No shape mark injunction in fight between two armless chairs
In Sebel Furniture Limited v Acoustic & Felts Pty Limited [2009] FCA 6 (12 January 2009), the applicant (Sebel) is the Registered Owner of Trade Mark No 1054076 in respect of a shape kind of sign or shape device (Sebel’s trade mark). Sebel’s trade mark is registered in Class 20 in respect of plastic, moulded chairs without arms, also known as 'sidechairs'. The trade mark was registered with effect from 6 May 2005 and is subject to an endorsement that sub-section 41(5) of the Trade Marks Act 1995 (Cth) was applied meaning that when it was applied for, it was not sufficiently inherently distinctive to achieve registration on that basis alone, but that registration was granted because it was or would become distinctive through use. Sebel’s trade mark chair, known as the 'Postura', is widely used in educational institutions.
The respondent (Reed Furniture) recently commenced to import into Australia and to supply to the same educational market which, for many years, has been supplied with Sebel’s Postura, a moulded plastic chair known as the 'Titan'.
Sebel sought various injunctions based on allegations that the Titan chair infringed Sebel’s trade mark by using the shape in respect of which Sebel’s trade mark is registered and that Reed Furniture had engaged in passing off and in misleading and deceptive conduct within the meaning of s 52 of the Trade Practices Act 1974 (Cth) (TPA) by promoting, offering to supply and supplying the Titan chair. Sebel also sought an order to restrain Reed Furniture from making each of the following representations in trade or commerce in Australia in relation to chairs:
(a) No chair in Australian classrooms has been manufactured to a European Standard.
(b) The Titan chair is the only one-piece polypropylene chair that has attained EN1729 Part 1 and Part 2 Certification.
(c) EN1729 Part 1 supersedes all other standards in Australia for chairs used in classrooms.
(d) the Titan chair is the first one-piece chair that conforms to EN1729 Parts 1 and 2 in the United Kingdom.
Held
Trade Mark Infringement
Sebel failed to prove, even to a prima facie level, that Reed Furniture had used a shape as a trade mark in relation to goods of the relevant class by reason of its promotion and sale of the Titan chair. However, because it was an interlocutory application, the court assumed (without deciding) that even if Sebel’s activities did constitute the use of a shape as a trade mark in relation to goods, it failed to establish that it has a prima facie case or a serious question to be tried that the shape so used by Reed Furniture is deceptively similar to Sebel’s trade mark.
The court stated that this conclusion is reinforced when regard is had to the fact that the chairs are likely to be purchased in bulk by reasonably well-informed purchasing officers who would not be confused. It also held that a one-off example of what may have been actual confusion on the part of a potential purchaser does not, of itself, establish deceptive similarity.
Passing Off
Sebel’s passing off claims did not prove fruitful either. Despite having evidence that Sebel is the source or the origin of the Postura chair, the court held that Sebel failed to establish a prima facie case in passing off.
The court took the following matters into consideration as a whole in determining passing off:
(a) Appearance and shape of the product – The court held (i) that Reed Furniture did not use as a trade mark the shape of the Titan chair, to promote, supply and sell Titan chairs; and (ii) even if Reed Furniture had used the shape as a trade mark, Sebel failed to establish that the shape used by Reed Furniture is deceptively similar to that used by Sebel.
(b) Distinguishing markings – The court held that there are clear distinguishing markings (embossing) on the Titan chair and the Postura chair such that consumers are easily able to distinguish between the origins of the two products.
(c) Level of knowledge of potential purchasers – The court held that Sebel failed to establish even a prima facie case that the promotion, supply and sale of the Titan chair has led or is likely to lead a substantial number of persons in Australia to believe that the Titan chair is associated with Sebel.
(d) The market into which the products are to be sold – The court held that because of the form or method of introducing the Titan chair into the market, namely that (i) the brochure of Reed Furniture used to promote the Titan chair is in electronic form on the Reed Furniture website and (ii) the paper form of the brochure is only distributed by Reed Furniture representatives, consumers from the market is not likely to be led to believe that the Titan chair is associated with Sebel.
Trade Practices Act (TPA)
Sebel made two TPA claims in this proceeding. The first TPA claim was that Reed Furniture had engaged in misleading and deceptive conduct pursuant to Section 52 of the Trade Practices Act. Sebel failed to establish this claim even on a prima facie basis. The Court cited the same difficulties it had with finding for Sebel on the basis of common law passing off.
The second TPA claim made by Sebel concerned an alleged misrepresentation in Reed Furniture’s brochure promoting the Titan chair. In the brochure, Reed Furniture had represented that the Titan chair is the first one-piece chair in Australia that conforms to the UK standard EN1729 Parts 1 & 2. The court held that because the brochure represented to the effect that the Titan chair is presently the only chair in Australia that meets the UK standard, the use of present tense in the representation implies that the Titan chair is in the present time, the only chair in Australia which conforms to the UK standard EN1729 and that Sebel had made out its second TPA claim on a prima facie basis.
Remedies
The court held that on the balance of convenience and justice, the granting of an interlocutory injunction prohibiting Reed Furniture to continue to represent that the Titan chair is the first chair in Australia that conforms to the UK standard will not cause significant financial hardship to Reed Furniture, therefore, interlocutory injunction pertaining to Sebel’s second TPA claim is granted.
The court ordered Sebel to pay Reed Furniture’s costs because it had failed to make out most of its claims at this stage of the proceeding.
Where to from here
A hearing of the substantive case is to be listed for March or April this year. According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, the case is a good survey of the law on shape mark protection.
Sebel’s case needs to focus on use by both parties of the concocted, non-functional elements of Sebel’s trade mark if it hopes to do better than it did in this round.
