Trade mark owners should find it easier to register shapes in Australia after a recent ruling by the Full Federal Court was accepted by the country's top trade mark official.

In a 2-1 majority verdict in the case of Kenman Kandy Australia v Registrar of Trade Marks, the court ruled that Kenman Kandy should be allowed to register a three-dimensional, six-legged, insect-like figure as a trade mark for its so-called millennium bug confectionery.

On September 25 a spokesperson for the registrar of trade marks confirmed that he had decided not to seek special leave to appeal to Australia's High Court.

"This is a real victory for trade mark owners and those who come up with clever and inventive ways to present and market their products," said Rhonda Steele, Asia Pacific marketing property manager for Mars.

Kenman Kandy, a subsidiary of food and drinks company Mars, applied for the trade mark on January 15 1999 but the registrar of trade marks rejected the application in October 2000.

In his judgment, the registrar's examiner accepted that the shape was coined, or stylized, but did not accept "that it is capable of distinguishing". Australia's 1995 Trade Mark Act allows shapes to be registered as trade marks if they are "capable of distinguishing the applicant's goods or services from those dealt with or provided by other persons".

In August 2001 Kenman Kandy appealed to the Federal Court, which upheld the delegate's decision. In February 2002 the sweets company appealed again, this time to the Full Federal Court, which resulted in last month's verdict overturning the Federal Court ruling.

The case was the first time a dispute about the registration of shape trade marks had been heard before the Full Federal Court.

"The case picks up on the issues that have been going around the world in the Philips v Remington triple-headed shaver litigation," said Brett Doyle, partner at Baker & McKenzie in Sydney, who represented Kenman Kandy. "It touches issues such as if a shape is wholly or substantially part of a product, can it be a trade mark and what is the significance if the shape is functional or purely appeals to consumers?"

Kenman Kandy did not produce any evidence of reputation in the prosecution of its mark, a deliberate tactic, according to Doyle.

"The company wanted to fight on principle. It wanted to see if the mark was inherently registrable without proof of reputation. It wanted to test the boundaries," said Doyle.

Doyle said he believed that the Full Federal Court ruling will force the registrar of trade marks to change his approach to shape trade marks.

Said Doyle: "He will have to stop taking objections that signs are not proper trade marks and educate himself about shapes and colours and other non-traditional marks. It might make his job more interesting."

The ruling may have implications for other industries where shape can be an important feature of a company's products. "The judgment is important for industries such as cars, toys, watches and mobile phones where shape is often an important identifier," added Doyle.

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