Case: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
Outcome: followed
He submitted that, in the present case, the comparison is not a side by side comparison but one based upon imperfect recollection ( Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415). He further submitted that size and colour were irrelevant to the question of trade mark infringement. 96 Counsel for the respondent submitted that Sebel had failed to show that it had a prima facie case or serious question to be tried. Counsel submitted that no prima facie case had been shown because: (a) The features of Sebel's trade mark encompass nothing more than functional aspects of a one-piece polypropylene chair; (b) It is notorious that shape trade marks are difficult to enforce where their features cover functional aspects of design and the impugned use concerns functionality of the respondent's product; (c) There are substantial differences between the Titan chair and the Postura chair and these differences lead inevitably to the conclusion that they are not substantially identical; and (d) In any event, both the circumstances in which the respective chairs are bought and sold (ie price sensitive consumers making informed and often complex purchase decisions), and the manner in which the Titan chair is marketed and supplied (with the Titan trade mark and logo and Reed's brand), make the suggestion of deceptive similarity very tenuous. 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. 156 In the present case, the comparison is not a side-by-side comparison but one based upon imperfect recollection ( Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 415; see also Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 658). 157 The impression produced in the mind of potential customers which is carried away must be that the challenged trade mark is the same as the registered trade mark. 158 Mr Holmes, on behalf of the respondent, undertook a comparison between the Postura chair and the Titan chair based upon observations which he made. He then produced a catalogue of observable differences between the two chairs in order to negate any question of deceptive similarity between Sebel's trade mark and Reed Furniture's so-called trade mark. Some of these differences are, in my view, barely noticeable. In any event, as Sebel submitted, the approach reflected in Mr Holmes' comparison is not the correct approach to the issue of deceptive similarity.