Esso-deluxe-3A “trade mark” is defined in s 17 of the TMA as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

Whether a sign is used “as a trade mark” is a fundamental concept. It is relevant to infringement, validity and applications for removal for non-use.

In CocaCola v AllFect Distributors (1999) 96 FCR 107, the Full Court said (at 115):

… Use “as a trade mark” 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 Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 341, 351.

In The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, the High Court considered whether the defendant’s use of an animated “oil drop” cartoon character to advertise its petrol amounted to use as a trade mark.

Kitto J, with whom the other judges agreed, said that “the context is all-important, because not every use of a mark which is identical with or deceptively similar to a registered trade mark infringes the right of property which the proprietor of the mark possesses in virtue of the registration.”

His Honour  considered that the statutory  definition of the word “trade mark” in the Trade Marks Act 1955 (Cth)may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?” (Emphasis added).

While accepting that Shell’s use of its oil man animation was to convey a particular message about its petrol, Kitto J did not consider that a viewer of Shell’s animation would consider that oil drop figure had been chosen to identify the brand source of the petrol in relation to which it was used.  Thus, he considered that the “purpose and nature” of the use complained of was not trade mark use and so the infringement action failed.

In Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117, the Full Court of the Federal Court set out six principles relevant to the question of whether the mark at issue in that case had been used as a trade mark:

  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: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19]; E & J Gallo Winery v Lion Nathan Australia Pty Limited (2010) 265 ALR 645 at [43].
  2. A mark may contain descriptive elements but still be a ‘badge of origin’: Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347- 348; Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; Aldi Stores Ltd Partnership v Frito-Lay Trading GmbH (2001) 54 IPR 344 at [60].
  3. The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422.
  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’: Johnson & Johnson at 347 per Gummow J; Shell Company at 422.
  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: Johnson & Johnson at 347; Anheuser-Busch, Inc v Budějovick[yacute] Budvar, Národní Podnik (2002) 56 IPR 182.
  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: Anheuser-Busch at [186] and the authorities there cited.
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