The applicant's case at trial
50 The applicant's case at trial had narrowed considerably from the claims set out in the Amended Fast Track Statement. That narrowing is of some significance to the capacity of the applicant to prove the contraventions of the ACL as it now puts them.
51 In the applicant's Amended Fast Track Statement at [4], the applicant identified the general activities of the respondent which gave rise to the contravening conduct as "promoting, providing and selling commercial construction services… in Australia under or by reference to the Shape Trade Mark". In turn, in [1] the applicant identified the trade mark as the word "SHAPE". Separately, the applicant alleged infringement of its registered trade mark which in the Amended Fast Track Statement it described as the "Shape Logo Trade Mark".
52 The applicant made the following claims about its reputation (at [10]-[13] of the Amended Fast Track Statement):
Since about July 2012, Shape Shopfitters has continuously promoted, provided and sold the Shape Shopfitters Services on an extensive scale throughout Australia under or by reference to the Shape Trade Mark.
The Shape Trade Mark in connection with the Shape Shopfitters Services has become, and is, and has at all material times been, well-known in the commercial construction sector in Australia.
As a result of the matters set out in paragraphs 10 and 11 above, the Shape Trade Mark in Australia means, and distinctively and exclusively indicates, Shape Shopfitters, the Shape Shopfitters Services or an association with them.
As a result of the matters set out in paragraphs 10 and 11 above, Shape Shopfitters has developed a valuable reputation and substantial goodwill among members of the commercial construction sector in Australia in relation to the Shape Shopfitters Services and the Shape Trade Mark.
53 The contravening conduct in which the respondent was alleged to have engaged is dealt with in [14] of the Amended Fast Track Statement:
From at least October 2015, Shape Australia has promoted, provided and sold the Shape Australia Services in Australia under or by reference to the Shape Trade Mark without the licence or authority of Shape Shopfitters.
PARTICULARS
(a) On or about 26 October 2015, Shape Australia's corporate name was changed to "Shape Australia Pty Ltd" from "ISIS Group Australia Pty Ltd".
(b) Since at least 30 October 2015, Shape Australia has promoted the Shape Australia Services through a website located at the Shape Australia Domain. The Shape Australia Services are promoted on this website under or by reference to the Shape Trade Mark.
(c) Since at least 9 November 2015, Shape Australia has promoted the Shape Australia Services online through a Facebook Page, located at . The Shape Australia Services are promoted on this Facebook Page under or by reference to the Shape Trade Mark.
(d) Since at least 9 November 2015, Shape Australia has promoted the Shape Australia Services online through a Twitter Page, located at . The Shape Australia Services are promoted on this Twitter Page under or by reference to the Shape Trade Mark.
(e) Since at least 9 November 2015, Shape Australia has promoted the Shape Australia Services online through a LinkedIn Page, located at . The Shape Australia Services are promoted on this LinkedIn Page under or by reference to the Shape Trade Mark.
(f) Since at least 9 November 2015, Shape Australia has promoted the Shape Australia Services online through a YouTube Page, located at . The Shape Australia Services are promoted on this YouTube Page under or by reference to the Shape Trade Mark.
(g) From a date unknown to Shape Shopfitters, but from about late 2015, Shape Australia has promoted the Shape Australia Services under and by reference to the Shape Trade Mark as a word trade mark. For example, Shape Australia published a document titled "Shape at a glance", which bears the following use of the Shape Trade Mark:
(h) From a date unknown to Shape Shopfitters, but from about late 2015, Shape Australia has promoted the Shape Australia Services under and by reference to device trade marks incorporating the Shape Trade Mark including:
(Shape Australia Device Marks). By way of example, the Shape Australia Device Marks are depicted in a document titled 2015 Year in Review, which can be accessed at the following page of Shape Australia's website: http://www.shapegroup.com.au/media/386902/shapeyirdigital_v1.pdf.
Shape Shopfitters may provide further particulars after the conclusion of evidence and prior to trial.
54 The applicant then alleged (at [15]) that by reason of the conduct in [14], the respondent made four representations (and continued to make and/or threaten to make those representations). Those representations were:
(a) the Shape Australia Services are the Shape Shopfitters Services;
(b) the Shape Australia Services are promoted, provided and sold with the licence or authority of Shape Shopfitters;
(c) the Shape Australia Services have the sponsorship or approval of Shape Shopfitters; and/or
(d) Shape Australia has the sponsorship or approval of, or an affiliation with, Shape Shopfitters
55 After alleging that the respondent's conduct was in trade or commerce (which is not in dispute), the applicant then alleged at [17] that the four representations identified in [15] were misleading, deceptive and false because:
(a) the Shape Australia Services are not the Shape Shopfitters Services;
(b) the Shape Australia Services are not promoted, provided or sold with the licence or authority of Shape Shopfitters;
(c) the Shape Australia Services do not have sponsorship or approval of Shape Shopfitters; and
(d) Shape Australia does not have the sponsorship or approval of, or an affiliation with Shape Shopfitters.
56 Contraventions of s 18 and s 29(1)(g) and (h) of the ACL were then alleged.
57 By the time the matter came to trial as I have noted above, the applicant's case had narrowed substantially. Senior Counsel for the applicant opened its case on the basis that the only representation the applicant alleged had been made by the respondent was the representation in [15(d)] of the Amended Fast Track Statement: namely that the respondent has the sponsorship or approval of, or an affiliation with, the applicant. As Senior Counsel for the applicant submits, that is an allegation that the respondent has through its conduct (as set out in [14] of the Amended Fast Track Statement) represented that there is some kind of commercial connection between the respondent and the applicant. The allegation that the respondent's conduct represented that its promotion, provision and selling of commercial construction services was the promotion, provision and selling of the applicant's construction services was no longer pressed. That was the allegation made in sub-para (a) of [15] of the Amended Fast Track Statement. Nor were the other two allegations about the respondent's "services" pressed. Rather what was pressed was an alleged representation, not about the services provided by the parties, but about the connection between the parties themselves.
58 The applicant's passing off case was put on the basis of injury to the reputation and goodwill of the applicant, its services and its trademark as described in [1] of the Amended Fast Track Statement (that is, the mark SHAPE). The applicant then alleged that by its conduct as alleged the respondent has passed off, is passing off and/or threatens to pass off (at [22] of the Amended Fast Track Statement):
(a) the Shape Australia Services as the Shape Shopfitters Services;
(b) the Shape Australia Services as a services that are promoted, provided and/or sold with the licence or authority of Shape Shopfitters;
(c) the Shape Australia Services as having the sponsorship or approval of Shape Shopfitters; and
(d) itself as having have the sponsorship or approval of, or an affiliation with, Shape Shopfitters.
59 As I understood the applicant's opening and closing submissions, consistently with the narrowing of its case in relation to the ACL, the applicant also narrowed its case in passing off so that the only passing off it pressed in relation to the respondent's conduct was the passing off articulated in sub-para (d) of [22].
60 The applicant's trade mark infringement case was put in the following way (at [22D]-[22F] of the Amended Fast Track Statement):
By promoting the Shape Australia Services under and by reference to the Shape Trade Mark as a word trade mark (see paragraph 14 above), Shape Australia has, without the licence or authority of Shape Australia, used a mark which is deceptively similar to the Shape Logo Trade Mark in respect of services for which that mark is registered.
By promoting the Shape Australia Services under and by reference to the Shape Australia Device Marks (see paragraph 14 above), Shape Australia has, without the licence or authority of Shape Australia, used a mark which is deceptively similar to the Shape Logo Trade Mark in respect of services for which that mark is registered.
By reason of the matters set out in paragraphs 14, and 22A to 22E above, Shape Australia has infringed, is continuing to infringe and/or threatens to infringe the Shape Logo Trade Mark.
61 Consistently with the amendments to the Fast Track Application, the only relief claimed by the applicant was declaratory and injunctive relief. The parties agreed it would be appropriate for the Court to hear further submissions on the question of relief should it find any of the applicant's causes of action to be proven. Therefore the only context in which I consider the limited nature of the applicant's claims for relief is where the applicant submitted that the nature of the relief sought (as injunctive relief) affected what it needed to prove in order to make out one or more of its causes of action.
62 In closing submissions, as in opening submissions, Senior Counsel for the applicant gave what I considered, with respect, to be a very clear summary of his client's case. He noted that what lies at the heart of each cause of action brought by the applicant is the respondent's use of the word "SHAPE". In relation to the claim under the ACL and in passing off, the applicant's case is that the respondent's use of that word in its corporate name, in its promotions on its website and in other places on the internet and in its marketing and advertising where it incorporates the word "SHAPE" into a word trade mark or a device trade mark, leads relevant members of the industry erroneously to believe there is a connection in the course of trade between the applicant and the respondent.
63 The applicant contends that when one examines the nature of each party's business and how they use the name "SHAPE", taking into account what the applicant contends is a material overlap in the business activities of the parties, there is a likelihood that persons and entities whom the applicant describes as "participants in the commercial construction industry" will be, and have been, misled or deceived into believing (erroneously) that there is a commercial connection of some kind between the respondent and the applicant.
64 Two key aspects of the applicant's case emerge from these submissions. The first is that the kind of connection between the parties which the applicant contends will erroneously be perceived is wider than the example given in the applicant's written and oral opening submissions. The example, seized upon by the respondent, is that participants would be led erroneously to believe the applicant is a "specialist shopfitting arm (or business unit)" of the respondent. There was some debate in closing submissions whether by specifying this particular kind of perceived relationship, the applicant had narrowed its case even further to one which contended the representation arising from the respondent's impugned conduct was a representation that the applicant was a specialist shopfitting arm or business unit of the respondent, and no more. As I have noted, the respondent seized on this example and highlighted it prominently in both its opening and closing submissions, making a consistent submission that there was no evidence whatsoever of any such perception amongst participants in the commercial construction industry. On that basis, the respondent submits the applicant's case under the ACL and in passing off must inevitably fail.
65 Despite the respondent seizing on this "specialist shopfitting arm" aspect of the applicant's opening submissions in particular, I do not consider it is a fair description or summary of the way the applicant has put its case. No doubt there was good forensic reason for the respondent to seize on that description, because it was correct in its submission that there was no evidence of any such perception in the market. However, the applicant did not abandon the terms of its Amended Fast Track Statement and it opened and closed its case, in my opinion, in a consistent manner by reference to [15(d)] of the Amended Fast Track Statement. So much can be seen in [3] of the applicant's outline of opening submissions which states:
Shape Shopfitters alleges that Shape Australia's use of the name SHAPE falsely represents that there is an affiliation, connection, association or relationship between Shape Shopfitters and Shape Australia. 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'). 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. Accordingly, Shape Shopfitters submits that Shape Australia's conduct gives rise to an actionable wrong.
(Footnote omitted.)
66 That contention was repeated at the start of its closing submissions, again in [3]:
Shape Shopfitters alleges that Shape Australia's use of the name SHAPE falsely represents that there is an affiliation, connection, association or relationship between
Shape Shopfitters and Shape Australia.
(Footnote omitted.)
67 The footnote to [3] of the applicant's closing submissions made it very clear that only [15(d)] and [22(d)] of the Amended Fast Track Statement were pressed by the applicant. However, the footnote and the submissions in my opinion made it clear that there was also no further narrowing of the way the applicant put its case from the expressions in those paragraphs.
68 I return to the second feature of the submissions to which I referred above. The second feature is that the applicant identifies the class of persons to whom it alleges the representations have been made as a much wider class than the class identified by the respondent. The applicant relies on a class it described consistently as "participants in the commercial construction industry". The applicant described the services provided by both parties as "relatively complex commercial services". Involved in the provision of those complex commercial services, the applicant submitted, were people such as trade contractors, for example plumbers and fire protection services service providers, and other service providers such as designers and architects. These are the kinds of people the applicant identifies as "participants" without limiting the class to the clients, or purchasers of the services provided by the applicant and the respondent. Thus, its case sought to avoid the emphasis placed by the respondent on the complex and particular contractual arrangements between the respondent and consumers of the respondent's services, instead contending that its case is:
primarily directly at the extensive substratum of commercial relationships which sit beneath the provision of services by Shape Australia and Shape Shopfitters.
69 Thus, in order to make good a case of this kind, the applicant accepted it needed to establish sufficient overlap in the commercial construction activities between the applicant and the respondent, such that those trade contractors and other service providers the applicant identified would, in fact, be likely to be misled and deceived by the respondent's use of the word "SHAPE" in its corporate name and its promotion and provision of services. Without an overlap, whereby these participants might encounter the respondent's promotion and provision of services, the applicant's case under the ACL and in passing off could not succeed.
70 It was in this context that the applicant's considerable emphasis both in evidence and in submissions on an understatement, or an alleged understatement, by the respondent of its commercial construction activities in retail fit-out and specifically in retail food fit-out became prominent. Going forward, the applicant contends that there was no suggestion the respondent would stop pursuing or performing work of that kind, and further contended the Court should not accept the respondent's minimising case about the proportion of its work which fell into this category.
71 As to the nature of the deception, or misleading, which the applicant contends has been a result of the respondent's use of the mark "SHAPE", the applicant contends this goes well beyond mere confusion. Consistently with its pleaded allegations, it contends the evidence has borne out that there are a meaningful number of participants in the industry who have been in fact led erroneously to believe that the applicant is a member of a larger "group" comprising the respondent or is part of the respondent's "group". While contending it was not required to prove actual deception or misleading, the applicant correctly understood the probative value of doing so in making out its case under the ACL or in passing off. According, as I have described above, much of its affidavit evidence was directly towards proof of participants in the industry being misled or deceived into believing there was a relationship between the parties of some kind. When pressed in final submissions on this, Senior Counsel for the applicant identified evidence which went to the belief of participants that the applicant is part of the Shape Australia "group" as the most probative evidence.
72 All of the matters I have outlined to this point were also relied on by the applicant in its tort case. The only additional matter specifically identified in the passing off case by the parties' submissions was the role of damage as an element of the tort. I deal with this below, but in summary the applicant submits that although damage was recognised as an element of the tort of passing off, such damage could be inferred from the very engagement of the respondent in the impugned conduct, because the law will, from the impugned conduct, infer that the value of the reputation and goodwill of the applicant was diminished, and that was sufficient to complete the necessary ingredients of the tort. The respondent disputes this.
73 The applicant's claims of trade mark infringement were made on the basis of deceptive similarity under s 120(1) of the Trade Marks Act and no reliance was placed on substantial identity. The applicant contends that there were three ways in which the respondent had used the word SHAPE as a trade mark:
(a) first, the word SHAPE simpliciter (Word Mark);
(b) secondly, as a stylised device mark against a coloured circular background and with a stylised A resembling an upside down 'V' (Circle Mark);
(c) thirdly, as a stylised device mark against a transparent background with a circular border and with a stylised A resembling an upside down 'V' (Transparent Mark).
(Footnotes omitted.)
74 The applicant contends, and I did not understand the respondent seriously to dispute, that each of the ways in which the respondent used the name SHAPE constituted a trade mark use because the respondent had deliberately adopted the name SHAPE as its brand.
75 The applicant's case centred on the proposition that the "essential eye-catching and memorable feature" of its Registered Mark is the word SHAPE. It contends that it was this feature which would be the dominant impression or recollection that the hypothetical "person of ordinary intelligence and memory" encountering the Mark would recall. By using the word "SHAPE" in each of the three ways identified above, the respondent would, the applicant submitted, cause a number of persons to wonder whether it might be the case that the applicant's commercial construction services came from the same source as the respondent's commercial construction services: see Southern Cross Refrigeration Company v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 (Kitto J). As with its case under the ACL and in passing off, the applicant characterises the class of people for the purposes of its trade mark infringement case more widely than the respondent. It submits:
…when Shape Australia uses the word SHAPE as a trade mark, it is encountered by many people other than specialists within in particular trade. It is encountered by a very wide range of people from Shape Australia's customers through to the personnel of the diverse businesses that provide services to Shape Australia.
76 Finally, as I have set out above, the applicant contends that notwithstanding the use of the colour blue in its Registered Mark, the Mark was registered without limitation as to colour and was to be taken as registered for all colours.