Case: Kenman Kandy Aust Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494
Outcome: applied
Greenwood J cited with approval the observation of Stone J as a member of the Full Court in Kenman Kandy Aust Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494 at [137] ( Kenman Kandy ): The 'inherent form' of goods, in my view, can only refer to those aspects of form that have functional significance. Were the 1995 Act to enable the registration of a trade mark that would give the owner a monopoly over functional features, it would indeed have made a radical change to trade mark law. Greenwood J said at [67]: Where the three dimensional shape inheres in goods or a part of goods and the goods or that part perform a functional role (particularly where the shape derives from a novel and patented improvement to functionality), the use of the shape ... is not use of the sign as a trade mark but the expression of the essential features of the goods. 60 As distinct from a 'word', a shape may be registrable under several intellectual property regimes. Greenwood J at [69] said: A further consideration bearing on whether the respondent has used the shape of the S loop catch as a trade mark is this. The social compact underlying the patent legislation is the encouragement of novel innovation by the grant, subject to qualifying criteria, of a term of exclusivity on the footing that upon the expiry of the monopoly, others are free to exercise the former monopoly. The 1995 Act by enabling shapes to be registered as a badge of origin did not establish a regime under which inventors might be able to secure enduring exclusive rights of use and foreclosure of others through infringement proceedings for the shape of a functional manner of new manufacture formerly the subject of a patent, as in this case. A shape essential to the very subject of the patent will almost always be largely functional as the invention must be novel and useful. If the shape is entirely incidental to the subject matter of the patent, it is unlikely to be a shape bearing any functional element. 61 The principles relevant to use of shape as a trade mark are now set out. (a) A special shape which is the whole or part of goods may serve as a badge of origin. However the shape must have a feature that is 'extra' and distinct from the inherent form of the particular goods: Mayne at [67], Remington at [16] and Kenman Kandy at [137] (b) Non-descriptive features of a shape point towards a finding that such features are used for a trade mark purpose. Where features are striking, trade mark use will more readily be found. For example, features that make goods more arresting of appearance and more attractive may distinguish the goods from those of others: All-Fect at [25]. (c) Descriptive features, like descriptive words, make it more difficult to establish that those features distinguish the product. For example, the word COLA or an ordinary straight walled bottle are descriptive features that would have limited trade mark significance: All-Fect at [25] and Mayne at [61]-[62]. (d) Where the trade mark comprises a shape which involves a substantial functional element in the goods, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark: Mayne at [63]. For example, evidence that a shape was previously patented will weigh against a finding that the shape serves as a badge of origin: Remington at [12] and Mayne at [69]. (e) If a shape or a feature of a shape is either concocted compared to the inherent form of the shaped goods or incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This may point towards the shape being used as a trade mark: Kenman Kandy at [162] and Mayne at [69]. (f) Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point: All-Fect at [35]. (g) Context "is all important" and will typically characterise the mark's use as either trade mark use or not: Remington at [19] and Mayne at [60]-[62]. 63 At the other end of the spectrum are those features of a mark that are non-descriptive and non-functional. They ordinarily make the shape more arresting of appearance and more attractive, thus providing a means of distinguishing the goods from those of others. All-Fect and Remington show that non-functional features add something extra to the inherent form of the shape. A concocted feature will typically be considered non-functional: Kenman Kandy . 74 This case is not as clear cut as Kenman Kandy on the one hand (use) or Mayne and Remington on the other (no use). It is towards the middle of the spectrum referred to at [62] to [64], neither black nor white, but just on the use side of the grey in the middle. 112 Clark was a word case, but Kitto J's observations have been applied to signs other than words, including shapes and aspects of packages: Kenman Kandy . In that case at [144] to [145] Stone J said (omitting citations): The authorities give very little guidance as to what is necessary for inherent adaption either generally or with respect to shapes. It is clear that words (ordinary or technical) which are descriptive of the character or quality of the goods are not inherently adapted to distinguish .... It is also well established that the name of a geographical location is not inherently adapted to distinguish goods because another trader may legitimately wish to use the name in connection with goods made in or associated with that place .... ... Signs that are descriptive of the character or quality of the relevant goods or which use a geographical name in connection with them cannot be inherently distinctive because the words have significations or associations that invite confusion and because registration of a trade mark using such words would preclude the use by others whose goods have similar qualities or which have a connection with the relevant areas. After referring to Kitto J's judgment in Clark , Stone J continued at [147]: In my opinion it is the absence of these 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 ... ... It is the absence of association and signification that accounts for invented words often being found to be inherently adapted to distinguish a trader's product ....