The Interface between Trademark, Designs and Passing Off under Australian Law: The Philips Case
| 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
|
| Issue: |
Volume 7, Number 4 (December 2000)
|
ContentsThe Interface between Trademark, Designs and Passing Off under Australian Law: The Philips Case Case Report [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.
- 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.
- 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.
- 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.
- 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?
- 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:
- 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?
- 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.
- 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.
- 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."
- 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.
- 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] HCA 66; (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] - 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 question here was whether Lehane J had erred in holding that Remington's shaver did not infringe Philips' registered design.
- 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]
- 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]
- 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.
- 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]
- 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]
- 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.
- 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]
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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]
- 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
- 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.
- 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]
- 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).
- 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]
- 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.
[1] Koninklijke Philips Electronics N V v Remington Products Australia Pty Ltd [2000] FCA 876
[2] Although there were important differences between the two. Unlike, the registered design held by Philips (which was for a "dry"
shaver), the Remington product was a wet/dry shaver, and was consequently a much bulkier product than the shaver depicted in Phillips'
registered design drawings.
[3] One of the marks was a very simple stylised depiction and the other was more realistic, almost like a photograph, with a definite
"3D" appearance. This second mark was referred to in argument as "the three dimensional mark".
[4] Phillips had also applied to register the shape of its triangular shaving unit as a separate 'shape' mark but, by the time this
matter came on for hearing, the fate of that application had not been decided. However it has been held (The Coca Cola Company v
All-Fect Distributors Ltd (2000) AIPC 91-534) that a two dimensional 'logo' mark can be infringed by the manufacture and sale of articles to which a shape that is substantially
identical or deceptively similar to the registered 'logo' mark had been applied. And so it seemed to have been accepted by all parties
that the fact that Phillip's 'shape' mark had not yet been registered made little difference to the strength or otherwise of their
case.
[5] Philips v Remington (supra) FN1 at para.12.
[6] (1967) 11
[6] CLR 628 at 639 - 640.
[7] Under the much broader definition of "sign" in s 6.
[8] Philips v Remington (supra) FN1 at para 17.
[9] Philips v Remington (supra) FN1 at para. 18.
[10] Ibid at para 19.
[11] Or, more exactly, of the monopoly in a registered design.
[12] [1961] HCA 77; (1961) 180 CLR 120.
[13] Section 30.
[14] Supra FN 12 at page 127.
[15] (1987) 180 CLR 483 at 489 describing the dicta as "brief but accurate".
[16] Philips v Remington (supra) FN1 at para 25
[17] Albeit that the remarks made in this regard were obiter dicta.
[18] Philips v Remington (supra) FN1 at para. 31.
[19] id
[20] Philips v Remington (supra) FN1 at paras 32 - 36.
[21] Malleys Limited v J W Tomlin Pty Limited supra FN 12.
[22] id at page 127.
[23] Philips v Remington (supra) FN1 at para. 36.
[24] D C Pearce "Design Law Reform" in Australian Business Law Review (1974) Vol 2, 112 at 120-121. Cited with approval by Burchett
J at para 35.
[25] Philips v Remington (supra) FN1 at para. 36.
[26] Philips v Remington (supra) FN1 at para 42. Citing Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12; [1990] 1 WLR 491.
[27] As noted earlier (see text at FN 4) each of the two trade marks in suit here were 'logo' marks. They each consisted of a drawing
of three circles arranged to form an equilateral triangle. Phillips has also applied for the registration of a "shape" trademark,
namely the shape of "a shaving unit consisting of a substantially equilateral triangularly shaped housing containing three circular
shaving heads".
[28] And in these matters, as Burchett J was at pains to remind us, "context is all important" (see para. 19)
[29] Australian registered trade mark 703634 effective from 4 March 1996.
[30] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991)
[30] FCR 326.
[31] Pepsico Australia Pty Ltd v Kettle Chip Company Pty Ltd (1996) 33 IPR 161
[32] Philips v Remington (supra) FN1 at para.12.
[33] This is plainly so 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.
[34] His Honour held (at para 18) 'the configuration is one of the best designs for a rotary shaver' but as that comment concedes, there
are other (rotary and non-rotary) kinds of electric shaver on the market.
[35] ALRC Report 74 recommends that that a new infringement test be introduced. Under it an article would infringe a registered design
right if there had been applied to it a design which was:"substantially similar in overall impression" when compared to the registered
design. This new test is designed to incorporate a notion of qualitative analysis such as the courts are used to applying when assessing
infringement in copyright law and to move away from a close analysis of individual aspects of the designs in question.
[36] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd. (1982) 141 CLR 191 at 199-20o.
[37] Philips v Remington (supra) FN1 at para.19 citing Mark Foy's Limited v Davies Coop and Company Limited [1956] HCA 41; (1956) 95 CLR 190 at 205.
[38] Puxu [1982] HCA 44; (1982) 149 CLR 191 at 200.
[39] Philips v Remington (supra) FN1 at para 43
[40] Taco Company of Australia Inc. v Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177.
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