In Australia, the Full Federal Court has issued a decision relating to the use of a shape and colour mark, and a design trade mark. The decision, by an authoritative court, provides useful guidance on those issues.
The matter concerned an allegation that use of 
(SE Logo) by Henkel Australia Pty Ltd, in relation to their marketing of dishwashing capsules, infringed:
- a registration for the design mark
(311 mark); and - the shape and colour mark
(914 mark), which is endorsed:
The trade mark consists of the shape and colour of the goods as depicted in the representations attached to the application form, namely a rectangular shaped Capshaw with rounded corners; the capsule has a RED cylindrical compartment embedded in the capsule; the RED centre is partly encircled by a BLUE portion of the capsule resembling a wave; the BLUE wave portion of the capsule is made of a gel substance; the remaining portion of the capsule consists of multi-coloured granules of powder.
Initial Judgement
The key determinations of the primary judge were that:
- The 311 and 914 marks had not been used as trade marks, and should be removed from the Register for non-use;
- The SE Logo had not been used as a trade mark;
- The SE Logo was not deceptively similar to either the 311 or 914 mark
Appeal
On appeal, the Full Federal Court assessed the findings above and the court considered whether there was use of 311 or 914 mark as a consequence of use of the following:
(Qantum Device)
(Purple Qantum Packaging)
(Qantum Tablets Packaging) This is packaging with a window that allows six capsules of the product, arranged in a tessellate pattern, to be viewed.
(Three-Chamber Technology Images) - A Television Commercial
(FINISH POWERBALL Logo)
The Law (Non-use)
A trade mark can be removed from the Register if the trade mark has been registered for more than three years, and during the three years ending one month before the filing of the removal application, there has been no use of the registered mark: (i) as a trade mark; (ii) by or under the control of the registered owner; (iii) in relation to goods or services for which the mark is registered; (iv) with or without additions or alterations not substantially affecting the identity of the trade mark. In the event of no such use, there remains a discretion to leave the mark on the Register, in appropriate circumstances.
In reviewing the decision of the primary judge on the issue of whether the 311 mark and the 914 mark should be removed, the main issues considered were whether there had been:
- use as a trade mark;
- use with additions or alterations not substantially affecting the identity of the trade mark;
- if no use, whether the discretion should be exercised to leave the mark on the Register
Determinations
The Full Court disagreed with the primary judge on the issue of whether there had been use as a trade mark, noting comments by the High Court (Australia’s highest court) in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, where it stated:
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.
The 914 mark was viewed as having a dual purpose, having both a descriptive function and a branding function, and the court determined that this was use as a trade mark. This was because at least one purpose was to distinguish the goods in the course of trade with reference to their origin.
On the issue of whether the claimed use was use of the registered trade mark, with additions or alterations not substantially affecting its identity, the court noted that the requirement may not be exactly the same as that required for determining substantial identity (a test applied in a number of other cases). However, it stated that any potential difference was not significant in the present case, that the two requirements are close, and that both require consideration of the identity of the trade mark and whether there is a total impression of similarity.
Consequently, it was determined that:
- Use of the Quantum Device did not constitute use of the 914 mark, because the depictions are too different;
- Use on the Purple Quantum Packaging did constitute use of the 914 mark;
- Use on the Quantum Tablets Packaging constituted use of the 914 mark;
- Use in the Three Chamber Technology images did not constitute use of the 914 mark because there was no use as a primary image in any advertising. The only use made was use that could be found after searching through the relevant There was agreement with the primary judge that the images were used to highlight particular technical attributes of the tablets, not as a badge of origin;
- Use in the television commercial was not use of the 914 mark because it was fleeting use that was more likely to be viewed as a temporary representation of the product than as indicating a source of origin.
- Use of the Red dot in the FINISH POWERBALL Logo did not constitute use of the 311 trade mark because there was no use as a separate trade mark. However, after considering the factors relevant to the exercise of the court’s discretion, it was considered appropriate to exercise the court’s discretion to leave the mark on the R Factors considered included the primary judge’s finding of reputation in the red Powerball depicted in the 311 mark, and the potential for confusion if that mark was used by other traders.
Infringement
On the issue of infringement, consistent with findings in relation to use of the 914 mark, the court found that the SE Logo had been used as a trade mark. However, there was no infringement as the court determined that there was no error in the primary judge’s finding that the SE Logo is not deceptively similar to the 914 or 311 mark.
Biodegradability Claim
Henkel had used the following device on its product 
. It reads “biodegradable” and “100% water-soluble film” inside the circumference of the badge. While this was later amended to change “biodegradable” to “biodegradable film”, the original design was found to be misleading. This was on the basis that the biodegradability representation would be construed by the relevant class of consumers as meaning that the entire product was wholly biodegradable, not just the water-soluble film.
Conclusion
The case provides useful guidance on assessing when a design is being used as a trade mark. It also strengthens precedent for the view that the existence of a dominant brand on a product does not mean that other features are not also functioning as trade marks.
This article first appeared in WTR Daily, part of World Trademark Review, in (March 2024). For further information, please go to www.worldtrademarkreview.com.