Are “shapemarks” actually distinguishing?

Companies have long had the ability to register “shapemarks”, which are a subset of trademarks that allow 3 dimensional shapes to receive trademark protection. This means competitors cannot copy or substantially imitate the protected shape in their branding. This allows companies to protect distinct shapes associated with the brand among consumers. But a recent federal court case provided some qualifications on the protective nature of  shapemarks. 

B (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd  

Facts

One iconic image that has come under protection of a “shape mark” is the colour and format of the Finish dishwasher tablet, which is a red ball surrounded by a blue wave. This is the 914 mark. 

 Also registered is a shapemark of a red ball surrounded by a white “explosion”. The ball is overlaid behind a blue background. This is the 311 mark. 

These trademarks served as the basis for an action launched by RB, the parent company of the Finish Brand against Henkel. Henkel is a consumer goods manufacturer with a long history of operating in Europe. They owned a dishwashing and detergent brand called SOMAT, and sought to expand in Australia by introducing SOMAT Excellent Gelcaps to the Australian market.

In response, RB claimed this was a breach of their shapemark and obtained an injunction preventing Henkel from selling SOMAT Gelcaps. Henkel countersued, arguing that RB has not actually used the shapemark and the 911 mark be removed from the register. 

Ruling

Recently, the Federal Court ruled in favour of Henkel. It was held that the 914 mark did not actually distinguish the Finish brand from other products on the market but  was merely used to indicate what the product inside of Finish packaging looked like. The Court held that the Finish brand name and logo were actually what separated the products from the rest of the market. This resembles the reasoning from a 2009 case where the Federal Court similarly held that the Guilyan could not trademark the seashore shape of their products given they had also used their brand name and logo in conjunction with a seahorse shape when marketing their chocolates. 

The Court noted that in advertisements the shapemark was used to demonstrate the practical effect of the product rather than to indicate its origin. They also observed that the actual use of the shapemark to distinguish the products was only relevant when identifying different products within the broader Finish brand range. 

Another factor relevant to the Court was the fact that stylised depictions of dishwasher tablets were ubiquitous in the industry. Consumers therefore had to rely upon the actual brand name and logo when making purchasing decisions.

Key takeaways 

If you have registered a shapemark, it is important to consider to following to evaluate whether or not you can use shapemark to protect your right in court.

• Does the shapemark actually distinguish my product/service from the competition? 
• Do I use other logos/brand names in conjunction with my shapemark to advertise my product? 
• Are the use of shapes and stylised depictions of products a common marketing tactic in the industry I operate in? 

This case also serves as a reminder that the mere fact that you have an interim injunction in your favour does not guarantee the success of your case. RB was successful in obtaining an injunction over Henkle but lost on the merits of the case later.