Full Federal Court limits the registrability of shape as a trade mark

Full Federal Court limits the registrability of shape as a trade mark

Koninklijke Philips Electronics NV and Philips Electronics Australia Pty Ltd v Remington Products Australia Pty Ltd

The Full Federal Court limits the registrability of shape as a trade mark in its decision in the Philips v Remington litigation in Australia.

In this case, Koninklijke Philips Electronics NV and Philips Electronics Australia Pty Ltd v Remington Products Australia Pty Ltd, the appellants ("Philips") are seeking to prevent the marketing, advertising and packaging by the respondent ("Remington") of an electric rotary shaver with three shaving heads arranged in the configuration of an equilateral triangle similar in appearance to Philips' well-known triple headed rotary shaver. Philips alleged that the Remington triple headed configuration infringed its registered two-dimensional device marks depicted below which were registered for, inter alia, shaving apparatus. Each mark was registered under the previous Trade Marks Act 1955 but became registered trade marks for the purposes of the new Trade Marks Act 1995 pursuant to that Act's provisions.

The question before the court was whether Remington had infringed Philips' marks by using, in the words of the primary infringement provision of the 1995 Act "as a trade mark a sign that is substantially identical with or deceptively similar to the [registered] trade mark in relation to goods… in respect of which the trade mark is registered." It can be seen that this provision expressly requires the alleged infringer to use the offending mark as a trade mark. In a decision handed down on 30 June 2000 Burchett J, with whom the other two judges agreed, held that Remington had not used the offending marks as a trade mark. This was largely because the message of Remington's triple headed configuration was not one indicating commercial origin but rather one indicating the kind or attributes of the shaver.

In his judgment Burchett J considered what is a trade mark under the 1995 Act, and in particular the registrability of shape as a trade mark. The 1995 Act, unlike the 1955 Act, expressly includes "shape" in the definition of what is a registrable mark. It is difficult to fully understand the impact of Burchett J's judgment which at times appears to merge the issue of whether the shape of a good is registrable as a trade mark for the good with the separate question of whether a particular shape would satisfy the distinctiveness requirements of the Act. His Honour holds that the previous law succinctly expressed by Windeyer J in 1967 in the Smith Kline case that a mark is something distinct from the goods in relation to which it is used or to be used remains the law. Burchett J concludes "that a mark remains something "extra" added to distinguish the products of one trader from those of another…". This is at least partly because of the requirement both under the old and new Act that a goods trade mark be used "upon, or in physical or other relation to, the goods". This principle adopted by Burchett J clearly limits the ability to register the shape of goods or part of the goods as a trade mark for those goods. It may be that this principle does not limit the registration of the shape of a container as a trade mark for beverages, perfumes and other fluids. The judgment is somewhat equivocal on this point. There is also some suggestion in his judgment that Burchett J is only concerned with shapes that perform a functional purpose. Certainly his Honour envisages some shapes for goods could be registrable as a trade mark for those goods. More particularly, Burchett J says:

"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."

Therefore, when appropriate, consideration should continue to be given to registering in Australia the shape of the whole or part of a good as a trade mark for that good. Also the above issues relating to the definition of a trade mark, the registrability of shapes as trade marks, and the infringement of shape trade marks may be considered by the High Court of Australia as an application for special leave to appeal to this court on this part of the Full Federal Court's judgment has been made.

Philips' actions based on registered design infringement and misleading and deceptive conduct also failed.