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The Shape of Sweet Victory – for Whittakers
Do you recognise a Whittaker’s SANTE® bar when you see it? If you do, you know what you are buying. After successfully defeating a third party opposition to their application, Whittaker’s SANTE® bar recently became the 231st shape on the New Zealand Register of Trade Marks.
What is a Shape trade mark?
A trade mark is a sign that is capable of distinguishing the goods of one trader from those of another. It is designed to function as a “badge of origin”.
What these legal tests mean in practical terms is that when you see a trade mark, you know who has made that product. Sometimes the shape of the packaging, or even of the product itself, is sufficiently distinctive that consumers recognise the product as coming from one particular manufacturer.
You can probably recognise these products by their shapes:
There are also a number of alcoholic beverages that consumers could locate and select based solely on the shape of their bottles.
Whittaker’s has sold its SANTE® bar chocolate since the early 1950s. Originally these were sold as unwrapped bars. In 2001, they started selling a wrapped version. The wrapping was designed to “hug” the shape of the bar, so that consumers would still recognise it.
The shape was graphically represented in the application in a series of views:
Whittaker’s were not seeking to gain a monopoly over the idea of a chocolate stick or finger, but the specific shape shown in these drawings.
The application was eventually accepted by IPONZ, but was opposed by a rival confectioner.
Evidence was presented including relating to market share, methods of promotion and volumes of sales. This evidence was found to be sufficient to meet the required level of acquired distinctiveness.
Whittaker’s now have an enforceable monopoly in their distinctive chocolate bar shape.
Points to remember:
- The distinctive shape of a product may be registered as a shape trade mark
- It may be necessary to prepare and file evidence establishing that distinctiveness has been acquired through use in order to succeed
- Regular IP Audits will help you identify your business’s distinctive trade marks, and develop a strategy for protecting these – contact us today.
 Paraphased from s 5 Trade Marks Act 2002
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