Case: Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494
Outcome: cited
The respondent says the 1995 Act by introducing the notion of a 'shape' within the definition of 'sign' in s 6 of the Act and thus within the definition of a 'trade mark' in s 17 of the Act 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 ' did not bring about the radical change of providing that a registered trade mark would have the effect of restricting access to functional features or innovations. The respondent says the trade mark law of this country recognises a continuing fundamental distinction between a shape, whether expressed in part or the entirety of the goods the subject of the registration, that has an element of 'functional significance' and a shape which bears no functional significance. The respondent says, consistent with observations in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494, were the 1995 Act to enable a registered trade mark to give the owner a monopoly over functional features (and thus suit for infringement of such a registered trade mark) it would indeed have made a radical change to trade mark law and nothing in the Act or in the discussions that preceded it suggest that such a result was intended. Therefore, it follows, it is said, that in the context of contended infringement, once the evidence demonstrates that the shape serves some functional significance, use of the shape (the trade mark) cannot be use as a trade mark. In such a case, it is said the shape adopted in the respondent's goods and consequential use of the shape in brochures and advertising material does not differentiate or distinguish the goods as a badge of origin of the user as a purveyor of those goods but serves to identify (distinguish) the content or features of the goods themselves. In other words, the respondent uses the shape to say in trade 'these are the goods that I sell' not 'know me as the seller or purveyor of these goods by this shape' (although, for trade mark use purposes, the seller need not be specifically identified). 10 The applicant says the respondent has misunderstood the true context in which issues of functionality were discussed Kenman Kandy and related authorities. In this case, the trade mark has been accepted by the Registrar and has been registered. The applicant is the registered owner of a valid shape mark which is not the subject of a challenge or cross-claim for cancellation or rectification of the Register on grounds of lack of distinctiveness . The applicant says that discussions in the authorities of whether a trade mark application is to be rejected if it consists of a shape expressed in the relevant goods so as to achieve a particular technical result or by reason of the nature of the goods or some other functional feature, do not inform in any determinative sense, whether a registered trade mark (assessed in accordance with s 41 of the Act throughout the application stage) is infringed by use of the trade mark or a substantially identical trade mark. In assessing whether the registered trade mark has been infringed for the purposes of s 120(1) of the Act, the applicant says that all the circumstances of use are examined to answer this orthodox question: has the respondent made use of the mark as a 'badge of origin' in the sense that the use indicates a connection in the course of trade between the goods and the user of the sign? Further, the applicant says the S loop, although it in part serves a purpose of catching a wire, the bottom section of the S shape (that is, the lower U-shape of the S loop), serves no functional purpose at all. Secondly, other shapes also catch the wires of a fence and the respondent's fence dropper need not incorporate the S loop, that is, need not use the applicant's trade mark, in order to function as a dropper incorporating a shaped catch. The applicant, in submissions, put it this way, ' ... it must have something that engages on the intermediate wire, but it doesn't have to have that shape. That is our case.' 11 The applicant says that, in fact, the respondent recognises by reliance upon contentions of the applicant's own witnesses, Mr Sachs, and Mr Bailey, that the applicant's article, the fence dropper, has become, through extensive use, well known and is distinguished in the relevant trade by the three dimensional S loop, that is, by the sign comprising the trade mark. The applicant says that a three dimensional shape mark that performs an aspect of function may, as in the case of this mark, distinguish the goods (fence droppers) in the applicant and although a mark may have a functional element, there is no point of principle derived from the authorities that a shape mark cannot serve as a bade of origin by a respondent to distinguish its goods from those of others. The question is whether, contextually, it has been so used by the respondent. An analogue in relation to word marks is a mark that contains a descriptive element which, nevertheless, in the context of contended infringing use, might be seen to serve as a badge of origin. A question will inevitably arise as to whether the use of words containing a descriptive element might make it difficult to demonstrate that the words have been used to distinguish the goods of the respondent, and that difficulty is likely to be all the more pronounced where the mark is a three dimensional shape forming part of the goods. 12 That question will require consideration in these reasons. 65 In Kenman Kandy, Stone J observed that: The 'inherent form' of goods, in my view, can only refer to those aspects of form that have functional significance. Were the 1995 Act to enable the registration of a trade mark that would give the owner a monopoly over functional features, it would indeed have made a radical change to trade mark law. [137] 66 The respondent's current brochure being the only brochure now used by the respondent (exhibit GS3 to the affidavit of Serisier - exhibit 12 in the proceeding) is endorsed on the back and front with a photograph of the dropper prominently displaying a fence wire engaged in the loop, other depictions of an installed dropper and a photograph of many droppers spread out enabling the loop to be plainly seen. None of these uses constitute use of the shape as a trade mark, nor does importing and offering for sale a dropper that contains an S loop constitute use as a trade mark. Although the earlier brochures of the respondent depicting the exploded view, in situ, of the shape of the S loop (thereby giving particular emphasis to the feature) and descriptive references to the ' unique loop ' impressionistically suggest use of the shape as a distinguishing feature of the goods in the course of trade going to origin, the references are ultimately properly seen as a reference to the configuration of the goods as goods that owe the shape of the S loop to an essential function of the article, that is, the nature of the goods themselves and the capacity of the loop to catch, fix and secure intermediate wires of a fence. There is a circularity involved when the shape in the goods is such an important functional part of the dropper that a user necessarily illustrates the S shape of the catch in the course of trade to convey the features of the dropper. Such use has all the appearance of selecting the shape as a distinguishing feature of the respondent's dropper as a badge of origin. However, such use is not use of the shape as a badge of origin, but rather a statement of the essential functional feature of the S loop inherent in the goods in the sense contemplated in Philips v Remington (supra) per Burchett J; Hill and Branson JJ agreeing and in Kenman Kandy (supra) per French J [45] and Stone JJ [137] and [140]. 81 A shape when formed is capable of describing something, as the shape is capable of conveying information. A continuous line drawn around a centre point where each point on the line is equidistant from that point, describes a shape in a particular plane. The name given to that shape is a circle and the shape when formed is commonly understood as describing a circle. A shape might take form in two dimensions or when the shape is to be applied to or embodied in an article, the shape will take form in three dimensions. A three dimensional shape to be embodied in goods is capable of describing those goods by that shape. That shape might also find expression in an analogue for the shape such as an alphabetic analogue like 'S shape' or 'S dropper' that sufficiently approximates the features of the shape that it becomes the name, by that analogue, of the article. In Philips Electronics N V v Remington Consumer Products (1998) 40 IPR 279 at 292 , Jacob J observed that: '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' . In that case, Jacob J was considering a question of capacity to distinguish. However those observations as they relate to the capacity of an image to convey information and thus describe an artefact or article are relevant to this issue. A picture is simply a two-dimensional image of the three dimensional article reflecting features of shape. His Honour's observation was adopted in Koninklijke Philips v Remington (supra) at p 101 [12], per Burchett J; Hill and Branson JJ agreeing.