The case of Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3) [2017] FCA 865, is a reminder that registrations for logos provide relatively weak protection.
The images and stylisation of a logo can provide points of potential distinction for an infringer. A registration for the trade mark in plain capital letters and no accompanying descriptors of the goods/services will provide a greater scope of protection. This is likely to make the difference between winning and losing a court case for infringement.
Shape Shopfitters Pty Ltd owns Australian trade mark registration number 1731525 for the SHAPE SHOFITTERS logo shown below. It was filed on 30 October 2015 in respect of shopfitting, construction and advisory services relating to construction in class 37:
Shape Shopfitters alleged that Shape Australia infringed its trade mark registration by use of the following trade marks:
Shape Shopfitters Pty Ltd had traded since July 2012, while Shape Australia Pty Ltd started trading in October 2015.
Shape Australia provided construction services but was not specifically engaged in shopfitting. Nevertheless, it did sub-contract those jobs to others.
The judge (Justice Debra Mortimer) found that Shape Australia’s trade marks were not deceptively similar to Shape Shopfitters registered logo.
She considered that the public would recall not just the word SHAPE, but also the word SHOPFITTERS and the distinctive bottle cap shape of the logo.