Case: Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27
Outcome: applied
In Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27 ( Mayne ) the applicant had obtained trade mark registration over a previously patented shape - a fence dropper. The mark was an S-shaped device used in rural settings to enhance the capacity of a fence to function as a fence and to retain tension in the fence "should it be impacted by a beast": at [52]. 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. 68 YD's submission that the sole patterns are applied to provide grip, and are thus for a functional and not for a trade mark purpose, is pitched at too high a level of generality to be helpful in the present context. All soles provide some grip. The sole is inherent in the shoe itself and provides traction when a person is walking or running. Saying that the grip is functional is like saying that the shoe protects the foot from cuts and abrasions. In each case it is too broad a proposition. The position might have been different had there been evidence that the grip pattern provided a special quality leaving little or no room for choice. When choice is limited, it is likely that the goods or an important feature thereof will reflect the product or feature itself, as in Mayne and Remington . In such a case function will overwhelm a trade mark purpose. In the absence of evidence to this effect, grip is in my view but a broad functional requirement. As Mr Vickery's evidence indicated, this function can be achieved by use of a variety of different patterns. In my view any functionality of the grip offered by the sole is overwhelmed by the non-descriptive aspects of the marks. 69 In the light of what I have said at [40] and [41], the Gamon shoe does not fall for consideration. If what I have said there is wrong, the Gamon sole is almost identical to the Cube, and what I have said about that sole is applicable to the Gamon sole. 70 The features of the Photon and Cube shoes are set out below: (a) a stylised YD label stitched to the inside sole of each shoe; (b) a sole comprising a rubber cross-hatched pattern with dimples between the triangles in the Cube shoe, and without dimples in the case of the Photon, which also has a blank rectangular shape at the base of the sole; (c) two oblique stripes on either side of the Cube shoes, and two stripes on the Photon shoe with the front stripe turning back to overlap the other; (d) the Cube shoe has a "small rounded piece" at the back of the shoe and the Photon has a stripe on the back that is parallel to the base of the sole; (e) each shoe has a squarish toe cap or toe panel incorporating a strip of material flowing from the bottom of the laces to the point where the toe cap or toe panel joins the sole; (f) each shoe has small dots carved into its side; (g) the Cube shoe has a flat sole with two rubber panels coming from the outer side of the sole to the upper of the shoe. The Photon has a flat sole and three such panels; (h) each shoe has one large rubber panel coming from the inner side of the sole to the upper of the shoe; (i) each shoe has a facing; (j) each shoe has a padded collar. It is not claimed that the Gamon shoe infringes the Shape Mark. 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.