[1] Koninklijke Philips Electronics N V v Remington Products Australia Pty Ltd [2000] FCA 876
[2] Although there were important differences between the two. Unlike, the registered design held by Philips (which was for a "dry" shaver), the Remington product was a wet/dry shaver, and was consequently a much bulkier product than the shaver depicted in Phillips' registered design drawings.
[3] One of the marks was a very simple stylised depiction and the other was more realistic, almost like a photograph, with a definite "3D" appearance. This second mark was referred to in argument as "the three dimensional mark".
[4] Phillips had also applied to register the shape of its triangular shaving unit as a separate 'shape' mark but, by the time this matter came on for hearing, the fate of that application had not been decided. However it has been held (The Coca Cola Company v All-Fect Distributors Ltd (2000) AIPC 91-534) that a two dimensional 'logo' mark can be infringed by the manufacture and sale of articles to which a shape that is substantially identical or deceptively similar to the registered 'logo' mark had been applied. And so it seemed to have been accepted by all parties that the fact that Phillip's 'shape' mark had not yet been registered made little difference to the strength or otherwise of their case.
[5] Philips v Remington (supra) FN1 at para.12.
[6] (1967) 11
[6] CLR 628 at 639 - 640.
[7] Under the much broader definition of "sign" in s 6.
[8] Philips v Remington (supra) FN1 at para 17.
[9] Philips v Remington (supra) FN1 at para. 18.
[10] Ibid at para 19.
[11] Or, more exactly, of the monopoly in a registered design.
[12] (1961) 180 CLR 120.
[13] Section 30.
[14] Supra FN 12 at page 127.
[15] (1987) 180 CLR 483 at 489 describing the dicta as "brief but accurate".
[16] Philips v Remington (supra) FN1 at para 25
[17] Albeit that the remarks made in this regard were obiter dicta.
[18] Philips v Remington (supra) FN1 at para. 31.
[19] id
[20] Philips v Remington (supra) FN1 at paras 32 - 36.
[21] Malleys Limited v J W Tomlin Pty Limited supra FN 12.
[22] id at page 127.
[23] Philips v Remington (supra) FN1 at para. 36.
[24] D C Pearce "Design Law Reform" in Australian Business Law Review (1974) Vol 2, 112 at 120-121. Cited with approval by Burchett J at para 35.
[25] Philips v Remington (supra) FN1 at para. 36.
[26] Philips v Remington (supra) FN1 at para 42. Citing Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491.
[27] As noted earlier (see text at FN 4) each of the two trade marks in suit here were 'logo' marks. They each consisted of a drawing of three circles arranged to form an equilateral triangle. Phillips has also applied for the registration of a "shape" trademark, namely the shape of "a shaving unit consisting of a substantially equilateral triangularly shaped housing containing three circular shaving heads".
[28] And in these matters, as Burchett J was at pains to remind us, "context is all important" (see para. 19)
[29] Australian registered trade mark 703634 effective from 4 March 1996.
[30] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991)
[30] FCR 326.
[31] Pepsico Australia Pty Ltd v Kettle Chip Company Pty Ltd (1996) 33 IPR 161
[32] Philips v Remington (supra) FN1 at para.12.
[33] This is plainly so since that sub-section expressly recognises that a shape (or any other "sign") which is distinctive in fact (through user) may be registered as a trade mark even if, because of its functional or descriptive qualities, it is completely lacking in any "inherent adaptation" to distinguish.
[34] His Honour held (at para 18) 'the configuration is one of the best designs for a rotary shaver' but as that comment concedes, there are other (rotary and non-rotary) kinds of electric shaver on the market.
[35] ALRC Report 74 recommends that that a new infringement test be introduced. Under it an article would infringe a registered design right if there had been applied to it a design which was:"substantially similar in overall impression" when compared to the registered design. This new test is designed to incorporate a notion of qualitative analysis such as the courts are used to applying when assessing infringement in copyright law and to move away from a close analysis of individual aspects of the designs in question.
[36] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd. (1982) 141 CLR 191 at 199-20o.
[37] Philips v Remington (supra) FN1 at para.19 citing Mark Foy's Limited v Davies Coop and Company Limited (1956) 95 CLR 190 at 205.
[38] Puxu (1982) 149 CLR 191 at 200.
[39] Philips v Remington (supra) FN1 at para 43
[40] Taco Company of Australia Inc. v Taco Bell Pty Ltd (1982) 42 ALR 177.