Adidas AG v Pacific Brands Footwear Pty Ltd [2013] FCA 905 | Case summary

Adidas AG v Pacific Brands Footwear Pty Ltd [2013] FCA 905 | Case summary | Zoe

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Introduction 1 These proceedings, which were commenced in October 2010, concern whether or not the respondent has infringed the applicants' registered trade marks, that is, whether the respondent has used as a trade mark a sign that is deceptively similar to the applicants' registered trade marks in relation to goods in respect of which the trade marks are registered: see s 120 of the Trade Marks Act 1995 (Cth) (the Act). The goods in question are certain types of shoes. The proceedings do not concern the common law of passing-off or misleading or deceptive conduct under the Competition and Consumer Act 2010 (Cth). 2 The first applicant, adidas AG ("adidas") is the owner of the trade marks. The second applicant, adidas Australia Pty Limited ("adidas Australia"), is a subsidiary of adidas and distributes adidas products in Australia. 3 The respondent, Pacific Brands Footwear Pty Ltd (Pacific Brands), is a company that offers shoes for sale throughout Australia. It sells some 20 million pairs of shoes each year. 4 These reasons deal with infringement and I shall give the parties the opportunity, which they sought, to make further submissions as to the appropriate form of relief in the light of my conclusions. 5 The marks alleged to be infringed are recorded in the register as follows: Reg. Trade Mark Registered from Endorsement Goods in No. relation to which mark is registered 131325 13 March The mark consists of Sports shoes, 1957 three stripes of a colour different from special sports that of the article of shoes, more footwear to which they are applied. The three stripes extend particularly across the article from football boots, the area of the lacing runners, to the vicinity of the instep, an example of training shoes such mark being depicted in the and other representation of the mark. Evidence that sporting user has rendered the footwear in trade mark distinctive this class. of the applicant's goods has been filed. 924921 17 July Trade Mark Footwear, 2002 Description: The trademark consists of including sport three stripes forming a shoes and contrast to the basic colour of the shoes; casual shoes the contours of the shoe serves [sic] to show how the trademark is attached and is no component of the trademark. Provisions of subsection 41(5) applied.

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6 There follows a photograph of each of the two adidas shoes tendered. 7 The first was referred to as the Superstar Shoe - Exhibit A1. The second adidas shoe tendered was referred to as the Copa Mundial - Exhibit B1. The issues 8 In the originating application dated 18 October 2010, "Infringing Products" was defined as follows: "Infringing Products" means the articles of footwear depicted in Annexures C to N to the accompanying Statement of Claim and any other articles of footwear to which either of the 3-Stripe Trade Marks or a mark substantially identical with, or deceptively similar to, either of the 3-Stripe Trade Marks, has been applied without the licence of the First Applicant. This includes, without limitation, any article of footwear which bears three or four parallel stripes which are (a) on the side of the footwear extending from the normal position of the lacing or other means of closure to a position at or near the sole of the footwear; and (b) in a colour or colours or material which contrasts with the colour or material of the part of the footwear on which such stripes are located. 9 "3-Stripe Trade Marks" was defined to mean the trademarks I have set out above. I refer to them in these reasons as the 3-Stripe Trade Marks or the applicants' trade marks. Annexures C to N correspond to Exhibits C to N set out below. 10 The relief claimed was as follows: 1. A declaration that the Respondent has infringed the 3-Stripe Trade Marks by supplying the footwear depicted in Annexures C to N to the accompanying Statement of Claim. 2. An order that the Respondent, whether by its servants, agents or otherwise, be permanently restrained from: (a) manufacturing, procuring the manufacture of, importing, purchasing, selling, offering to sell, supplying, offering to supply or distributing any Infringing Products; and (b) authorising, directing or procuring any other company or person to engage in any of the conduct sought to be restrained by sub-paragraph (a) above. 3. An order that within 7 days of making this order the Respondent delivers up to the solicitors for the Applicants on oath all Infringing Products. 4. Damages or an account of profits pursuant to the Trade Marks Act 1995. 5. Interest pursuant to section 51A of the Federal Court Act 1976 [sic]. 11 The applicants maintained their claims in respect of the following shoes only: Airborne Shoe - Exhibit E; Boston Shoe - Exhibit G; Apple Pie Runner - Exhibit H; Stingray Runner - Exhibit I; Basement Shoe - Exhibit J; Stingray Shoe - Exhibit K; Apple Pie Shoe - Exhibit L; Apple Pie Pink Runner - Exhibit M; Stingray Black Runner - Exhibit N. 12 The applicants accepted, on the first day of the trial, that by reason of accord and satisfaction or estoppel, they were not entitled to relief in respect of the Apollo Shoe - Exhibit C, the Indigo Shoe - Exhibit D and the Stingray Boot - Exhibit F. Senior Counsel for the applicants said in opening submissions that the applicants intended to rely on evidence relating to these shoes only in making out their allegations that Pacific Brands intended to deceive and confuse the average consumer into thinking that the impugned shoes originated from or were connected in the course of trade with adidas. 13 The respondent Pacific Brands denied the applicants' claims on two bases: first, the use by Pacific Brands of stripes in various styles and groupings on the shoes was not use as a trade mark within the meaning of the Act and, second, the stripes were not "deceptively similar" to the applicants' trade marks within the meaning of s 120(1) of the Act. 14 From time to time in the course of submissions it appeared that the applicants were putting that any use of four stripes on the side of sports shoes would amount to an infringement of the adidas trade marks and the case was about "stripeness" and, in answer, that the respondent was putting that any use of four stripes on the side of sports shoes could not amount to an infringement because it was plain that four stripes were not the same as three stripes. As will appear, in my opinion, the result is not so simple.

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History 15 It was in 1949 that the business of adidas and its predecessors was founded by Adi Dassler in Germany under the name "Adolf Dassler adidas Sportschuhfabrik". 16 Since 1957, adidas has continuously supplied to customers in Australia footwear bearing its trade marks. In 2009, a large volume of footwear bearing the 3-Stripe Trade Marks was sold in Australia. I accept that footwear bearing the 3-Stripe Trade Marks has been extensively promoted through (a) posters displayed in store; (b) inserts placed inside popular sporting magazines; (c) catalogues which are distributed to customers and potential customers of adidas; (d) outdoor advertising at various locations in Australia; (e) an online catalogue since at least June 2004; and (f) sponsorship of high-profile sporting athletes and teams including David Beckham, the New Zealand All Blacks rugby union team, and many prominent Australian athletes and teams. 17 I also accept that, in addition, media photographs of athletes, many of whom are sponsored by adidas, wearing footwear which identifiably bears the 3-Stripe Trade Marks frequently appear in the sport sections of newspapers and sports magazines distributed throughout Australia. Adidas received particular publicity from the Sydney Olympic Games in 2000 which featured numerous athletes or teams wearing footwear bearing the adidas trade marks. 18 The parties agreed on the following facts, the respondent not conceding their relevance: (a) Pacific Brands, the respondent, is the successor of the footwear business of Pacific Dunlop Ltd ("Pacific Dunlop"), including in relation to the sourcing and sale of footwear. (b) On 7 December 1973, adidas AG and Pacific Dunlop entered into a Licence Agreement. Under the Licence Agreement, adidas granted Pacific Dunlop the exclusive right within Australia to use adidas' trade marks and the exclusive rights to manufacture, import and distribute certain adidas products within Australia. Pacific Dunlop used the adidas trade marks and distributed adidas products in Australia pursuant to that Licence Agreement. Amendments to that agreement were made on 7 March 1975 and 3 October 1975. (c) On 26 May 1983, adidas and Pacific Dunlop entered into two agreements: a Distribution Agreement and a License Agreement. These agreements replaced the 7 December 1973 Licence Agreement. Under the Distribution Agreement, Pacific Dunlop was appointed sole distributor of adidas products in Australia. Under the License Agreement, Pacific Dunlop was granted the exclusive right to use adidas trade marks in Australia. Pacific Dunlop distributed adidas products and used the adidas trademarks pursuant to those agreements. (d) On 1 December 1993, adidas and Pacific Dunlop entered into a License and Distribution Agreement which replaced the 26 May 1983 License Agreement. Under the License and Distribution Agreement, Pacific Dunlop was granted the exclusive right to use adidas trade marks in Australia and had the obligation to market and distribute adidas products in Australia. On the same date, Pacific Dunlop, adidas and adidas Australia, entered into a Deed of Assignment. Under the Deed of Assignment, Pacific Dunlop assigned its rights and obligations under the License and Distribution Agreement to adidas Australia. (e) Between 1992 and 23 May 1996, adidas Australia was a subsidiary of Pacific Dunlop which owned 51% of the shares in adidas Australia. Pacific Dunlop's shares in adidas Australia were later acquired by adidas. (f) Mr Paul Moore was a director of the respondent during 2006 and 2007 (until 1 October). Mr Moore was previously the General Manager of adidas Australia. (g) Mr Russell, the General Manager of Footwear and Sport for the respondent, held various positions at adidas between July 1977 and July 1988. 19 Other facts from a chronology, which was agreed by the respondent but subject to relevance, were as follows. 20 In 2006 Pacific Brands imported and sold the Apollo Shoe and Indigo Shoe in Australia. 21 From August 2007 to 31 October 2008, Pacific Brands imported and sold the Stingray Boot in Australia. 22 In September 2008, Payless Shoes imported and sold the Boston Shoe in Australia. 23 In August 2009, Pacific Brands imported and sold the Apple Pie Runner, Stingray Runner, Basement Shoe, Apple Pie Shoe and Apple Pie Pink Runner. 24 In February 2010, Pacific Brands imported and sold the Stingray Black Runner. 25 It was also common ground that the applicants' 3-Stripe Trade Marks were very well-known or famous in Australia. Further, it was accepted that adidas had very extensively promoted and used the 3-Stripe Trade Marks over a long period of time and had never used four stripes on its footwear.

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The expert (non-survey) evidence 32 The evidence of Dr Stavros and Dr Glaser went first to the question of the use of stripes as a trade mark and second to whether confusion with the applicants' trade marks was likely to occur when consumers viewed the Pacific Brands shoes. 33 Dr Stavros and Dr Glaser together produced a document summarising their major areas of agreement and disagreement. They said there was broad agreement about the nature and element of brands which covered the importance of brands and their elements to consumers and the roles that these played in the market place. However there was some disagreement about specific branding in relation to the adidas and Pacific Brands shoes. This was detailed as follows. 34 Dr Stavros and Dr Glaser agreed that sport shoes in general carry markings on the sides that help to distinguish them. These markings can play various roles which are not mutually exclusive. Where they disagreed was that Dr Stavros believed that these markings are perceived by consumers as being a brand element based upon the rationale contained in response to Question 8 of Dr Stavros' first affidavit, that question being "Are the stripe markings on the footwear depicted in annexures C - N of the statement of claim likely to be perceived by consumers as a brand or a brand element". In particular Dr Stavros' belief was that consumers are conditioned to view such markings as brand elements. However Dr Glaser argued that these markings may simply serve to enable the consumer to categorise the shoes' function and did not necessarily have a brand association. 35 As to whether confusion was likely to occur when consumers viewed the Pacific Brands shoes, Dr Glaser believed that consumers would not be confused and would not attribute the source of the shoes to adidas. Dr Stavros believed that given the stripe markings that appeared on the Pacific Brands shoes it was likely a significant number of consumers may misidentify the shoes as being of adidas origin or commercially related to adidas. Dr Glaser and Dr Stavros outlined their reasons for these conclusions in their affidavits, in the case of Dr Stavros this being primarily in his third affidavit. 36 Dr Stavros and Dr Glaser agreed that defining the marketplace as one of "commodity" and "performance" shoes was unrealistic and that in practice the marketplace was more diverse. 37 There was disagreement about the role that context played in consumer decision-making processes in the present matter. 38 Dr Glaser argued that the price point, distribution network, presentation of the Pacific Brands products, target market and expectations of the customer differed from the typical adidas customer's decision-making context. As a result he argued that those factors overrode any brand or origin of manufacture connotation which the Pacific Brands markings may have. 39 Dr Stavros argued that the consumer perspective did not extend to corporate decisions such as choice of distribution networks and price points. As a result the consumer could readily expect to encounter a shoe that resonated with their belief that markings on it would constitute a brand element in a variety of contexts and that such an interaction would not be significantly diminished by other contextual elements, such as price and location. 40 Dr Stavros and Dr Glaser agreed that outlets such as Kmart and Target carried a range of brands in various categories, some of which may be regarded as "leading" brands. Dr Glaser argued that historically consumers did not expect to see adidas shoes in outlets such as Kmart. However he acknowledged that this may change as the strategies of shoe marketing companies shift to remain more competitive. Dr Stavros argued that such outlets carry brands that consumers were familiar with and that consumers, unaware of the distribution strategies of organisations, would not be at all surprised if leading footwear brands were present in those outlets.

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Use as a trade mark within the meaning of the Act 41 As to use of the stripes on the shoes as a trade mark, s 17 of the Act provided: A trade mark is a sign used, or intended to be used to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. 42 The word "sign" was stated in s 6 of the Act to include, unless the contrary intention appeared: … the following or any combination of the following, namely any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent; 43 In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144, French CJ, Gummow, Crennan and Bell JJ said: [41] The concept of "use" of a trade mark which informs ss 92(4)(b), 100(1)(c) and 100(3)(a) of the Trade Marks Act must be understood in the context of s 17, which describes a trade mark as a sign used, or intended to be used, to "distinguish" the goods of one person from the goods of others. [42] Whilst that definition contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth), that a trade mark indicate "a connexion in the course of trade" between the goods and the owner, the requirement that a trade mark "distinguish" goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of "goods to which the mark is applied". Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark. There is nothing in the relevant Explanatory Memorandum to suggest that s 17 was to effect any change in the orthodox understanding of the function or essential characteristics of a trade mark. [43] In Coca-Cola Co v All-Fect Distributors Ltd (1996) 96 FCR 107 at 115 [19] per Black CJ, Sundberg and Finkelstein JJ a Full Court of the Federal Court of Australia said: "Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of "trade mark" in s 17 - a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else." That statement should be approved. (footnotes omitted) Heydon J at [87] agreed with the substance of these paragraphs, except with the last sentence of [42]. 44 The respondent submitted that in order to succeed in an infringement proceeding, the registered trade mark owner must establish that the use of the impugned sign by the alleged infringer was use as a trade mark. That is, the impugned sign must, when considered in context, operate as a "badge of origin" - it must be used to distinguish goods dealt with by one person from like goods dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1996) 96 FCR 107 at [19]; Aldi Ltd Stores Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185 at [22]; E & J Gallo Winery v Lion Nathan Australia Pty Ltd at [43]; Nature's Blend Pty Ltd v NestlÉ Australia Ltd (2010) 272 ALR 487 at [19]; Australian Health & Nutrition Association Ltd t/as Sanitarium Health Food Co v Irrewarra Estate Pty Ltd t/as Irrewarra Sourdough (2012) 292 ALR 101 at [15]-[25]. This was the Court's first inquiry when considering the issue of trade mark infringement. If the answer to that inquiry was no, then that was the end of the matter. It was only if the answer was yes that the Court goes on to consider the issue of whether a sign is deceptively similar to a registered trade mark: Global Brand Marketing Inc v YD Pty Ltd (2008) 76 IPR 161 at [49] per Sundberg J. 45 In determining whether or not the sign was being used as badge of origin, the respondent submitted the context in which the impugned sign was used was "all important": Global Brand Marketing (2008) 76 IPR 161 at [61(g)]; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185 at [22]-[23] applying Kitto J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422. The respondent also relied on Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312 at [60] - [62] per Greenwood J. 46 The respondent submitted that the four stripes that were used by it were used in various styles and groupings. For example: (a) the Indigo Shoe - Exhibit D had four brightly coloured stripes of different colours which overlapped the shoe to form a lace which was secured by Velcro; (b) the Basement Shoe - Exhibit J had two pairs of two silver stripes with a large gap between them; (c) the Apple Pie Pink Runner - Exhibit M had two pairs of two pink stripes with a large gap between them; and (d) the Stingray Runner - Exhibit N had four grey stripes that were wider at the top and taper to a narrower end at the bottom. 47 The respondent submitted that the context in which Pacific Brands used the stripes on its shoes included: (a) as decorative elements; (b) as a function indicating that the product was a sports shoe (or leisure shoe); (c) in some cases, performing functional purposes; and (d) the use of Pacific Brands' registered trade marks (such as Grosby) on the shoes. 48 The respondent submitted that the context in which its Pacific Brands' shoes were sold included: (a) the shoes were not performance shoes sold in specialist stores; (b) the shoes lacked high technical specification; (c) the shoes were sold through low cost stores; (d) generally, in smaller retailers, the shoes were sold by being stacked in boxes on the store floor arranged to indicate the size; (e) generally in larger retailers, the shoes were sold as "hang sell" tied together with elastic or plastic; (f) generally the shoes were sold with little or no sales assistance; (g) the shoes were low cost "commodity" shoes; (h) the shoes featured Pacific Brands' registered trade marks such as "Stingray", "Tristar", "Apple Pie" and "Basement"; whereas (i) in contrast, performance shoes such as adidas were typically purchased: (i) in a setting such as a specialist footwear or department shoes; (ii) with the assistance of a salesperson, who retrieved a pair of shoes from a storage area; and (iii) in a setting where brand advertising and point of sale material was employed. 49 The respondent submitted that given: (a) the widespread use of stripes on sports shoes; (b) Dr Glaser's evidence as to the use of the stripes on shoes; (c) the context in which the stripes were used by Pacific Brands on the impugned shoes including: (i) the various decorative and/or functional elements of the Pacific Brands stripes; and (ii) the use of other marks to distinguish the Pacific Brands shoes; (d) the context in which Pacific Brands' shoes were sold; and (e) the context in which adidas shoes were sold; the use of stripes on the shoes Exhibits E and G - N was not use as a trade mark within the meaning of the Act. The stripes on the shoes were not being used as a badge of origin to distinguish those goods from the goods of some other trader. On this fundamental threshold issue alone, the respondent contended, the proceedings should be dismissed. 50 The applicants submitted that there was no strict dichotomy between another function (such as description or decoration) and a function as a badge of origin: a particular use may serve more than one function: Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 per Lockhart J at 335; per Gummow J at 347. Further, there may still be trade mark use although another trade mark or indication of origin was used in the same packaging or advertisement: Johnson & Johnson per Gummow J at 349; Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 33 IPR 161 per Sackville J at 179, 182 and 185. 51 In relation to the latter issue, the applicants submitted, Allsop J pointed out in Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 at [191] that it was not to the point to say that because another part of the label was the obvious and important "brand", that another part of the label could not act to distinguish the goods. The respondent's reliance on its other trade marks therefore did not advance the matter very far for the respondent. 52 The applicants submitted a determination of trade mark use required an objective examination of the use in the context in which the mark appeared, in order to determine whether the sign would be perceived by the public as distinguishing the trader's goods from those of other traders: Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2002) 190 ALR 185 at [22] per Hill J; at [76] per Lindgren J. 53 An important aspect of the context in the present case, the applicants submitted, was that, in the sports footwear category, logos serving as a badge of origin were traditionally placed on the sides of shoes between the sole and the laces as this space was visible from numerous angles. For example, in addition to adidas using its marks on the sides of its shoes, Nike generally placed its "swoosh logos" on the sides of its shoes; ASICS used a criss-cross pattern of stripes on the sides of its shoes; New Balance typically placed a stylised "N" design on its shoes; and Puma used a single, curved stripe on its shoes. The applicants' expert, Dr Stavros, and the respondent's expert, Dr Glaser, agreed that sport shoes in general carry markings on the sides that help to distinguish them. These markings can play various roles which were not mutually exclusive. Mr Sergeant, the respondent's expert, also agreed that sports shoes have trade marks on their sides. In Beecham Group Plc v Colgate-Palmolive Pty Ltd (2006) 66 IPR 254 at [48], Emmett J took into account the placement of trade marks on competitors' brands in support of a conclusion that there was use as a trade mark. 54 Given that context, the applicants submitted it was plain that, whatever decorative function the four stripe mark may also serve, consumers were accustomed to seeing the material appearing on the side of a sports shoe as functioning as a badge of origin, and would regard the four stripe marks as badges of origin accordingly. The fact that the side of sports shoes were used as a place to display trade marks was a permissible matter of context, or perhaps "trade usage" as referred to in s 219 of the Act. 55 In the applicants' submission, the respondent sought to use the rubric of "context" to broaden the inquiry as to whether there was a use as a trade mark beyond permissible bounds. The applicants submitted that the only relevant context was the purpose and nature of the impugned use, and context relating to how the mark had been adopted or applied in relation to the goods and any relevant advertising (although there was no relevant advertising in this case). That was the approach taken in the authorities and must be logically correct. The authorities were clear. In Nature's Blend Pty Ltd v NestlÉ Australia Ltd (2010) 272 ALR 487 at [19], the Full Court summarised the relevant principles. 56 Thus, "context" was not the open-ended inquiry on "surrounding circumstances" for which the respondent contended. The reasoning of Jagot J in Australian Health and Nutrition Association Ltd v Irrewarra Estate Pty Ltd (2012) 292 ALR 101 at [27]-[31] provided, it was submitted, an orthodox and correct application of the concept of "context". 57 The applicants submitted that the logic was also clear. It could not be the case that an examination of all the surrounding circumstances of a "typical" sale, divorced from how the mark was adopted or applied in relation to the goods, was permitted to determine whether there was use as a trade mark. Whether there was use as a trade mark could not depend on the present or "typical" circumstances of sale, which may change. Otherwise, it would have the absurd result that the answer to the question of whether a four stripe mark used on a shoe of the respondent was used as a trade mark could change on some day in the future if it came to be sold through, for example, a specialist store such as Athlete's Foot, notwithstanding the appearance of the mark on the shoe had not changed. Also, how other shoes were sold was completely irrelevant to the question of trade mark use by the respondent. That question must be able to be answered purely by looking at how the mark had been adopted or applied in relation to the respondent's goods. 58 The applicants did not seek to rely on the survey evidence in relation to the issue of "use as a trade mark". The survey was relied upon solely on the question of deceptive similarity. I will consider the survey evidence in detail later in these reasons.

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Consideration 59 In relation to use as a trade mark the Full Court in Nature's Blend Pty Ltd v NestlÉ Australia Ltd (2010) 272 ALR 487 at [19] summarised the relevant principles as follows, the issue being whether NestlÉ used "luscious Lips" as a trade mark: (1) Use as a trade mark is use of the mark as a "badge of origin", a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19]; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [43]. (2) A mark may contain descriptive elements but still be a "badge of origin": Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347-8; Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185 at [60]. (3) The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 422. (4) The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use "as a trade mark": Johnson & Johnson at 347 per Gummow J; Shell Co at 422. (5) Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or "context") of the impugned words: Johnson & Johnson at FCR 347; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182. (6) In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.… 60 Applying these principles to a design rather than to words, the question at this stage is not whether the respondent has used a sign so as to indicate a connection between it and the applicants. Instead the question is whether the use indicates a connection between the shoes in question and the respondent. 61 I accept that the stripes on the shoes have a decorative element and that the stripes may also act to indicate that each shoe is a sports shoe but that does not mean that those elements constitute the only use of the stripes as a sign: they are not mutually exclusive. 62 As Dr Glaser accepted, the stripes were capable of functioning as an identifier. As I understood his evidence it was that the stripes did not so function by reason of the other matters of context to which he referred. 63 In my opinion, the evidence of Dr Glaser and the respondent's submissions take too broad a view of "context", which should have as its focus the purpose and nature of the impugned use, as submitted by the applicants. 64 The evidence was that signs as identifiers are generally placed on the side of sports footwear, where the stripes on the impugned shoes are to be found. This indicates that the decorative element of the stripes or their indication that each shoe is a sports shoe would not be dominant. 65 Dr Glaser gave evidence that stripes would not, without more, be considered by the consumer to be a trade mark. He said that in order to understand an arrangement of four stripes as something more than just decoration of a sports shoe a consumer must be conditioned to understand that the four stripes act as a cue to the source of the product. For example, he said, adidas had conditioned consumers to understand three stripes on the side of its sports shoe as a trade mark but this was not a straightforward exercise and required the successful combination of a number of measures which he then detailed. Absent those measures, Dr Glaser said, it was unlikely that a consumer would be conditioned to understand stripes on sports shoe as a cue to the origin of the product. 66 However, in my opinion, merely because a consumer may not know enough about a manufacturer or seller to associate the sign with a specific named manufacturer or seller does not mean the sign is not used to distinguish the goods from the goods of another or indicate a connection with the manufacturer or seller: see Mark Foy's Limited v Davies Coop and Co Ltd (1956) 95 CLR 190 at 204 per Williams J with whom Dixon CJ agreed; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 per Gummow J at 348. As I have said, it was accepted that signs as identifiers are now generally placed on the side of sports footwear. How they came to be generally so placed is not of present significance. 67 As Dr Stavros said in his evidence, the fact that a company, such as the respondent company, does not invest in promoting brand elements or does not ensure their consistent application does not necessarily lead to consumers disassociating such elements from their existing understanding of the category, which is likely to include perceptions that sport shoes feature brand symbols on them. 68 For these reasons my conclusion is that in each case the stripes on the impugned shoes were used as a trade mark: the use indicates a connection between the shoes in question and the respondent.

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Deceptively similar 69 The relevant principles were stated by the applicants to be found first in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595, where Kitto J said: It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring … - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. 70 In Vivo International Corp Pty Ltd v Tivo Inc (2012) 294 ALR 661 at [77] the Full Court said: In this regard, as has been repeatedly said in the authorities the issue is not whether consumers might think that the trade marks are the same, but whether a number of persons will be caused to "wonder whether it might not be the case that the two products or closely related products and services come from the same source … [or to] wonder or be left in doubt about whether the two sets of products … come from the same source": see Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [50]. 71 In Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ said: But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained. In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight. 72 The respondent relied on the statements in Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 at [143]-[146], where Allsop J stated the test for deceptive similarity as follows: The question of deceptive similarity must be judged by a comparison different from the side by side comparison undertaken to assess substantial identity; the question being the likelihood of deception or confusion from a recollection or impression of the registered mark. Thus, a side by side comparison is inadequate, and too narrow a test. The comparison is between, on the one hand, the impression based on recollection of the registered mark used in a normal or fair manner that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the impugned mark as it appears in the use complained of: Shell Co of Australia v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414; Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97; Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 128; and cf Johnson & Johnson v Kalnin (1993) 114 ALR 215 at 220; 26 IPR 435 at 440. The proper approach to the answering of this question is laid out in judgments of high authority. First, there is what was said by Parker J (as his Lordship then was) in Re Pianotist Co Ltd's Application (1906) 23 RPC 774 at 777 which was applied by Dixon, Williams and Kitto JJ in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 538 … As set out in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 539, it is not sufficient that the two marks convey merely the same idea. In Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 128-9 Gummow J said: Where the comparison of the marks is necessary to determine whether that of the defendant is deceptively similar to the registered mark of the plaintiff, who sues for infringement, the primary comparison must be between the registered mark on the one hand and the mark as used by the defendant on the other. The comparison differs from that in a passing off action where the plaintiff points to the goodwill built up around the mark by reason of prior use and then points to the conduct of the defendant as leading to deception (or perhaps merely confusion) and consequent damage to that goodwill of the plaintiff. … The statement that in infringement proceedings the concern "for practical purposes" is only with the marks themselves requires some elaboration in the light of the other writings and authorities on the 1938 Act and the present Australian legislation, to which I have referred. In particular - (i) The comparison is between any normal use of the plaintiff's mark comprised within the registration and that which the defendant actually does in the advertisements or on the goods in respect of which there is the alleged infringement, but ignoring any matter added to the allegedly infringing trade mark; for this reason disclaimers are to be disregarded, price differential was considered irrelevant by Kearney J [in Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491] and Cross J [in British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54], his Lordship also disregarded the differences in use by the parties of colour and display panels, and his Honour discounted the differences in the respective sections of the public to whom the goods were sold. (ii) However, evidence of trade usage, in the sense discussed above, is admissible but not so as to cut across the central importance of proposition (i). (iii) In particular, in making an aural comparison of the marks, whilst ordinarily one is concerned with what appears to be the natural and ordinary pronunciation, evidence in my view is admissible that those in the trade pronounce the defendant's mark in a manner which otherwise might be thought to vary from the normal fashion. (iv) Evidence of cases of deception or confusion may be taken into account (see, for example, British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54 at 64). (v) Although, as Australian Woollen Mills (supra) itself decides, it is not decisive, evidence is admissible that the defendant's mark was adopted with a view to "sailing close to the wind", in the sense of the adverse finding made by the primary judge in this case. 73 Deceptive similarity is a question for the judge. In Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 at 377 the Full Court said: The roles of judge and witness were explained by Lord Evershed MR in Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 at 31. He said: The question of infringement, the question whether one mark is likely to cause confusion with another, is a matter upon which the judge must make up his mind and which he, and he alone, must decide. He cannot, as it is said, abdicate the decision in that matter to witnesses before him. 74 The respondent also referred to Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 for the proposition that two essential principles in determining deceptive similarity were set out by Kitto J in that case at 595: (a) the registered trade mark owner must show that there is a real, tangible danger of confusion occurring, a mere possibility is not sufficient; and (b) a trade mark is likely to cause confusion if the result of its use will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. 75 It is also necessary to set out s 10 of the Act as follows: For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. 76 I do not find the concept of "initial interest confusion", "customer confusion that creates initial interest in a competitor's product", as exemplified in Playboy Enterprises Inc v Netscape Communication Corp 354 F 3d 1020 (9th Cir. 2004) at [2] as adding, for present purposes a useful additional tool of analysis. Further, I do not read Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [105] (at first instance) as involving this concept. 77 Also I do not find the concept well-known in psychology called the "just noticeable difference" (JND), being the minimum amount by which a stimulus must be changed in order to produce a noticeable difference to an average person, to be of any assistance. Contrary to the submission of the respondent, and it was not put as replacing the legal test, I am not persuaded that the concept of JND is of help to the Court in determining whether there has been deceptive similarity, that is, in considering the imperfect recollection of a trade mark by a consumer. I am referring here to the evidence of Dr Glaser who gave his opinion that, when considering the Pacific Brands use of stripes, it was his opinion that use was sufficiently different from the adidas trade marks to exceed the JND threshold. In my opinion to approach the matter in that way, at least in the circumstances of the present case, is to add unnecessary refinement to the question of deceptive similarity. 78 Applying these principles, the applicants submitted there were at least eight important matters to take into account. 79 First, in applying the test of deceptive similarity, it was "important to consider what has been described as the "the idea of the mark", that is the idea which the mark will naturally suggest to the mind of one who sees it": Jafferjee v Scarlett (1937) 57 CLR 115 at 121-122 per Latham CJ (with whom McTiernan J agreed). The idea of the mark was sometimes expressed as whether the allegedly infringing mark takes a "significant and distinctive element" (Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243 at [36]), or "essential feature" of the earlier trade mark (Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 at [93]; Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457 at [107]- [114]). If "the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection" (Saville Perfumery Ld v June Perfect Ld (1941) 58 RPC 147 at 162), then confusion is likely to result if that feature is adopted in another trade mark. 80 Second, and related to the first point, the court will normally place significant weight on the first impression of a mark. This recognised that once a person has become familiar with two marks they were very unlikely to be confused, but at the point that a person is first exposed to the allegedly infringing mark confusion may well occur (Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Ltd's Application (1968) 118 CLR 128 at 136- 137 (first instance per Windeyer J)), and that initial confusion was sufficient to make out a case of deceptive similarity. 81 Third, as Dodds-Streeton J recently re-iterated in Tivo Inc v Vivo International Corp Pty Ltd [2012] FCA 252 at [105]: It is well established that trade marks may be deceptively similar … even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale. 82 Fourth, a finding of deceptive similarity cannot be avoided by showing that the public will not in fact be deceived as to the origin of the goods by the inclusion by the respondent of other material, such as its own trading names or brands, in conjunction with the impugned mark: see Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 at 513 -514 per Franki J and also Mark Foy's Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 204-205 per Williams J (Dixon CJ agreeing) at 195. 83 Fifth, whilst the question of deceptive similarity is ultimately one for the court, the evidence of expert witnesses may be of assistance in determining deceptive similarity. In particular, an appropriately qualified expert may give evidence about the possibility that consumers would be misled or confused. 84 In the present case, Dr Stavros gave evidence relating to the use of brands in general and in the sports footwear market in particular, so as better to inform the Court's comparison of the adidas trade marks and the respondent's trade marks. 85 Sixth, the intention or design of the respondent in deliberately seeking to imitate the adidas trade marks, or at the very least to "sail close to the wind" in that regard, was relevant to the assessment of deceptive similarity. 86 Seventh, the strength or "fame" of a trade mark must be taken into account in assessing the imperfect recollection of the registered trade mark which was relevant in the deceptive similarity test. 87 Eighth, the survey evidence in the present case provided clear evidence that a significant proportion of persons would be deceived or confused. 88 I was referred to the recent decision of the Supreme Court of Appeal of South Africa in Adidas AG & another v Pepkor Retail Limited (187/12) [2013] ZASCA 3 (28 February 2013). There it was held at [25] that it was immediately apparent, on first impression, that the four stripe marks on the respondent's soccer boot and the respondent's Boys' ATH Leisure Shoe, the respondent's "Hang Ten" sports shoe and the respondent's "Girls Must Have" shoe were not similar to the first appellant's trademarks and consequently that there was no likelihood of deception or confusion. That left the four stripe mark on the LDS Sportshoe and on the Men's ATH Leisure Shoe which were held at [27] to infringe. However, no doubt by reason of the largely factual basis of these claims, with respect, I did not find the reasoning or conclusions to be of assistance. 89 The respondent submitted that the shoes Exhibits C through N contained four stripes in various styles and groupings. In bringing this infringement proceeding adidas was seeking to extend its monopoly over its 3-Stripe Trade Marks with respect to shoes to the use of four stripes on shoes. The wide relief sought by adidas would effect a de facto registration of a trade mark that has never been used by adidas and was not inherently adapted to distinguish adidas' goods. 90 The shoes Exhibits C and E through N were imported by a division of Pacific Brands known as Global. Global had as its focus the commodity market, producing low specification shoes at very low prices. Such were the price point considerations and pressures resulting from low order volume that Global did not "design" shoes per se but rather selected shoes from Chinese suppliers. Small design variations on these selected shoes were sometimes possible. The shoe Exhibit D was designed and imported by a division of Pacific Brands known as Grosby. The shoe retailed at $19.95 which was at the very lowest end of Grosby's range of typical retail prices. 91 None of the shoes Exhibits C through N remained stocked by Pacific Brands and none had been sold for several years. 92 The respondent submitted that in considering the adidas trade marks as used in a normal or fair manner (ie how those marks are used), at a minimum the following were highly relevant: a) from visual inspection, the 3-Stripe Trade Marks were simple - three stripes in a simple parallel configuration; b) adidas had always used three stripes and had never used four stripes; c) adidas builds an "aspirational product" made to high standards and to meet various performance specifications to which its 3-Stripe Trade Marks were applied. In Dr Stavros' terms, a consumer's first encounter was to see the marks on the shoe; d) adidas had spent very large sums of money promoting its footwear bearing the 3-Stripe Trade Marks for more than 60 years including by sponsoring extremely high profile sporting events (including the Sydney 2000 Olympics), sportsmen and celebrities, ie this was normal use of these particular marks. 93 In cross-examination Dr Stavros confirmed his view that adidas had "embedded the three stripe brand into popular culture". 94 Similarly, the respondent submitted, in assessing the various impugned marks the subject of these proceedings as they appeared in the use complained of, at a minimum, the following were highly relevant: a) all of the impugned shoes were shoes made of synthetic materials with no performance specification (they were commodity shoes of basic or poor quality) and this was the type and quality of shoe to which the various four stripes were applied; and b) the shoes were not advertised and were sold in basic displays (hang sell, stacked boxes) where the stripes were often obscured. 95 During cross-examination Dr Glaser gave a succinct assessment of his opinion regarding the likelihood of confusion as follows: where you have a company that has been working hard to establish three stripes as their mark for 60 years, the confusion, while possible, is unlikely. 96 To establish "deceptive similarity" it was not sufficient that the two marks conveyed merely the same idea: Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 at [145]; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 539. 'Stripeness' as was coined by Senior Counsel for adidas had the character of an idea. It was far too liberal an approach to the notion of recollection (even an imperfect one) relevant to the assessment of deceptive similarity. 97 In this case, the comparison will be between the adidas trade marks and the various four stripe configurations as they appear on each of the impugned shoes.

[17]

Intention 98 Much emphasis was placed by the applicants on the respondent's intention. I consider first the legal framework and I then turn to consider, chronologically, the facts said to be relevant to this issue. 99 The applicants submitted that the classic formulation of the relevance of intention to the question of deceptive similarity was found in the following passage from Australian Woollen Mills Ltd v. FS Walton and Co Ltd (1937) 58 CLR 641 at 657-8: The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public. 100 I note that in that case their Honours began and ended these remarks with the following: But the examination made of the respondent's motives and good faith seems to us to leave the question of infringement and passing off very much in the same position as it stood in without it. … But the practical application of the principle may sometimes be attended with difficulty. In the present case it has caused a prolonged and expensive inquiry into the states of mind, motives and intentions of three people whose combined judgment decided that the company should adopt the trade brand and description complained of. This in turn necessitated an investigation of the steps by which the picture was obtained, considered and adopted and what was said and done by a number of persons in relation to the subject. From all this material, it appears to us that no more emerges than that though the name and mark Caesar were not sought or taken with any fraudulent intent, yet three or four people conversant with the matter saw in them too great a resemblance to those of the appellant, that their views were disregarded by the respondent, who may have thought they were erroneous, or may have thought that such a resemblance, if it existed, only added to the suitability of the mark. Incidentally the issue of intention provided an occasion for the disclosure in the witness box of much want of candour on the respondent's side. But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained. 101 The applicants submitted that the first of these passages had been applied in numerous cases since, including Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 129 per Gummow J. See also Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354 at [45] and [117]-[121]. 102 The respondent submitted that the dicta of Dixon and McTiernan JJ in Australian Woollen Mills (1937) 58 CLR 641 relied on by the applicants assumed that intention had been proven. The dicta were directed at the consequences of proof of intention. Subsequent Full Federal Courts had urged the need for great caution in applying their Honours' dicta to establish deceptive similarity. In Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185 at [34], Hill J after quoting their Honours' dicta said: It is clear from the report that this comment was not made only with respect to the issue of fraud, but that it went, as well, to the trade mark issue whether the use of the mark might deceive or confuse members of the public. Nevertheless, it is also clear from what was said that their Honours regarded both issues as ultimately questions of fact to be decided by the Court. Their Honours were not seeking to enunciate a principle of law. While the presumption would not be lightly rejected, if there is no reasonable probability of deception or confusion then there can be no infringement. See also per Lindgren J at [97]. 103 I note also that more recently the High Court has said in Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at [33]: … it is well established by the authorities referred to by the Privy Council in Cadbury-Schweppes Pty Ltd v Pub Squash Co Ltd [1981] RPC 429 at 493-494; [1980] 2 NSWLR 851 at 861 that, where there is such a finding of intention to deceive, the court may more readily infer that the intention has been or in all probability will be effective. Nevertheless, the actual decision in that case, favourable to the defendant, is a reminder that even an imitation of one product by another does not necessarily bespeak an intention to deceive purchasers. In particular, if Campomar were to retain its registrations and put them to use on a new range of products, the use thereon of nike would not necessarily indicate an intention to deceive purchasers. 104 Against that framework, the applicants' argument based on intention was summarised as follows: (a) the respondent was the successor in business to a former licensee of the 3-Stripe Trade Marks, and was therefore aware of the considerable commercial success of products sold bearing the 3-Stripe Trade Marks. As an expert in the trade it could not fail to be; (b) the sequence of the respondent's product development, in parallel with its strategy for dealing with adidas' complaints, demonstrated a conscious attempt to create colourable variations on the 3-Stripe Trade Marks while still retaining their essential features, apparently in an effort to maintain plausible deniability of infringement whilst still suggesting the 3-Stripe Trade Marks to consumers. Applying Australian Woollen Mills, this provided a reliable and expert opinion that consumers will be deceived or confused; and (c) the respondent had copied other aspects of shoes bearing the 3-Stripe Trade Marks (compare Exhibit A with Exhibits E, K and L; and Exhibit B with Exhibit F) and whilst those copied elements were not themselves taken into account in the trade mark comparison - as they would be in a passing off case - nevertheless they were indicative of an intention to trade off adidas' reputation, and from this an inference may be drawn that the intention included using the four stripe mark to convey to consumers the essential features of the 3-Stripe Trade Marks so as to deceive or confuse them into perceiving some association between the maker or seller of the respondent's shoes and the owner of the 3-Stripe Trade Marks. 105 The respondent submitted that the applicants sought and were granted leave to file an amended statement of claim on 10 April 2013. At paragraph 55A of that amended statement of claim, the applicants alleged that Pacific Brands intended that the "trade marks" on the shoes Exhibits C through N (albeit that the applicants had since accepted Pacific Brands' accord and satisfaction defence in relation to shoes Exhibits C, D and F) possessed sufficient resemblance to the 3-Stripe Trade Marks as to be likely to deceive or cause confusion. 106 Despite wide-ranging discovery having been made (including in relation to categories specifically directed to any documents that evinced Pacific Brands' assumed intention), there was no contemporaneous documentary evidence of Pacific Brands deliberately manufacturing or ordering products from suppliers which were based upon adidas' iconic 3-Stripe Trade Marks with the intention to deceive consumers or cause confusion. This was entirely consistent with the anodyne "design processes" described by Mr Russell and Mr O'Donnell. 107 The attempt by the applicants to construe the correspondence in relation to the alternate stripe configurations proposed for the Boston Shoe after adidas complained about that shoe (ie once it was in the market place as a Payless product) was chronologically flawed and could not fix an intention to Pacific Brands in relation to its "design process" generally. 108 Given that the notoriety of the 3-Stripe Trade Marks was not a matter of controversy, it was not possible to see how the prior commercial relationship could give rise to any special advantage enjoyed by Pacific Brands with respect to the use of stripes on shoes. 109 The basis for the claim of intention was the "resemblances" between certain of the applicants' shoes and certain of Pacific Brands' shoes. That was, on the one hand a vague allegation. On the other hand, it was a circular argument to claim that physical resemblances that give rise to deceptive similarity can be relied upon to effect the intention to deceive and confuse. 110 At the level of detail, the applicants submitted that the evidence in relation to the respondent's product development as it emerged on discovery, particularly when considered in the light of the position which the respondent was adopting in relation to complaints made by adidas, provided the basis for an inescapable inference that the respondent was doing all it could to stay as close to the 3-Stripe Trade Marks as possible, because it perceived that strategy was to its commercial benefit. 111 The applicants contended for a Jones v Dunkel inference that the evidence of none of Mr Grover, Mr Frank Zheng or Mr Pat Maher would have helped to dispel the inferences from the course of conduct and documents referred to below. They submitted the significance of Mr Grover emerged during Mr O'Donnell's evidence and was supported by the correspondence between the respondent and adidas' solicitors. The strategy referred to below was evidently managed by Mr Grover. 112 The applicants submitted that the respondent's strategy with respect to each of the shoes, Exhibits C-N, had been consistent. This had been to launch shoes with four stripes, variously articulated but with marks as close as possible to the 3-Stripe Trade Marks and, when challenged by adidas, either to say that the shoe was out of stock, or to undertake not to import and sell that particular shoe - but to refuse any broader undertaking. The subsequent design process had then been a series of very incremental changes to the articulation of the four stripes but an insistence on using them, about which the respondent offered no explanation. 113 The applicants' submissions then turned to the design process. The matters outlined, the applicants submitted, gave rise to an inference that the intention of the employees of the respondent responsible for conceiving the design of the Indigo Shoe was to trade off the reputation of adidas in the 3-Stripe Trade Marks by causing confusion between the mark on the impugned shoes and the 3-Stripe Trade Marks. That inference could be more confidently drawn given that witnesses in the respondent's camp, namely current or ex-employees with direct involvement in the design, were not called by the respondent to explain the position: Jones v Dunkel (1959) 101 CLR 298. 114 The applicants concluded by submitting that the respondent had indeed fashioned the above "implement[s] or weapon[s] for the purpose of misleading potential customers". This provides the reliable and expert opinion spoken of in Australian Woollen Mills and applied many times since. 115 The respondent submitted the assertions by adidas were untenable for a number of reasons. Properly analysed, the shoes did not represent a linear evolution. For example: (a) Apollo Shoe - Exhibit C and Indigo - Exhibit D were the first shoes in the chronology and yet could hardly be said to be the "closest" to the 3-Stripe Trade Marks. Indigo Shoe - Exhibit D had four straps of different colours. The stripes on each of these shoes performed a functional purpose, extending in the case of the Apollo Shoe to hold the laces and in the case of the Indigo Shoe to form Velcro fasteners; (b) the Stingray Boot - Exhibit F which was early in the chronology did not have equidistant stripes - the stripes were grouped into two sets of two stripes; and (c) despite adidas' description of the Stingray Black Runner - Exhibit N as the "end point" in the alleged linear evolution due to its curved, tapering stripes, it was introduced before the interconnecting tab was introduced between stripes 2 and 3 of the Boston. 116 The first reference in the tendered documents to the "spacing out" of two pairs of two stripes occurred in correspondence dated 12 December 2007 in relation to the Boston Shoe. This was before Pacific Brands received notice of adidas' claim in relation to the Boston Shoe (late 2008) so it could not be said to be a response to that claim. 117 The insertion of an interconnecting stripe between stripes 2 and 3 of the Boston Shoe was a commercially reasonable solution to the problem posed by having 13,000 pairs of shoes produced by a factory which Payless would not accept after receipt of complaint by adidas. 118 The applicants had repeatedly invited the court to draw inferences in relation to the attempts by Pacific Brands to "move away" from a four stripe mark which may be considered close enough to the 3-Stripe Trade Marks to elicit complaint. Adidas also alleged that Pacific Brands attempted to get as close as possible to the 3-Stripe Trade Marks. It was difficult to see how these allegations could be reconciled. 119 A more logical explanation, the respondent submitted, would appear to be as follows: (a) Pacific Brands was well aware of adidas' 3-Stripe Trade Marks (as Pacific Brands submitted any sports shoe manufacturer in Australia would be); (b) Pacific Brands wanted to exercise its legitimate right to display stripes (including four stripes) on sports shoes which was entirely consistent with how many commodity shoes were decorated, ie stripes operated as a categorisation cue for sports shoes even if they also functioned as a trade mark for adidas (when used as the 3-Stripe Trade Marks as registered); (c) Pacific Brands proffered various undertakings in relation to a very small number of shoes (particularly when considered in the context of the millions of shoes it sold each year) between 2006 and when adidas commenced these proceeding on 18 October 2010). This was not evidence of the strategy adidas contended for but a pragmatic commercial response to episodic shoes that formed a very small part of Pacific Brands business. 120 Mr O'Donnell in cross-examination was taken to correspondence between Pacific Brands and Alleston, a manufacturer in China. That correspondence was evidence of no more than Pacific Brands assisting its client Payless to alter the Boston Shoe with the assistance of one of its manufacturers in the face of adidas' claims of infringement and then a pragmatic response to being left with the stock Payless ordered but of which it ultimately refused to accept delivery. 121 The respondent said that the courts in applying Jones v Dunkel (1959) 101 CLR 298 recognised that an inference may be drawn with greater confidence where a person able to put a true complexion on the facts relied on for the inference was not called in circumstances in which it was reasonable to expect him or her to be called. The rule in Jones v Dunkel did not operate to fill an evidentiary gap in the other party's case. There was nothing in the allegations as to intention or the evidence that these individuals were "required to explain or contradict": R v Burdett (1820) 4 B & Ald 95 at 161-2 (106 ER 873 at 898). The allegations as to intention were first pleaded in the amended statement of claim (although an earlier version of the intention pleading was provided to Pacific Brands' solicitors on 5 April 2013). Subject to leave granted to file Dr Glaser's 18 April 2013 affidavit, Pacific Brands' affidavit evidence was completed on 12 July 2012. 122 As to Mr Grover, he was a current employee and officer of Pacific Brands; and was and is legal counsel for Pacific Brands. There was no evidence that indicated that Mr Grover was in any way involved in the design or selection of the impugned shoes. This was hardly surprising as he is a lawyer, not a designer, businessman or salesman. There was no evidence that Mr Grover was involved in any conduct which gives rise to any finding of intention on the part of Pacific Brands to deceive or confuse any consumers into associating the impugned shoes with Adidas. Further, Mr Grover's views, acting in his capacity as general counsel of Pacific Brands, with respect to adidas' allegations are set out in correspondence with adidas' legal advisors and require no elaboration. 123 The various informal and formal undertakings given by Pacific Brands to adidas in relation to each of the shoes the subject of complaint by adidas prior to adidas commencing proceedings on 18 October 2010 (Exhibits C to N inclusive) were evidence of Pacific Brands' decision to resolve adidas' complaints on pragmatic, commercial terms and not an acceptance of trade mark infringement nor, as adidas contended for, evidence of Pacific Brands' intention to "sail close to the wind". Pacific Brands' decision to provide such undertakings should be considered against the fact that Pacific Brands, at the relevant time, was selling many millions of shoes per annum. 124 As to Mr Frank Zheng, he was no longer an employee of Pacific Brands. There was no evidence that Mr Zheng was involved in any conduct which gave rise to any finding of intention on the part of Pacific Brands to deceive or confuse any consumers into associating the impugned shoes with adidas. 125 As to Mr Pat Maher, he was no longer an employee of Pacific Brands. There was no evidence that Mr Maher was involved in any conduct which gave rise to any finding of intention on the part of Pacific Brands to deceive or confuse any consumers into associating the impugned shoes with adidas. 126 Adidas' late assertion of Pacific Brands' intention to "sail close to the wind" was a desperate attempt to try and shore up its hopeless application for a permanent injunction with respect to four stripes on the sides of shoes. 127 Turning to the applicants' case on intention, the respondent submitted that adidas' intention case was fundamentally tied to an alleged "Respondent's Strategy" (Strategy). The Strategy was not supported by evidence but built on assumption and inference. The emotive language deployed was an unsuccessful attempt to fill the gaps in the evidence. 128 Setting aside the logical conclusion that if there was no Strategy there was no Strategy to manage, the assertion that it was evident that Mr Grover managed the Strategy was on no view of the documents referred to made out. His involvement in relation to stripe placement was confined to providing an opinion about the insertion of a horizontal tab into the Boston shoe to deal with the fact that Pacific Brands was left with 13,000 pairs of shoes after Payless cancelled its order. 129 Pacific Brands proffered various undertakings in relation to a very small number of shoes (particularly when considered in the context of the millions of shoes it sold each year) between 2006 and when adidas commenced these proceedings on 18 October 2010. This was not evidence of the Strategy adidas contended for but a pragmatic commercial response to episodic shoes that formed a very small part of Pacific Brands' business. There was no basis to cast Pacific Brands' refusal to give a broad undertaking regarding four stripes in any light other than its appreciation that adidas had 3 stripe marks which do not confer rights regarding the use of four stripes generally, particularly in circumstances where Pacific Brands considered its own use of four stripes as decorative or functional and not deceptively similar to the 3-Stripe Trade Marks. 130 The insertion of the tab in the Boston Shoe was not properly characterised as "agonising over the shift from the Boston (Exhibit G) to the Apple Pie and Stingray runners (Exhibit H, Exhibit I)". There was no design evolution occurring that accorded with any prevailing strategy. It was, at first, Pacific Brands assisting its client Payless to alter the Boston Shoe, with the assistance of one of its manufacturers, in the face of the adidas' claims of infringement - the various options were devised to come up with something that Payless would accept, not any evidence of Pacific Brands trying to "sail close to" the 3-Stripe Marks. The correspondence then recorded a pragmatic response from Pacific Brands to being left with the stock Payless ordered but ultimately refused to accept delivery of. 131 No letter of demand was ever sent to Pacific Brands in relation to the Airborne Shoe prior to the current proceedings being commenced. A letter of demand was sent to Pacific Brands' retailer, John's Shoes, and upon notification of that letter, Pacific Brands assisted adidas with its enquiries. In a letter dated 16 September 2010, Pacific Brands confirmed to adidas' legal representatives that it was the supplier of Airborne, it had not imported the shoe since about 2006 or earlier and had no intention of doing so in the future. The letter concludes "In the circumstances, I trust that we can finalise this matter on this basis". No further correspondence was received from adidas' legal representatives until the current proceedings were commenced on 18 October 2010. Accordingly, there was no basis for the statement that this was "in keeping with its strategy". 132 Approaching these issues chronologically, my findings are as follows.

[19]

Apollo Shoe - Exhibit C and the Indigo Shoe - Exhibit D 136 More immediately relevant correspondence is to be found beginning with a letter dated 13 June 2006 from the applicants' solicitors. That letter concerned what is now referred to as the Apollo Shoe - Exhibit C and the Indigo Shoe - Exhibit D. The letter requested that Pacific Brands Footwear Pty Ltd immediately cease supplying those goods "and any other footwear goods in relation to which any 3-stripes mark, or any mark substantially identical or deceptively similar to any 3-stripes mark is used without the licence of Adidas" and to deliver up any infringing goods et cetera. 137 By fax dated 20 June 2006 Mr Grover, general counsel and company secretary of Pacific Brands said he was endeavouring to obtain samples of the two shoes concerned. He said "You will appreciate that we supply over 20 million pairs of footwear." 138 Further correspondence ensued in June, July, August and September 2006 about these two shoes. 139 Mr Grover said that Pacific Brands no longer held any stock of the Apollo or Indigo Shoes. He offered to undertake not to supply any further pairs of either the Apollo or Indigo Shoes. 140 As to the Apollo Shoe, Mr Grover noted that the width of the four stripes where they attached to the shoe lace was approximately 8 centimetres and the width of the stripes where they met the sole was approximately 11 centimetres: the stripes were therefore spread along a horizontal distance approximately 40 percent larger at the bottom than the top. As such the stripes could not be said to be parallel. He also contended that the stripes had the functional purpose of securing the shoe laces and had not been used to brand shoes. He said that Pacific Brands distributed approximately 22 million pairs of shoes each year. 141 He said "we are not prepared to give undertakings which go beyond your client's legal rights. Whether or not a four stripe device can ever infringe your client's intellectual property rights can only be considered on a case by case basis." The solicitors for the applicants disagreed with these views. 142 After further vigorous correspondence the matter was resolved on the basis that Pacific Brands agreed, without any admission or concession, to immediately stop selling and not to again sell in Australia further pairs of the footwear referred to as the Indigo and Apollo Shoes. Pacific Brands also provided the names of the suppliers of the Indigo and Apollo footwear, being two companies in the Peoples Republic of China. Mr Grover said that 28,653 pairs of the Indigo Shoes and 15,300 pairs of the Apollo Shoes were imported into Australia and sold by Pacific Brands. I note that in his letter dated 3 August 2006 Mr Grover stated his concern that the original undertaking sought by the solicitors for the applicants was far too broad. He said that Pacific Brands was aware of the 3-Stripe Trade Marks and had no intention of infringing it. 143 This deals with the Apollo Shoe - Exhibit C and the Indigo Shoe - Exhibit D, these matters being resolved by September 2006. From this correspondence I would draw no inference of a strategy. In my view it was hard-nosed negotiation resulting in a commercially sensible compromise. Neither side's position was without merit.

[20]

Boston Shoe - Exhibit G 144 Next is an email and other correspondence about a "Boston" shoe. This begins in May 2007. A quantity of Boston-L (Silver/Pink); and Boston-C (Grey/Black/Cobalt) was shipped in June 2008. By letter dated 4 February 2009 Payless Shoes wrote to Pacific Brands referring to "Boston" purchased from Global Trading being withdrawn from sale at the request of the solicitors for the applicants. 145 It appears that there were four styles of Boston Shoe involved: Boston-WP (White/Pink); Boston-Y (Navy/Yellow); Boston-L (Silver/Pink); and Boston-C (Grey/Black/Cobalt). A letter dated 17 October 2008 from the solicitors for the applicants to Payless Shoes Pty Ltd requested that that company immediately cease supplying what appears to be the Boston Shoe - Exhibit G (and another shoe with three stripes) and any other footwear goods in relation to which any 3-stripes mark, or any mark substantially identical with, or deceptively similar to, any 3-stripes mark, was used without the licence of adidas. 146 An email dated 4 November 2008 placed an immediate hold on production of the outstanding orders, those which had not been shipped, for the Boston Shoe. This was in light of adidas possibly taking legal action against Payless. These orders covered each of the four styles of Boston Shoe to which I have referred. 147 By an email dated 4 November 2008, the designer/manufacturer said that the three orders for the Boston-L, Boston-WP and the Boston-Y had been finished but in relation to two orders for the Boston-C, it was possible to change the side stripe "as attached": "pls cfm if you should change it to avoid legal problem." By an email dated 12 November 2008 Pacific Brands said in relation to the Boston "It's a problem now simply because adidas have noticed it now and are making it a problem legally." 148 Further email communications ensued in November 2008 between Pacific Brands and Payless Shoes. Payless Shoes' commencing position was that it did not wish to accept delivery of the goods the subject of the five orders and asked Pacific Brands to make immediate and appropriate arrangements to ensure that they were not shipped or delivered to Payless Shoes in any way. 149 Different styling options were explored as between Pacific Brands and the manufacturer including moving the centre stripes further apart so that in effect there were two pairs of stripes separated by a larger gap in the centre, or for the two centre stripes to be made to appear shorter by placing the lower part of those stripes under contrasting material. Another proposal was for five stripes. Other proposals were for one or more cross stripes. Once it was ascertained whether the factory could make the balance of the orders in one of those ways Pacific Brands would ask Payless Shoes about accepting the orders. 150 By email dated 25 November 2008 it appears there was agreement with extra stripes as long as there was a significant price reduction. 151 By email dated 6 January 2009 the suggestion was made that by adding a horizontal piece into the middle of the stripes, the shoes, of which there were 13,000 pairs, could be sold without any problems. Mr Grover agreed. 152 Perhaps out of sequence there is an email dated 28 March 2011 from Pacific Brands seeking confirmation that the trim could be changed on all five outstanding orders. Similarly out of sequence is a further email bearing the same date. The attached photos are date stamped 19 November 2008. 153 A letter dated 5 November 2008 from the solicitors for Payless stated that Payless bought the Boston Shoe - Exhibit G from Pacific Brands and the question of infringement of the trade mark was primarily a matter between adidas and Pacific Brands. The letter said that the Boston Shoes did not have any resemblance to an adidas shoe, they were made of very different materials, were of a very different style and had substantially different prices. The stripes were not correctly described as four stripes but as two sets of two stripes. 154 A further letter from the solicitors for the applicants to Pacific Brands dated 25 November 2008 demanded that Pacific Brands immediately cease supplying the Boston Shoe and give further undertakings. By letter dated 28 November 2008 Pacific Brands restated that it was not the importer of the footwear and had no stocks left. There was further correspondence between the lawyers about the Boston Shoe dated 18 December 2008, 5 January 2009 and 26 March 2009.

[22]

Stingray Boot - Exhibit F 159 As to the Stingray Boot - Exhibit F, a letter dated 17 October 2008 from the solicitors for the applicants to Evershine International Pty Ltd requested that that company immediately cease supplying those goods and any other footwear goods in relation to which any 3-stripes mark, or any mark substantially identical with, or deceptively similar to, any 3-stripes mark, was used without the licence of adidas. 160 A reply from Mr Grover, Pacific Brands dated 31 October 2008 stated that only 1344 pairs of the Stingray Boot were imported by Pacific Brands in 2007, Pacific Brands no longer held any stock of the shoe and it was not an ongoing style. The letter said that Pacific Brands would request Evershine International that they withdraw from sale any remaining pairs of the boot. 161 By letter dated 3 November 2008 the solicitors for the applicants replied that Pacific Brands' proposal was entirely inadequate and demanded an undertaking, copies of the relevant documentation and damages or an account of profits. A further letter from the solicitors for the applicant dated 25 November 2008 demanded that Pacific Brands immediately cease supplying the Stingray Boot and give further undertakings. 162 A form of undertaking was proffered by Mr Grover of Pacific Brands under letter dated 28 November 2008. Ultimately, by letter dated 5 January 2009 and by undertaking of the same date the matter was resolved. Pacific Brands acknowledged that the stripe markings applied to the Stingray Boot were deceptively similar to each 3-stripes mark and any dealing by Pacific Brands in that footwear constituted an infringement. It also undertook to pay reasonable damages or an account of profits. That amount was agreed to be A$2,613.51 and the matter was finalised in early April 2009. 163 I note that in February 2009 there was a request to make 14 pairs of the Stingray Boot with a request to make a sample. I also note that by their solicitor's letter dated 1 December 2009 to Pacific Brands the applicants said that a Stingray Boot was bought in Campbelltown on 12 September 2009. That aspect of the matter was resolved by the provision by Pacific Brands of a statutory declaration under cover of a letter dated 17 December 2009.

[27]

Stingray Black Runner - Exhibit N 175 In relation to the Stingray Black Runner - Exhibit N, an email dated 5 September 2008 from Pacific Brands to an apparently Chinese designer/manufacturer referred to a colour sample being received. It does not appear to have been the subject of a letter of demand. 176 On those facts I do not find that the respondent was doing any more than asserting its rights as it saw them. It reached a commercial compromise with the applicants of the claims made by the applicants. The respondent refused to give the further undertaking sought by the solicitors for the applicants and it appeared that the applicants accepted that position. 177 As to the communications by the respondent relied on by the applicants to establish intention, again in my view they amount to no more than evidence of the respondent seeking to move away from the applicants' trade marks when the issues were brought to its attention. 178 Intention therefore does not carry the matter further in the sense referred to in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641. No doubt an intention to infringe would be good evidence confirming the fact of infringement and the likelihood of deceptive similarity but if, as seems to be put here by the applicants, the intention was to "sail close to the wind", that is, to come close to but to avoid infringement, intention does not assist at a general level. In addition, a strategy must be borne out or supported by the parts relied on: on the facts of this case in my view the respondent's strategy as identified and relied on by the applicants was not so supported. 179 I reject the applicants' invocation of Jones v Dunkel (1959) 101 CLR 298 on the basis that I do not draw the inference that the intention of the employees of the respondent responsible for conceiving the design of the impugned shoes was to trade off the reputation of adidas in the 3-Stripe Trade Marks by causing confusion between the mark on the impugned shoes and the 3-Stripe Trade Marks. Also, and independently of that conclusion, I accept the submissions of the respondent that in the case of Mr Grover there was no basis for suggesting that he could give relevant evidence and, in the case of Mr Frank Zheng and Mr Pat Maher, they were no longer in the camp of the respondent: it was open to the applicants to call them to give evidence.

[28]

The survey evidence 180 The applicants relied on an internet survey undertaken in November 2011. The online survey was conducted by Mr David Briggs, the principal of Galaxy Market Research. 181 The survey involved pictures of three of the shoes in question in the proceedings being the Apple Pie Runner - Exhibit H, referred to in the survey as Leg 1; the Airborne Shoe - Exhibit E, referred to in the survey as Leg 2; and the Stingray Shoe - Exhibit K, referred to in the survey as Leg 3. The survey also involved a picture of the Leg 1 shoe, the Apple Pie Runner - Exhibit H, from which picture the stripes had been digitally removed. This picture was referred to as Leg 4. 182 Four hundred people were shown an image of a photograph of one particular shoe with four stripes on it (Leg 1), another 400 people were shown an image of a photograph of another shoe with four stripes on it (Leg 2) and another 400 people were shown an image of a photograph of a third shoe with four stripes on it (Leg 3). A fourth group of 400, in the control leg, were shown an image of a photograph of one shoe with no stripes (Leg 4). That was all they saw: they did not see the physical shoe; they were not shown the shoe to indicate whether or not it had any other branding or marking on it; and they did not see any promotional or point of sale material around the shoe. 183 The survey participants were drawn from a database of individuals compiled by MyOpinions, a firm specialising in the collation and management of a database of Australian persons from whom research companies can draw survey participants. Participants were paid a small fee for each survey they completed. The sample in each of the four legs was quota controlled on the basis of age, sex and area. 184 The steps for conducting the survey were: (a) Galaxy provided the quota sheet to MyOpinions, specifying the location, age and sex of the respondents that it required; (b) Galaxy uploaded the survey onto their server; (c) MyOpinions dispatched emails to their panel members inviting them to participate in the survey. The email included a hyperlink which when clicked took the panel member to the Galaxy server where they completed the survey; and (d) Galaxy monitored the responses received against the quota sheet and once the quota sheet had been achieved, the survey was closed. 185 The survey involved the following: A1. Where do you live in Australia? A2. How old are you? ASK IF AGED 18 - 64 YEARS… A3. Are you male or female? SHOW IMAGE B1. Who do you think makes this shoe? B2. Why do you say that? Please be specific and explain the reasons for your answer in question B1 C1. When did you last buy a pair of sports shoes? ASK IF BOUGHT SPORTS SHOES IN LAST 3 YEARS… C2. Thinking about the last pair of sports shoes that you bought. How much did you pay for these sports shoes to the nearest dollar? If you are unable to recall the exact amount please enter your best estimate or else '000' if you are really not sure 186 I set out in an appendix to these reasons the tabulated results of the survey. 187 Messrs David Briggs and David McCallum, called as experts by the applicants, and Mr Sergeant, called as an expert by the respondent, agreed on seven points and differed on two. The agreed points were as follows: (a) The research fell within the general range of currently-accepted and widely-used standards for commercial research in Australia. (b) However, with regard to its sampling method, the survey was conducted in a way that departed from the theoretical statistical ideal in a number of important respects. (c) The level of accuracy of the resulting estimates needed to be adjusted to take account of (a) the fact that differences between estimates have a higher degree of variance than the estimates themselves, and (b) the various departures from the statistical ideal in the methodology. (d) That a design factor needed to be applied to the results and that a design factor of 2.0, while arguable, was reasonable in the circumstances. This meant that the standard deviations and confidence intervals should be stated as being twice as large as those derived assuming a theoretically perfect methodology. (e) That the application of a design factor to the estimates derived from the survey allowed only for random error due to sampling efficiency and made no allowance for any systematic errors that may bias the results in a particular direction, (i.e. design factors can 'account' for increased variability due to design but cannot correct for any inherent biases in any specific estimate derived). (f) That there was some tendency on the part of consumers to attribute any design to a leading brand such as adidas and that some form of control was needed in order to measure this tendency. (g) That, having applied a design factor adjustment of 2.0, the survey indicated that each of the test leg images was attributed more to adidas than the unmarked control leg image and that this difference was almost certainly not due to chance. 188 The points of difference were: (a) Messrs McCallum and Briggs contended that the image used in the control leg was appropriate and that the estimate derived from it could be subtracted from that found in the test leg to produce an estimate of the extent to which misattribution of the images of the respondent's shoes used in the test leg to adidas was due solely to the designs used by the respondent. (b) Mr Sergeant contended that the control leg (because it used an image of an unmarked shoe) provided an underestimate of the extent to which a shoe bearing a design that was neither similar nor dissimilar to adidas would be attributed to adidas. Mr Sergeant contended that the image used, being unmarked, strongly suggested that it was not made by a major brand. 189 In relation to the survey and the use that should be made of it on the question of whether the respondent has used as a trademark a sign that was deceptively similar to the applicants' registered trademarks, the applicants submitted the purpose of a survey in litigation of this type was to assist the court in determining - as a matter of impression - the likely response of a not insignificant number of consumers. It was not relied on to prove a mathematical percentage of persons who will be caused to wonder whether there is a connection with adidas. 190 The statistically significant results of the survey showed, after deduction of the control results, 14%, 34% and 19% of people who answered adidas on seeing the respective photos. This was a sound basis, the applicants submitted, upon which, inter alia, the court can perform its exercise of judgment. 191 It was submitted that judges of the Federal Court of Australia do not necessarily possess all the qualities of the average consumer. 192 Mr Briggs' evidence was that the sample size of 400 people for each leg allowed for accurate extrapolation of the survey data and for conclusions to be drawn that were representative of the Australian population. The survey also included, as Leg 4, a "control leg", which asked the above question in relation to a sports shoe with no visible markings. That was to control for the effect of participants merely "guessing" that the shoe came from adidas because of adidas' fame in the market, without that answer being referable to any visual cue from the markings on the shoes. The percentage of participants responding "adidas" to the blank shoe was subtracted from the "adidas" responses to the other legs so as to remove the "guessing" effect from those other legs. The raw results obtained from this process were then weighted so as to be representative of the Australian population in the manner described in detail in Mr Briggs' affidavit evidence. 193 Following a joint experts meeting held between Mr Briggs, Mr Sergeant and Mr McCallum on 27 February 2013, the applicants submitted there was an important measure of agreement as to the statistical validity of the results of the survey. In the joint report, the experts agreed that a "design factor adjustment" was necessary to take account of random errors due to sampling inefficiency. Mr McCallum did this in the table set out at paragraph 56 of his affidavit. The joint expert report said: That, having applied a design factor adjustment of 2.0, the survey indicates that each of the test leg images is attributed more to adidas than the unmarked control leg image and that this difference is almost certainly not due to chance. 194 In his oral evidence, Mr Sergeant agreed that the criticisms in his affidavit relating to the survey panel not being drawn from the whole population (because it was a proprietary panel), and the fact only 15% of members of panels chose to participate, together with issues in relation to weighting had been accounted for by the design factor of 2.0. He made four further criticisms of the survey which he contended had not been dealt with by the "design factor", namely: (a) the age range of 18-64 chosen for respondents; (b) the allegedly leading nature of the first question; (c) "ecological validity"; and (d) the validity of the control. 195 I propose to give the survey little weight, in the sense that I shall take the results of it into account as a point of comparison with my own conclusions in relation to each shoe but I shall not use the results to alter the conclusion to which I would otherwise have come about each shoe. My reasons for taking this approach are as follows. 196 First, I do not think that the survey sufficiently replicated or corresponded with the experience of a consumer in the marketplace. The experts referred to this as "ecological validity" but the point is the same. I am not persuaded that to look online at a photograph of a shoe in the context of these registered trade marks and the allegedly infringing uses sufficiently replicated the requisite exercise which is to look at the use of the marks on the shoes in question in context. 197 The respondent submitted that the survey design lacked ecological validity in using digitally-manipulated on-screen pictures of shoes entirely removed from the natural context, meaning the retail environment. 198 Mr Briggs accepted that it would be a different experience in the retail environment. He accepted that the survey was artificial compared to the in-store experience although he maintained that that did not detract from the objective of assessing association with a particular design feature. 199 I do not accept, for circularity of reasoning, Mr Briggs' evidence that ecological validity is "a furphy in the sense that if ecological validity was an important consideration, then 99 percent of all research that's ever conducted would not be appropriate". 200 Mr McCallum also accepted that the in-store experience the consumer will have when purchasing shoes and looking at a photograph as part of an online survey were two different things because they would see the shoe in the store and they would observe a lot more about a particular shoe which they would not perceive by being shown a photograph. 201 Dr Stavros also accepted in cross-examination that the process of buying shoes was very different from seeing photographs in an online survey and the online survey was different to someone walking into a store and purchasing a pair of shoes. He added that the survey was not trying to sell shoes but was merely trying to understand people's reactions. 202 Mr Sergeant's evidence about the survey lacking ecological validity was that the presentation of the digitally-manipulated on-screen pictures of footwear was artificial and was one of the matters that made it questionable whether the results could be validly extrapolated to the retail environment. Mr Sergeant was not directly cross-examined about his opinion that the survey was flawed due to the lack of ecological validity. 203 Dr Glaser was of the same opinion, that is that internet surveys were only suitable for certain research topics but an internet-based survey such as the one conducted by the applicants lacked the ecological validity necessary to assess likely consumer behaviour in relation to a product. Showing research participants a photograph of a product out of its natural context was likely to produce different results to a more qualitative research method. Dr Glaser was not directly cross-examined about his opinion that the survey was flawed due to the lack of ecological validity. 204 It follows that I do not accept the applicants' submission that it was the very artificiality of the survey - its lack of "ecological validity" - that was an advantage because it focused attention on the impugned marks and not on "added matter" or extraneous "context". 205 Second, and related to my first reason for giving the survey little weight in the sense I have explained, the question "Who do you think makes this shoe?" suggested to the participant that he or she ought be able to discern the origin of the shoe from the photograph and suggested an association to decoration and the origin. I accept the respondent's submission that the question would lead to an over-attribution of the shoes to leading brands because the participants were asked to nominate a maker based on what was presented to them and to consider a matter which they may not have otherwise done. 206 I note that when a more general question was put in the pilot survey, "What is your reaction on seeing this shoe?", the association between the three shoes of Pacific Brands and adidas was very low, being six people out of 300 participants. I prefer Mr Sergeant's evidence and the evidence of Dr Glaser on this point as more directed to how a consumer might react in the marketplace. 207 Mr Sergeant's evidence was that there would have been utility in including this question in the survey because it did not presuppose a link between the decoration and the identity of the manufacturer. Mr Sergeant was not challenged about this opinion. Dr Glaser described the pilot survey form as an open ended question. He said that this non-leading question had resulted in six people out of 300 participants referring to adidas and the rest of the responses reflecting categorisation cues. Dr Glaser was of the opinion that the question asked in the final survey: … frames the survey around a presupposition that something in the picture signifies the source of the product depicted. It makes assumptions that there is a shoe maker that is identifiable on the basis of the picture. In my opinion, based upon my experience in designing, conducting and analysing surveys, such a leading question renders the results fatally flawed because the participants have been lead to their answer, rather than providing natural observations. 208 Dr Glaser's evidence was that the effect of the question was to make "all that follows irrelevant and erroneous". 209 Mr Briggs said that without being given some context as to what the participants in the survey should be looking at "they merely trot out things about the shoe rather than anything that is unique or identifiable about it" but this, in my view, is to restate the problem rather than to answer it. 210 Third, for completeness, in my view the "control leg" of the survey led to an unquantified under-attribution of the adidas brand to the unmarked shoe in that leg, for the reasons given by Mr Sergeant and Dr Glaser. The leg did not adequately control for the effect of survey participants merely "guessing" that the shoe came from adidas due to the fame of adidas in the market as it did not operate consistently for all participants. 211 The point being made by Mr Sergeant, which I accept, was that an unmarked shoe did not just take account of guesses, it actually signalled to some participants in the survey that the shoe could not be a major brand. Plainly it did not do that for all people but the particular stimulus that was used directed enough people away from major brands to make it problematic. 212 I note that, in my view, there was no flaw in the survey flowing from the age range of the participants in the survey.

[29]

The impugned shoes 213 I now consider each shoe in turn. While I accept that for the purposes of submissions it is convenient to analyse each of the shoes in a cumulative or cross-referential way, that is not, in my opinion, the way in which the Court should approach the question. It was not suggested that the effect of the respondent's shoes would somehow be aggregated in the mind of the consumer. Apart from the question of intention by which the applicants seek to link the respondent's shoes, each of the respondent's shoes in issue requires separate consideration. 214 My conclusions are shortly expressed because, as Dixon and McTiernan JJ said in Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641 at 659 the main issue is a question never susceptible of much discussion: it depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs. 215 I refer also to Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 at 377 where the Full Court said the decision whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense. Although it is a matter to be decided by the trial judge, it is a "jury question" on which the judge is entitled to give effect to his own opinion as to the likelihood of deception or confusion and in doing so is not confined to the evidence of the witnesses called at trial. 216 I also note the caveat expressed by the Full Court in Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 at [93], with reference to the concept of an "essential feature" of the registered trade mark notwithstanding that the statutory language did not explicitly incorporate such a concept, that the court's duty is ultimately to the statutory language rather than to the complexities brought forth by many years of decisional authority. 217 In the present case the dominant visual impression of the applicants' trade marks is not just stripes but three stripes in a different or contrasting colour to the footwear. Senior Counsel for the applicants referred to three parallel equidistant stripes of equal width. 218 I refer here also to the applicants' submission that the fame of the mark tends in favour of a finding of deceptive similarity. At a general level I agree. I take into account in my findings on whether the respondent has used a sign that is deceptively similar to the applicants' trade marks that in assessing a consumer's recollection of a mark, the mark's notoriety is relevant. 219 I do not accept, contrary to the respondent's contention, that the fame of the mark has the consequence in the present case that a four stripe mark could never be deceptively similar to the applicants' trade marks. Much must depend on the mark in question. On this basis I distinguish, with respect, the approach of Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 at [97] in that I accept that the average consumer would not have forgotten the applicants' trade marks but I do not assume that the average consumer would perfectly recollect the number of stripes. 220 Having considered the issue generally, I do not address the applicants' submissions as to the fame of their marks separately in relation to each shoe. 221 The parties differed in their approach to the scope of the relevant context when considering the question of "deceptively similar". Reference was made to what Kitto J said in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 and to what Dixon and McTiernan JJ said in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 657-658 and to more recent authorities, in particular Global Brand Marketing Inc v YD Pty Ltd (2008) 76 IPR 161 at [99]. 222 In my opinion, the issue being one of fact, what the relevant context comprehends must vary with the marks in question, to what those marks are applied, and the circumstances in which the marks will be observed and compared. 223 On the present facts I do not give weight to the relative prices of the applicants' shoes and the respondent's or to the different stores in which they may be found or to the character of the probable purchasers because the evidence does not establish any clear differentiation between the two when making the required comparison of the marks. 224 On this factual basis I distinguish the scope of the matters taken into account in Global Brand Marketing Inc v YD Pty Ltd (2008) 76 IPR 161 at [99]. 225 On the facts of the present case, I give greatest weight to the marks being used on shoes and to a purchaser of the respondent's shoes seeing them in the setting of a store and being able to look at them in that setting.

[32]

Airborne Shoe - Exhibit E 233 The applicants' submissions in relation to this shoe were that it bore a simple four stripe mark, without embellishment, and had the following essential features of the applicants' trade marks: (a) oblique slanting parallel stripes, equally spaced and of equal width; (b) the stripes ran from the lacing area of the shoes to the instep area of the shoes; (c) the stripes ran up from the back and bottom of the shoe at the instep towards the top and front of the shoe at the laces; (d) the colour of the stripes contrasted to the colour of the remainder of the shoe; (e) the stripes were at a relatively steep rake, but were less than vertical; and (f) the direction of the parallel stripes ran up from the back of the shoe at the instep towards the front of the shoe at the laces. 234 As to intention, the applicants' submissions were that the inference of intention to trade off adidas' reputation in relation to the Airborne Shoe was overwhelming, being marketed in 2006 at around the same time as the Apollo Shoe and the Indigo Shoe and because the Airborne Shoe was also a copy of the shoe marketed by adidas known as the Superstar Shoe - Exhibit A1. 235 In my opinion, this shoe is deceptively similar to the applicants' trade marks. I note in particular the parallel equidistant stripes of equal width (with blue edgings) in a different or contrasting colour to the footwear, running from the lacing area to the instep area of the shoes. 236 In this instance, in my opinion, although the four stripes, in terms of number, tend in the opposite direction, these features to which I have drawn attention have the result that there is a real, tangible danger of confusion occurring, beyond a mere possibility, and a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. 237 I do not base my conclusion on any overarching intention on the part of the respondent, as contended for by the applicant. 238 I note that this shoe was a direct subject of the survey but I have come to my conclusion without giving weight to the results of the survey. 239 The applicants have established infringement of the adidas trade marks in relation to the Airborne Shoe - Exhibit E. 240 I note there were limited assurances with respect to this shoe. In a letter dated 16 September 2010, Pacific Brands confirmed to adidas' legal representatives that it was the supplier of Airborne to John's Shoes; it had not imported, supplied or sold the shoe since about 2006 or earlier; and had no intention of doing so in the future. The letter stated that neither John's Shoes nor Pacific Brands had any stock of the product in its possession. The letter concluded: "In the circumstances, I trust that we can finalise this matter on this basis". No further correspondence was received from adidas' legal representatives until the current proceedings were commenced on 18 October 2010.

[34]

Boston Shoe - Exhibit G 244 The applicants' submissions in relation to this shoe were that the Boston Shoe contained two variations upon the basic four stripe mark as seen in the Apollo Shoe, namely: (a) the inclusion of panels in the shoe of a similar colour to the stripes (black or close to black), and achieving the contrast between the stripes and the remainder of the shoe by a stitched in element of contrasting colour (white) which extended behind the stripes; and (b) a very slight variation in the spacing between the second and third stripes such that the second and third stripes were placed slightly further apart than the first and second stripes or the third and fourth stripes, so as to very slightly vary the perceived spacing as compared with the 3-Stripe Trade Marks. 245 As to the inclusion of panels, the applicants submitted that whilst the stitched-in white element added an additional element to the four stripes, it did not detract from the overall similarities between those four stripes and the 3-Stripe Trade Marks, in particular in relation to: (a) oblique slanting parallel stripes of equal width; (b) contrast between the stripes and the remainder of the shoe; (c) the stripes running from the lacing area of the shoes to the instep area of the shoes; (d) the stripes running up from the back and bottom of the shoe at the instep towards the top and front of the shoe at the laces; and (e) the stripes being at a relatively steep rake, but less than vertical. 246 As to the very slight variation in the spacing, the applicants submitted the variation in spacing was so slight as to be not noticeable except on close inspection: it did not change the overall impression created by the stripes from one group of four stripes to two groups of two stripes as the respondent had argued in the past. 247 Further, the applicants submitted, imperfect recollection of the 3-Stripe Trade Marks was the touchstone. Thus, the essential vice of the basic four stripe mark, namely that it contained the 3-Stripe Trade Marks as a subset, and added one further stripe which itself contained memorable features of the 3-Stripe Trade Marks, was still present. That vice was not overcome by the addition of the further elements. 248 In the applicants' submission, whilst the Boston Shoe was not directly sourced by the respondent from the manufacturer, the respondent arranged the importation of the Boston Shoe by one of its customers, Payless Shoes Pty Ltd. Thus, the inferences of intention which arose from the colourable variations applied to the basic four stripe mark, which appeared on shoes previously imported by the respondent, may be imputed to the respondent. 249 The Boston Shoe was not itself the subject of the survey. However, the applicants submitted, both the Apple Pie Runner, and the Stingray Shoe, which were the subject of the survey, contained a similar variation between the spacing of the second and third stripes. There was therefore objective evidence that the variation of slightly increasing the spacing between the second and third stripes did not remove the potential for deception or confusion. 250 My assessment of this shoe is that there are four stripes rather than three and an obvious slightly wider gap between the second and third stripes. That is the first point. I do not conclude that there are two groups of two stripes. In addition, the inclusion of panels in the shoe of a similar colour to the stripes (black or close to black), and the stitched-in element of contrasting colour (white) extending behind the stripes, mean that as a matter of impression there is no deceptive similarity with the applicants' trade marks. There is no sufficiently clear impression of the stripes forming a contrast to the basic colour of the shoes or being a colour different from that of the article of footwear to which the stripes were applied. 251 I do not accept the applicants' submission that the design contained the 3-Stripe Trade Marks as a subset, and added one further stripe which itself contained memorable features of the 3-Stripe Trade Marks. 252 Whatever might otherwise be the persuasiveness of the survey, the feature of lack of contrast, at least, does not permit the results of the survey to be extrapolated to this shoe in the manner contended for by the applicants. 253 I am not persuaded by the applicants' submissions as to the respondent's intention: they have insufficient foundation in the chronology of the dealings between the parties. 254 In my opinion, the use of the mark on this shoe does not infringe the applicants' trade marks.

[35]

Apple Pie Runner - Exhibit H 255 The applicants' submissions in relation to this shoe were that it contained two further very slight variations on the basic four stripe mark as seen in the Apollo Shoe: (a) a small horizontal bar linking the second and third stripes. This was probably not viewed as part of the four stripe mark; and (b) a slight increase in the relative spacing between the second stripe and the third stripe as compared with the 3-Stripe Trade Marks. 256 Those variations were so slight, the applicants submitted, as to be not noticeable (or not noticeable as part of the mark being used) on anything but a very close inspection, which was not the proper standard to apply. Further, even if discernible, those variations did not detract from the overall similarities between the mark on the Apple Pie Runner and the essential or memorable features of the 3-Stripe Trade Marks, including: (a) oblique slanting parallel stripes of equal width; (b) the stripes running from the lacing area of the shoes to the instep area of the shoes; (c) the stripes running up from the back and bottom of the shoe at the instep towards the top and front of the shoe at the laces; and (d) the stripes being at a relatively steep rake, but less than vertical. 257 Like the Boston Shoe, the applicants submitted, the Apple Pie Runner still contained the essential vice of the basic four stripe mark, namely that it contained the 3-Stripe Trade Marks as a subset, and added one further stripe which itself contained essential or memorable features of the 3-Stripe Trade Marks. That vice was not overcome by the addition of the slight variations. 258 As was the case with the Boston Shoe, the applicants submitted, the colourable variations adopted in relation to the Apple Pie Runner assisted in discerning the respondent's intention. This was a clear case of intending to "sail close to the wind". Again, it was notable that the respondent's intention to use four stripes was remarkably resilient, and resort was being had to what may be seen as otherwise curious design features, such as the horizontal bar, to enable the four stripe mark to continue to be used. 259 The applicants submitted that the Apple Pie Runner was marketed by the respondent in circumstances where there had by that stage already been correspondence between the solicitors for adidas and the respondent in relation to the Apollo Shoe, the Indigo Shoe, the Stingray Boot, and the Boston Shoe. At the same time as the Apple Pie Runner was being marketed, the Stingray Runner, the Basement Shoe, and the Stingray Shoe were also being marketed by the respondent. 260 As to the survey, the Apple Pie Shoe was a specific subject of the survey. The applicants submitted that after correcting for guesses, at least 14% of respondents considered that the Apple Pie Shoe was made by adidas, rising to 20% of the respondents amongst those who had bought sports shoes in the last year. Further, 40% of those respondents identifying adidas stated that a reason for their answer was "looks like adidas" and 42% of them stated that a reason for their answer was "the stripes/lines". Those results, the applicants submitted, were compelling evidence that a significant proportion of consumers were likely to be deceived or confused by the four stripe mark on the Apple Pie Shoe. 261 My assessment of the shoe is, first, that it has four stripes rather than three. Also, there is a slightly wider gap between the second and third stripes which is readily noticeable. There is also a tab, being a bridging strip running horizontally between the two pairs of stripes, which is immediately noticeable. 262 Cumulatively, these features substantially modify what a person in the market place would take from the impression based on recollection of the applicants' trade marks and the features of them when considering this shoe. In my opinion a real, tangible danger of confusion has not been made out by the applicants. In my opinion, this shoe does not infringe the applicants' trade marks. 263 I am not persuaded by the applicants' submissions as to the respondent's intention: they have insufficient foundation in the chronology of the dealings between the parties, particularly in light of my conclusions about the majority of the shoes on which the applicants rely in this respect. I do not regard the variations, so called, as "colourable". 264 I do not accept the applicants' submission that the shoe contained the 3-Stripe Trade Marks as a subset of the four stripes and merely added one further stripe which itself contains essential member all features of the 3-Stripe Trade Marks. 265 I note that this shoe was the direct subject of the survey. I have already stated my conclusions about the weight I give to the survey. The survey does not outweigh the conclusion I have reached by looking at the mark on the shoe itself.

[36]

Stingray Runner - Exhibit I 266 The applicants' submissions in relation to this shoe were that the comparison in relation to the Boston Shoe - Exhibit G applied equally as the Stingray Runner was not materially different from the Boston Shoe. 267 As to intention, the applicants submitted that at the same time as the Apple Pie Runner was being marketed, the Stingray Runner, the Basement Shoe, and the Stingray Shoe were also being marketed by the respondent. 268 The Stingray Runner, the applicants submitted, was yet further evidence of the course of conduct of the respondent in distributing four stripe shoes. The number of different variations of the four stripe shoes adopted by the respondent always led back to the same question: why was the respondent so interested in marketing shoes bearing four stripes with such close similarity to the 3-Stripe Trade Marks? The only answer was that that would allow the respondent to deceive or confuse consumers into thinking that the respondent's shoes originated from adidas or otherwise had a connection with the owner of the 3-Stripe Trade Marks. 269 As to the survey, the submissions made in relation to the Boston Shoe were repeated. 270 I reach the same conclusion as for Boston Shoe - Exhibit G and for substantially the same reasons. In relation to this shoe my assessment is that there are four stripes rather than three and an obvious slightly wider gap between the second and third stripes but also there is a short strip connecting the second and third stripes. 271 In addition, as with the Boston Shoe, the inclusion of panels of a similar colour to the stripes (black or close to black), and the stitched-in element of contrasting colour (white) extending behind the lower part of the stripes, mean that as a matter of impression there is no deceptive similarity with the applicants' trade marks. There is no sufficiently clear impression of the stripes forming a contrast to the basic colour of the shoes or being a colour different from that of the article of footwear to which the stripes were applied. 272 Again, whatever might otherwise be the persuasiveness of the survey, the feature of lack of contrast, at least, does not permit the results of the survey to be extrapolated to this shoe in a manner contended for by the applicants. 273 In my opinion, this shoe does not infringe the applicants' trade marks.

[37]

Basement Shoe - Exhibit J 274 The applicants' submissions in relation to this shoe were that it adopted the basic four stripe mark, but further increased the spacing between the second and third stripes. The respondent appeared to assert that this made the four stripe mark appear as two groups of two parallel stripes. The attempt was wholly unsuccessful, as the unity of colour and width of the four stripes meant that the eye perceived them as a group of four (and hence continued to contain, as a subset, the 3-Stripe Trade Marks, with insufficient variation to avoid the likelihood of confusion). Accordingly, the applicants submitted, the similarity between the mark as appearing on the Boston Shoe, and the memorable features of the 3-Stripe Trade Marks, were: (a) oblique slanting parallel stripes of equal width; (b) contrast between the stripes and the remainder of the shoe; (c) the stripes ran from the lacing area of the shoes to the instep area of the shoes; (d) the stripes ran up from the back and bottom of the shoe at the instep towards the top and front of the shoe at the laces; and (e) the stripes were at a relatively steep rake, but were less than vertical. Again, the applicants submitted, having regard to the doctrine of imperfect recollection, the four stripe mark as used on the Basement Shoe was deceptively similar to the 3-Stripe Trade Marks. 275 As to intention, the applicants submitted the increase in spacing between the second and third stripes was very clear evidence of a conscious attempt to move gradually along a spectrum of designs so as to provide a basis for an argument that the four stripe mark was not deceptively similar to the 3-Stripe Trade Marks, because presumably it was sought to be argued that two groups of two stripes did not contain, as a subset, the 3-Stripe Trade Marks as did other four stripe marks. The applicants accepted that the marks must be looked at as a whole. But, they submitted, the attempt to turn the four stripes into two groups of two stripes raised more questions than it answered. Why was the respondent so concerned to be able to market shoes with four stripes? Why did it not merely abandon four stripes altogether and market shoes with two stripes? The respondent evidently perceived an advantage in marketing a shoe with four stripes, and it was submitted that the only plausible advantage attaching to marketing a shoe with four stripes was that it allowed the respondent to trade off adidas' reputation in the 3-Stripe Trade Marks. 276 Again, the applicants submitted, the marketing of the Basement Shoe by the respondent came after a long period of correspondence between adidas and the respondent in relation to the respondent's use of the four stripe mark. 277 The applicants submitted their comments made in relation to the Boston Shoe as to the extrapolation of the survey results to marks which increased the size of the spacing between the second and third stripes were relevant here. However, it might be acknowledged that the increase in spacing between the second and third stripes in relation to the Basement Shoes was greater than for the other shoes in issue in the proceedings. 278 The respondent submitted with particular reference to this shoe, the Basement Shoe - Exhibit J, in response to the applicants' statement that the "Respondent adopted a strategy of widening the gap between the second and third stripes" (the Gap Strategy), that the only evidence in support of the Gap Strategy related to the widening of the gap on the Basement shoe and a reference to widening the gap in relation to a shoe that never proceeded. The Gap Strategy was further disrupted, the respondent submitted, by the fact that Exhibit K and Exhibit L post-dated the Basement Shoe - Exhibit J. 279 My assessment of the shoe is, first, there are four stripes, being four silver stripes with dark blue edging, but there is a wider gap between the two central stripes. In my assessment the result is two groups of two parallel stripes. In any event, there are not three, or four, equidistant stripes. 280 I do not accept that the eye perceives the stripes on the Basement Shoe as a group of four or that it continued to contain, as a subset, the adidas trade marks. 281 I do not accept that the survey results, if otherwise of weight, may be extrapolated to support the conclusion contended for by the applicants in respect of this shoe. 282 I am not persuaded by the applicants' submissions as to the respondent's intention: they have insufficient foundation in the chronology of the dealings between the parties, particularly in light of my conclusions about the majority of the shoes on which the applicants rely in this respect. 283 I do not accept the balance of the applicants' submissions as to the respondent's overall intention as the mere fact of the shoe having two groups of two parallel stripes or obviously non-equidistant stripes is, at this level of generality, at least equally attributable to an intention to avoid infringing the applicants' trade marks. 284 My conclusion is that the applicants have not established use of a sign that is deceptively similar to the adidas trade marks. In my opinion, this shoe does not infringe the applicants' trade marks.

[38]

Stingray Shoe - Exhibit K 285 The applicants' submissions in relation to this shoe were that it adopted the basic four stripe mark with two slight variations: (a) the introduction of a background design element (in this case a spider-web type design); and (b) the familiar variation of slightly increasing distance between the second and third stripes as compared with the 3-Stripe Trade Marks. 286 As to (a), the applicants submitted that the background design did not remove any contrast between the stripes and the remainder of the shoe, because of the strand like nature of the background design as it appeared in between the stripes. Moreover, the spider-web design was not properly regarded as being part of the four stripe mark. As to (b), the applicants submitted that the increase in the distance was very slight in this case and was only noticeable upon a close inspection and with advance warning of the difference. Accordingly, the mark used on the Stingray Shoe retained memorable elements of the 3-Stripe Trade Marks, and indeed contained the 3-Stripe Trade Marks as a subset of itself, and was deceptively similar to them. 287 As to intention, the applicants submitted that inferences as to the respondent's intention arose from the similarity of the design of the Stingray Shoe to the adidas Superstar Shoe - Exhibit A1. The Stingray Shoe contained the similarities to the Superstar Shoe outlined in relation to the Airborne Shoe - Exhibit E. Any remaining possibility that the similarities between the Airborne Shoe and the Superstar Shoe could be coincidental was rendered unarguable due to an intention to trade off adidas' reputation by the appearance of those same similarities in the Stingray Shoe. That intention applied equally to the four stripe mark used on the Stingray Shoe. 288 As to the survey, the applicants submitted the Stingray Shoe was a direct subject of the survey. After correcting for guesses, 19% of survey respondents thought that adidas made the Stingray Shoe. That number rose to 21% when the subset of those persons who purchased sport shoes in the last year was considered. Of those people, fully 60% stated that a reason for the answer was "the stripes/lines". That provided clear objective evidence that a significant proportion of consumers were misled by the four stripe mark as it appeared on the Stingray Shoe into considering that the Stingray Shoe originated from adidas. 289 My assessment of the shoe is that the greater distance between the second and third stripes was very slight in this case and, as the applicants submitted, was only noticeable upon a close inspection. I also agree that the background design does not remove any contrast between the stripes and the remainder of the shoe. Accordingly, the mark used on this Stingray Shoe retained memorable elements of the 3-Stripe Trade Marks. 290 I would not however approach the question by asking whether the shoe contained the 3-Stripe Trade Marks as a subset of itself and for that reason was deceptively similar to them. 291 The existence of four stripes tends in the other direction but, as a matter of overall impression, there is use as a trade mark of a sign that is deceptively similar to the 3-Stripe Trade Marks. 292 I note that this shoe was a direct subject of the survey but I have reached my conclusion without giving weight to the results of the survey and, also, without regard to any question of overall intention on the part of the respondent. 293 In my opinion, this shoe does infringe the applicants' trade marks.

[40]

Apple Pie Pink Runner - Exhibit M 297 The applicants' submissions in relation to this shoe were that the Apple Pie Pink Runner, imported and sold in 2010, was very similar to the Apple Pie Runner - Exhibit H. The only difference was that the Apple Pie Pink Runner had a partially pink background behind purple stripes, as compared with the Apple Pie Runner, which had a predominantly white background against pink stripes. These differences in colour, the applicants submitted, did not affect any of the analysis in relation to the Apple Pie Runner. There was, on any view, a difference in colour, or a contrast, between the pink background and the purple stripes as required by the descriptions of the 3-Stripe Trade Marks. In particular, it was a very short step to extrapolate the survey results obtained in relation to the Apple Pie Runner to the Apple Pie Pink Runner. 298 My assessment of this shoe is that there are four stripes rather than three and an obvious wider gap between the second and third stripes but also there is a short horizontal strip connecting the second and third stripes. In addition, the inclusion of panels of a similar colour to the stripes (pink), and the stitched-in element of contrasting colour (white) extending behind the lower part of the stripes mean that as a matter of impression there is no deceptive similarity with the applicants' trade marks. There is no sufficiently clear impression of the stripes forming a contrast to the basic colour of the shoes or being a colour different from that of the article of footwear to which the stripes were applied. 299 Again, whatever might otherwise be the persuasiveness of the survey, the feature of lack of contrast, at least, does not permit the results of the survey obtained in relation to the Apple Pie Runner to be extrapolated to the Apple Pie Pink Runner, given the differences between them. 300 I repeat my earlier conclusions as to intention. 301 In my opinion the Apple Pie Pink Runner - Exhibit M does not infringe the applicants' trade marks.

[41]

Stingray Black Runner - Exhibit N 302 The applicants submitted that there was a variation on the basic four stripe mark that appeared in the Stingray Black Runner, being that the width of the gap between the stripes varied as between the top and bottom of the stripes, so that the stripes had a curved element rather than being strictly parallel. The gaps between the stripes tapered at the lacing by reason of this variation. However, the applicants submitted, the Stingray Black Runner still possessed the following memorable features of the 3-Stripe Trade Marks: (a) contrast between the stripes and the remainder of the shoe; (b) the stripes ran from the lacing area of the shoes to the instep area of the shoes; (c) the stripes ran up from the back and bottom of the shoe at the instep towards the top and front of the shoe at the laces; and (d) the stripes were at a relatively steep rake, but were less than vertical. Allowing for imperfect recollection, the applicants submitted, the marks as they appeared on the Stingray Black Runner were deceptively similar to the adidas trade marks. 303 The Stingray Black Runner, the applicants submitted, perhaps represented the endpoint of the respondent's incremental efforts to create colourable variations of the basic four stripe mark in a way which preserved at least some essential elements of the 3-Stripe Trade Marks. As an endpoint, it informed the intention underlying all the variations which had gone before it. It illustrated that various designs were available to the respondent which did not, for example, maintain the strict parallel nature of the stripes as appeared in the adidas trade marks. Importantly, it also served to illustrate that other designs utilising four stripes but not using any of the other memorable elements of the 3-Stripe Trade Marks would also have been available to the respondent had it so wished, for example stripes which slanted in the opposite direction from those in the adidas trade marks: ie from the top and back of the shoe at the lacing towards the front and bottom of the shoe at the instep. 304 The respondent's particular submissions in relation to this shoe were that despite adidas' description of the Stingray Black Runner - Exhibit N as the "endpoint" in the alleged linear evolution due to its curved, tapering stripes, it was introduced before the interconnecting tab was introduced between stripes 2 and 3 of Boston - Exhibit G. 305 My assessment of this shoe is that there are four "stripes"; the stripes taper to a narrower end towards the sole of the shoe and are therefore not of equal width; the gaps between the stripes are not equal and taper towards the top of the shoe at the lacing; and the four stripes have a curved element and are therefore not parallel. The features of the applicants' trade marks relied on by the applicants in relation to this shoe are not those which give rise to the dominant visual impression of the trade marks as three parallel equidistant stripes of equal width. This shoe does not create the visual impression of three parallel equidistant stripes of equal width. 306 I am not persuaded otherwise by the applicants' reference to the endpoint of the respondent's incremental efforts to create colourable variations of the basic four stripe mark in a way which preserved at least some essential elements of the applicants' trade marks. Absent intention, this seems to me to pose a question which distracts from the statutory question. If the submission is put as going to intention I repeat my earlier conclusions on that subject. 307 In my opinion, this shoe does not infringe the applicants' trade marks.

Adidas AG v Pacific Brands Footwear Pty Ltd

At a glance

Court

Decision date

Before

Source

Judgment (46 paragraphs)

Parties

Legislation Cited (3)

Cases Cited (34)

Cited By (3)