Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd

Background and context 2 In this proceeding the applicant alleges that the respondent has made representations, which revolve around its use of the word "SHAPE" in its corporate name, and which constitute: (1) misleading or deceptive conduct or conduct that is likely to mislead or deceive in contravention of s 18 of the Australian Consumer Law; (2) the making of a false representation in contravention of s 29(1)(h) of the Australian Consumer Law; and (3) passing off. 3 Each of the parties is a commercial construction company. The nature and range of the commercial construction activities of each of the parties is in issue, at least as to what ought properly be characterised as its predominant commercial construction activity. The applicant has traded in Australia under the name Shape Shopfitters Pty Ltd since July 2012. The respondent changed its name from ISIS Group Australia Pty Ltd to SHAPE Australia Pty Ltd on 26 October 2015, for reasons that are immediately obvious. 4 Although the pleadings are more broadly expressed, as the matter has been opened at trial on behalf of the applicant, and reflected in its written submissions, there are now two basic contentions. The first is that, by the use of the name "SHAPE" in its corporate name, in its marketing and in its advertising, the respondent has made a false representation that there is an affiliation, connection, association or relationship between the applicant and the respondent. The applicant's opening submissions put the contention in this way: In particular, Shape Shopfitters submits that participants in the commercial construction industry would be falsely led to believe that there is a relationship between Shape Shopfitters and Shape Australia because of their shared use of the name SHAPE (sometimes in conjunction with a second word which is either generic or descriptive - 'Shopfitters' / 'Australia'). 5 The applicant's opening submissions continued: An obvious conclusion to be drawn having regard to the similarity of their names is that Shape Shopfitters is the specialist shopfitting arm (or business unit) of Shape Australia (a larger and more general business). There is no such relationship. 6 From that alleged representation arises the applicant's claim under the consumer law and in the tort of passing off. 7 The second contention maintained by the applicant is that the respondent has infringed its registered trade mark by promoting, providing and selling commercial construction services under and by reference to the name "SHAPE", using a series of marks which are annexed to the applicant's outline of opening submissions, and which also appear (at least in part) in [14] of the applicant's amended fast track statement. 8 The applicant contends that its infringement case is made out on the basis that the word "SHAPE" is the essential feature of the SHAPE Registered Mark. On the trade mark infringement case, the parties are agreed that the real issue between them is whether the respondent's use is the use of a mark that is deceptively similar to the applicant's registered mark. 9 The respondent disputes that its use of the word "SHAPE" is the use of a mark which is deceptively similar to the applicant's registered mark. Further it disputes that the use of the word SHAPE in its corporate name, in its marketing and in its advertising, conveys any representation that the applicant is the shop fitting arm of the respondent. The basis for its dispute is said in its opening submissions to be three fold: (1) The relevant class of consumers (for both parties) is a sophisticated class, with specialised knowledge of the industry and not a class likely to be misled; (2) the work comes to each of the parties through a "careful and considered process that further reduces any risk of confusion"; and (3) there is no evidentiary basis for an inference that consumers would be misled in the way for which the applicant contends. 10 The latter refers back to the narrowed representation which is the basis of the applicant's case under the Australian Consumer Law and in passing off. 11 As part of its response to the applicant's case, the respondent submits the Court should reject the applicant's evidence about alleged confusion between the applicant and the respondent. A number of witnesses were called on behalf of the applicant to give evidence of such alleged confusion. Similarly in the trade mark infringement case, the respondent submits that the question of whether the two marks are deceptively similar when considered in the context of the likely consumers of these services should be answered in the negative, because buyers of shop fitting services are experienced and knowledgeable and know the industry well. Confusion, the respondent submits, amongst this class of consumers is unlikely.

evidence objected to 12 With this background, I turn now to the evidence to which an objection has been taken as set out in [1] above. Junior counsel for the applicant submitted that the same objection covered all the paragraphs of Mr Henry's affidavit to which objection is taken. Those paragraphs deal with internet searches conducted by Mr Henry for a number of business names containing the word "shape". For example at [22], Mr Henry deposes to a search he conducted on 31 August 2016 on the internet for "Shape Building". He then deposes to the results of that internet search and exhibits to his affidavit a series of screen shots from a webpage with a particular URL which constituted the results of that search. Similarly at [29], Mr Henry deposes to conducting internet searches for "Shape Developments", and then deposes to the results of those internet searches, including exhibiting to his affidavit screen shots of the results of those searches. Screen shots include, for example, a Facebook page maintained in the name of "Shape Developments". 13 Mr Henry then deposes to searches of Australian Securities and Investments Commission and Australian Business Register records for various corporate entities with names that include the word "shape", such as "Shape Australia (QLD) Pty Ltd", "Shape Australia Holdings Pty Ltd", "Shape Design", and "Shape Property Developments". There is no objection taken to these paragraphs of Mr Henry's affidavit, I assume because the searches conducted related to public records. 14 However objection is then taken to Mr Henry's evidence about his internet searches for another entity - "Shape Consulting". Similar objections are taken to "Shape Project Management Pty Ltd" (see [42]); "Shape Builders Pty Ltd" (see [45]); "Shape Joinery & Design Pty Ltd" (see [48]); "Shape Fitouts Pty Ltd" (see [51]); and "Shape Finance (Aust) Pty Ltd" (see [55]). 15 Junior counsel for the applicant submitted that all Mr Henry's evidence demonstrated was that when one logged onto a website on a particular date (the dates given by Mr Henry were between 31 August 2016 and 28 October 2016) the screen shots annexed to his affidavit are what appeared on the webpage on that date. The submission was that this evidence is of no probative value in showing a proliferation in the relevant marketplace of the use of the word "shape" by other businesses at or around the same time as the alleged conduct of the respondent. That is because, on the applicant's submission, all the evidence does is show the use of that word on a particular date on a particular website. It is not probative, the applicant submits, of what has happened since the adoption and launch of the respondent's use of the name SHAPE. For that reason, the applicant submitted the evidence ought to be excluded under s 135 of the Evidence Act. The submission suggested the probative value of this evidence was substantially outweighed by the danger the evidence might be unfairly prejudicial because, in showing a state of affairs on a particular date, it is unrepresentative, misleading or confusing. Further, admitting the evidence could cause or result in undue waste of time because the applicant would be required to answer evidence that only deals with a snapshot of the use of the word "shape" in the "marketplace" (a term used by junior counsel for the applicant to mean "a relevant industry") on a particular day. Junior counsel's submissions were not quite in these terms, but that is how I understood the thrust of what he said. 16 There was also an objection on the basis of hearsay. The submission by the applicant is that the purpose of tendering this evidence is to prove that the statements extracted by Mr Henry in the exhibits to his affidavit were true: that is, that on the date specified, the corporate entities named were using a business name or trading name that included the word "shape". 17 In response, junior counsel for the respondent submitted first that the documents were being tendered for a non-hearsay purpose: that is they were relevant to show that the businesses concerned purported to be trading by reference to those names on a particular date. She emphasised "purported", in the sense that any person searching for a business in the construction/shop fitting industry with the word "shape" would, on the dates specified by Mr Henry, have seen these webpages which use the word "shape" in their business or trading names (just as the respondent did) and would have been required to distinguish between all those businesses using that word in their names. Whether or not the names on the website were, in fact, the names of the businesses was not the point. She submitted this was not a hearsay purpose. 18 As to the date of the searches, junior counsel submitted that what was visible on the internet by way of searches between August 2016 and October 2016 was not irrelevant to the issues before the Court in circumstances where the applicant was seeking injunctive relief against the respondent, to restrain it from continuing to use the name "SHAPE Australia" into the future. In that sense, the fact that the searches were done after proceedings were commenced and well after the respondent commenced using the name "SHAPE Australia" was not to the point. 19 In response, junior counsel for the applicant submitted that (accepting for the purpose of this submission there was relevance to the dates between August and October 2016) the appropriate way to prove what consumers in the marketplace could have discovered through an internet search would be to have called evidence from those consumers. He submitted that the fact of simply producing internet searches precluded the applicant from cross-examining any of the individuals responsible for running these business and denied it an opportunity to test the asserted inference sitting behind the evidence that no confusion arose through these businesses' use of the word "shape" in their business or trading names, or no confusion specific to the respondent's use of the word "shape" in its business name. He submitted the evidence gave nothing more than a snapshot and was a shorthand and inadequate way for the respondent to seek to establish a lack of confusion in the market place due to other uses of the word "shape".

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Cases Cited (3)