RECENT NEWS

Trade Marks Over the Breakfast Bowl

A recent application by Kellogg Company (“Kellogg”) to register its NUTRIGRAIN BOLT shape for cereal in New Zealand has been successfully opposed by Société des Produits Nestlé S.A. (“Nestle”) (“the Kellogg case”)1.

The Assistant Commissioner held that the evidence did not demonstrate on the balance of probabilities that this shape operated as a distinctive badge of origin for Kellogg.

Shape trade marks are one of a group of branding elements often referred to as “non-traditional trade marks”. This group also includes colours, smells and sounds. Nestle’s successful opposition and the comments made by the Assistant Commissioner in this decision highlight some of the difficulties faced when attempting to register shape trade marks.

What is Needed for a Shape to be Deemed Registrable as a Trade Mark?

The rule of thumb for all trade marks, including shapes, is that the trade mark must be capable of acting as a badge of origin for goods or services.

This means in practice that shape on its own must be sufficiently distinctive that consumers would connect the product to its source.

Registrability standards change overtime, however under current criteria a high level of recognition from consumers and independent traders can be required to support registration of a shape as a trade mark.

Some Shapes can be Quite Easy

Some product shapes can easily be seen to operate as trade marks. For example, specially shaped bottles and containers can be recognised as coming from certain suppliers long after all other identifying labels are removed.

As confirmed in the Kellogg case:2

While it is not necessary for the mark to be unusual or extraordinary, the more unusual the connotation or juxtaposition that the mark has in relation to the goods in question, the more likely it is that the mark has inherent distinctiveness.

But Functional Shapes and Common Shapes are Usually Hard

If a shape performs a function, for example coffee capsules that are designed to work with a particular coffee machine, then the applicant must be able to show that the same function can be performed by other shapes. The more common a shape is, the harder it will be to show that the shape connects to one trader to the exclusion of all others.

Similarly, if the Examiner can find that other traders are using the same or similar shape for goods or services, then immediately doubt is raised that this element can operate as a trade mark for a single trader.

The Assistant Commissioner in the Kellogg case confirms:3

the simple shape of the opposed mark, coupled with evidence of some actual use of a very similar shape by other traders, points towards other traders being likely to want to use a similar shape to the opposed mark for their own breakfast cereals.

Showing the Shape Operates as a Trade Mark can be Hard

The evidence necessary to secure acceptance must show that the shape operates to identify the trader. This identification must then relate to the goods covered by the application.

Bottles or other shaped packaging are usually easily able to have that connection because the consumer experiences the shape as part of the purchasing decision. But is much trickier to make this connection where product reaches the market in a cardboard box which also shows other brand elements like logos:

Following a wealth of precedent, the Assistant Commissioner in the Kellogg confirmed that it must be clear the shape alone acts as a badge of origin: “[the] manner in which the goods are presented for sale is relevant when assessing whether the shape mark is likely to be perceived as a badge of origin”4. The Assistant Commissioner acknowledges “[it] can be more challenging to establish that the public perceives a shape as a badge of origin when use of that shape has been accompanied by another distinctive and well-recognised mark”5.

Advertising which emphasises the shape can be vital, but evidence that shows the shape alongside other distinctive trade marks may not be enough to support registration.

But With The Right Evidence You Could Do It

J H Whittaker & Sons Limited successfully defended its accepted application to register the SANTE bar shape from attack by Empire Confectionery Limited (“the Whittaker case”)6.

The shape is undeniably simple, yet the Assistant Commissioner found it operated as a trade mark.

Some of the key points resulting in success in the Whittaker case were the evidence of exclusive use from the 1950s, factual evidence to show the shape was developed specially for Whittaker’s, and heightened recognition of the shape by consumers because of packaging which hugs the bar allowing the shape to operate as an immediate badge of origin.

Whittaker was able to point to its long use and established reputation to successfully argue that no other traders would have good reason to use the same or similar shape without necessarily taking advantage of Whittaker’s reputation.

Ultimately, evidence of market share and long-standing use overwhelmed any inherent lack of distinctiveness because of the simplicity of the shape.

What Should I do about my Shape Trade Marks?

If you are developing a specially shaped product that is not yet in the market place, think about design registration as an alternative to trade mark protection. Design registration will cover your shape for up to 15 years.

For other shapes which are already in use, we recommend a review of ways these shapes operate to distinguish your goods and services.

Some elements may be registrable as trade marks now. For others, a careful marketing strategy could set you up to support an application for registration of your shapes as trade marks and provide you with valuable exclusive rights to those shapes for your goods and/or services.

Careful review with an IP professional is the first step towards protecting valuable shapes for your goods. Talk to us today to see how we can help.


1 Kellogg Company v Société des Produits Nestlé S.A. [2019] NZIPOTM 17.

2 Ibid at p 24.

3 Ibid at p 29.

4 Ibid at p 35.

5 Ibid at p 36.

6 J H Whittaker & Sons Limited v Empire Confectionery Limited [2015] NZIPOTM 4.

Ellis Terry is again one of New Zealand’s top IP firms in 2019

We are very proud to report that Ellis Terry has again been ranked as one of New Zealand’s top firms for patent prosecution and trade mark prosecution in the Managing Intellectual Property IP Stars 2019. Each of our directors has also been recognised as a Star by Managing Intellectual Property: the only full service IP firm in New Zealand to achieve this. Ellis Terry is also a recommended firm for patent prosecution and patent litigation in the IAM Patent 1000 for 2019.

Emily Ellis has been recognised as a Trade Mark Star in the Managing Intellectual Property IP Stars 2019 and as a recommended expert in the World Trademark Review WTR 1000 for 2019.

John Terry has been been ranked as one of the world’s best IP strategists in the IAM Strategy 300 2019, as a Patent Star in the Managing Intellectual Property IP Stars 2019, as a recommended individual by the IAM Patent 1000, and as an expert in Who’s Who Legal: Patents 2019.

Blayne Peacock has been recognised as a Patent Star in the Managing Intellectual Property IP Stars 2019, as an Expert in Legal Media Group Expert Guides, and as a recommended individual by the IAM Patent 1000.

A Final Innovative Step: Australia Is Phasing Out Innovation Patents

On 25 July 2019, the Australian Government introduced a bill to make a number of changes to the patents system. The changes to Crown use of patents and designs and to compulsory licences will be of interest to some. But the biggest change is phasing out innovation patents, Australia’s equivalent to a second-tier patent or utility model.

Innovation patents have a lower requirement for inventiveness than standard patents, are granted without substantive examination, and have an 8-year term. This is ideal for incremental improvements which may not justify the expense of a standard patent, but still benefit from a level of protection.

This will align Australia with jurisdictions like the United States and New Zealand which do not have a second-tier patent.

The proposed law will prevent new innovation patent applications being filed. It will not affect existing innovation patents.

This follows the Australian Productivity Commission’s report in 2016 that recommended abolishing innovation patents. Their reasoning is that the innovation patent system probably does not benefit Australian SMEs.

It is not clear when (or if) the bill will be enacted. However, there is no indication that this will be a contentious bill, and it may well pass through both houses relatively quickly.

Once the law comes into force, there will be a 12-month transition period in which new innovation patents can be filed. After that, no new applications will be allowed. With the 8-year term of innovation patents, this means that the final innovation patent, and so the innovation patent system as a whole, will likely reach the end of its life in 2028.