Case: Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511
Outcome: applied
In Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 at 513-514 ( Clark ) Kitto J said: That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. ... the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. 112 Clark was a word case, but Kitto J's observations have been applied to signs other than words, including shapes and aspects of packages: Kenman Kandy . In that case at [144] to [145] Stone J said (omitting citations): The authorities give very little guidance as to what is necessary for inherent adaption either generally or with respect to shapes. It is clear that words (ordinary or technical) which are descriptive of the character or quality of the goods are not inherently adapted to distinguish .... It is also well established that the name of a geographical location is not inherently adapted to distinguish goods because another trader may legitimately wish to use the name in connection with goods made in or associated with that place .... ... Signs that are descriptive of the character or quality of the relevant goods or which use a geographical name in connection with them cannot be inherently distinctive because the words have significations or associations that invite confusion and because registration of a trade mark using such words would preclude the use by others whose goods have similar qualities or which have a connection with the relevant areas. After referring to Kitto J's judgment in Clark , Stone J continued at [147]: In my opinion it is the absence of these associations and significations that makes a sign inherently adapted to distinguish one trader's goods from those of another. In other words the concept is negative not positive ... ... It is the absence of association and signification that accounts for invented words often being found to be inherently adapted to distinguish a trader's product .... 114 YD's submissions on s 41(3) were brief, namely that the shape and configuration of a shoe is largely dictated by functional considerations, most notably that the shoe, including the sole, must fit the foot of a human being. It was said that largely because of this, all shoes have a commonality of shapes and features. Because of this, and applying the Clark test, s 41(3) has not been satisfied. 115 YD's submission at [114] does not reflect that the mark is not for a general shape but for a particular combination of features stylised D on rear and outer side, shoe shape as depicted in representations, cross-hatched sole pattern with rectangle containing stylised letter D, two oblique stripes on sides and one vertical stripe on rear. 116 The answer to the question posed by the Clark formulation is first, that the particular combination of features is such that by its use Diesel is likely to attain the object of thereby distinguishing its Trainers from those of others, and second, that other traders in Trainers would not reasonably want to use the combination. There would be no occasion for a competitor to adopt the features other than the shape, especially as some of them are Diesel-related. The stylised D is of the greatest import. It is particularly prominent. It is mentioned three times in the endorsement on the Shape Mark. In my view, it is the combination of this feature and the other essential features identified at [83] that give the Shape Mark the status of inherent distinctiveness to satisfy s 41(3). 117 Diesel does not claim a sole as such. Rather the claim is to a diamond shaped pattern with a panel containing a stylised D. That combination is such that by its use Diesel is likely to attain the object of distinguishing its Trainers from those of others. In addition, other traders in Trainers would not reasonably want to apply the sole mark to their own goods, especially as it incorporates Diesel's D. 118 YD's cross claim based on s 41 fails.