Authors:	Robin Honey LLB Associate Lecturer, University of Western Australia School of Law
	Peter Sinden BA LLB (Hons) Qld., LLM Lond Senior Lecturer, University of Western Australia School of Law
Subjects:	Australian trademark law and practice Design protection - Australia Trademarks (Other articles)
Issue:	Volume 7, Number 4 (December 2000)
Category:	Current Developments

Contents

• Facts and Outline of Issues
• Decision of the Full Court
• Trade Mark Issues
• Conclusion on Trademark Issue
• The Registered Design Issues
• Section 52 and Passing Off
• Comment on the Decision
• Notes

Case Report [1]

Facts and Outline of Issues

1. The appellants, Philips Electronics and Philips Australia ("Philips"), respectively manufactured and distributed in Australia men's rotary electric shavers. One of Philips most successful products is a shaver with three rotary heads positioned so as to form an equilateral triangle. For many years and until June 1997, Philips' rotary shavers were the only rotary shavers sold in Australia with the result that these shavers had become exclusively associated with Philips.

2. Philips Electronics owned a registered design in respect of the shape and configuration of their shaver. They also owned two trademarks. The trademarks each consisted of drawings or logos depicting three circles arranged to form an equilateral triangle.

3. In June 1997, the respondent, Remington, who had hitherto sold only "foil" shavers, began importing and selling men's triple-headed rotary electric shavers. Remington's shavers were clearly marked with the word "Remington", but they did resemble Philips registered design. [2] However, the Remington shaver did have three rotary heads arranged to form an equilateral triangle. Remington packaged the product so that the shaving head was clearly visible.

4. Philips argued, inter alia, that by so packaging and selling its rotary shaver, Remington had:
   • infringed Philips trade marks;
   • infringed Philips' registered design;
   • infringed ss52 Trade Practices Act 1974; and
   • been attempting to pass off its product as that of Philips.

5. Phillips sought declarations to that effect and a permanent injunction prohibiting Remington from selling, advertising or promoting its shaver in such a way as to infringe Phillips' rights. Lehane J, at first instance, dismissed the application. Philips appealed to the Full Court of the Federal Court. The issues in the appeal fell into 3 groups:

   The Trade Mark issue:

   Did Remington's actions infringe Philips' existing trade marks?

   The Designs Law issue:

   Did Remington's actions infringe that registered design?

   Other Intellectual Property issues:

   Did Remington's actions amount to passing off?
   Did Remington's actions amount to a breach of s52 of the Trade Practices Act 1974?
   

   Decision of the Full Court

6. The Full Court dismissed the appeal with costs. Burchett J. with whom Hill and Branson JJ agreed delivered the judgment of the Court. His Honour dealt with the three abovementioned issues as follows:

   Trade Mark Issues

7. The question here was whether, in packaging their product so as to display the "triple rotary" shaving unit with its triangular configuration of circular shaving heads and in displaying diagrams of the shaving unit on their product packaging and advertising, Remington were infringing Philips' trade marks. Both marks consisted of a two dimensional depiction [3] of three circles arranged to form an equilateral triangle. In essence, both trademarks were simply drawings of the shaving head of the Phillips razor. And the issue was thus whether the trademark registration of those drawings gave Phillips any right to prevent other traders building and selling electric razors with "substantially identical or deceptively" shaving heads.[4] Did the 1995 Act make a fundamental change to the nature of the trademark monopoly?

8. Prior to the 1995 Act, it had been clear that the exclusive rights of the owner of a registered trademark did not extend beyond the mark itself. But in this case Philips were seeking to use their rights as the owners of registered trademarks to prevent Remington from selling and dealing with their product. Under the old Trade Marks Act, and the case law based on it, Philips could not have succeeded. The question was, what difference is made by the changes introduced by the new Act? If the changes had been sufficient to enable Philips' claim to succeed, then it would have been clear that a fundamental change had occurred to the nature of the trademark monopoly.

9. Section 120(1) of the Trade Marks Act 1995 stipulates that a person infringes a registered trademark if she/he "uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark". Burchett J. recognised that, in packaging and selling its shaver as it had done in this case, Remington could be said to have made use of a "sign" within the meaning of the Act. But the real question was whether or not that sign had been "used as a trade mark". On this issue His Honour held that ""Use" ... in that context, conveys the idea of employing the mark, (first) as something that can be "upon" or serve in a "relation" to the goods, (and secondly) so as to fulfil one particular purpose, being the purpose of conveying information about the commercial origin of the goods. [5] Burchett J. concluded that Remington's use of its shaver did not satisfy either or these requirements.

10. His Honour held that the 1995 Act stipulates to be "used as a trade mark" the sign must be something that can be used "upon" or "in relation to" goods or services. According to Burchett J. this means that it must be distinct from the goods or services in relation to which it is used. Under the Trade Marks Act 1955, ('the old Act') the law on point was set down by Windeyer J in Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks: [6]

    "A trade mark is defined in the Act as `a mark used or proposed to be used in relation to goods' for the purposes stated. This definition assumes, it seems to me, that the mark is something distinct from the goods in relation to which it is used or to be used. It assumes that the goods can be conceived as something apart from the mark and that the mark is not of the essence of the goods. The goods are assumed to have an existence independently of the mark."

11. The question was - is this still good law under the new Act? Given that the new Trade Marks Act countenances the possibility of "shape, colour, sound or scent" being used as a trade mark, [7] perhaps it was intended to do away with the need for the trade mark to have a separate identity from the product in relation to which it is used? Burchett J. thought not. In his opinion, the extension of the definition of "sign" was not intended to create radical change. "The conclusion of this discussion is not that the addition of the word "shape" to the statutory definition calls for some new principle, or that a "shape" mark is somehow different in nature from other marks, but that a mark remains something "extra" added to distinguish the products of one trader from those of another ...".[8] On this basis, because the "sign" used by Remington was 'nothing other than the product itself' Burchett J. was of the opinion that it could not have been used as a trade mark in relation to that same product.

12. His Honour also held that for their to be a trade mark infringement the "purpose and nature" of the allegedly infringing use must be that of "use as a trade mark". In the present case this meant that the sign in question (ie the triangular shape of the triple rotary shaving unit) must have been used by Remington in order to fulfil the purpose of conveying information about the commercial origin of the goods rather than, for instance, conveying information about their nature or geographical source. His Honour relied on the judgment of Kitto J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 to conclude that the question was whether the "sign" in question here was used as a "distinguishing device" to "brand" the trade mark owners product and make it stand out from those of competitors? Applying this test Burchett J. held that it was clear that the nature and purpose of Remington's use was not a trademark use.

    "(T)he particular configuration of the rotary heads ... does have plainly a recognisable significance and a purpose quite different from those of a trade mark. So far as the Remington shaver itself is concerned, the configuration is one of the best designs for a rotary shaver".[9]

    Its appearance wasn't a "distinguishing" device, it was simply a very (functionally) good design for a shaver. Insofar as the advertising and packaging was concerned, His Honour held that the nature and purpose of the use of the "sign" in the advertising and packaging "amounted to no more than a display of the features and qualities of the shaver"[10]

    Conclusion on Trademark Issue

13. So, Remington was held not to have infringed Philips' trademarks. More importantly, the Court chose to interpret the changes to trademark law made by the 1995 Act in a way that played down the effect of those changes and preserved the application of the established case law. Burchett J. was clearly unwilling to expand the concept of a trademark and the rights of the trademark owner so as to confer any right to prevent one trader from building and selling goods which are, in appearance, "substantially identical or deceptively" to the goods of another trader.

    The Registered Design Issues

14. The question here was whether Lehane J had erred in holding that Remington's shaver did not infringe Philips' registered design.

15. Section 30 of the Designs Act defines infringement. Essentially, it is an infringement of a registered design [11] to apply, import for sale, sell, hire etc "the design or any fraudulent or obvious imitation of it". In Malleys Limited v J W Tomlin Pty Limited, [12] Taylor, Menzies and Owen JJ made these observations about the operation of the equivalent of s120 in the 1955 Act: [13]

    " (I)t is apparent that there is infringement in any one of three cases - that is, where the design which has been applied is:

    (i) the registered design;
    (ii) an obvious imitation of the registered design (i.e., not the same but a copy apparent to the eye notwithstanding slight differences); and
    (iii) a fraudulent imitation (i.e., a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying)." [14]

16. This dictum was cited with approval by Wilson, Brennan, Deane, Dawson and Gaudron JJ in Firmagroup Australia Pty Limited v Byrne & Davidson Doors (Vic.) Pty Limited. [15]

17. Philips' Statement of Monopoly claimed monopoly over "the features of shape and configuration of their shaver." It was not suggested that Remington had actually applied Philips' design. Although the Remington shaver was similar to the Philips design, there were obvious differences between the two shavers, even if one ignored the word "Remington" that was prominently displayed on the Remington shaver. The most prominent difference between the two was that, as a consequence of being a wet/dry shaver, the Remington model was far more bulky. The question was whether the differences in appearance between the Phillips registered design and the Remington shaver were so great that Phillips allegation of design infringement by the sale and the importation of an "obvious or fraudulent imitation" of the registered design could not succeed.

18. Having considered the facts, Lehane J held that the Remington shaver was based on or derived from the same design as an earlier Remington model which, in turn, had been "knowingly, consciously or deliberately based on or derived from the Philips design". [16] Despite this finding of conscious imitation Lehane J. held that Remington's shaver did not amount to either an obvious imitation or a fraudulent imitation. His reasoning together with that of Burchett J sheds more light on the operation of s120 of the Designs Act and particularly on the meaning of the term "fraudulent imitation". [17]

19. The first question must be: is this an imitation at all? If it is not an imitation, then there can be no issue of whether it is an obvious imitation or whether it is a fraudulent imitation. Burchett J cited numerous judicial statements to the effect that the question of whether something is an imitation or not is judged by "appearance to the eye". In this case, the differences between the Philips' registered design and the Remington shaver were so great that Lehane J concluded that the latter was not an imitation. Burchett J held that he had not erred in so finding. [18]

20. Philips had argued that Lehane J had erred because he had not considered the appearance of the Remington shaver in its packaging where its heavier construction and other distinguishing features would be less obvious. It argued that this was a relevant consideration, because this is how customers first see the product. But Burchett J considered that the trial judge had been correct [19] in his insistence on comparing the Remington shaver in its entirety with the registered design, instead of concentrating on a partial or obscured view of the Remington shaver as it would appear in its packaging. The only rights afforded the owner of a registered design are in relation to the design as registered. Philips' registered design did not depict a shaver in its packaging, nor did the 'statement of monopoly' in respect of the design mention packaging. So it would have been inappropriate to compare that design with a Remington shaver partly hidden by packaging. The issue here was not whether customers would be misled, but simply how similar the appearance of the defendant's product was to the plaintiff's design it appeared on the register. Burchett J. stressed that Remington's intent was irrelevant to the question of "imitation". It did not matter that the major differences between the two shavers had not arisen from an honest desire on the part of Remington to distinguish its product from the Philips shaver, but arose simply from the "wet/dry" nature of Remington's shaver. All that mattered was that there were significant differences. That being so the shape of the Remington shaver could not be said to constitute any sort of "initiation" of Phillips registrable design.

21. Notwithstanding this finding Burchett J went on to consider [20] what the situation would have been if the Remington shaver had been sufficiently similar to the Phillips registered design to have been described as an imitation. His remarks on this matter, while strictly obiter, are nevertheless instructive. He began with the observation that, even if the Remington shaver was an imitation, it was still too different from the Philips design to be an obvious imitation. The only other way that Remington could have been guilty of an infringement was if its shaver could be described as a fraudulent imitation. In Malleys, [21] it was held that "... a finding of fraudulent imitation must require something more ... (than visual comparison) ... because in such a case visual comparison is not of itself sufficient to establish imitation; otherwise it would be an obvious imitation." [22] This "something more" is the element of fraud. Burchett J said that the fraud in "fraudulent imitation", is to be found in "a dishonest concealment of the reality of copying in order to evade responsibility for it."[23]

22. It follows from this reasoning that a "fraudulent imitation" is "a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying". [24] On the facts of this case, the principal difference from the registered design arose not from an attempt at concealment, but from "an intractable technological problem", namely the necessity to properly insulate from water the mechanism of a wet/dry shaver. Thus there was no fraudulent imitation. [25] Which shows that the meaning of "fraudulent" is quite specific here. It is not enough that a defendant imitated and that she/he was in some way fraudulent in so doing. Nor, as might have been thought, does it suffice that the imitation was done with dishonest intent. Unless the fraud consists of an attempt at dishonest concealment of the similarities with the registered design, there will be no infringement.

    Section 52 and Passing Off

23. Burchett J endorsed the trial judge's decision that these causes of action could not be supported on the facts. His Honour recognized that "in view of the similarity of the Remington triple rotary to the Philips, and in view of the similarity of the image each competitor sought to project for its product, it was incumbent upon Remington to distinguish the shaver it was putting on the market from the rival shaver that was already there" [26] but he held that there was no error in the trial judge's approach to or conclusion on this issue. Remington was a well-known brand in its own right and its products were clearly labeled as Remington products. Indeed, Burchett J said it was difficult to see what more Remington could reasonably be expected to have done to emphasize that this product was its own.

    Comment on the Decision

24. This decision will be much cited in future on the question of the nature and scope of trade mark rights in shapes, even though it did not strictly concern such a mark. [27] The decision is important not so much because of what the court did but rather because of what it did not do. The Court did not take the opportunity proffered to use the changes introduced by the 1995 Act to expand the concept of a trade mark and the rights of the trade mark owner. It played down the effect of the changes and preserved the application of the established case law.

25. There is much to be said for the Court's ultimate conclusions in this case. But the same cannot be said for Burchett J's (obiter) view that even a shape which is the most distinctive feature of the appearance of an article, but which has a functional purpose or usefulness, is necessarily and always incapable of being, or of being used as, a trade mark. Such a view, if correct, would render all 'functional' shape marks unregistrable. But that would be inconsistent with s41(6) 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.

26. On the other hand, Burchett J. is undoubtedly correct to suggest that a defendant will not infringe such a shape mark simply by making and selling an article that incorporates a feature of the same, or a deceptively similar, shape. It should only be an infringement if the defendant does more than this. For instance if the defendant gives that distinctive feature prominence, so that consumers would recognise that it was being held up to them as a "badge of origin" then that ought to be, and be held to be, trade mark infringement.

27. The present case could easily have been disposed of simply by holding that, on the particular facts of this case [28] Remington had not used Phillip's mark as a trade mark. Burchett J. held this. But he went further. He held that a shape that is not separate and distinct from the goods in respect of which it is to be applied can never be used as a trade mark and thus, presumably, can never be validly registered as a trade mark. It is submitted that this dicta was both unnecessary to the decision and incorrect. The only real issue in this case should have been what the scope of such a registration was and what rights it gave to the trade mark owner. The Court should simply have concentrated on that issue. And in holding, as it did, that Remington had not infringed the Phillips trade mark the Court would have given a clear signal to Phillips, and anyone else who seeks to register functional shapes as trade marks, of the inefficiency of such registrations as a means for preventing other traders from using the shape in question (or one very similar to it) solely for its functional value and not in such a was as to suggest the origin of the goods.

28. By going further than was actually necessary to decide the case Burchett J. has cast doubt, not only on the validity of the Phillips trade marks, but also on other well known shape marks such as that for the famous Webber "Kettle" barbecue. [29] Many such shapes have in fact been registered as trade marks.

29. His Honour appears to have propounded a special rule for 'shape' trade marks. This is undesirable. Instead shape trade marks should be treated in the same way as other marks. Take for instance descriptive words. No one objects to the proposition that it is difficult to register a descriptive word as a trade mark or that if such a word mark does show sufficient factual distinctiveness to justify registration it can nonetheless still be used in the course of trade by others provided their use of it is not 'use as a trade mark'. Merely 'descriptive' use of such words does not constitute a trade mark infringement. The "Caplets" Case [30] and the "Kettle Chip" case, [31] to both of which Burchett J. referred in the course of his judgement, are just two of many cases which illustrate this point. By analogy to such cases it can be cogently argued that even if a functional shape is factually distinctive enough to be properly registered as a trade mark it cannot be infringed by others using or adopting it (or a very similar shape) in the manufacture of their goods solely for its functional qualities or characteristics. Such a 'functional' use of a shape mark is like 'descriptive' use of a word mark. It is not use of the mark 'as a trade mark' and therefore it does not infringe.

30. Burchett J justified his view that a shape that is not separate and distinct from the goods in respect of which it is to be registered can never be validly registered as a trade mark on two alternate grounds. Either this was so because (oddly and most obviously wrongly) a shape which is the shape of an article, or part of an article, is not a "sign" which is used upon or in physical or other relation to goods s7(4) and s20(1) together require. Or, alternatively, because:

    "it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately with to produce similar goods ... and it follows that a mark consisting of nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a mark". [32]

31. In relation to the first point, it is submitted that to suggest that the shape of a part of an article, such as the shaver head in this case, is not a shape that is used in physical relation to that article must surely be a strained construction of the statutory language. And not only is the construction strained, it is clear that it is contrary to the intention of Parliament. Section 41(6) was enacted in order to permit the registration of such shapes, despite the fact that they might not, because of their functional character, be particularly 'adapted to distinguish' the goods of the applicant for registration from those of other traders. [33] Burchett J's reliance on cases concerned with what marks were registrable under earlier Acts therefore seems misconceived and inappropriate

32. In relation to the second point, it should be noted that nothing in the 1995 Act expressly limits the shapes which can be registered as trade marks only to those which are "capricious additions" to the article in question and which thus have no function beyond distinguishing those goods from the goods of other traders. It is conceded that Burchett J's argument may have some force in cases where the shape in question is, practically speaking, the only shape which can be adopted for a particular type of product if that product is to function satisfactorily. In such cases all closely substitutable goods will necessarily be made to the same, or to very similar, shapes and it is strongly arguable that, in those circumstances, the shape in question would not be distinctive, in the sense that it could not function as a badge of origin and thus ought never to be registered. But cases of that kind will be rare indeed. And the present case was not one. The triangular shape of the rotary shaver head was, as Burchett J. implicitly accepted, [34] merely one of a number of viable shapes for the shaving head of an electric shaver. And the shape in issue here was clearly distinctive in fact of Phillips. The evidence showed that Phillips had, over 30 years, gone to considerable trouble and expense to develop what Burchett J called its "trade and reputation in these shavers". His Honour also held that "... in Australia, rotary shavers, particularly those with three shaver heads forming an equilateral triangle, have been exclusively associated with ... Phillips". Accordingly there seems little room for doubt that, not only were the two 'logo' marks valid, but also that a shape mark in the form of three circular shaving heads formed within an equilateral triangle could also have been validly registered by Phillips. We see no difficulty with this conclusion. Why, if there are a number of shapes that would be functionally viable for a particular product (or part of a product), should a trader not be able to choose one from amongst the functionally viable options and seek to register it as a trade mark? Provided the mark applied for meets the criteria for registration it ought to be able to be registered.

33. In relation to the registered designs issues, the decision is much less contentious. But it does serve to emphasise once more how pressing is the need for reform of design law so as to implement a more robust test for infringement than the arcane and technical one that currently applies. The differences between the plaintiffs registered design and the appearance of the Remington wet/dry shaver arose out of technical necessity and were, at least as far as the layout of the shaver heads was concerned, qualitatively insignificant. Given the uncontradicted evidence of conscious copying and bearing in mind that it is the arrangement and configuration of the shaver heads that gives the Phillips razor its functional advantage over other competing products, there can be no doubt that the court would have found Phillips design to have been infringed if, as the ALRC has recommended, the test for design infringement was changed to one more in line with that which applies in copyright law. [35]

34. And finally, as regards the passing off and misleading and deceptive conduct claims, the case provides a timely reminder of two points. First it shows how far apart the law of registered trade marks has grown from its origins in passing off. In passing off and related statutory causes of action any confusion that might otherwise have been created in the public mind by the copying of functional get up can be overcome and prevented by the use of clear and appropriately prominent labelling or disclaimers. [36] But as Burchett J noted, the fact that Remington had made use of such labelling in the present case would have been "of no avail if there were a trade mark use of Phillips' marks". [37] The second point is related to the first. Burchett J accepted and applied established case law to the effect that traders who wishes to copy the design and appearance of another trader's product must be careful to label their product in such a way as to clearly distinguish it from its rivals. So much is unremarkable. But in so holding Burchett J suggested a way of reconciling with later authorities the following well known passage in the judgement of Gibbs CJ in the Puxu case

    "If an article is properly labelled so as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public" [38] (emphasis added).

35. In the quoted passage Gibbs CJ was discussing the statutory cause of action for misleading and deceptive conduct but it has ever since been a cause of concern as to whether His Honour had meant to suggest that only reasonable members of the class of persons to which that conduct was directed were able to claim the benefit of the statutory protection and, if so, whether a similar rule should apply in passing off action. Burchett J resolved the problem by pointing to the necessity, in both causes of action, of showing that it was the defendant's conduct which caused or was likely to cause the public to be led into error. His Honour observed:

    "Of course some people might, probably unjustifiably, and probably transiently, associate the new product in some way with the only product of that sort previously available. However, if anyone is mislead as a result it would not be by the conduct of the intruder on the monopoly, but by virtue of an inherent problem of the situation. Nor is such a difficulty to be attributed to passing off provided the goods in question are appropriately and clearly labelled." [39]

36. Clearly His Honour was saying that although both passing off and its statutory equivalents offer protection even to less than reasonable members of the class of persons to whom the conduct was directed, they do so only subject to proof of causation. In so holding Burchett J reminded us of the importance of the oft forgotten fourth element of the test for misleading and deceptive conduct propounded by the majority of the Full Court in the Taco Bell [40] case. If the need to prove that it was the defendant's conduct which caused the deception that is complained of is always kept clearly in mind, and if it is accepted that sometimes proved misconception may arise for other reasons, such as erroneous assumptions, or an 'inherent problem of the situation", then perhaps Courts will not need to concern themselves so much with the policy issue of who the general law tort of passing off and its equivalent statutory causes of action are designed to protect and can concentrate instead on the legal question of whether there has been an actionable misrepresentation.