Use of a functional shape is not use as a trademark, says court

In Sebel Furniture Limited v Acoustic & Felts Pty Limited ([2009] FCA 6, January 12 2009), the Federal Court of Australia has explored the issue of whether the promotion and sale of a chair constituted use of the shape of that chair as a trademark, thereby possibly infringing a registered shape trademark.

Since May 2005 Sebel Furniture Limited has been the owner of a registered trademark in respect of the shape of a chair (Registration 1054076). The registration covers “sidechairs made from plastic materials”. This shape is embodied in the Postura chair sold by Sebel.

Sebel brought proceedings for an interlocutory injunction against Acoustic & Felts Pty Limited (trading as Reed Furniture) to prevent the latter from selling its Titan chair. The Postura and Titan chairs are plastic moulded chairs, specifically designed for the education sector.

Sebel alleged that Reed Furniture had used and was continuing to use as a trademark a shape that is deceptively similar to its own trademark in relation to chairs. Reed Furniture argued that:

it did not use the shape or appearance of the Titan chair as a trademark; and
the Titan chair was not deceptively similar to Sebel's trademark.

The main issue was whether the promotion, supply and sale of the Titan chair constituted use of a shape as a trademark and if so, what that shape actually was. The court made the following statements on the concept of use as a trademark in Australia:

Use as a trademark usually involves the trademark having an identity which is separate from the goods themselves;
Use as a trademark generally involves more than simply using the goods themselves as a trademark;
Shapes dictated by the nature of the goods or functional outcomes cannot operate as a trademark;
To function as a trademark, the shape must be something which is extra or added to the natural form of the goods as something distinct which can denote origin; and
A shape cannot function as a trademark if it is something that other traders may legitimately wish to use because it is inherent to the particular goods or because it provides some technical or functional benefit to the goods.

The court found that Sebel had failed to establish (even at a prima facie level) that Reed Furniture had used a shape as a trademark in relation to the goods by its promotion and sale of the Titan chair. The shape used by Reed Furniture was not distinct from the Titan chair - it was the essence of that chair. Further, the shape of the chair did not contain any extra or additional features to the functional elements of the chair, and it was devoid of a separate identity from that of the Titan chair.

Even if the shape of the chair was being used as a trademark, the court concluded that the shape of the Titan chair was not deceptively similar to Sebel's trademark. There were obvious differences between the appearances of the two chairs, and the fact that the chairs were likely to be purchased in bulk by well-informed purchasing officers (who would be aware of the two competing products) resulted in no real likelihood of confusion. Consequently, Sebel had failed to establish that it had a prima facie case or a serious question to be tried that the shape of the Titan chair was deceptively similar to its trademark.

Sebel also claimed that Reed Furniture had engaged in passing off and misleading or deceptive conduct through the promotion and sale of its Titan chair. Sebel claimed that by using the shape of the Titan chair, Reed Furniture had led a substantial number of persons to believe that the Titan chair was associated with Sebel and that Reed Furniture was associated with Sebel. The fact that the two chairs had markings displaying their origin and that the brochure for the Titan chair was available only on Reed Furniture's website or from Reed Furniture representatives meant that it was unlikely that any deception had or would occur.

However, Sebel’s application for interlocutory relief was successful under the Trade Practices Act 1974 (Cth) in relation to the claim that Reed Furniture had engaged in misleading or deceptive conduct through its statement that its one-piece moulded plastic chair was the first chair to conform to a UK standard. The court concluded that this representation carried with it or implied that it was the only chair which conformed to that standard. Sebel was granted an interlocutory injunction preventing Reed Furniture from making such statements until determination at the final hearing.

At the interlocutory hearing, Reed Furniture indicated that it intended to seek removal of Sebel’s trademark from the Trademarks Register. If the matter proceeds to final hearing, the hearing is likely to take place in March or April 2009.

Lisa Ritson and Lili Dent, Blake Dawson, Sydney

Use of a functional shape is not use as a trademark, says court

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