According to the Australian Trade Mark Search system, as at 9 February 2017, there were 953 shape marks registered as trade marks, and a further 195 pending shape marks. Some of these marks are shapes used in combination with one or more other kinds of marks (commonly a device, or both word and device), but many are shape marks only.
But how useful is a shape mark in protecting the investment made by a business into its branding?
Recently, Clipsal Australia, a producer of light switches and other electrical accessories, relied on a shape mark in respect of the shape of its light switches as one of the bases to bring an action against Clipso Electrical. Clipso had sold light switches of a similar shape under the name CLIPSO. The Federal Court found in favour of Clipsal, deciding that the CLIPSO word mark should be cancelled, that the use of that word mark had amounted to infringement of Clipsal's CLIPSAL word mark, and that Clipso had both engaged in misleading or deceptive conduct and committed the tort of passing off.
However, Clipsal was unsuccessful in its argument that Clipso had infringed its shape mark. This highlights the difficulties of registering and using trade marks for shapes.
These difficulties arise because the shape of a product can be wholly or partially dictated by its function and, even where it is not, a product's shape is an inherent element of the product itself. It is, therefore, more difficult to show that any use of the shape mark (or a substantially identical or deceptively similar mark by a potential infringer) is use as a trade mark.
For example, in the Philips v Remington case, the court held that the adoption of the same triple head shaver configuration as that covered by Remington's trade mark registration did not amount to trade mark infringement, because the purpose of applying that shape to Philips's shaver was the achievement by the shaver of a particular function. Even where the shape was depicted on product packaging and in advertising, this was in order to portray the features of Philips's shaver, not use as a trade mark. Similarly, in Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd, a mark for the shape of a fence dropper was held not to be infringed, because the shape of the product was largely functional in nature, even though there were some other designs that could also have been adopted without affecting the function or the cost of production.
In this case, Clipsal was able to convince the court that the design of its light switches was not functional in nature, and that a range of different shapes can be selected for those products. In fact, the judge found it likely that Clipso had selected the same shape for its own switches not for reasons of function but with the intention of misleading consumers. However, he also pointed to the fact that Clipso's light switches were sold in plastic sleeves bearing Clipso's logo, and were packaged in cardboard boxes also displaying that logo. His Honour noted that the fact that the word CLIPSO was clearly being used as a badge of origin for Clipso's goods detracted from the argument that the switch found within the packaging could also have been operating as a badge of origin.
Similarly, Clipsal's attempts to demonstrate a connection in the minds of consumers between Clipsal and the shape of its switches for the purpose of its misleading or deceptive conduct and passing off claims were unsuccessful. Although the volume of sales of Clipsal's products was high and the light switches were displayed or depicted in various promotional materials, the judge held that consumers would understand that the switches were Clipsal's products due to the use of the Clipsal name and logo in conjunction with them, not by reason of their shape. Even stating on the packaging that the shape of the switch was a trade mark was not sufficient to create such a connection.
Of course, in this case, Clipsal had a number of arguments to rely on and was ultimately successful in preventing Clipso's objectionable conduct. But a business should carefully consider whether it is likely to ever be able to rely on a shape trade mark being used as a trade mark, in deciding whether or not the investment in seeking a trade mark registration is worthwhile.