Lift Shop appeal fails to get up

Use “as a trade mark” for the purposes of s 120 of the Trade Marks Act 1995 (Cth) is conceptually difficult but absolutely critical to an understanding of trade mark infringement. Unless the respondent’s use of the impugned mark is “as a trade mark” it does not infringe the registered mark.

Two recent decisions of the Full Court of the Federal Court have considered this issue,  most recently in a decision published today in the case of Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75.  The Full Court in Lift Shop upheld the primary judge’s finding that the respondent’s use of the phrase “LIFT SHOP” was not use “as a trade mark” in the relevant sense.

The Court (Besanko, Yates & Mortimer JJ) applied the classic authorities on this issue (The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 and Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107) as well as the other recent Full Court case (Nature’s Blend Pty Ltd v Nestlé Australia Ltd (2010) 272 ALR 487) before concluding:

“In the present case, the relevant question is whether the words “Lift Shop”, as used by the respondent in the title of its web page, functioned to distinguish its goods or services from those of others?  Objectively considered, the answer to that question is “no”. “

The following six principles for determining whether use was “as a trade mark” were set out by the Full Court in Nature’s Blend at [19] and affirmed by the Full Court in Lift Shop (citations omitted):

1. Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else;

2.   A mark may contain descriptive elements but still be a “badge of origin”;

3. The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand;

4.The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”;

5.Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words;

6.  In determining the nature and purpose of the impugned words, the Court must ask what a person looking at the label would see and take from it.

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