Case: Kolotex Glo Australia Pty Ltd v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1
Outcome: discussed
The next use of the words GO WACKO relied upon as use as a trade mark, is in the expression DOGS GO WACKO FOR SCHMACKOS which appears on the front of Effem's packaging. It is possible for a word or words forming only part of a composite expression to be used as a trade mark. Examples are found in Kolotex Glo Australia Pty Ltd v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1 (" Kolotex ") and Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242. There are also cases in which a word (which is a registered trade mark) appears in an expression used by an alleged infringer where it has been held that such use does not constitute infringement. Pepsico was such a case. Before discussing the two authorities where words within an expression were used as trade marks, it is desirable to refer to the judgment of the High Court in Mark Foy's Ltd v Davies Coop and Company Ltd [1956] HCA 41 ; (1956) 95 CLR 190. 16 In Kolotex, the applicant was the owner of the registered trade mark SHEER RELIEF, although the registration was subject to a disclaimer of any right to the separate exclusive use to the words "sheer" and "relief". For over 20 years, the applicant had successfully marketed lines of pantyhose and stockings styled "Sheer Relief". Wilcox J considered whether the words "Sheer Relief", which were used by the respondent in the phrases "Sheer Relief for Active Legs" and "Sheer Relief For Active Legs That Doesn't Show" on the packaging of its products, were used as a trade mark. His Honour found that the respondent had decided to market a line of pantyhose and stockings to directly compete with the "Sheer Relief" line. In an infringement action, the respondent raised the defences that the use of the expression "Sheer Relief" was descriptive of the character or quality of the product and also was not use as a trade mark. 17 Wilcox J rejected both defences. The respondent's contention that "Sheer Relief" was not used as a trade mark was rejected partly on the basis of the significance of those words in the expression which appeared on the packaging. Early in his reasons, he accepted a submission of the applicant (not disputed by the respondent) that the registered mark was a pun or clever play on words. The word "sheer" described the physical nature of the fabric, yet also related to the extent of relief offered. It was absolute or unqualified. The word "relief" conveyed a freedom from tiredness or fatigue. Each word of the combination could have worked separately but also as a qualification for the other word which enhanced the meaning of both. The combination did not have an exclusive meaning but displayed an attractive plurality of meanings. 18 Later in his reasons, Wilcox J noted that the expression "Sheer Relief for Active Legs" was used on the respondent's packaging for pantyhose three times and in such a manner as to indicate that the words "Sheer Relief" were connected in some way with the applicant's goods. Wilcox J noted that the expression "Sheer Relief for Active Legs" was used twice on the packaging as a subheading appearing immediately following product titles used by the respondent. Wilcox J then said (at [25] and [26]): ... The phrase "Sheer Relief for Active Legs" acts as a third title or caption. It does so by using two catchy and memorable words, which contain a clever double meaning and are already well-known in the trade. Having regard to the evidence that the respondent set out to copy the applicant's product exactly, there can be little doubt that its intention was to appropriate, if it could, the reputation attaching to that subtitle. It appears to have achieved some success in that endeavour. There is evidence of two incidents, in different stores, where customers picked the respondent's product from the display shelves in the belief that it was that of the applicant. The use of the additional words "for active legs" is important in considering whether the words "Sheer Relief" are used by the respondent for product identification; but, once it is concluded that they are so used, the existence of the other words cannot derogate from the conclusion that there is an infringement. (Emphasis added)