Judge considers the scope of shape trade marks: Philips v Remington
The trial judgment in the litigation, Koninklijke Philips Electronics N V v Remington Products Australia Pty Ltd, was handed down on 18 June 1999. At trial, Philips, having successfully restrained Remington by interlocutory injunction from selling, advertising for sale or promoting or marketing triple-headed rotary electric shavers, sought permanent relief on the basis that Remington had infringed its registered trade marks and its registered design. Philips also alleged passing off and breaches of sections 52 and 53 of the Trade Practices Act 1974 which variously proscribe misleading and deceptive conduct.
Trade mark infringement
The registered trade marks relied upon by Philips were two-dimensional device marks depicting an equilateral triangular shape containing three circular shaving heads. The second of these trade marks indicated the three dimensions of the object depicted ("the perspective mark"). These marks had been registered under the previous Trade Marks Act 1955 which, unlike the current Trade Marks Act 1995, did not permit the shape of goods to be registered as trade marks for the goods.
In responding to the claim of trade mark infringement, Remington contended that the trade mark registrations relied upon by Philips did not confer exclusive rights to use the trade mark as a design for the face plate of shavers. Furthermore, Remington contended that it had not used the design as a trade mark which is essential to establish infringement under Australian law. According to Remington, any rights under the registered trade marks had to be assessed by taking into account the following:
- the disclaimer entered in the Trade Marks Register in respect of the perspective mark that "Registration of this trade mark shall neither confer nor recognise any right to the use of its features as a design applied to an article of manufacture";
- the well established principle that a mark is something distinct from the goods; and
- that it could not have been intended that a device mark registered under the 1955 Act should confer on its owner the same rights granted to the owner of a shape mark registered under the 1995 Act.
In relation to the disclaimer, the judge was of the view that the wording of the endorsement did not properly fall within the scope of section 32 of the 1955 Act. Even if the wording of the endorsement was appropriate, the judge considered that its effect was not continued in force under the 1995 Act. As a consequence, the existence of the disclaimer did not inhibit Philips' reliance on the registered trade marks for purposes of asserting trade mark infringement.
Having reviewed the history of shape marks and taking into account the recommendations of the Working Party to Review the Trade Marks Legislation, a review culminating in the passage of the 1995 Act, the judge came to the conclusion that the express inclusion in this Act of the word "shape" in the definition of registrable marks means that the shape of goods or part of them are registrable as trade marks. It was therefore not the case that a shape mark is necessarily something distinct from the goods.
In response to Remington's final submission regarding the scope of Philips' rights under the Trade Marks Act, the judge considered there can be no doubt that a three-dimensional shape can be, if not substantially identical with, then at least deceptively similar to, a representation in two-dimensions. However, the judge accepted that there might be some difficulties under the 1995 Act warranting reconsideration in relation to the scope of two-dimensional marks, especially two-dimensional marks indicating the three dimensions of the object depicted, registered under the 1955 Act. Even so, the issue in the present case remained whether the defendant had used as a trade mark a sign deceptively similar to the registered trade mark. There was no requirement under the Act that the sign used by the defendant be in the same category – either two-dimensional or three-dimensional – as the registered sign.
Following submissions by both parties on whether Remington's use of the triangular configuration was use of that shape as a trade mark, the judge concentrated on the context or the setting in which that particular use had occurred. According to the judge the reasons why Remington adopted an equilateral triangular shape were not especially relevant to the issue. In focussing on the manner of Remington's product presentation, in particular its use of the triangular shape in those presentations, the judge found that the use of the configuration did not serve to distinguish Remington's products from those of other traders. It followed from that conclusion that Remington had not used the shape of three heads in an equilateral triangle to denote the origin of the goods and the use of the configuration was therefore not use as a trade mark.
Remington's cross claim
Remington's cross claim related to a pending registration application by Philips for a trade mark described as the shape of a shaving unit consisting of a substantially equilateral triangularly shaped housing containing three circular shaving heads. Remington sought a declaration that Philips' shape trade mark was not registrable. The judge held that he was not persuaded that the opposition provisions of the Trade Marks Act deprived the court of power to make a declaration as to the registrability of a mark the subject of an application for registration. However, emphasising the discretionary nature of the court's intervention in trade mark application proceedings, the judge refused to grant the declaration sought by Remington. In reaching that conclusion the judge was influenced by the role of the Registrar in assessing the pending application under the distinctiveness provisions of the Trade Marks Act.
Philips was the owner under the Designs Act 1906 of a registered design for a dry shaver. Under that registration Philips claimed a monopoly in respect of "the features of shape and configuration" appearing in the representations which accompanied the design as registered and which depicted the whole shaver. Philips claimed that Remington had applied to its product an imitation of the registered design which was obvious or fraudulent and had thus infringed the registration. On first impression the judge had found the look of the Remington product to be significantly different from the design as registered. That assessment took into account three particular aspects of the Remington product – the size of its head base, the size and shape of the handle relative to the head and its fascia plate.
Whatever the significance of those particular features, the monopoly claimed by Philips under its registered design related to the features of shape and configuration of the whole of the representations of the design. As a whole, the judge decided that there were substantial differences of a material kind between the registered design and the Remington product. For that reason there was no obvious or fraudulent imitation and the claim for design infringement failed.
Trade practices/passing off
Placing particular reliance on the High Court decision in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 1991, the judge considered that the clear labelling of Remington's products posed an insurmountable difficulty for Philips in relation to its claims under the Trade Practices Act. Whilst conceding the possibility that there might be cases in which conduct is misleading or deceptive even where the true commercial source of a product is disclosed, the judge concluded that the evidence in the present case failed to show the requisite misleading or deceptive conduct on the part of Remington. For essentially the same reasons, the passing off claim by Philips likewise failed.
The case goes some way to clarifying the nature and scope of shape trade marks under the 1995 Act. In particular the case illustrates that even if a person obtains registration for the shape of his or her goods as a trade mark, it does not necessarily follow that a competitor marketing similar shaped goods will infringe the registration. The case also forecasts possible problems in relation to registered device marks and the potential for owners of such registrations to sue under the 1995 Act for infringement resulting from the use of three-dimensional shapes which are considered deceptively similar to the "device" marks. Of importance also, is whether such device marks can remain validly registered once their three-dimensional application is taken into account. There is also the judge's findings in relation to declaratory orders in respect of trade mark applications pending before the Registrar of Trade Marks.