Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu067, first published online: May 7, 2014
A recent decision of the Australian Trade Marks Office has confirmed that composite trade marks consisting of a combination of shape and word/logo elements can be considered inherently capable of distinguishing, even when the shape has a functional purpose.
Shape trade marks are inherently difficult to register in Australia, particularly when the shape in question serves a functional purpose. However, the registration of trade marks consisting of a combination of shape and word/logo elements poses interesting questions about the scope of protection such registrations afford their owners.
Australian Performance Developments Pty Ltd (APD) sought registration of a composite mark consisting of the shape of an air intake snorkel in combination with the word SAFARI, in respect of air rams and air intake snorkels for vehicles in class 12.
APD's application was opposed by Ironman 4X4 Pty Ltd, who argued that the SAFARI SNORKEL logo applied to the air ram was merely a ‘colourable flourish’ and that the application was really a shape trade mark. It contended that registration of the mark would extend to APD an unfair monopoly in respect of a shape of an air ram that may legitimately be required for use by other traders.
APD responded by referring to a number of air intakes in the market to demonstrate that the shape of its product was not the only shape that could be used to achieve the functional purpose required or an air intake snorkel. In any event, it argued, the trade mark in question was more than just a shape, with the SAFARI SNORKEL logo providing an element distinct from the inherent form of the goods.
Each of the opponent's independent declarants specifically referred to the existence of the word and shape elements of the mark. One of the declarants said:
Purchasers of air rams rely on logos, get up and word marks to indicate the trade origin of such goods and view the shape as performing functional significance only.Presumably the intention of that evidence was to show that the shape did not perform as a trade mark and so the combination mark was not capable of distinguishing APD's goods—only the logo was. However, that plan backfired. The Hearing Officer said that this confirmed that the composite trade mark as a whole was inherently capable of distinguishing the applicant's goods.
Ironman also pressed the ground of opposition that APD did not intend to use the mark. It cited Beecham Group Plc v Colgate Palmolive Company (2001) 58 IPR 161 as authority for the proposition that, if a trade mark is filed simply for the purpose of gaining some advantage over the market without an intention to use it as a badge of origin, there will not be the requisite intention to use the mark under s 59. However, the Hearing Officer dismissed the s 59 ground, accepting APD′s evidence of actual use of the trade mark to designate its goods both before and after the filing date of the application.
It seems that the real issue to the registration of composite shape marks is: how broadly will they be construed by the courts? Will a court deem a similarly shaped air ram and snorkel, without the words, deceptively similar to the composite mark? Would such a use be use of the shape as a trade mark?
Given the Australian Trade Mark Office's current practice of citing marks which include an essential element of a prior mark, will it cite the composite mark against a later similar shape application despite the fact that the shape element of the composite mark is not, of itself, inherently capable of distinguishing?
Maybe the application of word or logo elements to shape marks is something that can be exploited by trade mark owners. Although it must surely be the case that the rights ultimately secured by filing such marks must be narrow (particularly in those cases where the word/logo is already registered), registration of the composite mark could provide perpetual quasi-design protection, and may even be used in Customs Notices of Objection to assist in the seizing similarly shaped goods at the border.