The importance of how words and logos relate to each other and how they should be protected by businesses has been reinforced by recent judgements in the Full Court of the Federal Court of Australia.
The decisions and the precedents they set are likely to be important considerations in the upcoming appeal of another trade mark case which was decided this year - Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3)  FCA 865.
In that case, Justice Debra Mortimer dismissed allegations by Shape Shopfitters, the Applicant, against Shape Australia, the Respondent, of misleading and deceptive conduct, passing off and trade mark infringement arising from use of the word SHAPE.
This article addresses the findings in the case in relation to deceptive similarity and considers whether the findings are consistent with recent Full Court decisions.
The Applicant and Respondent both operated, broadly, in the shopfitting and construction industry. The particular services offered by each party and the nature of each party’s business are not relevant to the specific issues addressed in this article.
The Applicant changed its name to Shape Shopfitters in July 2012 when it rebranded to a specialist shop fitting company. The Respondent changed its name to Shape Australia in October 2015. There was no dispute that the Respondent chose the name Shape Australia without knowledge of the existence of the Applicant.
Relevant trade marks
The Applicant is the owner of following trade mark (number 1731525) registered in respect of various class 37 shopfitting and construction services (Shape Logo Registration):
While the Shape Logo Registration was registered in colour, it was often used in black and white.
The Respondent was using the SHAPE word mark and the following logo marks (Shape Australia Logo Marks):
The Applicant alleged that the Respondent’s marks were deceptively similar to its Shape Logo Registration and use of the Respondent’s marks constituted an infringement and contravention of the Australian Consumer Law.
As to deceptive similarity, Her Honour found that:
1. There was nothing deceptively similar between the SHAPE word mark and the Shape Logo Registration; and
2. There were more similarities between the logo marks, but that the Shape Australia Logo Marks were not deceptively similar to the Shape Logo Registration because:
a) The additional word SHOPFITTERS is memorable, particularly due to the alliterative affect with the word SHAPE; and
b) The bottle cap border around the Shape Logo Registration is distinctive when compared to the plain circle around the Shape Australia Logo Marks.
The Shape Shopfitters case has been appealed. Her Honour’s findings appear to involve a detailed deconstruction of the marks in question rather than assessing the overall impression left by the marks.
The recent Full Federal Court decision in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd  FCAFC 56 (in finding that
constituted use of HARBOUR LIGHTS (word)) emphasised that the “dominant cognitive cue” or essential feature of the marks must be considered. This approach was preferred in favour of deconstructing the marks and considering elements that did not substantially affect the identity of the trade mark. Our article concerning this point can be found here.
Similarly, in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd  FCAFC 83, the Full Federal Court held that two INSIGHT trade marks (set out below) were substantially identical (a higher threshold test than deceptively similar) because the essential feature or “dominant cognitive cue” of both marks was the word INSIGHT and the circular device to the left of the word.
It is likely the Full Federal Court will review her Honour’s findings regarding deceptive similarity on appeal. If the Accor Australia & New Zealand Hospitality Pty Ltd and Pham Global Pty Ltd cases are followed, our view is that the Shape Logo Registration and the Shape Australia Logo Marks may be considered deceptively similar given the word SHAPE inside a circular device is the “dominant cognitive cue” in the marks.
The decision in the Shape Shopfitters case regarding deceptive similarity again highlights the importance for trade mark owners to register the word marks in use, in addition to the logo. If the Applicant had a registration for SHAPE or SHAPE SHOPFITTERS in addition to the Shape Logo Registration, the finding of deceptive similarity and trade mark infringement in relation to the Respondent’s use of the SHAPE word mark and Shape Australia Logo Marks may have been different.
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