case_text: In the law of passing off, the courts have treated evidence of the intentions of the defendant as relevant to the question of whether a representation is conveyed. SunRice argued that this evidence was determinative. It relied on remarks of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 657. They said: The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public. But the practical application of the principle may sometimes be attended with difficulty. (emphasis added) 69 However, their Honours concluded that in the end it was still a question of fact for the court to determine whether, indeed, there had been established a reasonable probability of deception or confusion from the use, in that case, of a trademark or device. They held that the main issue in the case was a question which was never susceptible of much discussion. They said ( Australian Woollen Mills 58 CLR at 659; see too Burford & Sons 8 CLR at 220 per O'Connor J; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354 at 389 [121] per Weinberg and Dowsett JJ, Branson J agreeing; Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 at 40 per Lord Simonds, with whom Lords Wright, Porter and Goddard agreed): It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs. 97 Likewise, Mr Young expected the new enhancement to SunRice's rice cake packaging by the addition of the rice representation and words "MADE WITH WHOLEGRAIN RICE" to emphasise potential health benefits to consumers on its various rice cake products. I find this was done because Ricegrowers appreciated that the ordinary reasonable consumer of these products would pay some attention to the packaging beyond merely looking at a colour cue before purchasing. A consumer who intentionally wished to acquire one but purchase the other might feel deceived: cp Australian Woollen Mills 58 CLR at 657. While, of course, SunRice would still sell either its tomato salsa flavoured thin corn cake, or its sundried tomato and basil one, I am satisfied that Ricegrowers took sensible and appropriate precautions in designing the packagings for the two tomato products in order to prevent such confusion occurring. It was not in Ricegrowers' interests that such confusion occur between its own products. 98 The difference between the get-up of the SunRice products and those of the Real Foods ones in competition with them is, to my mind, far more striking than that of the two SunRice tomato-based products. I am satisfied that there was no real possibility of the ordinary reasonable consumer being mislead or deceived or being confused by the get-up or packaging of the cheese flavoured and salt and vinegar flavoured "Corn Thins" products. They are distinctly different from their competitor's products in their get-up and packaging in the cues of the mark "Corn Thins", as well as colour, printing of their descriptions, and pictorial representations. 99 While the green packaging of the original SunRice rice cakes (until the most recent change) was similar to the green which Real Foods adopted for its sour cream and chives corn cakes, the two get-ups are in my view so significantly different that the ordinary reasonable consumer would know immediately on looking at one or the other that they were not the same. The ordinary reasonable consumer looking at the "Corn Thins" sour cream and chives package would know that they were not SunRice's product, or associated at all with the SunRice product that was marketed as its sour cream and chives rice cake.


case_outcome: followed

case_text: A trader has a prima facie right to put his goods in any packages which he may think attractive and convenient and in any method which he may consider suitable for carrying on his trade provided that the form adopted is not likely to deceive the ordinary reasonable consumer into mistaking his goods for the goods known in the market as manufactured, put up or sold by another: Burford & Sons Ltd v Mowling & Son [1909] HCA 83 ; (1908) 8 CLR 212 at 216 per O'Connor J; affirmed at 8 CLR 222-224 per Griffith CJ, Isaacs and Higgins JJ. O'Connor J said that there the plaintiffs had no monopoly in the particular kind of packing which they adopted, which was used in a large number of articles. Those included not only packed soap, but grocery items and a variety of other items. He also said that the plaintiffs could not acquire a monopoly of the form of package by adopting a particular form of packaging, because its use was open to anyone in the trade. But his Honour went on to say that: ... where, as in this case, a certain method of get up, though open to all traders, has been for many years solely identified with the plaintiffs' goods in a particular market, it is incumbent on a trader who adopts the same method of get up for the purpose of pushing his trade and a similar article in the same market, that he shall clearly differentiate his goods on the face of the package from those of the plaintiffs. (Burford & Sons 8 CLR at 217) 61 O'Connor J found that the question for determination was whether the defendant had made the difference of manufacture and ownership clear on the face of the package when adopting cartons of the same material, colour, shape and size of the plaintiff's packaging. He applied what Lindley MR said in Payton & Co Ltd v Snelling Lampard & Co Ltd (1899) 17 RPC 48 at 52. Lindley MR discussed the situation where goods themselves resembled one another, in that case coffee, and were packaged similarly. He said that the issue was not that the defendant's goods or get-up was like the plaintiff's by reason of the features common to them and others. Rather, in a passage cited with approval by O'Connor J in Burford & Sons 8 CLR at 217, in order to succeed in a passing off action, the plaintiff: ...must make out that the defendant's are like his by reason of something peculiar to him, and by reason of the defendant having adopted some mark, or device, or label, or something of that kind, which distinguishes the plaintiff's from other goods which have, like his, the features common to the trade. Unless the plaintiff can bring his case up to that, he fails. 63 Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford & Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539. 69 However, their Honours concluded that in the end it was still a question of fact for the court to determine whether, indeed, there had been established a reasonable probability of deception or confusion from the use, in that case, of a trademark or device. They held that the main issue in the case was a question which was never susceptible of much discussion. They said ( Australian Woollen Mills 58 CLR at 659; see too Burford & Sons 8 CLR at 220 per O'Connor J; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354 at 389 [121] per Weinberg and Dowsett JJ, Branson J agreeing; Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 at 40 per Lord Simonds, with whom Lords Wright, Porter and Goddard agreed): It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs. 107 I am satisfied that Real Foods differentiated its products on the face of their packages from those of SunRice: Burford & Sons 8 CLR at 21.


case_outcome: cited

case_title: Burgess v Burgess (1853) 22 LJ Ch 675

case_text: For over 150 years it has been the law that "nobody has any right to represent his goods as the goods of somebody else" per Turner LJ in Burgess v Burgess (1853) 22 LJ Ch 675 ; 3 De GM&G 896 at 904; [43] ER 351 at 354: AG Spalding & Bros v AW Gamage Ltd (1915) 84 LJ Ch 449 per Lord Parker of Waddington (with whom Viscount Haldane LC, Lord Atkinson and Lord Sumner concurred): Angelides 40 CLR at 81 per Rich and Starke JJ.


case_outcome: referred to

case_text: In Cadbury Schweppes Pty Limited v Darrell Lea Chocolate Shops Pty Limited [2007] FCAFC 70 ; (2007) 159 FCR 397 at 418-419 [96] - [99] Black CJ, Emmett and Middleton JJ observed that the principles relating to passing off do not necessarily require a plaintiff to establish an exclusive reputation in relation to the use of a particular colour, in that case, purple. They said that the question was whether the plaintiff could establish facts that demonstrate that a particular use by the defendant of the colour was likely to mislead or deceive consumers into believing that there was relevant connection between the defendant and the plaintiff or their respective products: Darrell Lea 159 FCR at 418 [96]; see too Office Cleaning 63 RPC at 42 per Lord Simonds. They observed that both in the context of Pt V of the Trade Practices Act and the common law tort of passing off, trade indicia other than names and logos can become associated with a particular trader, so that use by another trader could give rise to misleading or deceptive conduct or passing off. They said ( Darrell Lea 159 FCR at 418 [97]): If particular branding elements used by a trader have been identified in a special way with that trader in the minds of the members of the public, there may be misleading or deceptive conduct by reason of the appropriation of those particular branding elements by another trader. 73 Black CJ, Emmett and Middleton JJ said, obiter, that whether or not there was a requirement for some exclusive reputation as an element in the common law tort of passing-off, Pt V of the Trade Practices Act did not include such a requirement. Under the Act, the question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant's product: Darrell Lea 159 FCR at 419 [99].


case_text: Ricegrowers has not demonstrated that Real Foods' use of its packaging was calculated or likely to lead the ordinary reasonable consumer to believe that any of the three corn thin flavoured corn cakes were made by or in some way associated with Ricegrowers or its SunRice products (the sour cream and chives, or sea salt and balsamic vinegar thin flavoured rice cakes or the nacho cheese flavoured corn cake): Darrell Lea 159 FCR at 418-419 [96]-[99]; Office Cleaning 63 RPC at 42. The ordinary reasonable consumer would not believe that, to the extent that the packaging of the flavoured Real Foods products was similar, any of those packages emanated from or were in any way associated with Ricegrowers or SunRice: Campomar 202 CLR at 88-89 [109]-[110]; Cadbury Schweppes [1980] 2 NSWLR at 858 [22]; Borden [1990] 1 WLR at 506F-G; Payton 17 RPC at 51; see too Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 9) [2008] FCA 470 at [88] per Heerey J.


case_text: The relevant date for determining whether a plaintiff has established the necessary goodwill or reputation of his product is the date of commencement of the conduct complained of: Cadbury Schweppes Pty Limited v Pub Squash Co Pty Limited [1980] 2 NSWLR 851 at 861 per Lord Scarman. 71 Mere proof of the fact that a person has deliberately copied the name or get-up of a trade rival does not of itself establish a contravention of s 52 or a passing off or goods or services: Apand Pty Ltd v The Kettle Chip Co Ltd (1994) 52 FCR 474 at 496 per Lockhart, Gummow and Lee JJ. In ConAgra 33 FCR at 374, Gummow J said "[d]eliberate copying does not necessarily indicate fraud. A notable example is provided by Cadbury Schweppes [[1980] 2 NSWLR 851]". And, Lockhart J said ( ConAgra 33 FCR at 345: French J at 377 agreed with both Lockhart J and Gummow J): But deliberate copying of the plaintiff's goods does not always evidence an intention to deceive; it may indicate nothing more than realisation that the plaintiff has a useful idea which the defendant can turn to his own advantage, though not intending to pass off his goods as those of the plaintiff.


case_text: In these proceedings SunRice seeks only equitable relief in respect of the claim for passing off; it has abandoned any claim for damages and seeks only an account and injunctive relief. Thus, the proceedings for passing off seek a remedy to protect against injury to the goodwill built up by the activities of SunRice: Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 ; (2000) 202 CLR 45 at 88 [108] per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ. And, as their Honours pointed out, the action based on a contravention of s 52 is designed to protect consumers. Whether or not conduct amounts to a representation is a question of fact to be decided by considering what was said, written, and done against the background of all surrounding circumstances: see Campomar 202 CLR at 84 [100], citing Taco Co of Australian Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202 per Deane and Fitzgerald JJ. 53 In this area of the law the courts constantly endeavour to keep pace with the progress of trade by adapting fundamental doctrines to advancing methods and changing circumstances: Angelides v James Stedman Hendersons Sweets Ltd [1927] HCA 34 ; (1927) 40 CLR 43 at 59-60 per Isaacs ACJ; ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 356 per Gummow J; Campomar 202 CLR at 88 [109]. 57 Lord Parker identified the basis of a passing off action as a false representation by the defendant that his goods were the plaintiff's. In Campomar 202 CLR at 88-89 at [109]-[110] the High Court recognised that the range of the defendant's conduct which could constitute passing off included inducing consumers to believe that the defendant's goods or services had an association, quality or endorsement which belonged, or would belong, to the goods or services of or associated with the plaintiff. As Lord Parker recognised, relevantly here, the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the get-up in question, impliedly represents the defendant's goods to be goods of the plaintiff or associated with the plaintiff, whether generally or in respect of a particular class or quality. In other words, the question is whether the defendant's use of the get-up is calculated to deceive. He pointed out that it would be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on: Spalding 84 LJ Ch at 450; see too Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369-370 per Beaumont, Branson and Lindgren JJ; ConAgra 33 FCR at 356 per Gummow J. 66 So, in a claim alleging that a contravention of s 52 of the Trade Practices Act has occurred, the court considers the effect on an ordinary reasonable shopper by conduct involving the making of a representation to the class of retail consumers shopping in a supermarket displaying a trader's packaged goods on its shelves: Campomar 202 CLR at 84-85 [101]-[103]. The court attributes particular characteristics to this shopper. In actions for passing off a similar test applies in assessing whether a representation was made and, if so, what its effect was. So, in Borden [1990] 1 WLR at 509C-D Lord Oliver said that this is done against the background of the type of market in which the goods are sold, the manner in which they are sold, and the habits and characteristics of purchasers in that market: see too Campomar 202 CLR at 84 [100]. 81 The parties agreed that the ordinary reasonable consumer ( Campomar 202 CLR at 84-85 [101]-[103]: Borden [1990] 1 WLR at 509C-D) was described accurately in the packaging brief prepared by Ms Anderson as having the following demographic makeup, namely: the ordinary reasonable consumer of the parties' rice and corn cake products was a female aged between 30 and 49 years. Most would have middle or older families (i.e. school age children or teenagers) but some would not have children; some would be in households with either one or two income earners. She would be working either full-time or part-time, be married and educated. The ordinary reasonable consumer would be purchasing these products as snack foods for herself and her entire family unit. She would be health conscious and would want to set a good example for her family by her healthy eating. She also would be conscious of her weight and would feel guilty when snacking. She would not want to have foods that were full of fat or sugar. Nor would she want to give her children or teenagers such foods or set a bad example for them. 85 The ordinary reasonable consumer was used to seeing the two distinct families of goods presented on the supermarket shelves in this way: Borden [1990] 1 WLR at 509C-D; Campomar 202 CLR at 84-85 [100]-[103]. 106 Ricegrowers has not demonstrated that Real Foods' use of its packaging was calculated or likely to lead the ordinary reasonable consumer to believe that any of the three corn thin flavoured corn cakes were made by or in some way associated with Ricegrowers or its SunRice products (the sour cream and chives, or sea salt and balsamic vinegar thin flavoured rice cakes or the nacho cheese flavoured corn cake): Darrell Lea 159 FCR at 418-419 [96]-[99]; Office Cleaning 63 RPC at 42. The ordinary reasonable consumer would not believe that, to the extent that the packaging of the flavoured Real Foods products was similar, any of those packages emanated from or were in any way associated with Ricegrowers or SunRice: Campomar 202 CLR at 88-89 [109]-[110]; Cadbury Schweppes [1980] 2 NSWLR at 858 [22]; Borden [1990] 1 WLR at 506F-G; Payton 17 RPC at 51; see too Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 9) [2008] FCA 470 at [88] per Heerey J. 108 There is no reason to conclude that Ricegrowers is entitled to a monopoly on colours and flow packs for the packaging of corn or rice cakes with the features of those on Real Foods' packaging complained of. Here, Real Foods adopted colours and printed flow pack packaging which were in common use in the savoury biscuits category. Just because Ricegrowers was first to use these in the corn cake and rice cake subcategories did not entitle it to a monopoly of their use. Real Foods took sufficient steps, in all the circumstances, to distinguish its flavoured "Corn Thins" from the three conflicting products of SunRice: cp: Campomar 202 CLR at 84 [99]; Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited [1982] HCA 44 ; (1981) 149 CLR 191 at 200 per Gibbs CJ; Office Cleaning 63 RPC at 43. The ordinary reasonable consumer was used to seeing the corn and rice cakes products of the parties displayed standing up in the shelves. The new packaging for the new "Corn Thins" was presented as part of the family or group of products distinct from the SunRice family or group. When one of the "Corn Thins" flavoured corn cakes varieties was placed within the SunRice product display, as is shown in some photographs in evidence, they look noticeably out of place on the shelves and in the wrong "family" or group. I am of opinion that the ordinary reasonable consumer would notice this and realise the products were not related, even if they wondered why the supermarket had displayed them in this way: Hornsby Building Information Centre 140 CLR at 229; Cadbury Schweppes [1980] 2 NSWLR at 858 [21].


case_text: But, what is protected is a proprietary interest of the plaintiff in his goods or get-up; that is, for the purposes of equitable relief, the goodwill which the plaintiff has built up which the defendant's false representation injures. Mere use of the get-up of another in the selling of goods is not enough. The representation which must be conveyed by the use is that the other's goods or goods associated with him are being sold by the defendant: see Collitt v Borsalino Guiseppe e Fratello SA [1913] HCA 34 ; (1913) 16 CLR 344 at 351 per Barton ACJ, Isaacs, Powers and Rich JJ. 59 It is not necessary that the persons purchasing the goods should know of the manufacturer by name, and have in mind when they purchased the goods that they are made by that person (or the person they associate with having produced those goods, whether or not the name is known): Collitt 16 CLR at 351. Where a plaintiff's name or get-up acquires a secondary meaning, the defendant's use of the name or get-up conveys the misrepresentation that the goods are the plaintiff's. It is in this way that the plaintiff's goodwill will be injured: Collitt 16 CLR at 359, 361.


case_outcome: applied

case_text: In this area of the law the courts constantly endeavour to keep pace with the progress of trade by adapting fundamental doctrines to advancing methods and changing circumstances: Angelides v James Stedman Hendersons Sweets Ltd [1927] HCA 34 ; (1927) 40 CLR 43 at 59-60 per Isaacs ACJ; ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 356 per Gummow J; Campomar 202 CLR at 88 [109]. 55 Their Lordships went on, through Lord Scarman, to say that competition had to remain free and was safeguarded by the necessity for the plaintiff to prove that he has built up an intangible property right which he seeks to protect in the action: Cadbury Schweppes [1980] 2 NSWLR at 858 [23]: see too Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] [1984] HCA 73 ; (1984) 156 CLR 414 at 445 per Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed). In ConAgra 33 FCR at 356 Gummow J said: But it is to be observed that the law of passing off contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form. However, "the classical trinity" does serve to emphasise three core concepts in this area of the law. This appeal is concerned with all of them, namely, the geographical requirements for a sufficient reputation, the nature of the interest damaged, and the significance of fraud in the making of the misrepresentation. 57 Lord Parker identified the basis of a passing off action as a false representation by the defendant that his goods were the plaintiff's. In Campomar 202 CLR at 88-89 at [109]-[110] the High Court recognised that the range of the defendant's conduct which could constitute passing off included inducing consumers to believe that the defendant's goods or services had an association, quality or endorsement which belonged, or would belong, to the goods or services of or associated with the plaintiff. As Lord Parker recognised, relevantly here, the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the get-up in question, impliedly represents the defendant's goods to be goods of the plaintiff or associated with the plaintiff, whether generally or in respect of a particular class or quality. In other words, the question is whether the defendant's use of the get-up is calculated to deceive. He pointed out that it would be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on: Spalding 84 LJ Ch at 450; see too Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369-370 per Beaumont, Branson and Lindgren JJ; ConAgra 33 FCR at 356 per Gummow J. 71 Mere proof of the fact that a person has deliberately copied the name or get-up of a trade rival does not of itself establish a contravention of s 52 or a passing off or goods or services: Apand Pty Ltd v The Kettle Chip Co Ltd (1994) 52 FCR 474 at 496 per Lockhart, Gummow and Lee JJ. In ConAgra 33 FCR at 374, Gummow J said "[d]eliberate copying does not necessarily indicate fraud. A notable example is provided by Cadbury Schweppes [[1980] 2 NSWLR 851]". And, Lockhart J said ( ConAgra 33 FCR at 345: French J at 377 agreed with both Lockhart J and Gummow J): But deliberate copying of the plaintiff's goods does not always evidence an intention to deceive; it may indicate nothing more than realisation that the plaintiff has a useful idea which the defendant can turn to his own advantage, though not intending to pass off his goods as those of the plaintiff.


case_text: In Borden [1990] 1 WLR at 514H-515C Lord Jauncey of Tullichettle said that a trader could only claim protection for such capricious additions to a commonly used container as distinguished his use of that container from the use of other traders. Thus, the trader may prevent a rival copying the label on boxes or perhaps the distinctive combination of colours on tins but cannot stop the rival using ordinary boxes or tins simply because they happen to be the same shape and size as his. He said that it was not the shape and size of the container which identified the product of a particular trader to the public, but the capricious additions to it by way of distinctive labelling or a combination of colour or graphic design. He referred to JB Williams Company v H Bronnley & Co Limited (1909) 26 RPC 765 at 771 per Cozens-Hardy MR and at 774 per Farwell LJ. In that case, at 773, Fletcher Moulton LJ had said there that the get-up of an article meant a capricious addition to the article itself, such as the colour or shape or wrapper or anything of that kind: see too Doctor Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281 at 369 [339] per Goldberg J; and Borden [1990] 1 WLR at 515C-D per Lord Jauncey.


case_text: But for passing off or a contravention of s 52 to occur the defendant must make a false representation that the defendant's goods are the plaintiff's or are associated in some way with the plaintiff. The focus of s 52 is on the misleading of others, rather than upon an injury to a competitor: Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 228 per Stephen J. 75 In cases of passing off where the wrongful appropriation of the reputation of the plaintiff or that of his goods is in question, a plaintiff who used descriptive words in his trade name would find out that quite small differences in a competitor's trade name would render the latter immune from action. The law recognises the possibility of blunders by members of the public when descriptive words are used by two traders as part of their respective trade names. But, Stephen J said the risk of confusion must be accepted because "... to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe": Hornsby Building Information Centre 140 CLR at 229. And, he said that similar principles applied to s 52 , because allowing that section to be used as an instrument for the creation of a monopoly of descriptive names "... would be to mock the manifest intent of the legislation": 140 CLR at 230. The principle is not limited to a name but applies to other descriptive material if it has not given a distinctive character to a product or business: Cadbury Schweppes [1980] 2 NSWLR at 858 [21] per Lord Scarman. I am of opinion that a similar principle applies to the use of a get-up in which the plaintiff has no proprietary interest or goodwill i.e. where he has not created a secondary meaning associating the plaintiff or his goods with the get-up. 108 There is no reason to conclude that Ricegrowers is entitled to a monopoly on colours and flow packs for the packaging of corn or rice cakes with the features of those on Real Foods' packaging complained of. Here, Real Foods adopted colours and printed flow pack packaging which were in common use in the savoury biscuits category. Just because Ricegrowers was first to use these in the corn cake and rice cake subcategories did not entitle it to a monopoly of their use. Real Foods took sufficient steps, in all the circumstances, to distinguish its flavoured "Corn Thins" from the three conflicting products of SunRice: cp: Campomar 202 CLR at 84 [99]; Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited [1982] HCA 44 ; (1981) 149 CLR 191 at 200 per Gibbs CJ; Office Cleaning 63 RPC at 43. The ordinary reasonable consumer was used to seeing the corn and rice cakes products of the parties displayed standing up in the shelves. The new packaging for the new "Corn Thins" was presented as part of the family or group of products distinct from the SunRice family or group. When one of the "Corn Thins" flavoured corn cakes varieties was placed within the SunRice product display, as is shown in some photographs in evidence, they look noticeably out of place on the shelves and in the wrong "family" or group. I am of opinion that the ordinary reasonable consumer would notice this and realise the products were not related, even if they wondered why the supermarket had displayed them in this way: Hornsby Building Information Centre 140 CLR at 229; Cadbury Schweppes [1980] 2 NSWLR at 858 [21].


case_title: JB Williams Company v H Bronnley & Co Limited (1909) 26 RPC 765


case_text: And, as Burchett J noted in Kettle Chip Co Pty Ltd v Apand Pty Ltd [1993] FCA 546 ; (1993) 46 FCR 152 at 161: Of course, a person who places the packets before him, side by side, can also see differences. But that is not how passing off by the imitation of another trader's mark or get-up is to be tested. In general, and more particularly in the case of an item likely to be purchased for a small price without long consideration, the comparison which must be made is between the impression of the applicant's goods retained in a customer's mind and the impression made by the sort of consideration he is likely to give to the respondent's product before purchasing it. 79 Ricegrowers argued that the circumstances of the purchase of the competing products by the ordinary reasonable consumer included the following: • each of the products was low in price and a routine purchase likely to appear on the ordinary reasonable consumer's shopping list. It was likely to be bought, along with many other items, whilst the weekly shopping was being done. For the ordinary reasonable consumer, looking to purchase this type of snack food, the shopping process is a "low involvement" one. Low involvement purchases are ones which are made frequently, or sometimes on impulse and typically do not involve a large price; • the ordinary reasonable shopper has a hierarchy of cues which she uses, even in low involvement purchases when shopping very fast, in order to identify the goods she is purchasing. Ms Anderson said the cues provide shortcuts for the different categories. One such cue is the use of colour packaging of food stuffs such green for sour cream and chives; • Ricegrowers argued that when Ms Anderson prepared the marketing brief with The Leading Edge, she said that "Corn Thins" were a routine purchase, the shopping process was generally low involvement and there were shortcuts or cues which aided purchase such as familiar brands, colours, packaging, flavours and claims (e.g. the product was 97% fat free and the claims made in the nutritional information panel on the package); • the packaging of the SunRice and Real Foods flavoured products had substantial similarities in the critical cues necessary to grab the attention of the ordinary reasonable consumer; • Ms Anderson said that a new product in a crowded category, that is one in which there were many products, had to jump out and attract the consumer to a point of difference. The way in which that was done was to use familiar brands, colouring, packaging, flavours and claims for products so that the product will "work hard", as packaged, to gain the attention of the ordinary reasonable shopper. Consumers rarely go into supermarkets looking for a new product. Generally they scan the shelves in the rice cake and corn cake category from a slight distance and are attracted quickly by the cues before making the decision to take the product; • Real Foods were using symbols or logos which were likely, despite differences of detail, to lead the ordinary reasonable consumer to form the impression of a common business or at least of an association, connection or affiliation. Ricegrowers relied on what Burchett J had said in Kettle Chip 46 FCR at 176, and argued that: (a) Real Foods used a packaging type (flow pack) that it had never previously deployed in that form. Its packaging was virtually indistinguishable from the SunRice packaging. The ordinary reasonable consumer would not notice differences in the plastic flow pack of the SunRice rice cakes compared to the foil flow pack of the Real Foods and SunRice corn cakes; (b) the colours and imagery used for the packaging as well as the three flavour types of the two competitors were virtually identical; (c) the logo of Real Foods' brand was diminutive on the packaging contrary to the recommendations made to Real Foods by its market research company, The Leading Edge; (d) there was minimal, if any advertising; (e) Real Foods used the "Corn Thins" name as a brand despite many consumers seeing it as simply descriptive of a category of goods and not identifying it as a brand. 80 Ricegrowers argued that Real Foods adopted the course set out above in order to take a fast and easy option which copied the market leader, SunRice, and sought to emulate its success. Ricegrowers argued that Real Foods had chosen the packaging designs for its new flavoured products which sailed "too close to the wind" to that of SunRice. In effect, it claimed that Real Foods had designed a product knowing it had features of SunRice's products and which were calculated or likely to cause consumers, who would spend little time examining the differences in the products, to purchase them.


case_text: It is appropriate for the court to approach the question of whether s 52 has been contravened by answering the composite question whether the defendant's conduct was misleading or deceptive in relation to the ordinary and reasonable consumer of rice cakes or corn cakes purchasing them in supermarkets: see Knight v Beyond Properties Pty Limited [2007] FCAFC 170 ; (2007) 242 ALR 586 at 597 [51] per French, Tamberlin JJ and myself. 77 The Court must be cautious against finding fraud merely because there has been an imitation of another's goods, get-up, method or trading or trading style: Cadbury Schweppes [1980] 2 NSWLR at 861 [33] per Lord Scarman. In that case the trial judge had found that the defendant's deliberate purpose was to take advantage of the plaintiff's efforts to develop its product. The plaintiff had launched its product with mass media advertising at great expense prior to the defendant's product being put on the market. He found that the intention was not to pass off the defendant's goods as those of the plaintiff, but to take advantage of the market developed by the advertising campaign which the plaintiff had initiated. The Privy Council upheld findings that there had been no deception because the goods had been sufficiently distinguished. The plaintiff had needed to show that in doing so the defendant infringed the plaintiff's intangible property rights in the goodwill attaching to its product: Cadbury Schweppes [1980] 2 NSWLR at 861 [35]. Their Lordships upheld the trial judge's finding that although the two cans in which the rival traders marketed their soft drink were of the same size (a stock size and shape in the trade) and similar colour, the defendant had sufficiently distinguished its product. The judge found it could readily be seen that they were different: Cadbury Schweppes [1980] 2 NSWLR at 862-863 [42]. 78 Ricegrowers argued that the collection in its packaging of obvious features in an attractive way not thought of before should be seen as a new idea which created a valuable resource to the person who conceived it, just as might be the case with an original invention for which a patent was claimed. It asserted that, in effect, Real Foods had produced such similar packaging for its three new flavoured corn thins that their get-up would convey the pleaded representations to an ordinary reasonable consumer and thus pass off Real Foods' goods as Ricegrowers'.


case_text: Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford & Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539.


case_text: Their Lordships went on, through Lord Scarman, to say that competition had to remain free and was safeguarded by the necessity for the plaintiff to prove that he has built up an intangible property right which he seeks to protect in the action: Cadbury Schweppes [1980] 2 NSWLR at 858 [23]: see too Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] [1984] HCA 73 ; (1984) 156 CLR 414 at 445 per Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed). In ConAgra 33 FCR at 356 Gummow J said: But it is to be observed that the law of passing off contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form. However, "the classical trinity" does serve to emphasise three core concepts in this area of the law. This appeal is concerned with all of them, namely, the geographical requirements for a sufficient reputation, the nature of the interest damaged, and the significance of fraud in the making of the misrepresentation.


case_text: However, their Honours concluded that in the end it was still a question of fact for the court to determine whether, indeed, there had been established a reasonable probability of deception or confusion from the use, in that case, of a trademark or device. They held that the main issue in the case was a question which was never susceptible of much discussion. They said ( Australian Woollen Mills 58 CLR at 659; see too Burford & Sons 8 CLR at 220 per O'Connor J; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354 at 389 [121] per Weinberg and Dowsett JJ, Branson J agreeing; Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 at 40 per Lord Simonds, with whom Lords Wright, Porter and Goddard agreed): It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs. 72 In Cadbury Schweppes Pty Limited v Darrell Lea Chocolate Shops Pty Limited [2007] FCAFC 70 ; (2007) 159 FCR 397 at 418-419 [96] - [99] Black CJ, Emmett and Middleton JJ observed that the principles relating to passing off do not necessarily require a plaintiff to establish an exclusive reputation in relation to the use of a particular colour, in that case, purple. They said that the question was whether the plaintiff could establish facts that demonstrate that a particular use by the defendant of the colour was likely to mislead or deceive consumers into believing that there was relevant connection between the defendant and the plaintiff or their respective products: Darrell Lea 159 FCR at 418 [96]; see too Office Cleaning 63 RPC at 42 per Lord Simonds. They observed that both in the context of Pt V of the Trade Practices Act and the common law tort of passing off, trade indicia other than names and logos can become associated with a particular trader, so that use by another trader could give rise to misleading or deceptive conduct or passing off. They said ( Darrell Lea 159 FCR at 418 [97]): If particular branding elements used by a trader have been identified in a special way with that trader in the minds of the members of the public, there may be misleading or deceptive conduct by reason of the appropriation of those particular branding elements by another trader. 106 Ricegrowers has not demonstrated that Real Foods' use of its packaging was calculated or likely to lead the ordinary reasonable consumer to believe that any of the three corn thin flavoured corn cakes were made by or in some way associated with Ricegrowers or its SunRice products (the sour cream and chives, or sea salt and balsamic vinegar thin flavoured rice cakes or the nacho cheese flavoured corn cake): Darrell Lea 159 FCR at 418-419 [96]-[99]; Office Cleaning 63 RPC at 42. The ordinary reasonable consumer would not believe that, to the extent that the packaging of the flavoured Real Foods products was similar, any of those packages emanated from or were in any way associated with Ricegrowers or SunRice: Campomar 202 CLR at 88-89 [109]-[110]; Cadbury Schweppes [1980] 2 NSWLR at 858 [22]; Borden [1990] 1 WLR at 506F-G; Payton 17 RPC at 51; see too Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 9) [2008] FCA 470 at [88] per Heerey J. 108 There is no reason to conclude that Ricegrowers is entitled to a monopoly on colours and flow packs for the packaging of corn or rice cakes with the features of those on Real Foods' packaging complained of. Here, Real Foods adopted colours and printed flow pack packaging which were in common use in the savoury biscuits category. Just because Ricegrowers was first to use these in the corn cake and rice cake subcategories did not entitle it to a monopoly of their use. Real Foods took sufficient steps, in all the circumstances, to distinguish its flavoured "Corn Thins" from the three conflicting products of SunRice: cp: Campomar 202 CLR at 84 [99]; Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited [1982] HCA 44 ; (1981) 149 CLR 191 at 200 per Gibbs CJ; Office Cleaning 63 RPC at 43. The ordinary reasonable consumer was used to seeing the corn and rice cakes products of the parties displayed standing up in the shelves. The new packaging for the new "Corn Thins" was presented as part of the family or group of products distinct from the SunRice family or group. When one of the "Corn Thins" flavoured corn cakes varieties was placed within the SunRice product display, as is shown in some photographs in evidence, they look noticeably out of place on the shelves and in the wrong "family" or group. I am of opinion that the ordinary reasonable consumer would notice this and realise the products were not related, even if they wondered why the supermarket had displayed them in this way: Hornsby Building Information Centre 140 CLR at 229; Cadbury Schweppes [1980] 2 NSWLR at 858 [21].


case_text: There is no reason to conclude that Ricegrowers is entitled to a monopoly on colours and flow packs for the packaging of corn or rice cakes with the features of those on Real Foods' packaging complained of. Here, Real Foods adopted colours and printed flow pack packaging which were in common use in the savoury biscuits category. Just because Ricegrowers was first to use these in the corn cake and rice cake subcategories did not entitle it to a monopoly of their use. Real Foods took sufficient steps, in all the circumstances, to distinguish its flavoured "Corn Thins" from the three conflicting products of SunRice: cp: Campomar 202 CLR at 84 [99]; Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited [1982] HCA 44 ; (1981) 149 CLR 191 at 200 per Gibbs CJ; Office Cleaning 63 RPC at 43. The ordinary reasonable consumer was used to seeing the corn and rice cakes products of the parties displayed standing up in the shelves. The new packaging for the new "Corn Thins" was presented as part of the family or group of products distinct from the SunRice family or group. When one of the "Corn Thins" flavoured corn cakes varieties was placed within the SunRice product display, as is shown in some photographs in evidence, they look noticeably out of place on the shelves and in the wrong "family" or group. I am of opinion that the ordinary reasonable consumer would notice this and realise the products were not related, even if they wondered why the supermarket had displayed them in this way: Hornsby Building Information Centre 140 CLR at 229; Cadbury Schweppes [1980] 2 NSWLR at 858 [21].


case_text: O'Connor J found that the question for determination was whether the defendant had made the difference of manufacture and ownership clear on the face of the package when adopting cartons of the same material, colour, shape and size of the plaintiff's packaging. He applied what Lindley MR said in Payton & Co Ltd v Snelling Lampard & Co Ltd (1899) 17 RPC 48 at 52. Lindley MR discussed the situation where goods themselves resembled one another, in that case coffee, and were packaged similarly. He said that the issue was not that the defendant's goods or get-up was like the plaintiff's by reason of the features common to them and others. Rather, in a passage cited with approval by O'Connor J in Burford & Sons 8 CLR at 217, in order to succeed in a passing off action, the plaintiff: ...must make out that the defendant's are like his by reason of something peculiar to him, and by reason of the defendant having adopted some mark, or device, or label, or something of that kind, which distinguishes the plaintiff's from other goods which have, like his, the features common to the trade. Unless the plaintiff can bring his case up to that, he fails. 63 Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford & Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539. 106 Ricegrowers has not demonstrated that Real Foods' use of its packaging was calculated or likely to lead the ordinary reasonable consumer to believe that any of the three corn thin flavoured corn cakes were made by or in some way associated with Ricegrowers or its SunRice products (the sour cream and chives, or sea salt and balsamic vinegar thin flavoured rice cakes or the nacho cheese flavoured corn cake): Darrell Lea 159 FCR at 418-419 [96]-[99]; Office Cleaning 63 RPC at 42. The ordinary reasonable consumer would not believe that, to the extent that the packaging of the flavoured Real Foods products was similar, any of those packages emanated from or were in any way associated with Ricegrowers or SunRice: Campomar 202 CLR at 88-89 [109]-[110]; Cadbury Schweppes [1980] 2 NSWLR at 858 [22]; Borden [1990] 1 WLR at 506F-G; Payton 17 RPC at 51; see too Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 9) [2008] FCA 470 at [88] per Heerey J.


case_title: Payton & Co Ltd v Snelling Lampard & Co Ltd [1901] AC 308

case_text: Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford & Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539. 70 In Payton [1901] AC at 311 Lord Macnaghten said that the evidence of witnesses as to whether a customer would be likely to be deceived was, not a matter for the witnesses, but for the judge. He said, in a passage approved by Dixon CJ, Webb, Kitto and Taylor JJ in Scott v Numurkah Corporation [1954] HCA 14 ; (1954) 91 CLR 300 at 313: The judge, looking at the exhibits before him and also paying due attention to the evidence adduced, must not surrender his own independent judgment to any witness.


case_text: Much later the House of Lords held that a plaintiff who sold lemon juice in a container resembling a natural lemon with a green triangular label bearing the word "Jif" was entitled in an action for passing off to protect the get-up and packaging of the lemon shape because over the years a secondary meaning had been created associating the plaintiff's get-up with goods manufactured by it: Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 506F-G per Lord Oliver of Aylmerton who said: Here the mere fact that he has previously been the only trader dealing in goods of that type and so described may lead members of the public to believe that all such goods must emanate from him simply because they know of no other. To succeed in such a case he must demonstrate more than simply the sole use of the descriptive term. He must demonstrate that it has become so closely associated with his goods as to acquire the secondary meaning not simply of goods of that description but specifically of goods of which he and he alone is the source. 63 Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford & Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539. 64 In Borden [1990] 1 WLR at 514H-515C Lord Jauncey of Tullichettle said that a trader could only claim protection for such capricious additions to a commonly used container as distinguished his use of that container from the use of other traders. Thus, the trader may prevent a rival copying the label on boxes or perhaps the distinctive combination of colours on tins but cannot stop the rival using ordinary boxes or tins simply because they happen to be the same shape and size as his. He said that it was not the shape and size of the container which identified the product of a particular trader to the public, but the capricious additions to it by way of distinctive labelling or a combination of colour or graphic design. He referred to JB Williams Company v H Bronnley & Co Limited (1909) 26 RPC 765 at 771 per Cozens-Hardy MR and at 774 per Farwell LJ. In that case, at 773, Fletcher Moulton LJ had said there that the get-up of an article meant a capricious addition to the article itself, such as the colour or shape or wrapper or anything of that kind: see too Doctor Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281 at 369 [339] per Goldberg J; and Borden [1990] 1 WLR at 515C-D per Lord Jauncey. 66 So, in a claim alleging that a contravention of s 52 of the Trade Practices Act has occurred, the court considers the effect on an ordinary reasonable shopper by conduct involving the making of a representation to the class of retail consumers shopping in a supermarket displaying a trader's packaged goods on its shelves: Campomar 202 CLR at 84-85 [101]-[103]. The court attributes particular characteristics to this shopper. In actions for passing off a similar test applies in assessing whether a representation was made and, if so, what its effect was. So, in Borden [1990] 1 WLR at 509C-D Lord Oliver said that this is done against the background of the type of market in which the goods are sold, the manner in which they are sold, and the habits and characteristics of purchasers in that market: see too Campomar 202 CLR at 84 [100]. 81 The parties agreed that the ordinary reasonable consumer ( Campomar 202 CLR at 84-85 [101]-[103]: Borden [1990] 1 WLR at 509C-D) was described accurately in the packaging brief prepared by Ms Anderson as having the following demographic makeup, namely: the ordinary reasonable consumer of the parties' rice and corn cake products was a female aged between 30 and 49 years. Most would have middle or older families (i.e. school age children or teenagers) but some would not have children; some would be in households with either one or two income earners. She would be working either full-time or part-time, be married and educated. The ordinary reasonable consumer would be purchasing these products as snack foods for herself and her entire family unit. She would be health conscious and would want to set a good example for her family by her healthy eating. She also would be conscious of her weight and would feel guilty when snacking. She would not want to have foods that were full of fat or sugar. Nor would she want to give her children or teenagers such foods or set a bad example for them. 85 The ordinary reasonable consumer was used to seeing the two distinct families of goods presented on the supermarket shelves in this way: Borden [1990] 1 WLR at 509C-D; Campomar 202 CLR at 84-85 [100]-[103]. 106 Ricegrowers has not demonstrated that Real Foods' use of its packaging was calculated or likely to lead the ordinary reasonable consumer to believe that any of the three corn thin flavoured corn cakes were made by or in some way associated with Ricegrowers or its SunRice products (the sour cream and chives, or sea salt and balsamic vinegar thin flavoured rice cakes or the nacho cheese flavoured corn cake): Darrell Lea 159 FCR at 418-419 [96]-[99]; Office Cleaning 63 RPC at 42. The ordinary reasonable consumer would not believe that, to the extent that the packaging of the flavoured Real Foods products was similar, any of those packages emanated from or were in any way associated with Ricegrowers or SunRice: Campomar 202 CLR at 88-89 [109]-[110]; Cadbury Schweppes [1980] 2 NSWLR at 858 [22]; Borden [1990] 1 WLR at 506F-G; Payton 17 RPC at 51; see too Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 9) [2008] FCA 470 at [88] per Heerey J.


case_text: In Payton [1901] AC at 311 Lord Macnaghten said that the evidence of witnesses as to whether a customer would be likely to be deceived was, not a matter for the witnesses, but for the judge. He said, in a passage approved by Dixon CJ, Webb, Kitto and Taylor JJ in Scott v Numurkah Corporation [1954] HCA 14 ; (1954) 91 CLR 300 at 313: The judge, looking at the exhibits before him and also paying due attention to the evidence adduced, must not surrender his own independent judgment to any witness.


case_text: However, their Honours concluded that in the end it was still a question of fact for the court to determine whether, indeed, there had been established a reasonable probability of deception or confusion from the use, in that case, of a trademark or device. They held that the main issue in the case was a question which was never susceptible of much discussion. They said ( Australian Woollen Mills 58 CLR at 659; see too Burford & Sons 8 CLR at 220 per O'Connor J; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354 at 389 [121] per Weinberg and Dowsett JJ, Branson J agreeing; Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 at 40 per Lord Simonds, with whom Lords Wright, Porter and Goddard agreed): It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.


case_text: In these proceedings SunRice seeks only equitable relief in respect of the claim for passing off; it has abandoned any claim for damages and seeks only an account and injunctive relief. Thus, the proceedings for passing off seek a remedy to protect against injury to the goodwill built up by the activities of SunRice: Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 ; (2000) 202 CLR 45 at 88 [108] per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ. And, as their Honours pointed out, the action based on a contravention of s 52 is designed to protect consumers. Whether or not conduct amounts to a representation is a question of fact to be decided by considering what was said, written, and done against the background of all surrounding circumstances: see Campomar 202 CLR at 84 [100], citing Taco Co of Australian Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202 per Deane and Fitzgerald JJ.


case_text: Lord Parker identified the basis of a passing off action as a false representation by the defendant that his goods were the plaintiff's. In Campomar 202 CLR at 88-89 at [109]-[110] the High Court recognised that the range of the defendant's conduct which could constitute passing off included inducing consumers to believe that the defendant's goods or services had an association, quality or endorsement which belonged, or would belong, to the goods or services of or associated with the plaintiff. As Lord Parker recognised, relevantly here, the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the get-up in question, impliedly represents the defendant's goods to be goods of the plaintiff or associated with the plaintiff, whether generally or in respect of a particular class or quality. In other words, the question is whether the defendant's use of the get-up is calculated to deceive. He pointed out that it would be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on: Spalding 84 LJ Ch at 450; see too Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369-370 per Beaumont, Branson and Lindgren JJ; ConAgra 33 FCR at 356 per Gummow J.


case_title: Alister v R (1984) 154 CLR 404

case_text: is also clear that although a mere "fishing" expedition can never justify the issue of subpoenas, it may be enough that it appears to be "on the cards" that the documents will materially assist the applicant: Alister v R (1984) 154 CLR 404 ; cf R v Saleam [1999] NSWCCA 86 at [11] .


case_text: is common ground that a subpoena may be issued in respect of an interlocutory application, and indeed this is made clear by such cases as Bailey v Beagle Management Pty Ltd [2001] FCA 60 ; (2001) 105 FCR 136 (subpoena issued pursuant to a security for costs application by the respondent to produce standard financial documents of a corporate applicant) and Dorajay Pty Ltd v Aristocrat Leisure Ltd [2005] FCA 588 (subpoena issued relating to a notice of motion pursuant to s 33N(1) Federal Court of Australia Act 1976 (Cth)). Consideration


case_title: Dorajay Pty Ltd v Aristocrat Leisure Ltd [2005] FCA 588


case_text: law is clear that a subpoena cannot issue to facilitate "fishing" by a party. Of particular relevance in the circumstances of this case are comments of Jordan CJ in Small (1938) 38 SR (NSW) 564 at 575 where his Honour observed: In the absence of special circumstances... A party is no more entitled to use a subpoena duces tecum than he is a summons for interrogatories, for the purpose of "fishing", i.e. endeavouring, not to obtain evidence to support his case but to discover whether he has a case at all : Hennessy v Wright ... (emphasis added) Indeed it is useful to also note comments of Lord Esher MR in Hennessy v Wright (No 2) (1890) 24 QBD 445 at 448 where his Lordship said in the context of interrogatories and "fishing" by the plaintiff in that case: In other words, the plaintiff wishes to maintain his questions, and to insist upon answers to them, in order that he may find out something of which he knows nothing now, which might enable him to make a case of which he has no knowledge at present... Significantly, the key issue arising in the notice of motion filed 17 November 2008 is whether Habitare Pty Ltd and other parties should be joined as respondents to the substantive proceedings. The applicant candidly concedes that the purpose of the subpoena is to obtain further evidence: On balance, I consider that the applicant in this case has established that the purpose of the subpoenas is to obtain further evidence relevant to the notice of motion filed 17 November 2008, that this is a legitimate forensic purpose, and that the claim cannot be categorised as "fishing". I form this view because: Accordingly, I consider that the applicant has demonstrated a legitimate forensic purpose for seeking issue of subpoenas in relation to the documents sought, and that the orders sought by the notice of motion before the Court cannot be characterised as "fishing". "On the cards" Is it "on the cards" that the documentation sought by the applicant will materially assist the applicant's case in relation to the notice of motion filed 17 November 2008?


case_text: practice whereby the Court gives leave for subpoenas to be issued against a third party pursuant to O 27A has survived the introduction of O 15A Federal Court Rules providing for orders of the Court relating to non-party discovery. In relation to a third party, it is clear that a subpoena duces tecum may be directed to a third party prior to trial: where it appears to the court to be in the interests of justice and the proper and expeditious conduct of a proceeding that a person produce documents before the date of hearing of the application. ( Hughes v WA Cricket Association (1986) 66 ALR 541 at 543; cf P Dawson Nominees Pty Ltd v Multiplex Ltd (2007) 64 ACSR 53 at 57 [23])


case_text: governing the grant of leave by the Court to issue subpoenas were considered in detail by Greenwood J in McIlwain v Ramsey Food Packaging Pty Ltd [2005] FCA 1233. In that case his Honour observed, so far as is relevant in these proceedings, that:


case_title: P Dawson Nominees Pty Ltd v Multiplex Ltd (2007) 64 ACSR 53


case_title: R v Saleam [1999] NSWCCA 86


case_title: The Commissioner for Railways v Small (1938) 38 SR (NSW) 564

case_text: a third party however a subpoena is not to be used as a substitute for discovery. As Jordan CJ observed in The Commissioner for Railways v Small (1938) 38 SR (NSW): A writ of subpoena duces tecum may be addressed to a stranger to the cause or to a party. If it be addressed to a stranger, it must specify with reasonable particularity the documents which are required to be produced. A subpoena duces tecum ought not to be issued to such a person requiring him to search for and produce all such documents as he may have in his possession or power relating to a particular subject matter. It is not legitimate to use a subpoena for the purpose of endeavouring to obtain what would be in effect discovery of documents against a person who, being a stranger, is not liable to make discovery. A stranger to the cause ought not to be required to go to trouble and perhaps to expense in ransacking his records and endeavouring to form a judgment as to whether any of his papers throw light on a dispute which is to be litigated upon issues of which he is presumably ignorant... (at 573) The law is clear that a subpoena cannot issue to facilitate "fishing" by a party. Of particular relevance in the circumstances of this case are comments of Jordan CJ in Small (1938) 38 SR (NSW) 564 at 575 where his Honour observed: In the absence of special circumstances... A party is no more entitled to use a subpoena duces tecum than he is a summons for interrogatories, for the purpose of "fishing", i.e. endeavouring, not to obtain evidence to support his case but to discover whether he has a case at all : Hennessy v Wright ... (emphasis added)


case_title: Trade Practices Commission v Arnotts Limited (1989) 88 ALR 90


case_text: The context or setting in which a mark appears is an important consideration in determining whether it has been used as a trade mark: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 422 ( Shell ). 17 The key witnesses and evidence relied upon by the parties were: • Mr Melville Speers, who is director of World Brands Management Pty Ltd, the first cross-respondent, and two affidavits sworn by him on 21 September 2006 and 7 April 2008 • Mr Trenear, who is Managing Director of YD, and one affidavit sworn by him on 25 May 2007 • Mr Vickery, who is a consultant and director of DawVic Pty Ltd, Footwear Consultancy, and one affidavit sworn by him on 6 July 2007. With the exception of Mr Trenear, none of the witnesses was seriously challenged in cross examination. The applicants submit that elements of Mr Trenear's evidence were unreliable, but notwithstanding this I accept his evidence as a whole. 18 The relevant market is the buying and selling of shoes. It involves shoes similar to that expressed in the Shape Mark. Diesel's shoes are sold in stores such as Myer and David Jones amongst many other retail and chain 'youth' stores. Substantial sales of the shoes have been made over the past ten years. Mr Speers said 30,000 unit sales of the Wish (male) and Evelyn (female) styles of shoe, and 15,000 unit sales of the Kort (male) and Kortnay (female) styles of shoe, were made in that period.


case_text: The above findings are based not only on the evidence in the proceedings, but on commonsense and judicial experience of the process people typically engage in when purchasing footwear. In World Brands Management Pty Ltd v Cube Footwear Pty Ltd [2004] FCA 769 at [7] (albeit in a passing off context) Heerey J said: Turning to the TPA and passing-off claims, I do not agree that the decision of Goldberg J in Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281 establishes some rule of law as to the circumstances which pertain in the retail footwear trade. Nevertheless, his Honour's observations are valuable in another way. They light up and provoke one's memories from personal experience as to the way in which shoes are bought by retail consumers. As counsel for the respondents pointed out, shoes are usually not a quick impulsive purchase of something off the supermarket shelf. Rather, shoes are compared and tried on and thought over. Shoes are expected to last for some years at least. If not well chosen, they may cause discomfort and regret.


case_title: Re 'GE' Trade Mark (1972) 1B IPR

case_text: To the same effect are the observations of Lord Diplock in Re 'GE' Trade Mark (1972) 1B IPR 543 at 567: [W]here goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a "jury question". By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused. The question does not cease to be a "jury question" when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself. See also Jafferjee v Scarlett [1937] HCA 36 ; (1937) 57 CLR 115 at 122-123.


case_title: Jafferjee v Scarlett [1937] HCA 36 ; (1937) 57 CLR 115


case_text: Use "as a trade mark" in s 120(1) 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. See Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 341, 351 ( Johnson ). That is the concept embodied in the definition of "trade mark" in s 17.


case_text: In Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107 ( All-Fect ) the appellant's well known 'Coca-Cola shaped bottle' mark was registered in two-dimensional form. Key features of the shape included: • its curved rather than flat sides • a top portion with longitudinal fluting • a central portion without fluting and a lower portion with fluting • a flat base and a banded neck. 47 The respondent imported and distributed cola-flavoured confectionary. The issues in suit were whether a three-dimensional shape - namely confectionary - could be used as a mark to denote the origin of goods, and whether such use infringed the appellant's registered two-dimensional trade mark. At [20] the Full Court referred to the authorities relevant to the issue of use: ... the question is whether the sign used indicates origin of goods in the user of the sign; whether there is a connection in the course of trade between the goods and the user of the sign. 48 At [31] the Court said: [T]he question at this stage is not whether the respondent has used a sign so as to indicate a connection between it and the appellant. It is whether the use indicates a connection between the confectionary and the respondent. So it does not assist the respondent to demonstrate by reference to the packaging that the suggested connection is with Efruti rather than Coca Cola. 49 These passages reflect High Court authority that a trade mark is a sign used to indicate origin of the goods in the user of that sign. Therefore, in the ordinary case, a court must first examine the use of the impugned mark and whether such use is trade mark use for the purposes of the Act. In cases such as the present this threshold issue should be determined before the court considers whether the two marks are substantially identical or deceptively similar. The threshold issue only examines the impugned mark; not the registered trade mark. As was said in All-Fect at [32], "At this stage the hypothesis is not that the appellant is trying to tell the consumer that the goods emanate from it, but that the respondent is trying to tell the consumer that the goods emanate from the respondent". 50 The Full Court in All-Fect held that the confectionary shape denoted use as a mark, primarily because the confectionary had non-descriptive features in the shape of the mark. The Court said at [25]: The confectionary has three features that are not descriptive of the goods. They are the silhouette, the fluting at the top and bottom, and the label band. It is not necessary for the respondent to adopt any of those features in order to inform consumers that its product is a cola flavoured sweet. It could do so by using the cola colour, the word COLA and the shape of an ordinary straight walled bottle. The silhouette, fluting and band are striking features of the confectionary, and are apt to distinguish it from the goods of other traders. The primary function performed by these features is to distinguish the goods from others. That is to use those features as a mark. It is true, as the respondent said, that the fact that a feature is not descriptive of goods does not necessarily establish that it is used to distinguish or differentiate them. But in the present case we are compelled to the conclusion that the non-descriptive features have been put there to make the goods more arresting of appearance and more attractive, and thus to distinguish them from the goods of other traders. (Emphasis added) 51 The existence of striking features that were not descriptive of the confectionary was enough to indicate that it was used as a trade mark. Features that made the goods more arresting of appearance and more attractive had the capacity to distinguish the respondent's goods from those of others. 52 At [35] the Court said that whether the respondent had used features of the confectionary as a trade mark was a matter for the court, and was not governed by the absence of evidence that shopkeepers or customers concluded that the confectionary had a trade mark origin. 61 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]. 63 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 . 71 In my view the Photon and the Cube shoe are used as trade marks where the features listed in [70], especially features (a), (b), (d), (g) and (h), are combined in the shape of a shoe. The most important of these features for present purposes are the stitched YD label on both shoes, the small rounded piece at the back of the Cube shoe, and the Photon's stripe running parallel to the base of the sole. Neither the Cube's rounded piece nor the Photon's parallel strip is found on any of the shoes in evidence other than YD's shoes. Mr Vickery described the rounded piece as "quite distinctive" and not a feature commonly used in the shoe industry. It can I think be considered a striking feature given its lack of commonality in the trade: cf All-Fect at [25]. 72 Features (c), (e), (i) and (j) in the list at [70] are either functional or in common use. Common features are like descriptive words. 73 In my view the non-functional and non-descriptive features referred to in [71] overwhelm the functional features and common features referred to in [72] and give the Cube and Photon shoes a trade mark purpose. 93 Of the essential features, the D is the most dominant feature of the Shape Mark. Significant weight and importance have been attached to that feature: cf Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 at [18] ( Melbourne Chinese Press ) and All-Fect at [42]. 99 Finally, the context is all important. In the present case the risk of confusion is mitigated by the circumstances in which the products are bought and sold: • Purchasers of the shoes in suit are metro-shoppers. They are fashion conscious and discerning in their choices. They are likely to be well informed about the products before purchasing them. The steps involved in a purchase (see [26]) constitute a relatively lengthy process in the course of which a customer will become well informed about a product before making a purchase. • Metro-shoppers review product labels. Branding, labels and logos are important features to this class of consumer. Their purchasing habits are refined, and this lessens the chance of confusion. • YD's shoes are sold only in YD stores. The stores display YD's signage, and customers are well aware that they are in a YD store when purchasing an item. • The applicants' and YD's shoes are relatively expensive items compared with impulse products such as soft drinks and confectionary: cf. All-Fect at [41]. Purchasers of shoes generally tend to be discerning in their purchasing habits. • While it is not necessary for the applicants to lead evidence of actual deception (cf Crazy Ron's at [95]), it is relevant that there was no such evidence.


case_text: The issue in Koninklijke Philips Electrics NV v Remington Products Pty Ltd [2000] FCA 876 ; (2000) 100 FCR 90 ( Remington ) was whether Remington's electric shaver was used as a trade mark. Philips' marks were shapes depicting a triple headed rotary shaver. The product depicted in the shape had previously been the subject of a patent which had expired. Remington's product was very similar to the Philips mark, and Remington used images of the shaver head on its packaging and in its brochures and press advertisements. The primary judge's holding that this use was not use in a trade mark sense was upheld on appeal. Burchett J (with whom Hill and Branson JJ agreed) said at [12]: In my opinion, merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark (here the marks do depict, one more completely than the other, a working part of a triple rotary shaver) is not to engage in a "use" of the mark "upon, or in physical or other relation to, the goods" within s 7(4) , or to "use" it "in relation to the goods" within s 20(1). "Use" and "use", in those contexts, convey 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 a purpose, being the purpose of conveying information about their commercial origin. The mark is added, as something distinct from the goods. It may be closely bound up with the goods, as when it is written upon them, or stamped into them, or moulded onto them ... or, in the case of a liquid, it may be sold in a container so formed as to constitute at once both container and mark. But in none of these cases is the mark devoid of a separate identity from that of the goods. The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as the trade mark. The reason is plain: it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately wish to produce similar goods (unless, of course, there are, for the time being, subsisting patent, design or other rights to prevent them from doing so), 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: Johnson & Johnson at 342, 348-349. 54 In other words where the features of a mark are functional aspects of the design, they are not being used as a trade mark for distinguishing purposes, because they are essential to the 'usefulness' of the product. The triple headed rotary design was found to be one of the best ways to make an efficient electric shaver. It was a useful model and "proved extremely successful": at [3]. 55 The Full Court provided guidance as to when a shape may be used as a trade mark for the purposes of the Act. At [16]-[17] Burchett J said: It does not follow that a shape can never be registered as a trade mark if it is the shape of the whole or a part of the relevant goods, so long as the goods remain distinct from the mark. Some special shape of a container for a liquid may, subject to the matters already discussed, be used as a trade mark, just as the shape of a medallion attached to goods might be so used. A shape may be applied, as has been said, in relation to goods, perhaps by moulding or impressing, so that it becomes a feature of their shape, though it may be irrelevant to their function. Just as a special word may be coined, a special shape may be created as a badge of origin. But that is not to say that the 1995 Act has invalidated what Windeyer J said in Smith Kline. The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded. For they are cases where the shape that is a mark is "extra", added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J's words, "an existence independently of the mark" which is imposed upon them. His Honour said at [17]: [A] mark remains something "extra" added to distinguish the products of one trader from those of another, a function which plainly cannot be performed by a mark consisting of either a word or a shape other traders may legitimately wish to use.


case_text: In finding that Remington's use was not use as a trade mark, the Full Court gave particular attention to the rotary heads of Remington's product. They were viewed as "vitally important" to the design of the product and having a "purpose quite different from those of a trade mark": at [18]. The fact that the three-headed rotary design was one of the best designs for a rotary shaver was a relevant factor in Remington's favour. Another factor was that Remington had prominently displayed its 'Remington®' trade mark on the packaging of the product and on the product itself "in a way that a mark would be used for goods of this type": at [6]-[7] and [19]. The extent of the use of the 'Remington®' mark is more fully described by the primary judge: Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 at [10] to [12] and [31] to [37].


case_text: In Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27 ( Mayne ) the applicant had obtained trade mark registration over a previously patented shape - a fence dropper. The mark was an S-shaped device used in rural settings to enhance the capacity of a fence to function as a fence and to retain tension in the fence "should it be impacted by a beast": at [52]. 61 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]. 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. 68 YD's submission that the sole patterns are applied to provide grip, and are thus for a functional and not for a trade mark purpose, is pitched at too high a level of generality to be helpful in the present context. All soles provide some grip. The sole is inherent in the shoe itself and provides traction when a person is walking or running. Saying that the grip is functional is like saying that the shoe protects the foot from cuts and abrasions. In each case it is too broad a proposition. The position might have been different had there been evidence that the grip pattern provided a special quality leaving little or no room for choice. When choice is limited, it is likely that the goods or an important feature thereof will reflect the product or feature itself, as in Mayne and Remington . In such a case function will overwhelm a trade mark purpose. In the absence of evidence to this effect, grip is in my view but a broad functional requirement. As Mr Vickery's evidence indicated, this function can be achieved by use of a variety of different patterns. In my view any functionality of the grip offered by the sole is overwhelmed by the non-descriptive aspects of the marks. 69 In the light of what I have said at [40] and [41], the Gamon shoe does not fall for consideration. If what I have said there is wrong, the Gamon sole is almost identical to the Cube, and what I have said about that sole is applicable to the Gamon sole. 70 The features of the Photon and Cube shoes are set out below: (a) a stylised YD label stitched to the inside sole of each shoe; (b) a sole comprising a rubber cross-hatched pattern with dimples between the triangles in the Cube shoe, and without dimples in the case of the Photon, which also has a blank rectangular shape at the base of the sole; (c) two oblique stripes on either side of the Cube shoes, and two stripes on the Photon shoe with the front stripe turning back to overlap the other; (d) the Cube shoe has a "small rounded piece" at the back of the shoe and the Photon has a stripe on the back that is parallel to the base of the sole; (e) each shoe has a squarish toe cap or toe panel incorporating a strip of material flowing from the bottom of the laces to the point where the toe cap or toe panel joins the sole; (f) each shoe has small dots carved into its side; (g) the Cube shoe has a flat sole with two rubber panels coming from the outer side of the sole to the upper of the shoe. The Photon has a flat sole and three such panels; (h) each shoe has one large rubber panel coming from the inner side of the sole to the upper of the shoe; (i) each shoe has a facing; (j) each shoe has a padded collar. It is not claimed that the Gamon shoe infringes the Shape Mark. 74 This case is not as clear cut as Kenman Kandy on the one hand (use) or Mayne and Remington on the other (no use). It is towards the middle of the spectrum referred to at [62] to [64], neither black nor white, but just on the use side of the grey in the middle.


case_text: Greenwood J cited with approval the observation of Stone J as a member of the Full Court in Kenman Kandy Aust Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494 at [137] ( Kenman Kandy ): The 'inherent form' of goods, in my view, can only refer to those aspects of form that have functional significance. Were the 1995 Act to enable the registration of a trade mark that would give the owner a monopoly over functional features, it would indeed have made a radical change to trade mark law. Greenwood J said at [67]: Where the three dimensional shape inheres in goods or a part of goods and the goods or that part perform a functional role (particularly where the shape derives from a novel and patented improvement to functionality), the use of the shape ... is not use of the sign as a trade mark but the expression of the essential features of the goods. 60 As distinct from a 'word', a shape may be registrable under several intellectual property regimes. Greenwood J at [69] said: A further consideration bearing on whether the respondent has used the shape of the S loop catch as a trade mark is this. The social compact underlying the patent legislation is the encouragement of novel innovation by the grant, subject to qualifying criteria, of a term of exclusivity on the footing that upon the expiry of the monopoly, others are free to exercise the former monopoly. The 1995 Act by enabling shapes to be registered as a badge of origin did not establish a regime under which inventors might be able to secure enduring exclusive rights of use and foreclosure of others through infringement proceedings for the shape of a functional manner of new manufacture formerly the subject of a patent, as in this case. A shape essential to the very subject of the patent will almost always be largely functional as the invention must be novel and useful. If the shape is entirely incidental to the subject matter of the patent, it is unlikely to be a shape bearing any functional element. 61 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]. 63 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 . 74 This case is not as clear cut as Kenman Kandy on the one hand (use) or Mayne and Remington on the other (no use). It is towards the middle of the spectrum referred to at [62] to [64], neither black nor white, but just on the use side of the grey in the middle. 112 Clark was a word case, but Kitto J's observations have been applied to signs other than words, including shapes and aspects of packages: Kenman Kandy . In that case at [144] to [145] Stone J said (omitting citations): The authorities give very little guidance as to what is necessary for inherent adaption either generally or with respect to shapes. It is clear that words (ordinary or technical) which are descriptive of the character or quality of the goods are not inherently adapted to distinguish .... It is also well established that the name of a geographical location is not inherently adapted to distinguish goods because another trader may legitimately wish to use the name in connection with goods made in or associated with that place .... ... Signs that are descriptive of the character or quality of the relevant goods or which use a geographical name in connection with them cannot be inherently distinctive because the words have significations or associations that invite confusion and because registration of a trade mark using such words would preclude the use by others whose goods have similar qualities or which have a connection with the relevant areas. After referring to Kitto J's judgment in Clark , Stone J continued at [147]: In my opinion it is the absence of these associations and significations that makes a sign inherently adapted to distinguish one trader's goods from those of another. In other words the concept is negative not positive ... ... It is the absence of association and signification that accounts for invented words often being found to be inherently adapted to distinguish a trader's product ....