Last year, the Federal Court in Global Brand Marketing Inc v YD Pty Ltd examined the legal principles relevant to the registrability of shapes as a trade mark and determining infringement of such shape marks. Such principles should be noted by product designers aiming for shape mark protection.

Facts

In this case, Global Brand Marketing Inc and Diesel Spa (Diesel) alleged that YD Pty Ltd (YD) infringed two shape trade marks registered by Diesel by selling five styles of footwear in Australia. This case concerned two shape trade marks registered in respect of footwear. The first shape mark was registered on the basis that it combined several features of the shape of the shoes, including a stylised letter “D”, the particular shape of the shoe, the sole comprising a cross-hatched pattern and the stylised letter “D” and oblique stripes on each side and rear of the shoe.

The second shape mark was registered in respect of the soles of the shoes, it comprised the rubber cross-hatched pattern and a rectangle containing the stylised letter “D”.

The Federal Court found that YD did not infringe Diesel’s trade marks, as the shoes sold by YD were not substantially identical or deceptively similar to the registered shape marks.

Registrability of shapes as a trade marks

Importantly, this case considered the different types of features a court may consider in determining whether a shape mark is used as a trade mark for the purpose of the Trade Marks Act 1995 (Act). The court considered that there was a “spectrum” of different types of shapes capable of trade mark protection. At one end, there are shapes or features that are purely functional and, at the other end, there are features of a mark that are non-descriptive and non-functional and, therefore, add something extra to the inherent form of the shape. The facts in this case were considered to fall between the ends of this spectrum.

The court summarised the principles relevant to use of shape as a trade mark as follows:

  • A special shape which forms 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.
  • Non-descriptive features of a shape make it more likely that such features are used for a trade mark purpose. Features that are striking will also typically lead to a conclusion that the shape is used for a trade mark purpose (for example, features that make the goods more interesting in appearance).
  • “Descriptive” features, like descriptive words, make it more difficult to establish that those features distinguish the product, and therefore, function as a trade mark.
  • Where the trade mark comprises a shape which involves a substantial functional element, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark.
  • If a shape or feature of a shape is either “concocted” compared to the inherent form of the shaped goods or is incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This points towards the shape being used as a trade mark.
  • Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, to be determined based on the evidence before the court.
  • Context “is all important” and will typically characterise the trade mark’s use as either trade mark use or not.

In this case, the court found that Diesel’s two shape marks were capable of use as trade marks because the particular combination of features was likely to achieve the object of distinguishing Diesel’s shoes from those of other traders. It was noted by the Court that other traders in these types of shoes were unlikely to want to use such a combination of features.

Infringement

Diesel alleged that pursuant to section 120 of the Act, YD infringed Diesel’s registered trade marks as they used, as a trade mark, a shape for its shoes which was substantially identical with or deceptively similar to their trade marks.

The Court held that aspects of the shape of YD’s shoes were used as a trade mark because the non-descriptive and non-functional features of the shape of the shoes (such as the stylised YD label, the unique pattern and position of rubber panels of the soles of the shoes and parallel stripes), overwhelmed the functional and common features of the shoes.

However, the court held that the shape of YD’s shoes were not substantially identical with or deceptively similar to Diesel’s registered trade marks.

In finding that YD’s shoes were not substantially identical with Diesel’s trade marks, the court focused on the fact that YD’s shoes did not feature essential features of the registered trade marks such as, the stylised letter “D” of Diesel’s shoes.

In considering whether YD’s shoes were deceptively similar to Diesel’s trade marks, the court noted the imperfect recollection of customers. The court considered the effect or impression produced and retained on the mind of potential customers and whether such impression would give rise to deception or confusion that the alleged infringing trade marks indicated YD’s shoes were Diesel’s shoes.

The court stated that the risk of deception or confusion was mitigated by the circumstances in which the shoes were bought and sold. That is, in this case, purchasers of such shoes were “metro-shoppers”, fashion conscious and discerning in their choices, being well informed about the products and reviewing the product labels before purchasing them.

Finally, the court noted that evidence of consumer recollections might have been important in showing whether consumers might be confused or deceived by the alleged infringing footwear. However, no such evidence was adduced by Diesel in this case and, given that Diesel had not earlier sought to introduce such evidence, the court inferred that Diesel was unable to find such evidence of confusion or deception of consumers.

Future Implications

This decision summarises the factors the court will consider when determining the registrability of a shape as a trade mark and highlights the importance of non-descriptive and non-functional features in achieving registration. It also highlights the potential difficulties faced by a trade mark owner in showing infringement of a shape mark and the types of considerations a court may take into account. In particular, it shows a willingness for the courts to take into account the context in which the relevant goods and services are bought and sold and, in particular, the type of consumers for the goods and services.