Shape shopped
Mortimer J has dismissed Shape Shopfitters claims against Shapeย Australia for misleading or deceptive conduct, passing off andย trade mark infringement.
Much of the focus of the decision is on the misleading or deceptive conduct claim (and will have to be the subject of a future post). This post will look at theย trade mark infringement claim.
Shape Shopfitters has registeredย Trade Mark No.ย 1731525 for shopfitting, construction and advisory services relating to construction in class 37 for thisย trade mark:

It alleged that Shape Australia infringed that trade mark by using these signs:
Shape Australia provided construction services, apparently on a much larger scale, but was not specifically engaged in shopfitting – sub-contracting out those parts of its jobs. Also, Shape Australia did not provide its services to the particular people who were customers of Shape Shopfitters.[1]
Mortimer J found that Shape Australiaโs trade marks were not deceptively similar to Shape Shopfittersโ. Her Honour considered that the imperfect recollection of the relevant public would recall not just the word SHAPE, but also its collocation with the word Shopfitters (albeit it was subsidiary) and the distinctive โbottle capโ shape of the border.
Of the four elements comprising Shape Shopfittersโ trade mark (apart from the blue colouring), Mortimer J explained:
- The use of capitals for the word โSHAPEโ in the applicantโs Mark is, I accept, a feature likely to be recalled. In part, it is the use of capitals which is likely to make the word โshapeโ stick in the memory, as well as its proportionate size in the Mark. It is also correct that the word โShopfittersโ is much smaller, as is โEst 1998โ. I see no basis to find that the latter phrase would be generally recalled, however I consider the word โShopfittersโ may well be recalled in conjunction with the word โSHAPEโ. There is an alliterative effect between the two words, as well the positioning of โShopfittersโ underneath the word โSHAPEโ. An industry participantโs eye (to take the applicantโs wider class of people) will, in my opinion, be drawn to that word as well and what is just as likely to be recalled is the phrase โSHAPE Shopfittersโ, rather than just the word โSHAPEโ.
As a result, the prospect that the word mark would be deceptively similar was roundly dismissed. The two devices with the word in a circle were closer, but the absence of the word Shopfitters and the difference between a circle and the โbottle capโ border were decisive.
- The Circle Mark and the Transparent Mark have a closer similarity, because of โ in combination โ the use of capitals of the word โSHAPEโ, the placement of that word inside a circle, and the use of a circle itself. However, as I have set out, in my opinion even imperfectly, a reasonable industry participant of ordinary intelligence and memory is likely to recall the word โShopfittersโ in conjunction with the word โShapeโ, especially because of the alliteration involved. I also consider such a person will recall the applicantโs Mark has a distinctive border that is not a smooth circle.
- I do not consider the evidence about several industry participants referring to the applicant as โSHAPEโ affects these findings in a way which means that word would be recalled as the only essential feature of the applicantโs Mark. Rather, that evidence is evidence of the contraction of the applicantโs business and trading name in ordinary speech, and such a contraction does not necessarily carry over to what a reasonable person is likely to recall of the applicantโs Mark. It goes only to how industry participants might refer to the applicant in conversation.
Given these findings, it was unnecessary for her Honour to express an opinion on whether the registration of Shape Shopfittersโ trade mark with the blue background imposed a limitation on the scope of the registration.[2]
Mortimer Jโs conclusions do not explicitly turn on the fields of activity of the respective parties, apparently a closely fought battle in the context of the misleading or deceptive conduct case. Indeed, at [258] her Honour expressly said it made no difference whether the relevant public was defined as the โbuyersโ of construction services or participants in the commercial construction industry.
Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3) [2017] FCA 865
- Although Shape Australia was much larger than Shape Shopfitters, you might recall that for much of its life it had operated under the name ISIS Group Australia and had changed its name after Shape Shopfitters came on to the scene and the name of the ancient Egyptian goddess took on some rather unfortunate (to say the least) connotations. ย ?
- Referring to s 70 read with the definition of โlimitationโ provided by s 6. ย ?