Shoe Shape Marks Ship Shape
In Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 (7 May 2008) the applicants, Global Brand Marketing Inc (Global) and Diesel Spa (Diesel), contended that by s 120 of the Act, the respondents' (YD) shoes infringed two shape trade marks registered by Diesel in class 25 for 'footwear'. The respondents' cross-claim attacked the validity of the applicants' registrations pursuant to ss 41 (not inherently distinctive) and 58 of the Act (applicant not the owner) and sought to have them removed from the register.
The claims of both sides failed. The Honourable Justice Sundberg held on the claim that the rival’s shoes are not substantially identical or deceptively similar to the registered shape marks, and on the cross-claim, that the shape marks are inherently distinctive due to the use of a stylised 'D' device.
His Honour noted that shape mark cases fall between the ends of a spectrum ranging from 'purely functional' shapes or features to those that are 'concocted', 'non-descriptive' and 'non-functional'. These cases, he held, 'involve consideration of whether one set of features supersedes, submerges or overwhelms the other.'
At paragraph 61, the Court set out the principles relevant to use of shape as a trade mark, as follows:
(a) A special shape which is the whole or part of goods may serve as a badge of origin. However the shape must have a feature that is ‘extra’ and distinct from the inherent form of the particular goods: Mayne at [67], Remington at [16] and Kenman Kandy at [137].
(b) Non-descriptive features of a shape point towards a finding that such features are used for a trade mark purpose. Where features are striking, trade mark use will more readily be found. For example, features that make goods more arresting of appearance and more attractive may distinguish the goods from those of others: All-Fect at [25].
(c) Descriptive features, like descriptive words, make it more difficult to establish that those features distinguish the product. For example, the word COLA or an ordinary straight walled bottle are descriptive features that would have limited trade mark significance: All-Fect at [25] and Mayne at [61]-[62].
(d) Where the trade mark comprises a shape which involves a substantial functional element in the goods, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark: Mayne at [63]. For example, evidence that a shape was previously patented will weigh against a finding that the shape serves as a badge of origin: Remington at [12] and Mayne at [69].
(e) If a shape or a feature of a shape is either concocted compared to the inherent form of the shaped goods or incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This may point towards the shape being used as a trade mark: Kenman Kandy at [162] and Mayne at [69].
(f) Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point: All-Fect at [35].
(g) Context "is all important" and will typically characterise the mark’s use as either trade mark use or not: Remington at [19] and Mayne at [60]-[62].
According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, the case should be noted by product designers aiming for shape mark protection because when the designer's choices for the goods to achieve a certain function are limited, they will need a combination of elements for the important functional features of a product to be overwhelmed by the concocted, non-functional elements. The firm cautions that if the goods simply reflect the product or a feature itself, the design representation will be unregisterable as a shape mark.
