Shape trade mark: when the good itself is the shape.

Sebel Furniture Limited v Acoustic & Felts Pty LTD (2009) FCA 6 (12 January 2009)

SSebel is the manufacturer of a one piece moulded plastic chair, the Postura chair. Sebel owns trade mark registration 1054076 for the shape of the Postura chair with respect to ‘sidechairs moulded from plastic materials’ in class 20.

Sebel’s rival, Acoustic & Felts Pty Ltd (Acoustic Felt) began the promotion of a one piece moulded plastic chair (the Titan chair) that Sebel considered deceptively similar to the Sebel chairs.

Sebel made a claim for an interlocutory relief seeking orders including that respondent be restrained to sell its Titan chair and stop making certain representations about that chair. Sebel alleged that Acoustic Felt had infringed Sebel’s trade mark by using the shape in respect of which Sebel’s trade mark is registered as a trade mark upon or in relation to the Titan chair. Sebel also alleged that Acoustic Felt had engaged in passing off and in conduct which constitutes a contravention of section 52 of the Trade Practices Act 1974 (Cth), by promoting, offering, to supply and supplying the Titan chair.

The Court first went through the relevant requirement for the granting of interlocutory injunctions:

1. A serious question has to be tried or the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action, the plaintiff will be entitled to relief;
2. The plaintiff will suffer irreparable injury for which damages will not be an adequate compensation unless an injunction is granted
3. The balance of convenience favours the granting of an injunction Claim for interlocutory relief.

To determine whether Sebel had a ‘serious question to be tried’, the court had to establish whether the use of the Titan chair constituted trade mark infringement , passing off and/or a breach of section 52 of the the Trade Practices act.

Trade mark infringement:

The Court first acknowledged that Sebel’s shape trade mark was registered and was a valid trade mark.

To prove infringement, Sebel must show that the respondent has used as a trade mark: (i) a sign, (ii) that is deceptively similar to Sebel’s trade mark (iii) in relation to goods or services in respect of which Sebel’s trade mark is registered.

1. A sign
   

   The court acknowledged that a shape is a sign for the purpose of the Act.

2. Use as a trade mark
   

   The question was: has Acoustic Felt , used the Titan chair as a trade mark?

   Foster J referred to the Philips Electronics v Remington case (Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd 100 FCR 90 at (11) and (12)), where Jacob J held : “merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark (…) is not to engage in a “use of the mark upon or in physical or other relation to the goods” as per Section 7(4) of the TMA.

   And

   “Even if a mark achieves registration that does not make the manufacture and sale of similar artefacts into a use of the mark as a trade mark”.

   In the present case, Foster J found that the shape of the Titan chair was “ devoid of a separate identity from that of the Titan chair itself” and that Acoustic Felt had “probably” not used the shape of the Titan chair as a trade mark.

   However, because it was “only” an interlocutory injunction application, Foster J decided that he was prepared to assume that Sebel had proved the matter of “use as a trade mark” to the requisite level.

   Remained to be determined if the Titan chair was deceptively similar to the Postura chair.

3. Deceptive similarity
   

   Foster J found that there were “obvious differences between the chairs, and that because of these differences, the Titan chair was not deceptively similar to the Postura chair.

For the above reasons, the court found that Sebel had failed to establish trade mark infringement.

Passing Off:

The essential elements in a passing off action are: (i) Reputation, (ii) misrepresentation and (iii)damage.

1. The reputation of the Postura chair was acknowledged by the court.
2. Misrepresentation: It had already been held that the shape of the Titan chair was not deceptively similar to the shape of the Postura chair .

Furthermore, each chair had the name Postura and Titan (respectively) embossed on their back. That embossing was found enough to distinguish the chairs (reference was made to Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982)).

For the above reasons , The Court found that Sebel had failed to establish a prima facie case of Passing Off.

Trade Practices Act:

For the same reasons as above, the court found that Sebel had failed to establish that by selling the Titan chair, Acoustic Felt had engaged in a misleading or deceptive conduct.

Sebel was only successful on another issue based on the misrepresentation by Acoustic Felt as to the quality of the Titan chair (ie (i) the Titan chair is the only plastic side chair available in Australia which currently conforms to UK standards EN 1729, (ii) the Titan chair is the first 1-piece chair that conforms to UK standards EN 1729).

Sebel was was granted an interlocutory injunction restraining the respondent from making the above representation in trade or commerce in Australia.

The above decision once again shows that even when the hurdle of registration has been overcome by the owner of a shape trade mark, it can be difficult for the latter to enforce its right on that mark:

1. Trade mark infringement:

   An action for trade mark infringement will fail if the registered owner doesn’t establish that the other trader has used the deceptively similar shape as a trade mark. In the above case, the judge obviously wasn’t convinced that Acoustic Felt had used the Titan chair as a trade mark.

   So what does it take for use of a product that is substantially identical or deceptively similar to a registered shape trade mark to amount to trade mark infringement? According to Foster J: more than the mere selling of the product in the trade.

   A factor that would mitigate, in our opinion, in favour of trade mark infringement, is if the registered owner could show that the allegedly infringing product is promoted and advertised by reference to its shape as a distinctive sign in itself, one that is meant to distinguish the allegedly infringing product from other traders’ products.

2. Passing off or breach of section 52 of theTrade Practices Act.

   An action for passing off or breach of the TPA is likely to fail if the substantially identical or deceptively similar goods are labeled with a distinctive sign from the other trader, such as its name or trade mark. Even if the judge had found that the shape of the Titan chair was deceptively similar to the shape of the Postura chair, the fact that each chair was embossed with the name Titan and Postura respectively, is likely to have been enough to avoid passing off or breach of the Trade practices Act (considering that Acoustic Felt had made no representation that its chairs had a connection with Sebel’s).

If you have any queries, please do not hesitate to contact Florence McFarlane at florence.mcfarlane@ekmpatent.com.