A recent Federal Court decision in Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3)  FCA 865 illustrates the importance of obtaining adequate protection at the beginning of the trade mark registration process.
In this decision, Shape Shopfitters (the Applicant) had registered the following composite mark, containing the words SHAPE SHOPFITTERS EST 1998 set within an uneven “bottle cap” border in respect of its shopfitting and other construction services.
However, the Court held that this registered mark was not infringed by the use of the following marks, both of which also feature the word SHAPE within a circle, by Shape Australia (the Respondent) for relevant services:
The Court held that these two marks were not deceptively similar to the registered mark, despite there being some clear similarities between them. In reaching this conclusion, Mortimer J considered that people will recall the entire phrase SHAPE SHOPFITTERS in the registered mark (not just the word SHAPE), due to the alliterative effect of these two words and the positioning of the word SHOPFITTERS underneath the word SHAPE. She also considered that the bottle cap border in the registered mark would stick in a person’s memory and help to distinguish it from the other SHAPE marks. As a result, her Honour did not consider that “the reasonable industry participant of ordinary intelligence and memory would be caused to wonder whether the respondent’s services, and the business it markets and promotes, come from the same source as that of the applicant”.
The Court also declined to decide on whether the fact that the Applicant filed for its mark with a blue background limited its rights to a blue version of the mark, when the Applicant had never entered a written endorsement on the Register limiting the mark to any particular colour.
This decision brings to mind the Full Federal Court’s decision in Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited  that the use of the mark CRAZY RON’S did not infringe the following registered mark containing the words CRAZY JOHN:
The Court in that decision noted that when a mark comprises a combination of a word or words together with a logo then the words in that mark should not necessarily be considered as an “essential feature” of that mark when comparing it with another mark.
These decisions starkly show that although registering a mark that contains a combination of features may protect that mark as a whole, it will not necessarily protect the individual features separately. Therefore, it is sometimes necessary to file multiple trade mark applications to adequately protect each individual element in a particular mark. Care also needs to be taken to avoid making any inadvertent colour limitations when filing an application to register a logo.
Obtaining inadequate trade mark protection can be a costly mistake for a business if it leaves them unable to prevent the use of similar marks by competitors. Professional assistance should always be sought to avoid these and other pitfalls in protecting and enforcing a business’ trade marks.
Please contact us if you have any questions.
By Nicky Shanks