Shape trade mark not a means to protect an article formerly exploited under a patent
In Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27, Mayne Industries Pty Ltd (Mayne) was the registered owner of ‘a shape kind of sign’ for goods in class 6 described as ‘fence droppers’ comprising ‘a rod bent to an S shape.’ A fence dropper is a galvanised metal article designed to attach to agricultural fences to maintain a constant distance between the horizontal wires, and to act as a substitute for fence posts. Mayne commenced infringement proceedings under s 120(1) of the Trade Marks Act 1995 (Act) against Advanced Engineering Group Pty Ltd (Advanced), the importer of fence droppers containing an S loop substantially identical with the shape of the S loop depicted in the applicant’s trade mark.
Advanced contended that Mayne sought to enforce a monopoly over certain ‘functional features’ and that once the evidence demonstrates that the shape serves some functional significance, use of the shape (the trade mark) cannot be use as a trade mark. Advanced also relied upon a defence under s 25 of the Act that the trade mark contained a sign (the S loop shape) that described a fence dropper that was formerly exploited by Mayne under an expired patent and, under its cross-application, sought to have the Register rectified by cancelling the registration under s 87(1) of the Act.
The Court held that the features of the droppers' shape is predominantly dictated by function, and found against Mayne. It found that the defences under s 122(1) were made out and Greenwood J exercised his discretion (conferred by s 87(1)) to cancel the registration of Mayne's trade mark.
So what?
The applicant was on the back foot from the get-go.
The act of registering a shape mark in an attempt to extend the term of exclusivity lost when a patent expires will work against an attempt to satisfy a Court that the ground relied upon by an applicant under s 87 had ‘not arisen through any act or fault of the registered owner’, and will be taken into account (under s 89) in the exercise of the Court’s discretion under s 87(1) of the Act.
Also, the Court stated that once a respondent puts the elements of s 25 in issue and adduces evidence of those matters, the persuasive onus falls upon the applicant.
The Trade Marks Act is not a means to protect an article formerly exploited under a patent where the sign, in substance, describes the article.
