Global Brand Marketing Inc v YD Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 07 May 2008
• Neutral Citation: [2008] FCA 605
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605

TRADE MARKS – representations of sole and shape marks registered as trade marks in respect of footwear – whether rival vendor used shoes as a trade mark – meaning of use as a trade mark – whether goods themselves can constitute a trade mark – whether the mark must have a separate identity from that of the goods – functional and non‑functional considerations – whether features of shape bear any relation to the function to be performed by the nature of the goods

TRADE MARKS – infringement – representations of sole and shape marks registered in respect of footwear – whether infringement by rival vendor – whether rival’s shoes substantially identical or deceptively similar to registered marks

TRADE MARKS – application for removal of marks from register on ground that not capable of distinguishing proprietor’s goods from those of another ‑ meaning of ‘distinguish’ – application for removal on ground that applicant not owner of mark

Held: The rivals shoes do not infringe trade marks. The attack on the validity of registration fails.

Trade Marks Act 1995 (Cth) ss 7, 10, 17, 41, 58, 88, 120

Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 applied

World Brands Management Pty Ltd v Cube Footwear Pty Ltd [2004] FCA 769 referred to

Re ‘GE’ Trade Mark (1972) 1B IPR referred to

Jafferjee v Scarlett (1937) 57 CLR 115 referred to

Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 applied

Coca‑Cola Company v All‑Fect Distributors Ltd (1999) 96 FCR 107 applied

Koninklijke Philips Electrics NV v Remington Products Pty Ltd (2000) 100 FCR 90 applied

Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (1999) 91 FCR 167 cited

Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27 applied

Kenman Kandy Aust Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 applied

Wellness Pty Ltd v Pro‑Bio Living Waters Pty Ltd (2004) 61 IPR 242 applied

Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 applied

Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Ltd [2004] FCAFC 196 applied

Henschke & Co v Rosemount Estates Pty Ltd (2001) 52 IPR 42 referred to

Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 applied

de Cordova v Vick Chemical Co (1951) 68 RPC 103 applied

Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 applied

Aldi Stores Ltd Partnership v. Frito‑Lay Trading Company GmbH (2001) 54 IPR 344 applied

Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318 cited

Kowa Company Ltd v N V Organon (2005) 66 IPR 131 referred to

Global Brand Marketing Inc v Cube Footwear Pty Ltd [2005] FCA 852 referred to

Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 applied

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 applied

Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601 applied

Aston v Harlee Manufacturing Co (1960) 103 CLR 391 cited

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 cited

Lomas v Winton Shire Council [2003] AIPC 91‑839 applied

Mobileworld Communications Pty Ltd v Q & Q Global Enterprise (2003) 61 IPR 98 cited

In re Jellinek’s Application (1946) 63 RPC 59 cited

Shanahan’s Australian Law of Trade Marks and Passing Off 3^rd ed (2003)

Lahore, Patents, Trade Marks and Related Rights (2006)

GLOBAL BRAND MARKETING INC and DIESEL SPA v YD PTY LIMITED (ACN 096 242590) and TODD TRENEAR; YD PTY LIMITED (ACN 096F 242 590); WORLD BRANDS MANAGEMENT PTY LTD (ACN 093 738 704) and DIESEL SPA

VID 1132 of 2003

SUNDBERG J

7 MAY 2008

MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1132 of 2003

BETWEEN:	GLOBAL BRAND MARKETING INC First Applicant DIESEL SPA Second Applicant
AND:	YD PTY LIMITED (ACN 096 242590) First Respondent TODD TRENEAR Second Respondent
BETWEEN:	YD PTY LIMITED (ACN 096F 242 590) Cross-Claimant
AND:	WORLD BRANDS MANAGEMENT PTY LTD (ACN 093 738 704) First Cross-Respondent DIESEL SPA Second Cross-Respondent

JUDGE:	SUNDBERG J
DATE OF ORDER:	7 MAY 2008
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1. The application be dismissed.

2. The cross‑claim be dismissed.

3. The applicants pay the respondents’ costs of the application.

4. The cross‑claimant pay the cross‑respondents’ costs of the cross‑claim.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1132 of 2003

BETWEEN:	GLOBAL BRAND MARKETING INC First Applicant DIESEL SPA Second Applicant
AND:	YD PTY LIMITED (ACN 096 242590) First Respondent TODD TRENEAR Second Respondent
BETWEEN:	YD PTY LIMITED (ACN 096F 242 590) Cross-Claimant
AND:	WORLD BRANDS MANAGEMENT PTY LTD (ACN 093 738 704) First Cross-Respondent DIESEL SPA Second Cross-Respondent

JUDGE:	SUNDBERG J
DATE:	7 MAY 2008
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

BACKGROUND

1 The second applicant (Diesel) is the registered owner of two trade marks under the Trade Marks Act 1995 (Cth) (the Act). Both trade marks are registered in class 25 in respect of footwear for a ten year period commencing 29 January 2004.

2 There are three styles of footwear sold by the first respondent (YD) in relation to which Diesel alleges trade mark infringement: the Photon shoe, the Cube shoe and the Gamon shoe. The Photon and Cube shoes were in evidence in three dimensional form. The Gamon shoe was not. The applicants allege that YD has infringed the Sole Mark by selling in Australia the Photon, Cube and Gamon footwear. They allege that YD has infringed the Shape Mark by selling the Photon and Cube Footwear.

3 YD denies infringement and contends that the trade marks should be removed from the Register of Trade Marks as they do not comply with the requirements of ss 41 and 58 of the Act.

REGISTERED MARKS AND PROSECUTION HISTORY

4 The Shape Mark (986713) and the Sole Mark (986709) are depicted in that order below.

Shape Mark

5 The Certificate of Registration of the Shape Mark is endorsed as follows:

The trade mark consists of a combination of the stylised letter D together with the shape of a SHOE including its features as depicted in the representations accompanying the application form. The stylised letter D appears on the rear and outer side of the shoe; the sole comprises a rubber cross-hatched pattern with a square containing the stylised letter D; and two oblique stripes on either side of the shoe and one vertical stripe on the rear.

6 The Shape Mark was registered under s 41(3) of the Act on the basis that it combined several features. One of the prominent features is the stylised letter D. In addition to the features specified in the endorsement, the trade mark includes “features as depicted in the representations accompanying the application form”.

7 My inspection of the Shape Mark together with the representations accompanying the application discloses the following features:

· a stylised letter D on the rear and outer side of the shoe

· a sole comprising a rubber cross hatched pattern with a rectangle containing the stylised letter D

· two oblique stripes on either side of the shoe

· one vertical stripe on the rear

· a squarish shaped 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

· small dots carved into the side of the shoe

· a flat sole with three rubber panels coming from the outer side of the sole to the upper of the shoe

· a flat sole with one large rubber panel coming from the inner side of the sole to the upper of the shoe

· a facing

· a padded collar.

Sole Mark

8 There is no endorsement on the Sole Mark Certificate of Registration. The features of the Sole Mark are

· a rubber cross-hatched pattern

· a rectangle containing the stylised letter D.

9 These features are also seen in the underneath view of the Shape Mark. Despite having only two features, the Sole Mark is nevertheless considered a combination mark.

Prosecution history of Shape Mark

10 In her first report dated 28 April 2004 the Trade Mark Examiner objected to the Shape Mark on the ground that:

[The] trade mark consists of the shape of a shoe. The shape is an ordinary shoe shape. Other traders should be able to use an ordinary shoe shape in connection with goods or services similar to yours.

11 The Examiner said the objection could be overcome by either clarifying the exact nature of the mark or providing evidence of acquired distinctiveness under s 41(6) through use of the mark.

12 By letter dated 24 September 2004 Diesel sought to clarify the exact nature of the mark by proposing the following endorsement:

The trade mark consists of the shape of a SHOE including its features as depicted in the representations accompanying the application form and the stylised letter D. The stylised letter D appears on the rear and the outside of the shoe, the sole comprises a rubber cross-hatched pattern with a square containing the stylised letter D; and two oblique stripes on either side of the shoe and one vertical stripe on the rear.

13 Diesel also submitted to the Examiner:

Whether the Trade Mark is registrable will primarily depend on how likely it is that other traders will wish, in good faith, to use the shape of the mark in combination with the other features of the mark. We submit that no other traders would need to use the same shape of the footwear together with the features of the footwear as represented.

14 On 11 October 2004 the Examiner issued her second report. Acceptance of the application was conditioned on the following modified endorsement making it clear that Diesel claimed a...