Case: Koninklijke Philips Electrics NV v Remington Products Pty Ltd [2000] FCA 876 ; (2000) 100 FCR 90
Outcome: applied
The issue in Koninklijke Philips Electrics NV v Remington Products Pty Ltd [2000] FCA 876 ; (2000) 100 FCR 90 ( Remington ) was whether Remington's electric shaver was used as a trade mark. Philips' marks were shapes depicting a triple headed rotary shaver. The product depicted in the shape had previously been the subject of a patent which had expired. Remington's product was very similar to the Philips mark, and Remington used images of the shaver head on its packaging and in its brochures and press advertisements. The primary judge's holding that this use was not use in a trade mark sense was upheld on appeal. Burchett J (with whom Hill and Branson JJ agreed) said at [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 ... 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, 348-349. 54 In other words where the features of a mark are functional aspects of the design, they are not being used as a trade mark for distinguishing purposes, because they are essential to the 'usefulness' of the product. The triple headed rotary design was found to be one of the best ways to make an efficient electric shaver. It was a useful model and "proved extremely successful": at [3]. 55 The Full Court provided guidance as to when a shape may be used as a trade mark for the purposes of the Act. At [16]-[17] Burchett J said: It does not follow that a shape can never be registered as a trade mark if it is the shape of the whole or a part of the relevant goods, so long as the goods remain distinct from the mark. Some special shape of a container for a liquid may, subject to the matters already discussed, be used as a trade mark, just as the shape of a medallion attached to goods might be so used. A shape may be applied, as has been said, in relation to goods, perhaps by moulding or impressing, so that it becomes a feature of their shape, though it may be irrelevant to their function. Just as a special word may be coined, a special shape may be created as a badge of origin. But that is not to say that the 1995 Act has invalidated what Windeyer J said in Smith Kline. The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded. For they are cases where the shape that is a mark is "extra", added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J's words, "an existence independently of the mark" which is imposed upon them. His Honour said at [17]: [A] mark remains something "extra" added to distinguish the products of one trader from those of another, a function which plainly cannot be performed by a mark consisting of either a word or a shape other traders may legitimately wish to use.