Shape trade marks are at the farthest reaches of trade mark protection and pose difficult questions in any jurisdiction. A recent Australian decision directly at odds with a similar decision in New Zealand shows that the debate continues, and also what difference the particular wording, even a single word, can make to trade mark legislation.
The first case, which occurred in New Zealand, Fredco Trading v Miller, was about a vine tie, previously protected by a patent and a design. Both registrations had expired and the owner registered a trade mark, obtained on the basis of prior use, for the shape of the vine tie, known as a Klipon tie. It then sought to enforce the trade mark against Miller who was producing a similar vine tie. Miller's vine tie was the only one resembling the Fredco tie. Miller applied to cancel the trade mark, failed at first instance and appealed.
The Court of Appeal endorsed the High Court judge's finding that the mark was largely but not wholly functional, confirmed that the goods themselves can be the mark, and held that the mark had acquired distinctive character through use. The registration was upheld.
Notably New Zealand does not have an equivalent provision to s 3(2) of the United Kingdom Trade Marks Act 1994, expressly prohibiting registration of a mark where the sign consists exclusively of the shape of the goods. This was specifically excluded from the legislation on the basis that the UK provision had proved difficult to interpret and the clause might unduly restrict registration of distinctive shapes.
The decision means that Fredco has a perpetual monopoly in the shape of that particular vine tie, by virtue of its trade mark registration, effectively acquired on the basis of its patent and design monopoly.
Now an Australian court has come out with the opposite answer to a very similar problem. In Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd the Federal Court of Australia has cancelled a trade mark registration for an S loop rod known as a fence dropper. In that case there was also an expired patent. The trade mark owner sought to enforce its trade mark against, ironically, a fence dropper imported from New Zealand into Australia.
The court held that the S shape was essential to the patent and therefore largely functional. The judge held that references to the shape are almost certainly references to the nature of the goods themselves, rather than use of the shape as a trade mark. This was directly contrary to the finding on the same issue in Fredco.
The most conclusive finding is however derived from section 25 of the Australian Trade Marks Act 1995, which provides that a registered owner does not have the exclusive right to use a trade mark where the trade mark contains or consists of a "sign" in relation to an article formerly exploited under a patent, where the patent lapsed over two years ago, and the sign is the only common way to describe the article.
The judge cancelled the registration on the grounds that the act of registering the trade mark was an attempt by Mayne to extend the term of exclusivity lost when the patent expired.
New Zealand legislation has an equivalent provision in its section 66 but there is one major difference: instead of the term "sign", the New Zealand Trade Marks Act 2002 uses the term "word".
It therefore cannot be extended to cover shape trade marks, despite the fact that the definition of a trade mark in the Act is expressed in terms of "signs". It is the writer's view that the Australian position is the better one and the New Zealand legislation should be amended accordingly.
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| Rosemary Wallis |
Baldwins
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342 Lambton Quay
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