Case: Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876 ; (2000) 100 FCR 90
Outcome: followed
Counsel also submitted that the respondent does not use the shape or appearance of the Titan chair as a trade mark. He submitted that the respondent merely sells the Titan chair in that shape and depicts the shape of the chair in its brochure for the purpose of describing or identifying the product which it sells. He submitted that the shape of the Titan chair does not contain features which are additional to the inherent form of the chair. He relied upon the decision of the Full Court of this Court in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876 ; (2000) 100 FCR 90 as supporting the above propositions. 98 In addition, Counsel for the respondent submitted that Sebel had also failed to demonstrate that the Titan chair was deceptively similar to the Sebel trade mark because: (a) There was no evidence of confusion on the part of any person, even though the Titan chairs had been sold in the United Kingdom for over 12 months and in Australia for a month or so; (b) There were many differences between the Titan chair and the Postura chair which would make it inherently unlikely that the two would be confused or that a person would have cause to wonder whether they came from the same source. He pointed to the catalogue of differences between the Postura chair and the Titan chair set out in Mr Holmes' evidence as well as the labelling on the chair itself; (c) There was no foundation for any concern that the Titan chairs were being discounted or unfairly sold at a lower price; and (d) The typical consumer was a purchasing officer within an educational institution who was price conscious and who would pay special attention to the chairs when making his or her purchase decisions and thus would not be confused. 99 Senior Counsel for Sebel put the proposition that consumers would likely be confused and misled into thinking that the Titan chair and the Sebel Postura chair came from the same source (Sebel), given that Sebel has a substantial reputation in Australia in respect of its Postura range of chairs. 138 In Global Brand Marketing Inc v YD Pty Limited (2008) 76 IPR 161 at [62] to [64] (pp 175 176), Sundberg J set out the principles relevant to the use of a shape as a trade mark as follows: 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]. 62 As is apparent from the foregoing propositions, a shape mark case may require consideration of different types of features in determining whether the mark is used as a trade mark for the purposes of the Act. At one end of the spectrum are shapes or features thereof that are purely functional. The features may have derived substantially from a patented product, such as the S-shaped fence dropper, or go to the usefulness of the product: Remington at [3] and [12]. Cases such as Mayne and Remington show that such features point away from trade mark use. 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 . 64 Finally, there will be cases, such as the present, that fall between the ends of the spectrum. These cases are not black and white. They involve consideration of whether one set of features supersedes, submerges or overwhelms the other. 141 In Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876 ; 100 FCR 90 , a Full Court of this Court had to consider whether the promotion and sale by Remington of Remington's triple headed electric shaver infringed Philips' registered trade marks which comprised two-dimensional depictions of three shaving heads in the shape of an equilateral triangle. One of the issues in that case was whether Remington's activities involved the use of a trade mark as a trade mark in relation to goods. In the circumstances of that case, the Court held that Remington's promotion and sale of its triple headed electric shaver did not constitute trade mark use. 142 In the course of dealing with these questions, Burchett J (with whom Hill and Branson JJ agreed), said ( Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876 ; 100 FCR 90 at [11] and [12] (pp 100 101)): 11 A trade mark is defined in the Trade Marks Act 1995 by s 17 as "a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person". When that definition -- which accords with the basal doctrine of trade mark law: see the passage from the United States Supreme Court decision Estate of P D Beckwith, Inc v Commissioner of Patents (1920) 252 US 538 at 543 which is cited in Johnson &amp; Johnson at 342 -- is required to be applied, regard should be had to a so-called inclusive definition of the word "sign" which is to be found in s 6: the word "includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent". Insofar as it is the use of a trade mark in relation to goods with which the Act is concerned, regard must be had also to s 7(4), by which it is provided: "In this Act: use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)." The nature of the primary right conferred by the registration of a trade mark is stated in quite summary terms in s 20(1): "If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered." It will be observed that this subsection follows the practice, to which Kitto J alluded in Shell Co of Australia Ltd , of omitting to specify that the exclusive right of use is a right to use as a trade mark; however, having regard to the legislative history and the unvarying course of authority, the right must be understood to be so limited. In any case, and somewhat inconsistently, Parliament did decide to specify the nature of the use involved when it came to deal with the subject of infringement. Section 120 provides: "(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. (2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or ." (Emphasis added in subs (1) and in the opening part of subs (2).) 12 In my opinion, merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark (here the marks do depict, one more completely than the other, a working part of a triple rotary shaver) is not to engage in a "use" of the mark "upon, or in physical or other relation to, the goods" within s 7(4), or to "use" it "in relation to the goods" within s 20(1). "Use" and "use", in those contexts, convey the idea of employing the mark, (first) as something that can be "upon" or serve in a "relation" to the goods, (and secondly) so as to fulfil a purpose, being the purpose of conveying information about their commercial origin. The mark is added, as something distinct from the goods. It may be closely bound up with the goods, as when it is written upon them, or stamped into them, or moulded onto them (see Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107 , or, in the case of a liquid, it may be sold in a container so formed as to constitute at once both container and mark. But in none of these cases is the mark devoid of a separate identity from that of the goods. The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as the trade mark. The reason is plain: it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately wish to produce similar goods (unless, of course, there are, for the time being, subsisting patent, design or other rights to prevent them from doing so), and it follows that a mark consisting of nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a mark: Johnson &amp; Johnson at 342 and 348-349. As Jacob J said of a "picture mark" in Philips Electronics NV v Remington Consumer Products at 292: "A picture of an article is equivalent to a description of it -- both convey information. If the picture is simply of an artefact which traders might legitimately wish to manufacture then to my mind it is just like the common word for it and, like the word for it, incapable of distinguishing." Even if such a mark achieves registration, that does not make the manufacture and sale of similar artefacts into a use of the mark as a trade mark; cf the remarks, quoted above, of Sargant LJ in Edward Young &amp; Co Ld v Grierson Oldham &amp; Co Ld at 579 about the effect of the registration of the word "port" in sloping capitals, remarks which seem to me to apply a fortiori. 144 The reasons of the Court in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876 ; 100 FCR 90 make clear that: (a) Very often, the concept of use as a trade mark in relation to goods involves the physical application of the trade mark to the goods (eg by stamping or embossing thereon the manufacturer's name or logo) in order to state the origin of the goods for all to see. However, goods may be distinguished by other visible characteristics which they have (eg their shape or colour); (b) This concept of use as a trade mark usually involves the particular trade mark having an identity which is separate from the goods themselves; (c) Generally speaking, this notion of use does not include simply using the goods themselves as a trade mark because a mark consisting of nothing more than the goods themselves could not distinguish the commercial origin of those goods; (d) A shape which is dictated by the nature of the goods or by the need to achieve some particular technical result or functional outcome cannot operate as a trade mark. In order to function as a trade mark, the shape must be something which is extra or which is added to the inherent form of the particular goods as something distinct which can denote origin. A shape cannot function as a trade mark if it is something that other traders may legitimately wish to use either because it is inherent to the particular goods (ie it is of their nature ) or because it provides some technical or functional benefit to the goods. 145 As I understand Sebel's case, there are features of the shape of the Titan chair which are said by Sebel to constitute the use of that shape as a trade mark in relation to goods (namely, sidechairs moulded from plastic materials). Just exactly what those features are and how that use is said to arise were matters which were not made clear by Sebel at the hearing and are not at all clear to me now. 146 As the evidence presently stands, it seems to me that: (a) The alleged shape trade mark said to have been used by the respondent as a trade mark in relation to the Titan chair is not something which is distinct from the Titan chair but is rather of the essence of that chair; (b) The shape embodied in the Titan chair does not contain one or more features which are extra or additional to those which comprise or involve the functional elements of the Titan chair; (c) The shape is devoid of a separate identity from that of the Titan chair itself; and (d) The concept of using a trade mark in relation to goods does not include simply using the goods themselves as a trade mark. In the present case, the respondent is, at most, using or intending to use the Titan chair itself as the trade mark. 147 For these reasons, I am inclined to think that Sebel has failed to prove, even to a prima facie level, that the respondent has used a shape as a trade mark in relation to goods of the relevant class by reason of its promotion and sale of the Titan chair. 148 However, I am very conscious that I am presently dealing with an interlocutory application. For this reason, I am prepared to assume for the time being (without deciding) that Sebel has proven these matters to the requisite level. 180 These passages were cited and followed in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876 ; 100 FCR 90 (at [37] to [47] (pp 114 116), especially at [40] (pp 114 115). 181 For these reasons, I am of the view that Sebel has failed to establish a prima facie case of passing off. 182 There are two groups of Trade Practices Act claims.