19A.2. Use 'as a trade mark'

Not all use of a particular sign will constitute use ‘as a trade mark’. In Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at 19, the Full Bench of the Federal Court held :

Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of 'trade mark' in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

This statement was expressly approved by a majority of the High Court in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at 43.

The use of a trade mark to indicate a connection in the course of trade has been referred to as the ‘branding function’ of the trade mark (see Anheuser-Busch, Inc v Budejovický Budvar, Národní Podnik & Ors [2002] FCA 390 and Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299). In Nature's Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 at 19, the Full Court held:

The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 422.

Use that is solely descriptive or laudatory is unlikely to be use of a sign as a ‘badge of origin’ and the sign is unlikely to perform a ‘branding function’. Such use is therefore not use of a sign ‘as a trade mark’.

Context is all important in determining whether a sign has been used as a trade mark or for some other purpose (Shell Co of Australia v Esso Oil (Aust) Ltd (1963) 109 CLR 407). The subjective intention of the user will be of secondary importance in assessing whether there has been trade mark use in a particular context. In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874 at 30, Hill J said:

In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears

The nature of the sign in question is also a relevant consideration. It will generally be more difficult to establish that use of a descriptive word is use of a sign ‘as a trade mark’. In Aldi Stores, Hill J held at 23:

Where the word has or a combination of words have a clear meaning in ordinary use, the question will be much more difficult as the word or combination of words may either have taken on a secondary meaning indicating the origin of the goods or may simply convey an ordinary meaning (ie some message other than the trade origin of the goods): see Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 at 286.

However, his Honour went on to say:

It is well established that there is not a true dichotomy between words capable of being used as a badge of trade origin and words that are descriptive: see Johnson & Johnson at 347 per Gummow J and at 339 per Lockhart J.

In Woolworths Limited v BP Plc (No. 2) [2006] FCAFC 132 at 77, the Full Court provided a concise summary of the relevant considerations for use as a trade mark:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin…

In Nature's Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 at 19, in the context of infringement proceedings relating to a sign used on goods and in the presence of other distinctive material, the Full Court held:

Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or ‘context’) of the impugned words: Johnson & Johnson at 347; Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390

Set out below (2.1-2.4) is a discussion of the use of signs in particular circumstances and whether this constitutes use ‘as a trade mark’. Paragraph 2.5 contains some illustrative examples that assist in understanding and applying the abstract concepts discussed above. A summary of the relevant considerations is set out in 2.6

2.1  Aural use

An aural representation of a trade mark that consists of a letter, word, name or numeral, or any combination thereof, is considered use of the trade mark for the purposes of the Act (subsection 7(2)).

2.2  Use as a domain name, key word or metatag

It is common for many traders to provide their goods or services via a website that is identified by a domain name. Use of a domain name may in some circumstances constitute use of a trade mark. In Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, Kenny J held:

It is not suggested that mere registration of a domain name can amount to use of the mark. More must be shown. Plainly enough, not all domain names will be used as a sign to distinguish the goods or services of one trader in the course of trade from the goods or services of another trader. Sports Warehouse is correct in its submission that that whether or not a domain name is used as a trade mark will depend on the context in which the domain name is used. In this case, the domain name is more than an address for a website, the domain name is also a sign for the Applicant’s online retailing service available at the website. In the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user.

Goods or services available via websites are generally located via internet search engines. Internet search engine providers often sell words or phrases corresponding to registered trade marks as ‘key words’ or ‘metatags’. A purchaser of a key word or metatag will generally have their website prioritised in search results for that key word or metatag.  Metatags contain computer coding statement of the content of a particular website and are used by search engines to index and find a page. The practice by search engines to optimise or rank the priority of a website appearing in its search result by Metatag is sometimes referred to as ‘Ad Word’ or key word advertising.

The decision of Advantage Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] FCA 255, affirmed that the metatag use was not use as a trade mark because it was not visible to the ordinary internet user. However, use in sponsored link advertisements (being visible to consumers) may constitute trade mark use.

2.3  Business names

A business name and a trade mark are two distinct concepts. A business name is the name under which a business operates. It is administrative, not proprietary, in character. Registration of a business name in itself creates no intellectual property rights and is not prima facie evidence that a sign has been used ‘as a trade mark’.

In Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 at 73, Lander J held:

There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person. Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.

Whether a person has used a sign that constitutes their business name as ‘a trade mark’ will depend on whether they have used it as a badge of origin taking into account the considerations outlined above.

2.4  Shape and colour trade marks

• See Part 21 Non Traditional Signs

The normal rules apply when determining whether a shape or a colour has been used ‘as a trade mark’. However, the relationship of a shape or a colour to the relevant goods or services will influence how the general principles are applied.

In Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at 61, Sundberg J set out the criteria for determining whether use of a shape is use ‘as a trade mark’.

The principles relevant to use of shape as a trade mark are now set out.

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 [67], Remington at [16] and Kenman Kandy at [137]

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 [25].

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 [25] and Mayne at [61]-[62].

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 [63]. 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 [12] and Mayne at [69].

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 [162] and Mayne at [69].

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 [35].

g. Context "is all important" and will typically characterise the mark’s use as either trade mark use or not: Remington at [19] and Mayne at [60]-[62].

As is apparent from the foregoing propositions, a shape mark case may require consideration of different types of features in determining whether the mark is used as a trade mark for the purposes of the Act. At one end of the spectrum are shapes or features thereof that are purely functional. The features may have derived substantially from a patented product, such as the S-shaped fence dropper, or go to the usefulness of the product: Remington at [3] and [12]. Cases such as Mayne and Remington show that such features point away from trade mark use.

At the other end of the spectrum are those features of a mark that are non-descriptive and non-functional. They ordinarily make the shape more arresting of appearance and more attractive, thus providing a means of distinguishing the goods from those of others. All-Fect and Remington show that non-functional features add something extra to the inherent form of the shape. A concocted feature will typically be considered non-functional: Kenman Kandy.

Finally, there will be cases, such as the present, that fall between the ends of the spectrum. These cases are not black and white. They involve consideration of whether one set of features supersedes, submerges or overwhelms the other.

Similarly, considerations of functionality will be relevant in determining whether a colour has been used ‘as a trade mark’. In Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551 at 53, Mansfield J held:

… a trader might legitimately choose a colour for its practical utility. That is, the colour may be a feature of a product that serves to improve the functionality or durability of the product. The function of visibility is, for example, served by the colour yellow; heat absorption by the colour black; light reflection by the colour white; military camouflage by a combination of khaki, brown and green.

…

The shape mark cases properly indicate a reluctance to permit, by virtue of a trade mark registration, a permanent monopoly of matters of engineering design: Kenman per French J at [45]; Koninklijke Philips Electronics NV v Remington Products Australia Ltd [1999] FCA 816; (1999) 91 FCR 167; Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 per Jacob J; British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281. In my view there is no reason why the functionality principles applied to the registration of shape marks should not also apply to the consideration of the application of colour marks.

It is important to bear in mind that even if an applicant can establish that a particular use of their shape or colour is use ‘as a trade mark’, that use may not be sufficient to demonstrate the mark is or will become capable of distinguishing for the purposes of section 41 (see Parts 21, 22 and 23).
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2.5  Illustrative examples

It is not possible to list exhaustively all situations in which use ‘as a trade mark’ will or will not occur. However, the cases provide some illustrative examples.

In Re Johnson and Johnson Australia Pty Limited v Stirling Pharmaceuticals Pty Limited [1991] FCA 310, an infringement action, the court considered whether use of the word CAPLETS on packaging for paracetamol was use ‘as a trade mark’. On the facts, the court held that there was no use ‘as a trade mark’. Relevant to the court’s decision was the fact that the word TYLENOL was the striking feature of the packaging and that the word CAPLETS was used in a similar sized font to clearly descriptive material (such as Paracetamol 500mg). Lockhart J held at 73:

The context in which CAPLETS appears on the TYLENOL packaging and in its advertising demonstrates plainly in my opinion that the use is essentially descriptive and not a badge of origin in the sense that it indicates a connection in the course of trade between the product TYLENOL and the appellant. A person looking at the packaging would assume that the word CAPLETS describes or indicates the shape of the product contained in it or the dosage form. It is used in a descriptive sense precisely as the words tablets or capsules are used.

In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291, the court considered whether use of the words CIRCLE ON CAVILL by the respondent infringed various trade marks consisting of or containing these words. Reeves J considered the context of the respondent’s use, particularly the use in standalone format without any immediate connection to descriptive content and its depiction ‘banner style’ on various webpages.

In Chocolaterie Guylian NV v Registrar of Trade Marks (2009) FCA 891, the applicant was seeking registration of a seahorse shape for chocolates. The applicant used the shape on chocolates that also displayed the letter ‘G’ prominently.  The shape was also displayed on the front of a box that contained other ocean themed shapes and the mark GUYLIAN as its most striking feature. In upholding the decision of the Registrar to refuse registration, Sundberg J said at 97:

Each case turns on its own facts and here my impression of the packaging and promotional material as a whole is that it is the “Guylian” trademark, together with the “G” logo”, that does the work of distinguishing the goods, not the seahorse shape.

2.6  Summary of relevant considerations

A summary of some of the main considerations for determining whether use of a sign is use ‘as a trade mark’ is set out in the following table: