Case: Koninklijke Philips Electrics NV and Another v Remington Products Pty Ltd [2000] FCA 876 ; (2000) 100 FCR 90
Outcome: cited
The respondent also pleaded and contended throughout the proceedings, until the point was abandoned in addresses, that the elements of s 24(1) of the Act were made out on the footing that the registered trade mark consists of a sign that, after the date of registration of the trade mark, has become 'generally accepted' within the relevant trade as the sign that describes or is the name of an article. As a result, s 24(1) has the effect of enlivening a limitation under s 24(2) of the Act on the exclusive rights of the registered owner to use or authorise others to use the sign in relation to the article and by operation of s 24(2)(b), the registered owner ' is taken to have ceased to have those exclusive rights from the day determined by the court under subsection (4). ' Subsection (4) provides that ' a prescribed court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article ... '. Although the respondent contends that the trade mark consists of a sign that has become generally accepted in the relevant trade as the sign that describes a fence dropper containing an S loop, the respondent says it cannot satisfy the temporal element and show that the sign became so 'generally accepted' after the date of registration of the trade mark. Accordingly, a defence in reliance upon s 24 of the Act has been abandoned. 16 The respondent relies upon a defence under s 25 of the Act on the footing that the trade mark contains a sign (the S loop shape) that describes a fence dropper that was formerly exploited by the applicant (or its predecessors in title) under a patent lodged on 9 October 1968 under the Patents Act 1952 (Cth) for a term of 16 years which expired on 9 October 1984. Thus, s 25(1)(a) and (b) are satisfied. The respondent says, consistent with s 25(1)(c) of the Act, the evidence demonstrates that ' the sign is the only commonly known way to describe or identify the article ... '. The respondent says that since the trade mark consists of the sign, the registered owner by reason of s 25(2)(a) and (b) does not have any exclusive rights to use or authorise others to use the sign in relation to the article and is taken to have ceased to have those rights from the end of the period of 2 years after the patent expired or ceased. 17 Section 25 is in these terms: 25 Trade mark relating to article etc formerly manufactured under patent (1) This section applies if: (a) a registered trade mark consists of, or contains, a sign that describes or is the name of: (i) an article or substance that was formerly exploited under a patent; or (ii) a service that was formerly provided as a patented process; and (b) it is at least 2 years since the patent has expired or ceased; and (c) the sign is the only commonly known way to describe or identify the article, substance or service. (2) If the trade mark consists of the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to: (i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and (b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased. (3) If the trade mark contains the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to: (i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and (b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased. 18 The applicant says s 25 of the Act has no application because as a matter of orthodox language a trade mark consisting of or containing a three dimensional shape sign cannot 'describe' an article (formerly exploited under a patent) as only words can do that and the trade mark is not a word mark. Further, if the sign describes anything at all, it describes the S loop in the fence dropper which is only a part of an article not the article for the purposes of s 25(1) of the Act. If, however, s 25 does apply, the sign is not the 'only commonly known way' to describe the article. The applicant says the evidence shows other commonly known ways of 'describing' or 'identifying' the article. 19 The respondent also relies upon s 122 of the Act which provides for classes of conduct that 'in spite of s 120' do not constitute infringing conduct. The respondent says, consistent with s 122(1)(b)(i) that it has depicted the 'unique loop' in good faith to indicate the kind, quality, or intended purpose of the respondent's fence dropper or the characteristic of the respondent's dropper of effecting 'constituent, efficient securing loop(s)'. The respondent also relies upon s 122(1)(c) of the Act on the footing that the respondent has used the trade mark in good faith to indicate the intended purpose of goods. The applicant says the respondent has used the trade mark as a badge of origin not as an indication of those identified characteristics, and, in any event, the respondent did not do so in 'good faith.' 20 The respondent brings a cross-claim as a person aggrieved. 63 In Koninklijke Philips Electrics NV and Another v Remington Products Pty Ltd [2000] FCA 876 ; (2000) 100 FCR 90, the Full Court considered in the context of contended infringement of a two dimensional device mark for the configuration of three rotary shaving heads arranged in an equilateral triangle and a second two dimensional device mark (described as a three dimensional mark because the depiction was said to represent a three dimensional appearance) whether dealing (manufacture, importation and sale) in goods having that shape, being a functional shape depicted in each of the two dimensional device marks, constituted use of the mark ' upon, or in physical or other relation to the goods ', the subject of the registration. In addressing that question, the Court was considering marks depicting a configuration for rotary shaving heads forming part of an electric shaver that had been popular for over 30 years and a configuration of rotary heads that ' although not the only way in which to make an efficient rotary electric shaver, it is one of the best ways to do so and this model has proved extremely successful '. In respect of the second two dimensional mark, the applicants had incorporated within the registration a so-called ' disclaimer ' to the effect that 'registration of the mark would neither confer nor recognise any right to use its features as a design applied to an article of manufacture. Burchett J with whom Hill and Branson JJ agreed, concluded that a shape that goods possess because of their nature and the need for a particular functional or technical result, could not operate as a trade mark ([12]-[22]), that is: ... 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'. [12]. And: The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as a trade mark. [12].