, of the mark by Guylian (cf. Kitto J's approach in Clark 111 CLR at 513). The Registrar, and on this appeal the Court, must be "satisfied" that the mark does or will distinguish the goods as being Guylian's: pars 41(5)(b) and (c). It is a balancing exercise in that, for example, a mark that is inherently adapted only to a small degree is thereby likely to require greater evidence that it has been (or will be) used in such a way as to distinguish the relevant goods: see, eg, the approaches of Bennett J in Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782 ; (2006) 154 FCR 165 ( Nestle ) at [57] and Wilcox J in Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51 at [42] .


case_text: observations have been followed in several first instance decisions, albeit with varying degrees of caution: see Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 ( Torpedoes ) at [16]-[22], Finn J in Austereo [2004] FCA 968 ; 61 IPR 257 at [4] - [5] and Lander J in Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131 at [123] - [141] . In Austereo , Finn J considered that he ought "as a matter of comity" apply the Lomas standard as adopted by Bennett J in Torpedoes . In Kowa , Lander J expressed some doubt about the point but considered he was bound by Lomas and the Full Court decision in Woolworths [1999] FCAFC 1020 ; 93 FCR 365. Gyles J has on two occasions expressed a different view: see Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130 at [132] and Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599 at [6] - [26] ( Pfizer ). His Honour considered the higher Lomas standard in some detail in Pfizer . After an exhaustive review of the authorities, and noting that the observations in Lomas itself were "plainly obiter dicta without the benefit of argument", his Honour stated at [21]: The fundamental difficulty with [the respondent's] argument is that it is inconsistent with the language of s 55. Whether a ground of opposition has been "established" is a conventional concept requiring no particular elucidation. In my opinion, there is no basis upon which the section can be read as "the extent (if any) to which any ground on which the application was opposed has been clearly established", particularly where that implication changes the practical operation of the section by imposing a special high onus of proof. It is also worth noting that the construction favoured in Torpedoes is not rooted in the words of the section at all. The precise finding in that case was that the opposition "should be upheld only if the court is satisfied that the trade mark should clearly not be registered": at [22]. With all respect, that test is not to be found in the statute. I cannot find anything in the structure or content of other provisions of the 1995 Act that would point to reading s 55 other than according to its ordinary meaning.


case_text: I consider the shape is to some extent inherently adapted to distinguish, then s 41(5) is applicable. Section 41(5) involves a balancing exercise. With a view to deciding whether the mark does or will distinguish the goods as being Guylian's, the Court is required to consider, in combination, two specific matters: (1) the extent to which the mark is inherently adapted to distinguish, and (2) the use, or intended use, of the mark by Guylian (cf. Kitto J's approach in Clark 111 CLR at 513). The Registrar, and on this appeal the Court, must be "satisfied" that the mark does or will distinguish the goods as being Guylian's: pars 41(5)(b) and (c). It is a balancing exercise in that, for example, a mark that is inherently adapted only to a small degree is thereby likely to require greater evidence that it has been (or will be) used in such a way as to distinguish the relevant goods: see, eg, the approaches of Bennett J in Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782 ; (2006) 154 FCR 165 ( Nestle ) at [57] and Wilcox J in Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51 at [42] . Section 41(5) permits the registration of trade marks that are not, by their inherent qualities, sufficiently adapted to distinguish, but which have as at the priority date in fact acquired a capability to distinguish the relevant goods: see Austereo [2004] FCA 968 ; 61 IPR 257 ; see also Clark 111 CLR at 515; British Sugar [1996] RPC 281 at 306; Nestle [2006] FCA 782 ; 154 FCR 165 at [29] . In other words, s 41(5) recognises that marks which are insufficiently inherently adapted to distinguish may nevertheless by their use have become distinctive in the minds of consumers so that they will be able to "do the job of distinguishing" the applicant's goods, that is, they will in fact serve as a badge or an indicator of origin. Accordingly, under s 41(5) an applicant relying on use prior to the priority date will need to point to evidence that the mark has been used as a trade mark , so as to have acquired the requisite capability to distinguish the applicant's goods: see, in the context of s 41(6), Woolworths Ltd v BP Plc (No 2) [2006] FCAFC 132 ; (2006) 154 FCR 97 at [72] and [77] ( BP (No 2) ); Ocean Spray [2000] FCA 177 ; 47 IPR 579 at [38] - [41] , in particular [40]. Guylian's submissions


case_text: Unilever plc's Trade Mark Applications [2003] RPC 35 ( Unilever ) (the Walls' "Viennetta" case), Jacob J considered survey evidence which demonstrated a "high degree of association" (approximately 67% of ice cream eaters) between an image of the "Viennetta" ice cream and its manufacturer, Walls. (Respondents were shown four ice cream products and asked if they recognised them). At 662, his Lordship said: Putting the other products on one side for the moment, there can be no doubt that the product appearance has achieved considerable recognition on its own as denoting Walls' "Viennetta" the product of a particular manufacturer. Is that enough to give it a "distinctive character" within the meaning of Art.3(3)? For what has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognise it but do not treat it as a trade mark. There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled. I do not think that is what the European Trade Mark system is for. It is a system about trade marks, badges of trade origin. For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a "distinctive character" for the purposes of trade mark law. Notably, his Lordship also considered it relevant that a not insignificant proportion of the survey respondents (approximately 15%) identified one or more of the other ice creams as the "Viennetta", as this showed the potential for infringement by other traders seeking to sell a similar product. In BP (No 2) [2006] FCAFC 132 ; 154 FCR 97 , the Full Court of the Federal Court held that BP Plc (BP) had failed to establish pursuant to s 41(6) that it had used a particular shade of green as a trade mark, either by itself or as the predominant colour in its branding. Two aspects of their Honour's reasoning are instructive. First, the Court took into account survey evidence indicating, on a weighted basis, that 85% of respondents identified BP when they were asked to look at a picture of a building (a service station) which was coloured substantially in green and were asked to describe what they saw. In considering an expert's conclusion that this showed a "strong association" between green and BP, the Court stated at [117]: This conclusion is hardly surprising. Green had been one of BP's company colours since at least 1956. After 1989 it had been used as the predominant colour with yellow. In particular, in circumstances where there were only a few oil companies, where all have used colour historically to distinguish themselves, where BP has been the only company before 1995 to use green in that way, it is hardly surprising that people shown this stimulus would associate the green service station with BP service stations which have been coloured with a predominant green and accompanying yellow. That association does not lead to the conclusion that the use of colour from 1989 has included use, as a trade mark, of either green alone, or green as the predominant colour accompanied by any other colour. The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6). Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount Incv Registrar of Trade Marks at [61G], citing with approval Jacob J in British Sugar Plc v James Robertson & Sons Ltd at 286 and 302; and Koninklijbe Philips Electronics NV v Remington Products Australia Pty Ltd (200) FCR 90 ... at [13]. It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark. The learned authors of Kerly's Law of Trade Marks and Trade Names (14th ed, Maxwell Ltd, UK, 2005, at [8 025]) state, albeit in the European context, that to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source : compare Unilever Plc's Trade Mark Applications [2003] RPC 35 at [31]. (Emphasis added.) Finally, I have had regard to the survey evidence, and the expert evidence of Mr Callaghan, which indicates that a significant proportion of the survey respondents were able to identify Guylian when they were shown the seahorse shape. However I am of the view that this association on the whole is likely to be referable to Guylian's sale of the sea shell and seahorse shaped chocolates, over a long period of time, under the banner of the distinctive "Guylian" and "G" trade marks, rather than to the shape itself being used as a trade mark. The cases confirm that association evidence on its own does not prove distinctiveness; the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods: see BP (No 2) [2006] FCAFC 132 ; 154 FCR 97 and Unilever [2003] RPC 35. The Full Court's observations to this effect in BP (No 2) are just as relevant to a consideration of use under s 41(5) as they are to s 41(6). In essence, the survey in this case tested respondents' ability to recognise a shape and associate it with a manufacturer or brand. It tested "brand recognition", as Mr Callaghan suggested; "the ability of a consumer to confirm prior exposure to a brand when presented with one of the brand's identity elements". When regard is had to the way the shape has been used, the survey results do not in my view confirm that consumers actually understand the shape as an indicator of the origin of the goods. The results plainly show a large degree of public recognition of the shape, but as Jacob J said in Unilever [2003] RPC 35 at 662: "[W]hat has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognise it but do not treat it as a trade mark". In any event, I agree with the Registrar's submission that the results tend to confirm the view I have already come to that the shape has not been used as a trade mark, because almost half the respondents were in fact unable to identify the shape with any particular brand or manufacturer. Two other matters should be noted about the survey results. Out of those respondents who did associate the shape with a particular brand or manufacturer, almost a quarter believed it was manufactured by someone other than Guylian. Further, Mr Callaghan also attributed the association to more than just the shape itself. He said it was likely that many associations would have been based on recognition of the overall image and not simply its shape, for example colour and a perception of the texture of the object. I agree with the Registrar's submission that the marbled appearance on the surface of the shape is also likely to have contributed. As Guylian seeks registration of the shape alone, it must be able to demonstrate that the shape, regardless of its colour for example, has become distinctive of its goods. This is important, because it is the shape alone over which Guylian seeks a monopoly. In the circumstances as described by Mr Callaghan, it seems to me that the probative value of the association evidence is to some extent diminished by the way many of the respondents are likely to have made their association.


case_text: his Honour said at [22]: In my opinion, borrowing further from the field of patents in this respect is impermissible, to adopt the word used by Finkelstein J [in BP Plc v Woolworths Ltd [2004] FCA 1362 ; (2004) 62 IPR 545]. Trade marks and patents are different species of intellectual property and have a different history. A general desire for uniformity cannot control construction of the statute governing each. ... [26] I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. Section 41(5) permits the registration of trade marks that are not, by their inherent qualities, sufficiently adapted to distinguish, but which have as at the priority date in fact acquired a capability to distinguish the relevant goods: see Austereo [2004] FCA 968 ; 61 IPR 257 ; see also Clark 111 CLR at 515; British Sugar [1996] RPC 281 at 306; Nestle [2006] FCA 782 ; 154 FCR 165 at [29] . In other words, s 41(5) recognises that marks which are insufficiently inherently adapted to distinguish may nevertheless by their use have become distinctive in the minds of consumers so that they will be able to "do the job of distinguishing" the applicant's goods, that is, they will in fact serve as a badge or an indicator of origin. Accordingly, under s 41(5) an applicant relying on use prior to the priority date will need to point to evidence that the mark has been used as a trade mark , so as to have acquired the requisite capability to distinguish the applicant's goods: see, in the context of s 41(6), Woolworths Ltd v BP Plc (No 2) [2006] FCAFC 132 ; (2006) 154 FCR 97 at [72] and [77] ( BP (No 2) ); Ocean Spray [2000] FCA 177 ; 47 IPR 579 at [38] - [41] , in particular [40]. Guylian's submissions The Registrar makes two main submissions about the survey evidence. First, it says the results fail to establish that consumers see the seahorse shape as a badge of origin. It referred to BP (No 2) [2006] FCAFC 132 ; 154 FCR 97 and British Sugar [1996] RPC 281 , where surveys indicating 85% and 60% recognition of the mark in suit nevertheless failed to demonstrate distinctiveness. Those cases, it said, show that there is a difference between mere association and the perception of a sign as a trade mark. Evidence of an association between a sign and a manufacturer, even a high one, will not necessarily mean that consumers rely on the sign to identify the origin of the goods. Here, the survey question tested association and no more. It did not test whether consumers have in fact come to perceive and understand the seahorse shape as a trade mark, by, for example, asking whether or not respondents believed that the shape belonged to one particular manufacturer and, if so, whether they could identify the manufacturer. Secondly, the Registrar relied on the survey results themselves, referring to the fact that (1) less than half of the respondents associated the shape with Guylian (or, putting it the other way, over half did not associate it with Guylian) and, (2) of those that did associate it with a particular manufacturer, approximately 25% associated it with someone other than Guylian. While the degree of association with an applicant's goods may in itself be relevant to the overall assessment whether the mark has acquired a capacity to distinguish, the results here, said the Registar, are manifestly insufficient so as to be satisfied that the shape alone distinguishes Guylian's goods in the minds of the chocolate buying public. Resolution In BP (No 2) [2006] FCAFC 132 ; 154 FCR 97 , the Full Court of the Federal Court held that BP Plc (BP) had failed to establish pursuant to s 41(6) that it had used a particular shade of green as a trade mark, either by itself or as the predominant colour in its branding. Two aspects of their Honour's reasoning are instructive. First, the Court took into account survey evidence indicating, on a weighted basis, that 85% of respondents identified BP when they were asked to look at a picture of a building (a service station) which was coloured substantially in green and were asked to describe what they saw. In considering an expert's conclusion that this showed a "strong association" between green and BP, the Court stated at [117]: This conclusion is hardly surprising. Green had been one of BP's company colours since at least 1956. After 1989 it had been used as the predominant colour with yellow. In particular, in circumstances where there were only a few oil companies, where all have used colour historically to distinguish themselves, where BP has been the only company before 1995 to use green in that way, it is hardly surprising that people shown this stimulus would associate the green service station with BP service stations which have been coloured with a predominant green and accompanying yellow. That association does not lead to the conclusion that the use of colour from 1989 has included use, as a trade mark, of either green alone, or green as the predominant colour accompanied by any other colour. The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6). Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount Incv Registrar of Trade Marks at [61G], citing with approval Jacob J in British Sugar Plc v James Robertson & Sons Ltd at 286 and 302; and Koninklijbe Philips Electronics NV v Remington Products Australia Pty Ltd (200) FCR 90 ... at [13]. It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark. The learned authors of Kerly's Law of Trade Marks and Trade Names (14th ed, Maxwell Ltd, UK, 2005, at [8 025]) state, albeit in the European context, that to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source : compare Unilever Plc's Trade Mark Applications [2003] RPC 35 at [31]. (Emphasis added.) Finally, I have had regard to the survey evidence, and the expert evidence of Mr Callaghan, which indicates that a significant proportion of the survey respondents were able to identify Guylian when they were shown the seahorse shape. However I am of the view that this association on the whole is likely to be referable to Guylian's sale of the sea shell and seahorse shaped chocolates, over a long period of time, under the banner of the distinctive "Guylian" and "G" trade marks, rather than to the shape itself being used as a trade mark. The cases confirm that association evidence on its own does not prove distinctiveness; the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods: see BP (No 2) [2006] FCAFC 132 ; 154 FCR 97 and Unilever [2003] RPC 35. The Full Court's observations to this effect in BP (No 2) are just as relevant to a consideration of use under s 41(5) as they are to s 41(6). In essence, the survey in this case tested respondents' ability to recognise a shape and associate it with a manufacturer or brand. It tested "brand recognition", as Mr Callaghan suggested; "the ability of a consumer to confirm prior exposure to a brand when presented with one of the brand's identity elements". When regard is had to the way the shape has been used, the survey results do not in my view confirm that consumers actually understand the shape as an indicator of the origin of the goods. The results plainly show a large degree of public recognition of the shape, but as Jacob J said in Unilever [2003] RPC 35 at 662: "[W]hat has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognise it but do not treat it as a trade mark". In any event, I agree with the Registrar's submission that the results tend to confirm the view I have already come to that the shape has not been used as a trade mark, because almost half the respondents were in fact unable to identify the shape with any particular brand or manufacturer. Two other matters should be noted about the survey results. Out of those respondents who did associate the shape with a particular brand or manufacturer, almost a quarter believed it was manufactured by someone other than Guylian. Further, Mr Callaghan also attributed the association to more than just the shape itself. He said it was likely that many associations would have been based on recognition of the overall image and not simply its shape, for example colour and a perception of the texture of the object. I agree with the Registrar's submission that the marbled appearance on the surface of the shape is also likely to have contributed. As Guylian seeks registration of the shape alone, it must be able to demonstrate that the shape, regardless of its colour for example, has become distinctive of its goods. This is important, because it is the shape alone over which Guylian seeks a monopoly. In the circumstances as described by Mr Callaghan, it seems to me that the probative value of the association evidence is to some extent diminished by the way many of the respondents are likely to have made their association.