FEDERAL COURT OF AUSTRALIA

interlocutory injunctions - whether there is a serious question of trade mark infringement to be tried - whether there is a serious question to be tried as to whether the shape of the respondent’s product is substantially identical with, or deceptively similar to, the applicant’s mark and whether the shape is decorative or functional - whether there is a serious question to be tried as to whether the respondent has breached s 52 or s 53 of the Trade Practices Act 1974 or engaged in passing off by selling a product similar to the product of the applicant but which is clearly marked with the respondent’s trade mark - whether there is a serious question to be tried as to whether the respondent has infringed the applicant’s monopoly in its registered design - whether the respondent’s product represents the application of an imitation of the “new combination of known features” represented by the registered design - balance of convenience - delay - question of infringement of s 46 of the Trade Practices Act.

Trade Practices Act 1974, s 52, s 53, s 46

Trade Marks Act 1955, s 120

Designs Act, s 30(1)(b), s 30(1)(c)

Rolls-Royce Motors Ltd v DIA (Engineering) Pty Ltd (1981) 50 FLR 340, discussed

Re Applications by Coca-Cola Company (1985) 3 IPR 575, referred to

Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks (1967)

116 CLR 628, referred to

Epitoma Pty Ltd v Australasian Meat Industry Employees’ Union (No 2) (1984) 3 FCR 55, applied

American Cyanamid v Ethicon Ltd [1975] AC 396, referred to

Bullock v The Federated Furnishing Trades Society of Australasia (1995) 5 FCR 464, referred to

Telstra Corporation Ltd v Optus Communications Pty Ltd (1996) 36 IPR 515, referred to

Boots Company (Australia) Pty Ltd v Smith Kline Beecham Healthcare Pty Ltd (1995) 33 IPR 266, referred to

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, discussed and applied

Reckitt and Coleman Products Ltd v Borden Inc (1990) 1 WLR 491, discussed

William Edge & Sons Ltd v William Niccolls & Sons Ltd [1911] AC 693, discussed

Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR, applied

Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483, referred to

Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403, discussed

Carlton and United Breweries (NSW) Pty Ltd v Bond Brewing (New South Wales) Ltd (1987) 76 ALR 633, referred to

PHILIPS ELECTRONICS N.V. and PHILIPS ELECTRONICS AUSTRALIA LIMITED v REMINGTON PRODUCTS AUSTRALIA PTY LIMITED

NG 637 of 1997

lehane j

sydney

14 october 1997

THE COURT ORDERS THAT:

1.       Upon the applicants by their counsel giving the usual undertaking as to damages the respondent pending the final determination of the matter or further order of the Court whether by itself, its servants or agents or otherwise is restrained from selling or advertising for sale or promoting or marketing the respondent’s rotary electric shaver models known as RRDT55, RRDT45 and RRDT50.

REASONS FOR JUDGMENT

The applicants seek in these proceedings to restrain the respondent from selling, advertising for sale or promoting or marketing certain electric shavers.  Ancillary orders are sought as well.  That relief is claimed on the basis that those activities infringe, or would infringe, certain registered designs and trade marks owned by the first applicant and constitute passing off, misleading and deceptive conduct within the meaning of s 52 of the Trade Practices Act 1974 and representations which contravene s 53(c) and s 53(d) of the Trade Practices Act.  By the application now before the Court, the applicants seek an interlocutory injunction pending trial.

The parties

The applicants are members of the well known group of companies, whose head office is in the Netherlands, which manufactures and sells electrical products throughout the world.  The first applicant (Philips Electronics) is the holding company of the second applicant (Philips Australia) which distributes Philips Electronics’ products in Australia.  The corporate group has undergone a number of reorganisations; their detail does not matter, and it is convenient to describe as Philips Australia the various companies which, from time to time, have distributed Philips products in Australia.  I shall use the term “Philips” to refer to the applicants and generally to the group of companies of which the applicants are members.  Remington (a term which I shall likewise use to describe the corporate group in its various manifestations) is also a well known manufacturer and seller of electrical products.  The respondent (Remington Australia) was established in 1989.  It imports and distributes Remington products in Australia.  Before 1989 Remington products were distributed in Australia by a succession of independent distributors: again, the detail does not matter. Remington Australia is a subsidiary of a Delaware corporation, Remington Products Company LLC; which has in turn emerged from a series of corporate successions and transmutations.

Electric shavers

There are three basic types of electric shavers.  One is the “slot head”, a type of shaver which Remington used to make but makes no longer, which has apparently fallen out of fashion and about which nothing more need be said.  The second is the “foil” type: the foil is a thin metal mesh covering reciprocating blades.  A shaver of this kind may have one set of blades with a mesh cover or two or three sets, separately covered, parallel with each other. Remington has for some time sold (including in Australia) shavers of this kind.  The third type of shaver is the rotary shaver and it is this type with which these proceedings are concerned.  A rotary shaver has circular, rotating cutters underneath a mesh or slotted faceguard.  It may be single headed (that is, it may have a single set of circular cutters under a single faceguard) or may be double or triple headed.  (There was also in evidence a rotary shaver with four “heads”, a style whose time apparently is yet to come).  The heads of a triple headed shaver may be disposed in various ways, and again examples of various possibilities were in evidence: but the familiar triple header is that in which the heads are placed at the three points of an equilateral triangle.

Philips has designed, manufactured and marketed rotary shavers since 1939.  Its first rotary shavers were single headed.  In 1953 it introduced double headed shavers (which it continues to sell).  In 1966 and 1967 Philips introduced, in all its major markets, a triple headed rotary shaver; this model was introduced in Australia before its introduction in any other market.  It continues to manufacture and sell triple headed shavers.  The evidence indicates that the three heads of the Philips shavers have always been placed at the points of an equilateral triangle; in other respects the design of the shavers has changed significantly from time to time.  Philips has from time to time registered, in many jurisdictions including Australia, various patents, designs and trade marks relating to triple headed rotary shavers.

A Japanese company, Izumi, has also, since at least the early 1970s, manufactured triple headed rotary shavers.  Many - probably most - of those shavers have adopted an equilateral triangular formation of the heads similar to that used by Philips.  The shavers manufactured by Izumi have been marketed through various outlets and under various brands, including the Remington brand.  Izumi also has registered several items of intellectual property, in relation to triple headed rotary shavers, in several jurisdictions.  There has been substantial litigation between Philips on the one hand and, on the other, Izumi and various corporations which have distributed its products (including, more recently, Remington).  The evidence before me includes a good deal of material about that litigation, which has been conducted at various times in a number of United States jurisdictions, in Japan, in Sweden, in Canada and in the United Kingdom (where proceedings in which Philips alleges registered design infringements, on a basis similar to the claims it makes here, have been set down for trial in November 1997).

Philips’ market position: Remington introduce a rotary shaver

Until June 1997, the Australian market remained, as it was described in some of the evidence, “pure”: the only rotary shavers sold in Australia were Philips shavers.  A large number of the triple headed shavers have, of course, been sold since their introduction in 1966; Philips has engaged in substantial marketing and promotion of its shavers, a great deal of its advertising and promotional material is in evidence.  It may be accepted that Philips has acquired a substantial reputation as a manufacturer and seller of rotary, particularly triple headed rotary, shavers.  Philips’ share of the total Australian market for electric shavers is between 50 and 60 per cent; Remington’s is about 8 per cent (the second largest share, of about 25 per cent, belongs to Braun).

Towards the end of 1996 Remington Australia imported 2,004 Remington branded shavers manufactured by Izumi.  Those shavers are designated model RR(DT)55; they are triple headed rotary shavers the heads of which, it may be said uncontroversially, look in several respects not unlike the heads of current Philips models. Remington Australia proposes to import and sell two other models, the RR(DT)45 and RR(DT)50, each of which has similar shaving heads.  Sales of the RR(DT)55 began, in Victoria only, in June 1997, supported by a relatively modest “launch” and associated publicity.  Although Philips had during the earlier months of 1997 (possibly towards the end of 1996) obtained some information about Remington Australia’s plans, Philips directed no questions to Remington Australia, made no demands and commenced no proceedings before August 1997.  On 1 August Remington Australia’s solicitors wrote to Philips Electronics informing Philips Electronics of the launch of the RR(DT)55 and the proposal to launch the RR(DT)45 and RR(DT)50; the letter referred to two registered trade marks owned by Philips Electronics, to an application by Philips for registration of a further mark and to Australian Registered Design No 105780 owned by Philips Electronics, and sought acknowledgments that the supply by Remington Australia of the three models would not infringe the two registered marks, the mark applied for or the registered design and that the mark applied for was not registrable.  It also sought undertakings to withdraw the pending trade mark application and not to institute proceedings in relation to the importation, sale, distribution or offering for sale in Australia of the three Remington models.  That letter prompted requests by Philips’ solicitors for information about the three models and their packaging, most of which was provided, and, in turn, to the commencement of these proceedings on 15 August 1997.

The opposition of Remington Australia to the application for interlocutory relief was based primarily on a submission, powerfully and persuasively made by its senior counsel, that there is, on the material before the Court, no serious question to be tried in relation to any of the causes of action on which Philips relies.  As for the balance of convenience, Remington Australia, while conceding that it could point to no “personal loss” to be taken into account in assessing where the balance lay, contended that other matters, particularly delay and discretionary considerations relating to the public interest, would lead in any event to the refusal of interlocutory relief.

With that by way of preamble, I shall consider separately the evidence and arguments on each of the causes of action.

Trade mark infringement

Philips Electronics is the registered proprietor of two trade marks in class 8, in respect of shaving apparatus; hair trimmers; parts thereof and accessories thereto not included in other classes.  One of the marks, the “two dimensional mark”, is a stylised representation of the shaving surface of a triple headed shaver, as follows:

The other, the “three dimensional mark” is the following representation of the shaving head:

There is a disclaimer in relation to that mark, that registration of the mark “shall neither confer nor recognise any right to the use of its features as a design applied to an article of manufacture”.

Section 120(1) of the Trade Marks Act 1995 provides:

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

A “sign”, as defined in s 6 of the Trade Marks Act, includes (as corresponding definitions in earlier trade mark legislation did not) a shape.  The shaving head of the RR(DT)55 (and those of the other two Remington models are similar) looks like this:

Obviously enough, the shape of the head is similar to the shape depicted, particularly, in the three dimensional mark.  There is one obvious difference: each of the Remington slotted guards has two “tracks” whereas in the representation in the mark (and on the Philips shavers themselves) there is only one.  If, however, the question is asked, is it seriously arguable that the shape used by Remington is substantially identical with, or deceptively similar to, the three dimensional mark, the answer I think must be “yes”.  Because of its stylised form, the same question in relation to the two dimensional mark may be more difficult, but in the circumstances does not need to be answered.  Implicit in that conclusion is the proposition that the disclaimer in relation to the three dimensional mark does not, for present purposes, preclude Philips from relying on it.  In my view, that proposition is correct: it is at least seriously arguable that the disclaimer does not rob use of the mark by someone other than Philips, which would otherwise be trade mark use, of that character, its effect being only to limit the ways in which Philips itself may use the mark.  In other words, it may be that though registration of the mark does not give Philips Electronics a monopoly in the design, ownership of the mark gives Philips Electronics statutory protection against another who (without authority) not merely applies the design to goods but does so in a way that indicates trade origin.

Little reliance was placed by Philips on a representation, which appears on much of the Remington advertising material and packaging, of the triangular triple headed surface of a shaver from the top, bottom and sides of which emerge four broad arrows indicating, presumably, the movements involved in shaving with a machine of this sort.  Senior counsel for Philips relied principally on the emphasis given to the top of the shaver in Remington Australia’s advertising and in the way in which the RR(DT)55 is packaged.  The packaging comprises a “blister pack” behind the transparent cover of which the shaver stands upright, with the head (which is at an obtuse angle to the body or handle of the shaver) facing forward.  The advertising material depicts the shaver, again prominently displaying the head; on one form of advertisement there appears, immediately underneath the machine (with the last words under the head) the legend, prominently displayed, “the quickest, smoothest thing on three wheels”.  Thus, counsel submitted, Remington Australia drew attention, as distinctive of its product, to the appearance or shape of its head, particularly, in the advertisement emphasising the “three wheels”.  The message, so it was submitted, was that the consumer would recognise the Remington product by its head, or by its “three wheels”: in other words, through the means by which it had chosen to package and market its product, Remington Australia used the shape of its head as a badge of origin, thus using the shape as a trade mark.  He submitted also that the inclusion of the word “shape” as one of the matters included in the defined term “sign” in the Trade Marks Act significantly altered the older law.

Senior counsel for Remington Australia responded, first, that the shaving head is not something decorative applied to the shaver: it is a functional part of it.  It was thus to be distinguished from the Rolls-Royce radiator grille (Rolls-Royce Motors Ltd v DIA (Engineering) Pty Ltd) (1981) 50 FLR 340, at 341).  He pointed to evidence as to the significance of the dimensions of the slots in the “floating” heads, claims relating to the shaving heads made by Philips in a patent application and a promotional book published by Philips emphasising the functional advantages of its shaving heads.  A trade mark, he submitted, must be separate from the goods, something which is applied to goods and distinguishes them rather than the goods themselves (Re Applications by Coca-Cola Company (1985) 3 IPR 575)or a mere description of the goods by shape, size or colour (Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks (1967) 116 CLR 628).

One must be careful to avoid confusion.  I take it that a mark is something distinct from the thing marked.  The thing itself cannot be a mark of itself;...

(Re James’ Trade Mark (1886) 3 RPC 340).  Here, the shape of the cutting head was not something applied to the shaver for the purpose of distinguishing it by reference to its origin but was a description of an essential functioning part of it: its use in that way by Remington Australia thus could not be use as a trade mark.  Further, the submission continued, the use of a sign is use as a trade mark only if the message conveyed is one as to the source of the goods - to distinguish them from goods supplied by other traders - not a message of some other kind (a proposition for which citation of authority is hardly necessary, but counsel referred to the Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; Musidor BV v Tansing (1994) 52 FCR 363 and Top Heavy Pty Ltd v Killin (1996) 34 IPR 282).  The word “Remington” and the symbol ® are printed prominently on the side of the shaver; the word is printed again on the handle at the front; it is printed also on the clear plastic cover of the head of the machine; it appears prominently on the packaging and the advertising material.  It was the use, it was submitted, of the well known mark “Remington” which indicated the origin of the shaver; it was not a case of multiple trademark use; the depiction of the shaver, and particularly of its head, was designed simply to show what sort of a shaver it was and how it worked.  Finally, the Trade Marks Act should not be taken to have revolutionised the law by including a “shape” among the things which may constitute a “sign”: a “shape” is not necessarily the shape of a good or of an essential part of it: it may, like a sign of any other kind, relate simply to something applied to goods decoratively and so as to indicate their trade origin.

Those are powerful arguments.  The question, however, is whether I should accept counsel’s submission that they are so overwhelming as to demonstrate that there is no serious question of trade mark infringement to be tried.  In Rolls-Royce Motors Lockhart J said, at 351:

Having considered all the evidence, I am satisfied that the applicants have made out a prima facie case, in the sense that, if the evidence remains as it is, it is probable the applicants will succeed...

If it was ever necessary for an applicant for interlocutory relief to satisfy so high a test (as to which see Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 at 622) certainly it is no longer necessary.  After referring to High Court authority, the Full Court of this Court in Epitoma Pty Ltd v Australasian Meat Industry Employees’ Union (No 2) (1984) 3 FCR 55 at 58-59 quoted and applied the principles stated in American Cyanamid v Ethicon Ltd [1975] AC 396.  Particularly, the Court quoted with approval the following passages from Lord Diplock’s speech, at 407:

The use of such expressions as “a probability”, “a prima facie case”, or “a strong prima facie case” in the context of the exercise of a discretionary power to grant an interlocutory injunction leads to confusion as to the object sought to be achieved by this form of temporary relief.  The court no doubt must be satisfied that the claim is not frivolous or vexatious; in other words, that there is a serious question to be tried.

It is no part of the court’s function at this stage of the litigation to try to resolve conflicts of evidence on affidavit as to facts on which the claims of either party may ultimately depend, nor to decide difficult questions of law which call for detailed argument and mature considerations.  These are matters to be dealt with at the trial. ...  So unless the material available to the court at the hearing of the application for an interlocutory injunction fails to disclose that the plaintiff has any real prospect of succeeding in his claim for a permanent injunction at the trial, the court should go on to consider whether the balance of convenience lies in favour of granting or refusing the interlocutory relief that is sought.

Cases, particularly cases of any complexity, in which interlocutory injunctions are refused on the footing that there is no serious question to be tried are uncommon.  No doubt many illustrative cases are available to demonstrate why that is so: one may be Deputy Commissioner of Taxation v Sharp (1988) 18 FCR 475.  It does not of course follow that the apparent strength or weakness of an applicant’s case is irrelevant at the interlocutory stage: matters being otherwise finally balanced, it is relevant to the balance of convenience: Bullock v The Federated Furnishing Trades Society of Australasia (1995) 5 FCR 464 at 472, Telstra Corporation Ltd v Optus Communications Pty Ltd (1996) 36 IPR 515 at 522; Boots Company (Australia) Pty Ltd v Smith Kline Beecham Healthcare Pty Ltd (1995) 33 IPR 266 at 275, 277.

I am not persuaded that this aspect of Philips’ case should be regarded as without serious prospect of success, frivolous or vexatious or (to use the word adopted by senior counsel for Remington Australia) hopeless.  Particularly, I do not think I can dismiss as hopeless the argument that, under the Trade Marks Act, a shape cannot be used as a trade mark in relation to goods merely because the part of the goods to which it is applied is one which performs a function: at least in circumstances where the particular shape is not necessary for the efficient performance of the function and there are a number of alternative and equally functional shapes the part may take.  It was accepted that there is a serious question as to whether that is so in relation to the head of a rotary shaver.  It is one thing to say (as Smith Kline and French does in relation to the Trade Marks Act 1955) that a mere description of goods by their shape is not registrable as a mark.  It is another to say that where a particular and distinctive shape (registered as a trade mark by one trader) is applied to a particular part of goods sold by another trader that other trader cannot be regarded as using the shape as a trade mark.  And, as the facts of Rolls-Royce Motors illustrate, the distinction between what is an essential part of goods, and what is applied merely capriciously or by way of decoration, may be somewhat elusive.

Equally I am not prepared to dismiss as hopeless the proposition that, by its packaging and promotion, Remington Australia conveys the message contended for by Philips.  There is no doubt, at least, that the head, and its shape, are given particular prominence; it is to that aspect of the shaver that the potential buyer’s attention is particularly drawn.  It follows that, applying the test laid down in authorities by which I am bound, there is a serious question to be tried.  For reasons which will appear, it is in my view unnecessary - and therefore it is undesirable - to say more on this aspect of the case.

Trade Practices Act; passing off

There is substantial overlap between the issues raised by these causes of action, and it is convenient to consider them together.

Philips’ case encounters, as senior counsel for Remington Australia submitted, a formidable obstacle in the decision of the High Court in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191.  The applicant in that case had for several years manufactured and sold furniture, including chairs, of a distinctive appearance and design.  The design was not registered under the Designs Act 1906.  The applicant’s furniture was sold under the name “Post and Rail” and the particular chairs were part of a range called the “Contour” range.  The respondent sold chairs in what it called its “Rawhide” range; their appearance was very similar to that of the applicant’s “Contour” chairs.  The applicant’s claim was that by selling chairs so closely resembling its own, the respondent infringed s 52 of the Trade Practices Act because consumers might be led to think that the “Rawhide” chairs were “Contour” chairs.  Sewn into the front of each “Rawhide” chair was a label which said that the chair was “Parkdale Custom Built Furniture” and was part of the “Rawhide” range.  All of the majority of the Court, who held that the respondent’s conduct was not misleading or deceptive or likely to mislead or deceive, based their conclusion, at least in part, on the presence of the label.

After observing that the conduct of a defendant must be viewed as a whole, Gibbs CJ said at 199:

Speaking generally, the sale by one manufacturer of goods which closely resemble those of another manufacturer is not a breach of s 52 if the goods are properly labelled.  There are hundreds of ordinary articles of consumption which, although made by different manufacturers and of different quality, closely resemble one another.  In some cases this is because the design of a particular article has traditionally, or over a considerable period of time, been accepted as the most suitable for the purpose which the articles serves.  In some cases indeed no other design would be practicable.  In other cases, although the article in question is the product of the invention of a person who is currently trading, the suitability of the design or appearance of the article is such that a market has become established which other manufacturers endeavour to satisfy, as they are entitled to do if no property exists in the design or appearance of the article.  In all of these cases, the normal and reasonable way to distinguish one product from another is by marks, brands or labels.  If an article is properly labelled so as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public.

Each party offered an analysis of the opening words of that passage.  Senior counsel for Remington Australia submitted that Gibbs CJ clearly intended what he said to be of general application.  Senior counsel for Philips, on the other hand, submitted that while the Chief Justice was speaking of the generality of cases, he did not intend his remarks to be of universal application.  What is, I think, quite clear is that the Chief Justice would have contemplated that only in very unusual circumstances would a trader, whose product was clearly labelled so as to indicate its source, be regarded as guilty of misleading or deceptive conduct only because the product itself closely resembled the well known product of another trader.

The approach taken by Mason J was somewhat different.  His Honour dealt (at 206) with an argument that:

...To forbid a manufacturer to manufacture a product because it too closely resembles a competitors’ earlier product without subjecting the resulting monopoly for the earlier product to the limitations imposed by the Designs Act, would be to create a monopoly in a design in circumstances in which that Act does not confer a monopoly...

by holding that s 52 should not be read down by reference to the policy or purpose of the Patents Act and the Designs Act.  His Honour proceeded, however, to hold (at 209) that:

Conduct does not breach s 52(1) merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source.

He continued at 210:

Here, I am prepared to infer that the very close resemblance of the appellant’s and respondent’s furniture could lead a person who had previously seen the respondent’s furniture either displayed in a shop or advertised in the media mistakenly [to] think on seeing the appellant’s “Rawhide” suite that it was a “Contour” suite.  It seems unlikely that an ordinary purchaser would notice the very slight differences in the appearances of the suites, especially if the prospective purchaser had not earlier inspected the respondent’s “Contour” suite in detail.

Finally, his Honour, having held that a prospective purchaser looking at a “Rawhide” label affixed to a chair could hardly think that the chair was a “Contour” product, proceeded to consider whether a purchaser would be expected to look for and see the label.  With some hesitation, Mason J was prepared to conclude that a prospective purchaser would be expected to do so.

The approach of Brennan J was perhaps somewhat different, but not I think in any way that is particularly significant for present purposes.  His Honour was more inclined than was
Mason J to give some effect, in the context of s 52, to the policy underlying the limited periods of monopoly under the Patents Act and the Designs Act.  His Honour said this, at 225, 226:

A later manufacturer who does no more than exercise his freedom to manufacture and sell goods made in accordance with a design in the public domain does not mislead or deceive; and if a customer has an erroneous preconceived belief that the first manufacturer has a monopoly, a false assumption by the consumer as to the source of the later manufacturer’s goods is self-induced...

Of course, where identical or similar goods are on the market, it may take very little evidence of conduct additional to the mere manufacture and sale of the goods to establish a case under s 52.  The degree of risk of confusion is material to an appreciation of the conduct of a trader in marking or getting up his goods for sale in competition with the goods of another trader.  In the present case, however, where Parkdale labelled the “Rawhide” suite in accordance with the practice of the trade and the label clearly distinguished that suite from the “Contour” suite, there was no misleading or deceptive get-up.  If customers mistook the “Rawhide” suite for the “Contour” suite the mistake was not induced by Parkdale’s conduct.  It was not misleading or deceptive conduct merely to manufacture and sell a lounge suite similar to the Contour suite - or, for that matter, a suite identical with the Contour suite.  Something more was needed to show conduct inducing a mistaken belief that the “Rawhide” suite was manufactured by Puxu, but [the] only additional evidence, the label, showed conduct which was calculated to correct any confusion as to source.

Those passages demonstrate how substantial is the obstacle which Puxu places in Philips’ path.  The material before me sufficiently establishes what one might in any event be permitted to know, that “Remington” is a well established brand of electrical products, including shavers.  One does not have to look for the “Remington” label on the Remington rotary shavers: it is there prominently in large letters on the packaging, across the plastic cover on the shaver head and, again in large letters, on the handle of the shaver itself.

The case which Philips seeks to make may be summarised as follows.  The triangular triple head has for very many years been associated with, and become distinctive of, Philips’ electric shavers. Remington itself recognises the triangular head as a distinctive badge of origin, as evidenced by trade mark applications which it has made in Mexico and design registration applications which it has made in other jurisdictions.  The power of that “badge” is such that the name “Remington” will not be noticed or will be overlooked.  Furthermore, consumers forget the brand names of appliances they buy and use: upon seeing the Remington they may well conclude that the Remington shaver comes from the same source as rotary electric shavers which they have used previously.  This may be so particularly where a shaver is bought as a gift (the evidence shows that many shavers are purchased as gifts). Responses to questionnaires given to purchasers of Remington shavers demonstrated considerable confusion between brands, and particularly as to the brands of the shavers which respondents had used, even for many years.  Alternatively, consumers might form the view that there was a relationship, possibly a licence, between Philips and Remington: reference was made to a well known advertisement in which a Mr Kiam proclaimed that he liked the (Remington) shaver so much that he bought the company, and to previous associations - by way of distributorship or purchase of other businesses - which Remington had had with other companies.  Further, it was said that Remington clearly had intended to get as close as possible to the Philips design: intentional copying can reflect an intention to mislead which assists in a finding of deception (ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 345).

To accept those arguments, however, would in my view be to deny the proposition for which Puxu most clearly stands.  It may be accepted that three shaving heads in the equilateral triangular configuration were, until June 1997, unique in Australia to Philips.  But unless Philips is entitled to a monopoly in that configuration by virtue of particular intellectual property rights (for example registered trade marks or registered designs) then another trader may copy it provided that it is clearly indicated that the copied product is not a Philips but a product of the other trader.  Where, as in this case, each of the manufacturers concerned has a well known brand name, I cannot see why it should be thought necessary (as counsel for Philips suggested, and as apparently has been done in some advertising in the United States) to add “this machine is not a Philips”.  (It might be said that, if one were to take some of Philips’ arguments literally, even that might not help).  Nor do I think that Philips is helped by the answers to the Remington questionnaire: the questions, though not directed precisely to issues relevant to s 52 (or passing off), certainly elicited answers which demonstrated a good deal of confusion as to the brands of electric shavers of various sorts.  Perhaps the answers demonstrate that people may, when they seek one of the Remington shavers complained of, conclude (wrongly) that it comes from the same source as shavers which they have previously bought.  Unless, however, s 52 prevents Remington Australia from selling a shaver, clearly marked with the Remington brand, which looks very similar - even identical - to a Philips shaver (and Puxu rules out such a proposition) then such confusion is of no significance.

For those reasons, while recognising fully the hesitation with which one should come to such a conclusion, in my view the material before me discloses no serious question to be tried as to breach of s 52 of the Trade Practices Act; it follows, of course, that there is equally no serious question in relation to s 53.

It is necessary to add a few comments in relation to passing off.  There can be no doubt that the distinction between the shape or appearance of product and its “get-up” may be tenuous, as Reckitt and Coleman Products Ltd v Borden Inc (1990) 1 WLR 491 strikingly illustrates.  It may be that there are circumstances in which the shape of the outer skin of a product (or part of it), if unrelated to function, may comprise “get-up”.  Borden bears some similarity to the present case in that for very many years the plaintiff had been the sole manufacturer of lemon juice packaged and sold in a lemon-shape, lemon-size container, so that it was well established in the mind of the consuming public that lemon juice packed in that way came from a single, known source.  The defendant put on the market lemon juice similarly packaged but with a different coloured top, other minor differences in the shape of the lemon and the defendant’s label.  The House of Lords held that the defendant was passing off its lemon juice as that of the plaintiff.  Lord Oliver said at 509:

Moreover the trial judge was satisfied of the fact that a substantial part of the purchasing public requires specifically Jif lemon juice, associates it with the lemon-shape, lemon-size container which is the dominant characteristic of the get-up and pays little or no attention to the label.  It is no answer to say that the diversion of trade which he was satisfied would take place would be a relative[ly] short duration, since the public would ultimately become educated to the fact that there were two brands of lemon juice marketed in such containers and would then be likely to pay more attention to the labels to be sure that they got the brand which they required.

Lord Jauncey who, at 513, placed some significance on the fact that the defendant’s label was a “readily detachable paper label”, said this (at 511):

...although the common law will protect goodwill against misrepresentation by recognising a monopoly in a particular get-up, it will not recognise a monopoly in the article itself.  Thus A can compete with B by copying his goods provided that he does not do so in such a way as to suggest that his goods are those of B.  Lawful competition will not be restricted by the common law.

And at 24:

Furthermore, much will depend upon the part which the label plays in the overall get-up.  In Schweppes Ltd v Gibbens (1905) 22 RPC 601, the plaintiffs and defendants were manufacturers of soda water which they sold in embossed glass bottles labelled with chocolate coloured labels.  The plaintiffs’ labels bore the word “Schweppes’ Soda Water” and those of the defendants’ “Gibbens’ Soda Water”.  There was no evidence that anyone had been deceived by the defendants’ get-up into thinking that he was purchasing the plaintiff’s goods.  Warrington J gave judgment for the defendant and the plaintiffs’ appeal was dismissed by the Court of Appeal, 22 RPC 113, and by this House.  Both Lord Halsbury LC and Lord Lindley stressed the fact that if the whole get-up was looked at it was impossible for anyone to be deceived having regard to the differences between the defendants’ and the plaintiffs’ labels.

Both Lord Oliver and Lord Jauncey, the latter particularly, placed stress upon the fact that this was a case involving get-up (the “lemon” packaging) rather than the product itself (the lemon juice).  Here, of course, what is in question is the product, or a particular aspect of it, itself.  While undoubtedly there is a serious question as to whether the particular shape of the shaving head is capricious or at least to some extent necessary or desirable having regard to functional considerations, nevertheless there is nothing in Borden which is contrary to the well established proposition that there is no passing off if the defendant sufficiently distinguishes its products as the defendant’s product as its own.  Here, I do not think that there is any serious doubt that Remington Australia has done so.  There is all the difference in the world between a readily detachable paper label and the labelling which appears not only on Remington Australia’s packaging, but on the shaver itself.

In any event, even in the field of passing off, Philips must overcome Puxu.  It was put to me, correctly, that Puxu had to do with a claim under s 52, not a claim in passing off.  But a large part of the judgment of Mason J (commencing at 204) was directed to a consideration of the extent to which s 52 has enlarged the circumstances in which remedies are available beyond both the previous statutory regime and also the “former common law or equitable requirements” and Brennan J (at 222ff) clearly saw a similarity between issues which arise on a passing off claim and those arising under s 52.  In any case, it is of the essence of passing off that there be a misrepresentation as to the trade origin of the defendant’s goods or as to an association between the defendant and the plaintiff: ConAgra Inc at 308, 340, 356, 378.  That being so, it is not easy to imagine circumstances in which, if there is no misleading or deceptive conduct on the part of a defendant, the defendant will nevertheless be found to have made a relevant misrepresentation for the purpose of a claim in passing off.

Senior counsel for Philips placed some stress on William Edge & Sons Ltd v William Niccolls & Sons Ltd [1911] AC 693.  The facts of that case were, however, somewhat particular: the plaintiff’s product was not labelled.  It was, nevertheless very well known.  The product was a package of tints or dyes to which a stick was attached: the purpose of the stick was to permit the convenient use of the product.  The defendant produced and sold a similar product to which was attached a stick identical in appearance to the plaintiff’s stick, but which was labelled with the defendant’s name.  The plaintiff succeeded in passing off, on the footing that the particular consumers of the product were likely to conclude, having regard to the appearance of the stick, that the effect of the label was simply that the manufacturer of the product with which they were well acquainted was now, for the first time, disclosing its identity.  That is a very different case from this.  Particularly, and obviously, neither party has been coy about labelling - prominently - its product.

In my view the same conclusion must, for those reasons, follow in relation to passing off as in relation to ss 52 and 53 of the Trade Practices Act: on the material before the Court no serious question for trial appears.  In each case, of course, it by no means necessarily follows that such a question will not emerge for consideration at the trial, on the material then before the Court.

In considering the claims under the Trade Practices Act and in passing-off, I have concentrated (as did counsel in argument) on the RR(DT)55 and its packaging.  The other Remington models (RR(DT)45 and RR(DT)50) have not yet been marketed in Australia; the form of their packaging has not yet been settled.  On the front of each of the samples in evidence, the word “Remington” is printed on the front of the handle, below the switch (as on the RR(DT)55).  The word is not, however, printed prominently along the side of the handle or across the plastic head cover (as it is on the RR(DT)55).  It was not suggested that I should regard these two machines differently than the RR(DT)55: in any case, given my conclusion on the claims of infringement of registered trade marks and design, the question is, no doubt, academic.

Design

Philips relies on two registered designs owned by Philips Electronics.  The earlier is registered design number 92473 having a convention priority date of 23 August 1984; the later is registered design number 105780, the convention priority date of which is 3 October 1988.  The argument concentrated on the later design and it is, I think, sufficient to deal with the matter on the footing that it is the design in question.  Set out below are copies of the representations relating to the design.

Philips claims that Remington Australia has imported into Australia for sale, or has sold or offered for sale, the RR(DT)55 model and threatened to do the same with the other two models; to each model, Philips claims, there has been applied an obvious or, alternatively, a fraudulent imitation of the design; Philips Electronics has not given its licence or authority; accordingly Remington Australia has infringed, and threatens to infringe, Philips Electronics’ monopoly in its registered design: Designs Act 1906 s 30(1)(b) and (c).

There was no serious issue as to the general principles to be applied.  They are those laid down by the High Court in Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 at 127.

Turning to s 30 it is apparent that there is infringement in any one of three cases - that is, where the design which has been applied is: - (i) the registered design (ii) an obvious imitation of the registered design (i.e., not the same but a copy apparent to the eye not withstanding slight differences) and (iii) a fraudulent imitation (i.e., a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying).  Visual comparison will establish (i) or (ii) but a finding of fraudulent imitation must require something more because in such a case visual comparison is not of itself sufficient to establish imitation; otherwise it would be an obvious imitation.

In Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 the High Court, at 489, reaffirmed “the brief but accurate description of obvious and fraudulent imitations” in Malleys and approved the following statement of
King J, the trial judge in Firmagroup:

My conclusion is that although there are common features of construction in the compared designs, it must appear, to find fraudulent imitation, that the overall distinctive appearance of the registered design has been taken.  In this case salient features of construction are taken, but the whole unit has been so redesigned to incorporate them that a different design has been produced.  Thus the change in balance of the features and the lengthening of the article are not mere disguise but are themselves salient features of the defendants’ design which are novel and unique in that design.

There was also no dispute as to two particular principles, both of which are well established.  Both are expressed by Lockhart J (with whom Gummow J agreed) in Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 ff, 408, 409.  One is that, as counsel for Philips put it, the scope of the monopoly is defined, to some degree, by the extent to which functional considerations dictate design choice:

If the shape exists solely to make the article work or function then it is not within the concept of a registered design.

(Dart at 408)

The other is stated in Dart at 409 as follows:

The scope of a registered design must be determined with reference to the background of the prior art at the priority date and questions of infringement and novelty or originality are connected...

Where novelty or originality is discovered in slight variations, there cannot be infringement without a very close resemblance between the registered design and the article alleged to be an infringement of the design....

Small differences between the registered design and the prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article.  On the other hand, the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement.

In general terms, it may be said that the appearance of the two models which Remington has not yet offered for sale in Australia, the RR(DT)45 and the RR(DT)50, is similar to that depicted in the design.  The RR(DT)55 is somewhat different.  It has a substantially larger “head base” which may be explained by the fact that it is intended as a “wet/dry” shaver: that is, it may be used where the face has been moistened and shaving cream or gel has been applied and it may then be rinsed - or even immersed - in water.  However that may be, the larger head base significantly alters the proportions of the machine and provides a clear visual distinction between it and the registered design.  That is why the question of fraudulent, as opposed to obvious, imitation loomed large in the argument about that shaver.

Philips relied on a number of particular features of the registered design which appear, so it was said, in each of the Remington shavers.  One was that the diameters of the circles of the shaving heads are almost identical, and that their positioning on the face of the machine is identical.  Secondly, the angle between the head and the handle is in each case virtually identical: particularly, the back of the shaving head, in each case, is aligned so that the top of it is on practically the same plane as the front of the handle.  Next, in each case there is a smooth transition from the back of the head down the handle (no bulge, as one sees for example in hair dryers and in some earlier models of rotary shavers); then between the base of the head and the front of the handle there is a cut away section described by Philips’ expert witness, Mr McDonald, as a “chin” effect.  Finally, in each case there is a relatively wide bodied handle.

A good deal of material was in evidence concerning shaver designs published before the priority date of either of Philips’ registered designs.  Senior counsel for Remington was able to demonstrate in the prior art what appears to be each of the particular features relied on by Philips (except perhaps the “chin” in the form in which it appears in the later registered design); and Professor J K Redmond, whose expert report was tendered by Remington Australia, performed a similar exercise.  What may well follow from that is that, a number of particular features of the registered design being anticipated in the prior art, the scope of the monopoly which it confers is more limited than it might otherwise be: it is worth mentioning, however, that Professor Redmond stated the following conclusion:

My conclusion, following the preliminary analysis of selected ARDs, is that the general design concept of all the features of ARD#105, 780 are revealed in the prior art, including the configuration of the cutters in an equilateral triangle relationship and the design of the “clover-leaf” perimeter around the cutting heads referred to above.  However, the specific design of many of the features are not shown.  The ARD#105, 780 shows a new combination of known features, which, with reference to the prior art supplied to me, have new designs applied to them.

Both Mr McDonald and Professor Redmond included in their reports detailed comparisons of the features of the three Remington designs (particularly RR(DT)55) and of Philips’ registered design.  The two experts differed substantially, however, as to the significance of the differences.  One area of disagreement (to which other evidence tendered by each side also is relevant) is the extent to which particular design features are a necessary or appropriate consequence of function.  That aspect of the matter is, as I have mentioned, one on which it is agreed that there is a serious issue to be tried.

To an extent, the argument on behalf of Remington Australia was that because the precise features identified by Philips were all (or at least nearly all) to be found in the prior art (and this being a matter with which Mr McDonald simply did not deal), there could be no question of infringement.  That, if indeed it correctly summarises what senior counsel put to me, is I think altogether too simple.  The question remains - and about this question certainly the experts are in disagreement - whether there is a serious question that the Remington shavers represent the application of an imitation (obvious or fraudulent) of the “new combination of known features” represented by the registered design.

In the end, though the Court will be assisted by the evidence of experts, the necessary comparison is one for the Court to make.  It is one on which, particularly at this stage, lengthy elaboration is probably of little value.  I have seen the Remington machines and I have compared them with the design; I have taken the evidence of the experts into account.  In my view there is a serious question to be tried as to whether the two models of shavers which Remington Australia proposes to import and sell, but has not yet imported and sold (the RR(DT)45 and the RR(DT)50), represent applications of an obvious imitation of the Philips registered design.

The question concerning the RR(DT)55 is more difficult.  Its much more bulky head base gives it, I think, a significantly different appearance both from the other two machines and from the registered design.  I doubt - perhaps in view of my other findings it is unnecessary to go further - that it represents an obvious imitation of the registered design.

The question of fraudulent imitation depends upon a consideration of whether “the overall distinctive appearance” of the registered design has been taken (as opposed to salient features of construction).  As Malleys tells us, more is required than a mere visual comparison.  Such a comparison certainly is part of the exercise; but there is also a question (or there will be one at the trial) as to whether the evidence shows that Remington deliberately based its design upon the registered design.  In essence, senior counsel for Philips rested his argument principally upon the sufficiency, at the interlocutory stage, of inferences which, he contended, could be drawn from a history, said to be demonstrated in photographs in evidence, of Izumi following, after short intervals, successive developments in Philips’ designs and from the fact that the Remington designs complained of clearly resemble Philips’ current designs rather than any of a series of prior designs either of Philips or of Izumi.  Counsel pointed also to claims of Remington Australia, in the advertising material, that the design of the equipment was Remington’s, and to evidence that in 1982 (well before the priority date of either of the registered designs in issue) Remington had proposed to Izumi the design of a shaver: the point of this was said to be not that this was the design now in question, but that it suggested an inference of a practice whereby Remington prepared designs of shavers, to be manufactured by Izumi, for marketing under the Remington brand.

Senior counsel justifiably criticised this as somewhat tenuous; indeed, he trenchantly contended that Philips sought a finding of a serious question to be tried in relation to fraudulent imitation without evidence and without particulars.  The relevant matters are, however, peculiarly within Remington’s knowledge, not that of Philips.  It is true (as senior counsel for Remington Australia submitted) that a mere allegation does not give rise to a serious question to be tried.  But the matter before me gives some support to the proposition that, even if most of the particular features relied on by Philips appear, separately or in combination, in the prior art, nevertheless the particular design adapted bears a close resemblance to the current Philips design (represented by the registered design) rather than the earlier designs either of Philips or of Izumi.  It also offers some support to an inference to the effect that Remington played a part in the deliberate choice of the particular design (it cannot matter, for the purpose of s 30 of the Designs Act that Remington Australia itself is not, as senior counsel put it, implicated).  As for the respect in which the RR(DT)55 differs plainly from the Philips design - the bulkier and elongated head base - there is support in the McDonald’s evidence (though Professor Redmond disagrees) for a conclusion that the designer has included a particular feature - horizontal parallel lines around the base - calculated to minimise the impression of elongation.  And, though my own preliminary impression of the RR(DT)55 corresponds more with Professor Redmond’s than Mr McDonald’s, I accept that this is a matter on which, in the light of evidence and further reflection, impressions may change and on which, in any event, minds may differ.  After some hesitation, and bearing in mind the nature of the question to be answered on this interlocutory application, my conclusion is that there is a serious question to be tried, in relation to the RR(DT)55, on fraudulent imitation.

Balance of convenience and discretionary matters

I have mentioned that Remington Australia does not rely, in relation to the balance of convenience, on any particular detriment which it would suffer were an interlocutory injunction to be granted.  It should be noted also that senior counsel for Remington Australia disclaimed reliance, at this interlocutory stage, on possible arguments going to the invalidity of the registered designs and to a claim by Remington Australia for rectification of the register by their expungement (cf Tefex Pty Ltd v Bowler (1981) 60 FLR 314 at 321).  Philips, on the other hand, relied on irreparable harm which it said would arise from the continued distribution of the Remington products including loss of goodwill, loss of customers and customer loyalty and consequent loss of market share.  The evidence was not particularly detailed (perhaps, at least in some respects, they are matters about which it is difficult to go into great detail), but so far as those matters go, the balance of convenience clearly, I think, favours preserving the status quo by granting an interlocutory injunction.

Two matters principally were urged against that course.  The first was delay.  It was submitted that I should infer, from its own launch of a “special” cheaper product, that Philips was aware in October 1996 of the pending launch of the Remington product.  That seems to me somewhat tenuous.  However, evidence given by Mr Schiferli (a senior executive of Philips Electronics) makes it clear that Philips had in late 1996 heard rumours of an impending launch by Remington Australia of a three headed shaver; Mr Schiferli saw a publication in about February 1997 referring to Remington Australia’s launch of a dual track rotary rechargeable shaver; a Philips representative obtained a copy of a Remington trade brochure in May 1997; and a representative bought a RR(DT)55 shaver in June 1997.  The delay between first awareness and the taking of legal proceedings was explained by the need to obtain information and then to obtain advice.  It is impossible to escape the impression that, at least in the early stages, there was delay.  I do not think, however, that the delay is such as seriously to affect the balance of convenience.  I was referred to Carlton and United Breweries (NSW) Pty Ltd v Bond Brewing (New South Wales) Ltd (1987) 76 ALR 633.  Certainly that case is authority for a proposition that, in certain cases, delay in bringing proceedings may, of itself, be a sufficient reason for declining to grant an interlocutory injunction (at 638).  Nevertheless, Bond Brewing involved delay of a quite different order than that which happened here, and there were elements of serious prejudice to the respondent (see at 640, 641) not present here.  The evidence does not indicate, and it was not suggested, that any delay on the part of Philips has caused Remington Australia any particular prejudice.

Thus, subject to other discretionary considerations, the balance of convenience in my view favours the grant of an injunction.  That conclusion may be reached without taking account of the apparent strength or weakness of Philips’ case.

The particular discretionary matter put on behalf of Remington Australia arises from a claim, foreshadowed in a draft defence and cross claim handed up during the hearing, based on s 46 of the Trade Practices Act.  The foreshadowed claim may be summarised as follows, simplifying it somewhat.  Rotary shavers and foil shavers are not effective substitutes one for the other; thus there is a market in Australia for the supply of rotary shavers.  Alternatively, electric shavers and blade shavers are not substitutable and accordingly there is a market in Australia consisting of rotary and foil shavers.  Philips has substantially a monopoly position in Australia in relation to rotary shavers and substantial market power in relation to electric shavers (based on the market shares to which I have already referred).  Philips has pursued legal proceedings against Izumi and others in numerous jurisdictions, largely unsuccessful (so it is said) based on asserted intellectual property rights.  Philips has instituted the present proceeding and has filed and is prosecuting the pending trade mark application.  Philips knows, and at all relevant times has known, that there were and are no reasonable prospects of enforcing the intellectual property rights that it has asserted (particulars are given of various Philips documents in evidence discussing among other things its prospects of success in various proceedings).  Thus Philips has taken advantage of its power in either the rotary shaver market or the electric shaver market for the purpose of preventing Remington Australia from entering into the rotary shaver market in Australia or deterring or preventing it from engaging in competitive conduct in the rotary shaver market, or the electric shaver market, in Australia.

The merits of that claim are, of course, for another day.  Their relevance for present purposes is that senior counsel for Remington Australia argued that there was material before the Court from which it might be inferred that there is a significant public detriment constituted by the continuation of exclusion of other participants (such as Remington Australia) from marketing rotary shavers in Australia.  I have held, however, that Philips’ claims give rise to serious questions in relation to both trade mark infringement and registered design infringement.  If ultimately Philips succeed, then Remington Australia will not be entitled to sell in Australia the particular models complained of or other models similarly infringing Philips’ rights.  Whether as a practical matter success by Philips would prevent Remington Australia, or anyone else, from entering the rotary shaver market in Australia (assuming there to be such a market) or effectively competing in any market in Australia is a matter on which I am in no position to express any view, even tentatively; certainly it is not established.  To a large extent the answer may depend on factual matters which will be agitated at the trial.  In any event, in circumstances where Philips has for over 30 years been the only seller of rotary shavers in Australia, I cannot think, where Philips have established serious questions to be tried in relation to particular claims it makes against Remington Australia, that there is a public interest of the kind asserted which should lead the Court to refuse an injunction pending trial.

Accordingly, subject to the applicants giving the usual undertaking as to damages, there should be an interlocutory injunction substantially in the terms of paragraph 1 of the application.

I shall hear counsel as to the precise form of the order and on any matter which either party wishes to put to me on the question of costs.  It will be necessary also to make directions as to  the future conduct of the proceedings: plainly it is desirable that they be disposed of, on a final basis, promptly.

Associate:

Dated: