Case: The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1961] HCA 75 ; (1963) 109 CLR 407
Outcome: cited
The applicant says these considerations are made more pronounced by the respondent's reliance on the distinctiveness of the S loop and the use of Mr Bailey's evidence in another forum, tendered by the respondent as part of exhibit 17 in these proceedings that the ' S shape applied to the wire capturing feature has become synonymous with the products of Mayne Industries in the marketplace '. The applicant says such a powerful statement of acquired distinctiveness supports an inference that the respondent's use in the manner identified is use of a distinctive shape mark, as a trade mark. The applicant contends the shape mark has been ' thrown on ' to the respondent's advertisements to distinguish its droppers from others in the sense contemplated in the well-known passage from the judgment of Kitto J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1961] HCA 75 ; (1963) 109 CLR 407 at 424-425 and used ' to make the goods more arresting of appearance and more attractive and thus to distinguish them from the goods of other traders ' which is the ' primary function ' of the mark ( Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107 at 118 per Black CJ, Sundberg and Finkelstein JJ). Coca-Cola v All-Fect recognised that a two-dimensional mark used in relation to goods can function as a trade mark even though it has become part of the goods. The 1995 Act makes it plain that a three-dimensional shape registered as a shape trade mark for embodiment in an article or part of an article, can operate as a trade mark and it follows, it is said, that use of the shape in the respondent's articles in circumstances of pronounced distinctiveness and the factors identified at [38]-[44] operates as trade mark use. 60 Section 120 of the Act expressly incorporates the notion previously implied ( The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (supra)) in both s 58(1) and s 62(1) of the Trade Marks Act 1955 (Cth) ('the 1955 Act') that infringing use of a mark is limited to use ' as a trade mark '. Use as a trade mark is use of the mark as a badge of origin in the sense that use indicates a connection in the course of trade between goods and the person who applies the mark to the goods. ( Coca-Cola v All-Fect (supra); Johnson &amp; Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 341 per Lockhart J and 351 per Gummow J). The registered owner of the trade mark has, subject to Part 3 of the Act, the exclusive rights to use the trade mark (and authorise others to use the trade mark) in relation to goods in respect of which the trade mark is registered (s 20(1))). Section 120(1) provides relevantly, that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with the trade mark in relation to goods in respect of which the trade mark is registered. A trade mark is a sign used or intended to be used, to distinguish goods dealt with or provided in the course of trade by a person from goods so dealt with or provided by any other person (s 17) and a sign includes a shape (s 6). Section 7(4) provides that 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. Accordingly, has the respondent used, as a trade mark, the three dimensional sign in relation to goods by importation, sale and promotion of articles, embodying the shape, to distinguish those goods in the course of trade from the goods of others? 62 Similarly, a trade mark that comprises a three-dimensional shape for embodiment in goods or a part of goods where the shape serves in part a functional purpose might be thought to still serve as a badge of origin. Since the goods, or a part of the goods, take the form of the shape serving that functional purpose, it would be difficult to demonstrate that use of the shape of the goods serves the primary function of a badge of origin. Such use is very likely to convey something of the functional attributes of the goods, much akin, by analogy, to the use of the oil drop man to identify the qualities of the Shell Petrol in Shell v Esso (supra). Where the goods embody the shape, a seller of goods bearing the shape, might find it difficult to describe or illustrate the goods without reference to the shape in much the same way that Tansing ( Musidor BV v Tansing (1994) 52 FCR 363) found it necessary in the course of trade in unauthorised recordings of the Rolling Stones to use the trade mark ' Rolling Stones ' to describe the content of the goods being sold. Similarly, how might Disney Enterprises Inc describe an animated cinematic version of ' The Hunchback of Notre Dame ' without using the words ' The Hunchback of Notre Dame ' notwithstanding the registration of that title as a trade mark for entertainment services ( Christodoulou (supra)). Where the trade mark comprises a shape which is demonstrated to involve a substantial functional element in the goods, references to the shape are almost certainly references to the nature of the goods themselves rather than use of the shape as a trade mark.