In Global Brand Marketing Inc v YD
Pty Ltd  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
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
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 , Remington at  and Kenman Kandy at .
(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 .
(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  and Mayne at -.
(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 . 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  and Mayne at .
(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  and Mayne at .
(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 .
(g) Context "is all important" and will typically
characterise the mark's use as either trade mark use or
not: Remington at  and Mayne at -.
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.
The content of this article is intended to provide a
general guide to the subject matter. Specialist advice should
be sought about your specific circumstances.
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