Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd
[1999] FCA 461
•16 APRIL 1999
FEDERAL COURT OF AUSTRALIA
Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd [1999] FCA 461
EXPLANATORY SUMMARY
Interests associated with the manufacture of Dr Martens footwear commenced proceedings against Figgins Holdings Pty Ltd, Bata Shoe Company of Australia Pty Ltd, Rivers (Australia) Pty Ltd and Windsor Smith Pty Ltd and other companies and persons associated with them claiming, in substance, that those companies had manufactured and sold footwear which copied the features of the trade dress and get‑up of Dr Martens Z welt footwear which were said to be distinctive of the Z welt footwear. It was said that in so doing these companies had represented that their footwear was Z welt footwear and came from the same trade source as the Dr Martens Z welt footwear.
These companies had marked their footwear with their own brands and their footwear was sold at retail prices cheaper than the prices of the Dr Martens Z welt footwear.
The Court has found that the claims against Figgins Holdings Pty Ltd, Bata Shoe Company of Australia Pty Ltd, Rivers (Australia) Pty Ltd and the companies and persons associated with them have not been made out and the Court has dismissed those claims.
The Court has found that Windsor Smith Pty Ltd and companies associated with it have represented that their three items of footwear are Z welt footwear, come from the same trade source as the Z welt footwear and have the sponsorship or approval of the Dr Martens trade source. The Court has found that these companies have passed off their footwear as and for footwear emanating from the Dr Martens trade source and have contravened s 52 and s 53(c) of the Trade Practices Act 1974 (Cth). The Court has also found that a director of these companies was involved in those contraventions.
The Court has concluded that the application against the Windsor Smith respondents has succeeded because in addition to the features of trade dress and get‑up found in the Windsor Smith footwear there was moulded on the sole of such footwear the words “The ORIGINAL” in a stylised script identical to the words “The ORIGINAL” moulded on the soles of Dr Martens footwear since 1987.
It will now be necessary for there to be a further hearing to determine the amount of loss and damage suffered by the Dr Martens interests as a result of the conduct of Windsor Smith Pty Ltd and its associated companies.
FEDERAL COURT OF AUSTRALIA
Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd [1999] FCA 461
TRADE PRACTICES – misleading and deceptive conduct – whether the applicants Dr Martens “Z welt” footwear trade dress and get‑up, comprising specific distinctive features, had acquired a substantial reputation and identification in the market - whether the existence of imitations and “look‑alikes” in the market diluted or diminished the significance, identification and reputation of the Z welt footwear distinctive features – whether look‑alike footwear possessing a combination of the distinctive features caused consumers to associate the trade source with Dr Martens - whether existence of look‑alike footwear enabled potential purchasers to become aware of their existence and able to distinguish them from the genuine footwear – whether footwear manufactured by the respondents similar in appearance, trade dress and get‑up to the applicants’ footwear - misrepresentation – whether in trade or commerce - whether purchasers or potential purchasers likely to be deceived or misled by the respondents’ look‑alike footwear – effect of labelling, branding and price differences – effect of consumers’ brand awareness.
INTELLECTUAL PROPERTY – passing off - elements of – misrepresentation – whether purchasers or potential purchasers likely to be deceived or misled by the respondents’ look‑alike footwear – effect of labelling, branding and price differences – effect of consumers’ brand awareness.
INTELLECTUAL PROPERTY – trade marks - infringement - whether respondents’ marks were substantially identical with or deceptively similar to the applicants’ registered trade mark.
Trade Practices Act1974 (Cth) s 52, s 53, s 55, s 75B
Trade Marks Act 1995 (Cth): s 122(1)(b)Reckitt & Colman Products Limited v Borden Inc [1990] RPC 341 – considered and distinguished
Cadbury‑Schweppes Pty Ltd v The Pub Squash Co Pty Ltd (1980) 32 ALR 387 - applied
Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 - applied
Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 - appliedParkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1981) 149 CLR 191 – applied
Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431 - applied
Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641 - applied
Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323
Philips Electronics NV v Remington Products Australia Pty Limited (1997) 39 IPR 283 -
Levi Strauss & Co v Wingate Marketing Pty Limited (1993) 43 FCR 344 (on appeal (1994) 49 FCR 89) - distinguished
HP Bulmer Ltd & Showerings Ltd v J Bollinger SA [1978] RPC 79 - distinguishedTaittinger SA v Allbev Ltd (1993) 27 IPR 105 - distinguished
Shell Company of Australia Co Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 - appliedDR MARTENS AUSTRALIA PTY LTD & ORS v FIGGINS HOLDINGS PTY LTD & ORS
VG 958 of 1995
DR MARTENS AUSTRALIA PTY LTD & ORS v BATA SHOE COMPANY OF AUSTRALIA PTY LTD & ORS
VG 959 of 1995
DR MARTENS AUSTRALIA PTY LTD & ORS v RIVERS (AUSTRALIA) PTY LTD & ORS
VG 960 of 1995
DR MARTENS AUSTRALIA PTY LTD & ORS v WINDSOR SMITH PTY LTD & ORS
VG 962 of 1995GOLDBERG J
16 APRIL 1999
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VG 958 of 1995
BETWEEN
AND:
DR MARTENS AUSTRALIA PTY LTD
R GRIGGS & CO LTD
DR ING. HERBERT FUNCK
ELISABETH MAERTENS
WOLLASTON VULCANISING COMPANY LTDApplicants
FIGGINS HOLDINGS PTY LTD
SASHA SHOES PTY LTD
KEITH JAMES CORN
MARK FAGENBLAT
JEFFREY DONALD FIGGINS
DAVID MAYNE VENNER
LORRAINE JOY FIGGINS
MARK LANE ROBERTSON
VAN MURRAY MacGREGOR
TERENCE ROY GRIFFIN
FREDERICK HALCOMB MOYLANRespondents
VG 959 of 1995
BETWEEN:
AND:
DR MARTENS AUSTRALIA PTY LTD
R GRIGGS & CO LTD
DR ING. HERBERT FUNCK
ELISABETH MAERTENS
WOLLASTON VULCANISING COMPANY LTD
DR MARTENS INTERNATIONAL TRADING GmbH
DR MAERTENS MARKETING GmbHApplicants
BATA SHOE COMPANY OF AUSTRALIA PTY LTD
JOHN RICHARD BECKWITH
GORDON HERBERT THRING
MALCOLM WILLIAM GRANT
ALAN KELLYRespondents
VG 960 of 1995
BETWEEN:
AND:
DR MARTENS AUSTRALIA PTY LTD
R GRIGGS & CO LTD
DR ING. HERBERT FUNCK
ELISABETH MAERTENS
WOLLASTON VULCANISING COMPANY LTDApplicants
RIVERS (AUSTRALIA) PTY LTD
LOUISE ROBYN GOODMAN
PHILIP HARRY GOODMANRespondents
VG 962 of 1995
BETWEEN:
DR MARTENS AUSTRALIA PTY LTD
R GRIGGS & CO LTD
DR ING. HERBERT FUNCK
ELISABETH MAERTENS
WOLLASTON VULCANISING COMPANY LTD
DR MARTENS INTERNATIONAL TRADING GmbH
DR MAERTENS MARKETING GmbHApplicants
AND:
WINDSOR SMITH PTY LTD
CHICAGO BOOT COMPANY PTY LTD
BRETT MANCE
CRAIG MANCE
LEANNE MANCE
DIANE MANCE
AD. MANCE AUSTRALIA PTY LTDRespondents
JUDGE:
GOLDBERG J
DATE:
16 APRIL 1999
PLACE:
MELBOURNE
INDEX
Heading Page
Introduction 2
The applicants and their background 5Development of the Z welt footwear 8
Labelling and branding of the Z welt footwear 9
Licensing arrangements 11
History of Dr Martens in Australia 12
Promotional activity in relation to Dr Martens footwear 15
Sales of Z welt footwear in Australia 17
What are the distinctive features of the Z welt footwear? 18
The New Zealand manufactured product 29
Manufacture and sale of “look‑alike” or imitation products 35
The applicants’ description of the respondent’s products 43
Distinctiveness of the trade dress or get‑up and its reputation 47
Reputation and misrepresentation 50
Actual Deception 55
Branding and pricing 55
The Bata case 66
Bata expert evidence 73
The Figgins case 78
The Rivers case 84
The Windsor Smith case 92
Relevant legal principles 106INDEX cont …
Is there an association identified between the Dr Martens trade source and look‑alike 128
products notwithstanding different branding?
Basic propositions relied upon by applicants 131
Does knowingly purchasing an imitation cause loss? 137
Similarity of respondents’ footwear 139
The Windsor Smith products 141
The Figgins product 142
The Rivers product 143
The Bata product 144Was there passing off and a contravention of the Trade Practices Act? 145
Proof of actual damage or loss 151
Individual respondents 151
Trade mark infringement 153
Standing 156
Claim against Chicago Boot Company Pty Ltd 159
Limitation of Actions defence 160
Conclusion 161
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VG 958 of 1995
BETWEEN
AND:
DR MARTENS AUSTRALIA PTY LTD
R GRIGGS & CO LTD
DR ING. HERBERT FUNCK
ELISABETH MAERTENS
WOLLASTON VULCANISING COMPANY LTDApplicants
FIGGINS HOLDINGS PTY LTD
SASHA SHOES PTY LTD
KEITH JAMES CORN
MARK FAGENBLAT
JEFFREY DONALD FIGGINS
DAVID MAYNE VENNER
LORRAINE JOY FIGGINS
MARK LANE ROBERTSON
VAN MURRAY MacGREGOR
TERENCE ROY GRIFFIN
FREDERICK HALCOMB MOYLANRespondents
VG 959 of 1995
BETWEEN:
AND:
DR MARTENS AUSTRALIA PTY LTD
R GRIGGS & CO LTD
DR ING. HERBERT FUNCK
ELISABETH MAERTENS
WOLLASTON VULCANISING COMPANY LTD
DR MARTENS INTERNATIONAL TRADING GmbH
DR MAERTENS MARKETING GmbHApplicants
BATA SHOE COMPANY OF AUSTRALIA PTY LTD
JOHN RICHARD BECKWITH
GORDON HERBERT THRING
MALCOLM WILLIAM GRANT
ALAN KELLYRespondents
VG 960 of 1995
BETWEEN:
AND:
DR MARTENS AUSTRALIA PTY LTD
R GRIGGS & CO LTD
DR ING. HERBERT FUNCK
ELISABETH MAERTENS
WOLLASTON VULCANISING COMPANY LTDApplicants
RIVERS (AUSTRALIA) PTY LTD
LOUISE ROBYN GOODMAN
PHILIP HARRY GOODMANRespondents
VG 962 of 1995
BETWEEN:
DR MARTENS AUSTRALIA PTY LTD
R GRIGGS & CO LTD
DR ING. HERBERT FUNCK
ELISABETH MAERTENS
WOLLASTON VULCANISING COMPANY LTD
DR MARTENS INTERNATIONAL TRADING GmbH
DR MAERTENS MARKETING GmbHApplicants
AND:
WINDSOR SMITH PTY LTD
CHICAGO BOOT COMPANY PTY LTD
BRETT MANCE
CRAIG MANCE
LEANNE MANCE
DIANE MANCE
AD. MANCE AUSTRALIA PTY LTDRespondents
JUDGE:
GOLDBERG J
DATE:
16 APRIL 1999
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
Introduction
Dr Martens footwear, or as it is often more colloquially called, “Doc Martens” or “Docs”, is one of the more famous footwear brands in the world. Dr Martens footwear started off life as industrial or work footwear and was initially marketed to, and used by, persons in a variety of occupations needing hard wearing footwear who spent long periods on their feet. However, in the 1970s and into the 1980s the applicants’ footwear and in particular their boots with what the applicants describe as the “Z welt” style or look started to become popular with teenagers and young adults. The reference to Z welt is a reference to the method of stitching the welt to the upper of the footwear. This style or look was adopted as an image of tough streetwear and was considered to identify a sign of rebellion and anti‑establishment feeling in the wearer. The Z welt footwear rapidly became identified with popular culture and began to achieve a cult status. It became more popular as a cult item after a large pair of Dr Martens boots appeared in the 1970s film “Tommy” which featured the music of the group “The Who” and Elton John.
Over the years, and more recently in the late 1980s and 1990s, the Z welt footwear has achieved a very wide acceptance as a fashion item. It has achieved its image and acceptance not so much through media advertising as through word of mouth and association with its work and cult background.
What is in issue in these proceedings arises out of the get‑up and trade dress, image and presentation of the Z welt footwear. It has developed from its original concept as comfortable work wear into a fashion statement with the youth and young adult market who purchase it as a fashion item and for streetwear. According to the evidence young people have regarded Z welt footwear as “anti‑fashion”, “cool”, and a sign of anti‑establishment or rebellious feeling. The Z welt style or look is found in both boots and shoes. Subject to further analysis to which I shall refer the Z welt style is said by the applicants to incorporate the following distinctive features:
·a prominent and brightly coloured welt stitch thread of yellow or yellow/orange colour;
·the welt stitch thread is sewn in a large and visible looped stitch;
·a visible synthetic or plastic welt of black or dark brown colour;
·a partially transparent synthetic or plastic sole made from PVC having a light brown colour, a grooved sole edge and a two‑tone effect in sole side view;
·an angled heel on the sole instep;
·a sole pattern being either the Dr Martens sole design (called the DMS sole) or a cleated sole design (called the BEN or Commando sole);
·thick yellow and black, brown and yellow or black laces.
In these reasons I refer to these features for the convenience of using a shorthand expression as the “distinctive features” although it is a matter of controversy as to whether the features are in fact distinctive or distinctive of footwear manufactured by the second applicant, R Griggs & Co Ltd. The footwear given the designation Z welt by the second applicant has not been known or identified by that name by the public and I use that designation in these reasons as a shorthand expression to describe footwear possessing the distinctive features relied upon by the applicants.
The applicants claim in a number of forms, which I will presently identify, a commercial or proprietary interest in the Dr Martens technology, brand name, get‑up and trade dress and they are seeking in these proceedings to protect that get‑up and trade dress. They have done so by issuing four separate proceedings against four different groups of respondents, and, with the consent of the parties, the four proceedings have been heard together on the basis, substantially, that the evidence led is evidence in each proceeding.
The applicants say that the respondents have copied the get‑up and trade dress of the particular Dr Martens Z welt footwear, and put look‑alike or imitation Dr Martens products into the market. By so doing, it is said that the respondents have wrongfully appropriated the distinctive features of the trade dress and get‑up of the Z welt footwear and have thereby wrongfully appropriated the goodwill and the reputation of the applicants in the trade dress and get‑up of the Z welt footwear. It is also said that those activities constitute misleading and deceptive conduct and fake and misleading representations.
The four principal respondents are Figgins Holdings Pty Ltd (“Figgins”), Bata Shoe Company of Australia Pty Ltd (“Bata”), Rivers (Australia) Pty Ltd (“Rivers”) and Windsor Smith Pty Ltd (“Windsor Smith”). Against all respondents the applicants rely on causes of action in passing off and contraventions of ss 52, 53 and 55 of the Trade Practices Act1974 (Cth) (“the Act”). Against two respondents, Bata and Windsor Smith, there is also a claim for trade mark infringement. Against directors of the various corporate respondents it is alleged that they have been knowingly concerned in, or a party to, the contraventions alleged. On 15 July 1997 I ordered that the issue of liability be determined separately from any issue as to the quantum of any loss and damage.
The respondents’ principal defences are put on a number of bases:
·what are said to be the distinctive features are not in fact distinctive of, or referable to, Dr Martens footwear but are common and found in other items of footwear;
·their respective footwear does not have all the distinctive features;
·their respective footwear has features which result in a different trade dress or get‑up from that of the Z welt footwear;
·Dr Martens footwear has developed a substantial reputation and image by reference to, and the use of, the brand name “Dr Martens” either independently of the distinctive features or at least in conjunction with them to the extent that it is the brand name which attracts the customer;
·the distinctive features are not distinctive of all items of Z welt footwear produced by the applicants or under licence with them;
·any distinctiveness of the Z welt footwear was diluted and diminished by the marketing and sale of a range of Dr Martens “College” footwear manufactured in New Zealand;
·there is no representation in, or by, the respondents’ products that they are Dr Martens footwear or that they come from the Dr Martens trade source;
·in the respondents’ products are sold under and by reference to brand names and marks which make it clear that what are being sold are products of manufacturers other than, and not connected, with Dr Martens;
·Dr Martens has advertised and sold items of Z welt footwear which do not possess all the distinctive features;
·numerous look‑alike and imitation Z welt footwear has come into the market over the years and potential purchasers have been able to distinguish that footwear from the genuine Z welt footwear and this has diluted and diminished the distinctiveness of the Z welt footwear by reference to the distinctive features.
Bata and Windsor Smith also deny trade mark infringement.
To the extent to which I refer to the evidence of witnesses hereafter I accept that evidence except where I say to the contrary.
The applicants and their background
The applicants represent two sets of interests, the Griggs interests and the Dr Martens interests. The first applicant Dr Martens Australia Pty Ltd (“DMA”) is the exclusive distributor and seller in Australia of Dr Martens footwear, including the Z welt footwear, manufactured by the second applicant. Previously DMA was the exclusive distributor of Dr Martens footwear in the eastern States of Australia and, with Swan Imports Pty Ltd, was the distributor of Dr Martens footwear in South Australia and Western Australia.
The second applicant R. Griggs & Co Ltd (“Griggs”), is and has been since 1960 the manufacturer in England of Dr Martens footwear including the Z welt footwear. The applicants claim that Griggs is the owner of the goodwill in the trade dress and get‑up of the Z welt footwear.
The third applicant Dr Ing. Herbert Funck (“Dr Funck”) and the fourth applicant, Elisabeth Maertens (“Elisabeth Maertens”) were the proprietors of certain trade marks including “Dr Martens” which, through Dr Martens International Trading GmbH and Dr Maertens Marketing GmbH the sixth and seventh applicants in the Bata and Windsor Smith proceedings, are exclusively licensed to Griggs. Elisabeth Maertens is the widow of, and successor in law to, Dr Klaus Maertens who died in 1988. Dr Funck and Elisabeth Maertens also licence to the fifth applicant Wollaston Vulcanising Company Limited, the manufacture of the air cushioned sole for Dr Martens footwear.
The fifth applicant, Wollaston Vulcanising Company Limited (“Wollaston”), is the manufacturer in England of the air cushioned soles for Dr Martens footwear including the Z welt footwear and sells the soles to Griggs.
The sixth applicant, Dr Martens International Trading GmbH, is the registered proprietor of Australian registered trade mark 641055(25) and since 2 May 1997 the seventh applicant Dr Maertens Marketing GmbH has been registered as the joint proprietor of that trade mark. The trade mark is in the following form:
It is only the rectangle which comprises the trade mark; the words “The ORIGINAL” and “MADE IN ENGLAND” do not form part of it. However it is helpful to show the lay out of the sole markings as they are relevant to a number of issues in the proceedings. This trade mark is often described as the Dr Martens logo or the resistance rectangle. The sixth and seventh applicants are now the registered proprietors of the trade marks “DR. MARTENS” and “DOC’S”.
Each applicant claims to have suffered loss and damage in various ways as a result of the conduct of the respondents in manufacturing and marketing their respective footwear.
Griggs and its predecessors have been involved in the manufacture of footwear in the village of Wollaston in Northamptonshire in England since 1901. The Griggs predecessors over the years have manufactured agricultural boots and military boots which have been used in the First World War, the Second World War and the Korean War. In 1957 the Griggs interests established Wollaston for the purpose of manufacturing vulcanised rubber soles for attachment to boot uppers. The vulcanised rubber sole enabled the use of production methods which resulted in greater output for lower cost than the traditional methods then being used by the Griggs interests. Wollaston has supplied the Griggs interests with rubber soles for use in the manufacture of their footwear.
In the late 1940s and early 1950s Dr Funck and Dr Maertens developed a new sole unit for footwear and a manufacturing process for that sole unit. The sole unit had a structure which comprised a series of separated air compartments which created an air cushioned effect in the sole of the footwear when worn. This air cushioned sole was the subject of a number of United Kingdom patents (now expired) in the names of Dr Funck and Dr Maertens. Wollaston became interested in the patents, the air cushioned sole and its manufacturing process and in late 1959 or early 1960 Dr Funck and Dr Maertens and Wollaston entered into a licence agreement (called a “Utilisation Contract”) whereby Wollaston was granted the rights to exploit the patents and manufacture the air cushioned sole. Under the Utilisation Contract the air cushioned soles which were produced were to have marked on them the words “Dr Martens”. It was separately agreed that footwear made in Germany was to be sold under the trade mark “Dr Maertens” but that the promotion, marketing and sales of the footwear in the United Kingdom and elsewhere could occur if the word “Maertens” was anglicised to “(Dr) Martens”. The Utilisation Contract gave Wollaston the right to sub‑licence the right to manufacture shoes constructed with the air cushioned sole manufactured by Wollaston and it was expressed to operate for an initial term of one year but it was apparently extended either indefinitely or from time to time. It made no provision for the design, style, trade dress or get‑up of the footwear which was to be manufactured with the air cushioned sole.
Development of the Z welt footwear
In early 1960 Griggs adapted the air cushioned sole for use with a footwear upper by a process which involved heat sealing the sole to the upper with a welt and using a large looped bright coloured yellow/yellow‑orange coloured welt stitch thread around the footwear. This created what was said to be a particular “footwear look” which involved a leather upper, a dark welt with a large looped bright yellow/yellow‑orange coloured welt stitch, a light coloured sole with a two‑toned band effect in the sole side view which resulted from the heat sealing of the dark welt with the lighter coloured sole, the consequence being that there was a merging of the dark colour into the light colour. Griggs used a finishing method for the edge of the sole units which had the effect of creating grooves on the side edge of the sole around the footwear. The grooved sole edge resulted from the manner in which Griggs finished or trimmed the sole side edges. As the finishing or trimming occurs there is a variable pressure at the sole side edge which results in fine sole edge grooving with an uneven or irregular “patterning” around the perimeter edge of the footwear at the sole side edge. It is possible to finish or trim the sole side edge by alternative processes which eliminate the grooves and provide a smooth or flattened sole side edge with a more even or regular sole side edge.
The sole had a particular sole pattern called “the DMS sole” which, in general terms, comprised broken ribbing or parallel bars. This footwear look was new to the United Kingdom at the time and quite different in look from any footwear then being made or sold. It is the applicants’ case that this look which incorporates the distinctive features has over the years become distinctive of “Z welt” footwear manufactured by Griggs. The DMS sole was not the only sole used on the Z welt footwear by Griggs. An alternative design was used called the “BEN” or “Commando” sole.
The first item of footwear manufactured by Griggs with the Z welt look occurred on 1 April 1960. It was an eight eyelet boot which incorporated the distinctive features and it was given the style number 1460 representing the date of its first manufacture. Shortly afterwards a shoe was manufactured by Griggs which incorporated the same look and this was given the style number 1461. The letter “Z” was attached as a suffix to these codes, the “Z” referring to any footwear bearing the yellow/yellow‑orange large looped welt stitch. According to Mr Shelton, the deputy chairman of Griggs and the managing director of R Griggs Group Limited, the origin of the yellow stitching on the 1460Z and the 1461Z products came from a whim of Mr W H Griggs.
Since 1960 the soles on the Z welt footwear have had moulded on the instep in the course of Wollaston’s manufacturing process the words “Dr Martens”, the Dr Martens logo and “MADE IN ENGLAND”. On some soles instead of the Dr Martens logo there has been moulded a Swiss cross device with the words “Dr. Martens” and “Air Cushion Sole” surrounding the cross. Since 1960 Griggs has also manufactured non‑Z welt boots and shoes made from soles manufactured by Wollaston and these are not in issue in these proceedings.
Labelling and branding of the Z welt footwear
From its inception the Z welt footwear manufactured by Griggs was branded and labelled in a number of ways. The words “Dr Martens” and “AirWair” with a symbol of bouncing soles were printed on the sock or inner sole of the footwear with the words “MADE IN ENGLAND”. The symbol comprised a representation of a ball with the words “AirWair” through the middle of the ball and the words “with bouncing soles” across the bottom of the ball. This AirWair logo has been displayed on the end of the boxes in which the Griggs Z welt footwear has been packaged since the mid 1970s. From 1987 the words “The Original” were also printed on the sock in a stylised form. Since the 1960s there has been moulded on the instep of the sole the Dr Martens logo and “MADE IN ENGLAND”. From 1987 the words “The ORIGINAL” in a stylised form were also moulded on the instep of the soles made in the DMS sole pattern. There was also attached to the eyelet of the footwear a swing tag with the words “Dr Martens AirWair” and the bouncing soles symbol together with text explaining the features of the Dr Martens footwear.
In the late 1960s and until 1988 the sock inserted in almost all Griggs manufactured Dr Martens footwear was marked with the words - “AirWair With Bouncing Soles” being placed over a bouncing ball and the words “Dr Martens” were placed underneath the AirWair logo. Since 1988 the sock has been imprinted with the Dr Martens AirWair bouncing soles logo below which appear the words:
“The Original
MADE IN ENGLAND
LEATHER UPPER
AIR CUSHIONMAN MADE SOLES”
The AirWair logo has been used in conjunction with the name Dr Martens and with the expression “with Bouncing Soles” in one form or another since the 1960s. The 1460Z boot has had for some time a heel tag with the words “AirWair” and “WITH Bouncing SOLES” in contrasting yellow stitching woven into it.
The labelling of the boxes in which Dr Martens footwear manufactured by Griggs has been exported to Australia and sold has changed over the years. From 1960 until the mid 1980s the packaging was a plain cardboard box with an “AirWair WITH Bouncing SOLES” logo on the front. From the mid 1980s to the late 1980s the cardboard boxes were coloured red, white and blue with the words AirWair and Dr Martens Air Cushioned Soles featured prominently on the box together with the Dr Martens AirWair bouncing soles logo. From approximately 1989 to 1992 the Dr Martens footwear was exported to Australia in a burgundy box which had a logo attached to the end of the box showing the Dr Martens name, the AirWair with bouncing soles logo and the words “export quality” and “Made in England”. During 1992 and 1993 Griggs exported the Dr Martens footwear to Australia in a box bearing the Dr Martens name, the AirWair with bouncing soles logo and the words “Made in England”. From 1993 to the present date Griggs has exported the Dr Martens footwear to Australia in a box bearing the Dr Martens name.
Since Griggs commenced manufacturing Dr Martens footwear it has tied swing tags to the shoes and boots through an eyelet. The swing tag has changed from to time. From the mid 1960s to the mid 1970s the swing tag displayed the AirWair with bouncing soles logo. From the mid 1970s to the early 1980s the swing tag featured a portion of the Union Jack and under it the words “GENUINE Dr Martens AIR CUSHION SOLES MADE IN ENGLAND”. From the early 1980s to the mid 1980s the swing tag displayed the name Dr Martens, the AirWair with bouncing soles logo, the words “MADE IN ENGLAND” and a short narrative of the history of the air cushioned sole and its features. From the mid 1980s to the late 1980s the swing tag displayed the name Dr Martens, the words “MADE IN ENGLAND” and a short narrative of the history of the air cushioned sole and its features. Between 1989 and 1994 the swing tag displayed the words “air cushioned comfort”, the Dr Martens name and the AirWair with bouncing soles logo, the words “with lasting style for all walks of life” and a narrative of the air cushioned sole. From 1994 to the present date the swing tag has displayed the words “Genuine”, underneath it the words “Dr Martens” with the AirWair with bouncing soles logo and underneath it the words “air cushioned comfort”. It also sets out a short narrative of the features of the air cushioned sole.
Licensing arrangements
Initially the manufacture and sale of the Dr Martens footwear constructed with the Wollaston soles was sub‑licensed to Griggs but later Wollaston appointed other companies as sub‑licensees as a result of the demand for Dr Martens footwear. Griggs was a sub‑licensee of Wollaston from 1960 through to 1996 and other sub‑licensees were also appointed for various periods. These included G.T. Hawkins & Co Limited (“Hawkins”) from 1960 to 1993, George J. Cox Ltd from 1960 to 1996 and White & Co. (Earls Barton) Limited (“White”) from 1960 to 1995. These companies manufactured footwear with the distinctive features which was sold in Australia and although the footwear was always branded as Dr Martens each manufacturer packaged its version of the Z welt footwear differently with its own brand such as Griggs ‑ “AirWair”, Accent Footwear Limited - “Dr Martens”, Hawkins - “Astronauts” and White - “Tred‑Air”. There were other sub‑licensees some of whom became wholly owned subsidiaries of Griggs and thereupon ceased their manufacturing activities.
As the standing of the applicants to claim the relief sought is challenged it is desirable to identify the various agreements whereby rights relevant to the manufacture and sale of footwear bearing the Dr Martens trade mark and the Z welt get‑up and trade dress were granted. Confidentiality has been claimed in respect of these agreements and their terms and accordingly I set out the relevant parts of these agreements in confidential Appendix A to these reasons.
Under the agreements commencing with the first licence agreement in 1960 (the Utilisation Contract) royalty payments have been made by Wollaston and subsequently by Griggs to Dr Funck and Dr Maertens and their interests. The Griggs interests are now in complete control of the manufacture and worldwide marketing, sale and distribution of all Dr Martens footwear including the Z welt footwear and any other clothing or other products bearing the Dr Martens trade mark. In 1992 R. Griggs Group Limited was incorporated and became the holding company for the Griggs group of companies.
Between April 1960 and April 1995 Dr Martens footwear manufactured by Griggs was marketed, sold and distributed by Griggs within the United Kingdom and for export. Between April 1995 and January 1997 the air cushioned sole continued to be manufactured by Wollaston which sold it to Griggs for manufacture into Dr Martens footwear. Griggs then sold the completed footwear to AirWair Limited (a Griggs group company) which became responsible for all export marketing, sales and distribution worldwide of the Dr Martens footwear manufactured by Griggs. Griggs also sells footwear to AirWair UK Ltd which distributes Dr Martens footwear in the United Kingdom. After the restructuring in January 1997 the air cushioned sole has been manufactured by Griggs as has the Dr Martens footwear which Griggs sells to AirWair Limited. It, in turn, sells to AirWair UK Ltd which is responsible for export marketing, sales and distribution.
Although the Griggs companies entered into a number of licensing and sub‑licensing agreements for the manufacture of Dr Martens footwear, aspects of trade dress were not a part of those licensing agreements until 1997.
Griggs has a fully utilised manufacturing capacity of ten million pairs of Dr Martens footwear per annum. The other sub‑licensees combined had a manufacturing capacity of approximately six hundred thousand pairs of Dr Martens footwear per annum. Of the ten million pairs of Dr Martens footwear produced by Griggs per annum approximately 65% is Z welt footwear possessing what are said by the applicants to be the distinctive features.
History of Dr Martens in Australia
Dr Martens products were introduced to Australia through Swan Imports Pty Ltd (“Swan Imports”), a company run by an experienced footwear operator Mr Wolf Schladow. Swan Imports began importing and distributing Dr Martens branded industrial footwear during the 1960s. It obtained its products from Griggs. In the late 1960s Swan Imports began to receive shipments of the 1460Z boot and 1461Z shoe which incorporated the distinctive features and the Dr Martens logo. Swan Imports had no written distribution agreement but it continued to import Dr Martens footwear until April 1997 when its non‑exclusive Western Australian distributorship agreement with Griggs was terminated.
Swan Imports sold the Dr Martens footwear it imported not only in Western Australia but also in Sydney, Melbourne and Adelaide. Mr Schladow estimates that initially, imports would have been under 1000 pairs per year but from the mid 1980s the quantities imported increased so that by 1992 of the order of 16,000 pairs per year were imported from Griggs by Swan Imports. By 1993 Swan Imports had imported over 80,000 pairs of Dr Martens footwear. Most of the Dr Martens footwear imported up to the mid 1980s by Swan Imports from Griggs was Z welt footwear and from 1981 through 1996 around 90% of the Dr Martens footwear imported and distributed by Swan Imports comprised Z welt footwear. Over 140,000 pairs of Dr Martens footwear were imported and sold by Swan Imports during this period.
Swan Imports was not the only importer of Dr Martens footwear in the 1970s. Mr Bernard Moffat who has been in the footwear trade since 1945 commenced working for David W Griffiths Pty Ltd in 1974 which distributed high quality, expensive, imported ranges of footwear including the brand “Cox Bros” (now George J Cox). At that time Cox Bros distributed footwear branded “Dr Martens” which was obtained from Griggs. Mr Moffat recalls that at that time, 1974, the Dr Martens branded footwear had the distinctive features.
From 1974 David W Griffiths Pty Ltd sold relatively small numbers of Dr Martens Z welt boots and shoes. From Mr Moffat’s observations in the 1970s Dr Martens footwear was sold in disposal stores mainly in New South Wales, having been supplied by Swan Imports in Perth. According to Mr Moffat in the 1970s and into the 1980s Dr Martens footwear was purchased by two groups, namely people who, for work reasons, required a tough, durable and comfortable boot often with a steel toe cap who were on their feet for long periods of time and young males involved in the skin head movement who wore the Z welt eight eyelet lace‑up boots as part of the image or uniform of their movement.
In 1979 the David Griffiths business was acquired by Suckling Industries Ltd which had a subsidiary Accent Footwear Limited which at that time was importing Dr Martens footwear from Griggs into New Zealand. The David Griffith business was taken over by a new company David W Griffiths (1979) Pty Ltd (the first applicant DMA, which later changed its name) which Mr Moffat managed until 1988. In 1980 it commenced selling the Griggs range of Dr Martens footwear including the Z welt footwear with the distinctive features which continued to appeal to the same two groups of people. During the 1980s the image of Dr Martens footwear started to change and sales extended to a broader range of customers other than skin heads or for work requirements. Sales began to be made to more “up‑market” footwear retailers.
Throughout the 1980s David W Griffiths (1979) Pty Ltd expanded the range of disposal store and retail store customers to whom it sold Dr Martens footwear. Approximately 95% of the footwear sold was Z welt footwear.
Over the years there have been changes in the emphasis of the brand given prominence in relation to Dr Martens footwear. Throughout the 1970s and the early 1980s brands such as “AirWair” (Griggs), “Tred‑Air” (White) and “Astronauts” (Hawkins) were given greater prominence by the manufacturers. The words “Dr Martens” were not on the soles of those brands but were usually used on the swing tag. During the later 1980s and into the 1990s the Dr Martens mark was given greater prominence.
In 1984 Suckling Industries Ltd acquired Radcliff Footwear Limited which employed Mr James Duell who had twenty years experience in the footwear manufacturing industry. Suckling Industries Ltd subsequently changed its name to Accent Group Ltd. Thereafter Mr Duell managed DMA’s Australian footwear business. Suckling Industries Ltd entered into a distribution agreement with Griggs on 9 November 1983 which gave it distribution rights in Australia for Dr Martens footwear until April 1997 when a new distribution agreement was entered into. Since 1 April 1997 Griggs has granted DMA exclusive distribution rights for Dr Martens footwear throughout Australia (save for Western Australia where the right is not exclusive).
During the 1980s DMA continued to import and distribute Dr Martens footwear and in particular the Z welt footwear. From 1988 when restrictions on the importation of footwear manufactured in the United Kingdom were removed the quantities of Dr Martens footwear imported by DMA and sold in Australia increased significantly. It is not necessary to set out in any detail the value or quantities of Dr Martens products imported into Australia by DMA during the 1980s and the 1990s up to the commencement of these proceedings. Suffice it to say that the quantities ran into many tens of thousands of pairs of footwear of which approximately 80% was Z welt footwear. A substantial increase in those sales occurred during 1990, 1991 and 1992. The sales for the year ended April 1991 more than doubled in the year ended April 1993. However, the DMA figures do not represent the total of sales in Australia of Dr Martens footwear manufactured by Griggs as Swan Imports was also distributing footwear manufactured by Griggs.
Between 1989 and 1993 and continuing through to 1997 substantial quantities of Z welt footwear were sold by Griggs and exported to Australia. Griggs was not the only sub‑licensee exporting Dr Martens footwear to Australia and between April 1992 and September 1995 substantial quantities were also sold by other sub‑licensees. Between April 1992 and September 1995 Griggs through AirWair Limited exported more Dr Martens footwear to Australia than the other sub‑licensees. As at July 1995 AirWair Limited exports to Australia were about four times greater than the combined total of the other sub‑licensees. One of those sub‑licensees, George J Cox Ltd not only exported Z welt footwear manufactured by it to Australia, but also purchased Z welt footwear from Griggs and sold that footwear to Figgins.
In the words of the 1995 Dr Martens catalogue:
“In a little over 30 years, the name Dr. Martens has written itself into the history of popular culture as one of the most distinctive, popular and biggest selling footwear brands in the world - an icon of the 20th Century.”
There was a virtual unanimity amongst all the witnesses that Dr Martens footwear had achieved immense success and, in particular, success in relation to the Z welt style which had the distinctive features.
Promotional activity in relation to Dr Martens footwear
During the 1970s and up to the late 1980s little television, radio or print media advertising promoting Dr Martens footwear was carried out but the sales of the Z welt footwear increased over this period.
Although it does not appear that the applicants supplied significant promotional material to the retailers prior to around 1993, there were from time to time products in the nature of promotional materials supplied. Over the years Griggs supplied Swan Imports with promotional material bearing the words “Dr Martens” which was passed on to retailers. Some of this promotional material in the early 1990s referred to the fact that customers should not accept any other brand and should demand the original. This tends to support other evidence relied upon by the respondents that imitations and look‑alikes were available on the market for some years prior to 1992.
In 1993 Griggs established an intellectual property department to protect the reputation and goodwill in the Dr Martens footwear and the Z welt footwear and these proceedings are one part of a pattern of legal proceedings taken in a number of countries in relation to footwear which the applicants say imitates the Z welt footwear. Proceedings have been taken in several countries and numerous consent judgments have been obtained in which manufacturers and retailers have acknowledged the proprietary rights Griggs has in the distinctive features of the Z welt footwear. For example, on 25 June 1996 Bata Company (NZ) Limited as part of a settlement acknowledged that R Griggs Group Limited (which definition included all its subsidiaries) had valuable intellectual property rights in the distinctive trade dress of the 1460Z boot and the 1461Z shoe which trade dress was described as the “overall configuration” of the footwear, yellow welt stitching, grooved sole edge, sole side view including darker and lighter colour bands, the undersole pattern (the DMS sole) and in the case of the boot, a black heel tab. Bata Company (NZ) Limited also acknowledged that the “Danny” footwear which it had purchased from Bata (the same footwear as the subject of the Bata proceeding) is deceptively similar to the Dr Martens footwear and breached trade marks vested in R Griggs Group Limited. Other consent judgments included as part of the distinctive trade dress or distinctive features the partially transparent sole, the angled heel and thick laces. These acknowledgments and consent judgments are of interest so far as a consideration of the distinctive features is concerned but they are not binding upon any of the respondents nor do they create any estoppel or constitute a binding admission which can be used in these proceedings.
Until August 1995 the ownership of the trade mark “Dr Martens” in Australia was in dispute. In 1983 Figgins, the first respondent in proceeding VG 958 of 1995, had lodged a trade mark application for the words “Dr Martens” with respect to footwear. Dr Funck and Dr Maertens were successful in opposition proceedings and on appeal by Figgins the proceeding was resolved by a consent judgment that ownership of the Dr Martens trade mark was owned by Dr Funck and Dr Maertens. Mr Shelton said that it was for those reasons that letters of demand were not sent to various footwear manufacturers and distributors in Australia until October 1995. The four proceedings were commenced on 21 December 1995.
DMA says that the reason for the limited promotional activities and advertising of Dr Martens footwear in Australia was uncertainty as to the proprietorship of the Dr Martens trade mark in Australia because of the legal proceedings over the trade mark. Those proceedings were only resolved in August 1995. DMA says there was also some uncertainty about the ongoing nature of DMA’s rights as a distributor of Dr Martens products. It was only after September 1995 that DMA undertook an active promotional and marketing campaign and there are a number of examples of such promotional activity in evidence. However, there is evidence that from 1988 through to 1997 advertising and promotional articles for Dr Martens footwear was carried out by DMA in an Australasian footwear trade magazine “Footwear News Australia”. At an early stage this material from time to time included warnings to retailers about imitations. From time to time advertising of Dr Martens footwear was undertaken by retailers as well as DMA.
From time to time point of sale material was supplied by Griggs and DMA to retail customers but this appeared to be of a desultory kind and the promotional activities were only substantially upgraded around August 1995. Since 1995 every retailer of Dr Martens footwear has received a pack of point of sale material including posters, show cards and the like and DMA has established a substantial merchandising program which focuses on the name Dr Martens, the Dr Martens logo and the distinctive features to which I have referred.
Sales of Z welt footwear in Australia
A number of documents were presented by the parties for the purpose of establishing the quantities of Z welt footwear, imitation and look‑alike footwear and the respondents’ footwear sold in Australia over the years. The parties could not agree on the quantities because in some cases estimates had to be made of the quantities of Dr Martens footwear sold which had the Z welt distinctive features. For present purposes nothing significant turns on whether the quantities identified were accurate or approximate. Mr Duell a director of DMA, estimated that 80% maybe up to 85% of United Kingdom sourced products sold by DMA were Z welt products and gave varying estimates of 65% or 70% and 75% to 80% of New Zealand products as being Z welt products. I proceed on the basis that I adopt the figure of 80% for United Kingdom sourced products and 75% for New Zealand sourced products. The amount of Z welt footwear sold by DMA in Australia between 1982 and 1997 is set out in Confidential Appendix B.
During the 1980s and 1990s some thousands of pairs of footwear were also sold by other sub‑licensees of Wollaston such as White (Tred‑Air and Solovair), George J Cox and Hawkins (Astronaut). Significant quantities of imitation or look‑alikes were also sold in Australia during the same period. Some of these quantities are set out in Confidential Appendix C.
It was also said that Raben Footwear in or about 1991 had sold “seconds” or reject Dr Martens footwear but such sales are of marginal relevance and significance to the main issues in these proceedings.
By 1991/1992 there was an enormous demand for Dr Martens footwear particularly among customers in the 15–25 years age group. As one of the respondents Mr Craig Mance put it:
“A major fad in footwear had developed by this time under the Dr Martens name and the local industry had to respond, which it did …”
The footwear was attractive to young people because of its appearance and get‑up and it was identified by potential purchasers and consumers by the appellation “Docs” and less frequently “Doc Martens” or “Dr Martens”. (I refer hereafter to potential purchasers and consumers who were interested in purchasing.)
What are the distinctive features of the Z welt footwear?
In the various amended statements of claim the applicants claim that the footwear manufactured pursuant to the agreements with Wollaston has what are called “the footwear features”. These features are a leather upper, a synthetic or plastic welt and a synthetic or plastic one piece moulded sole and heel of some 15mm thickness, the welt being welded to the sole by a heat sealing process, and with stitching securing the welt to the leather upper. It is also said that the Z welt footwear has, in addition to the footwear features, what are called for the purposes of the proceedings and what I have earlier defined in these reasons as the “distinctive features”.
The applicants claim that continuously since the late 1960s footwear made with the moulded sole (which includes the Z welt footwear) has been advertised promoted, marketed and sold under and by reference to the marks “Dr Martens”, “DOC’s”, “Doc Martens’, “Docs” and the Dr Martens logo.
The applicants claim that since the early 1980s this footwear has also been advertised, promoted, marketed and sold by the use of some further words and logos namely a stylised representation of the words “The ORIGINAL”, the words “Export Quality” in a stylised form, the words “Air Cushioned Sole” or “Air Cushioned Shoe” and the trade mark “AirWair” in a stylised form and the Dr Martens AirWair logo.
It is important to bear these allegations in mind when asking the question – what does the evidence show to be the distinctive features? - because the respondents say that one cannot determine what are the distinctive features and whether the features are in fact distinctive of the Z welt footwear and the Dr Martens trade source without considering them in conjunction with the marks and logos used by the applicants.
There was some confusion or, at the least, ambivalence by the applicants as to the nature and the extent of the distinctive features relied upon as identifying the Z welt footwear. In his principal affidavit Mr Shelton described the distinctive features of the Z welt footwear in the same terms as set out in the statements of claim. In the course of cross‑examination Mr Shelton described the principal features of the Z welt footwear as being the yellow stitching, the black upper, the welt, the grooved sole edge, the angled heel and the sole pattern. However, in depositions given for the purpose of pending Canadian proceedings, he only referred to the yellow stitching, the ribbed sole edge and the DMS sole pattern. His explanation for the difference between the two accounts was that he gave a more comprehensive answer in his affidavit in these proceedings. When it was put to him that he thought that only three features were important he disagreed and referred to the heel tab of the boot as an important feature but was only prepared to say that the angled heel was a feature rather than an important feature. I note also that in the Canadian proceedings there was only a reference to the DMS sole as being an important feature; there was no reference to the BEN or Commando sole. Mr Shelton agreed that the Commando sole was not a feature of the Dr Martens trade dress and said that he would reject the Commando sole as a distinctive feature of Dr Martens footwear.
Mr Shelton also said in cross‑examination that he would dismiss the thick laces as a distinctive feature although he said that when used in combination with the distinctive features they added up to an overall distinctiveness of the Dr Martens footwear. However, this is not the position taken by the applicants in their statements of claim nor in the primary evidence filed on their behalf where they relied on the thick coloured laces as a distinctive feature. Further, Mr Shelton did not refer to the two‑toned side profile or transparent or translucent sole as being a distinctive feature. Mr Shelton said that the features identified in the Canadian proceedings and the Australian proceedings were essentially the same but I do not consider that this is correct.
Although the applicants rely upon distinctive features of the Z welt construction in relation to the 1460Z boot and the 1461Z shoe, it was apparent that the Z welt product covers many different colours, many different types of leather upper and many configurations. Although the vast majority of the Z welt product produced (95%) is yellow stitched, from time to time black, brown, navy, blue, red, rainbow and maybe white stitching was used according to Mr Shelton. However, he did not regard these colours as distinctive of the Z welt footwear and only regarded the yellow stitching as distinctive of the Z welt footwear.
It is apparent that it is the yellow stitching which lies at the core of the applicants’ case. This was made clear by Mr Shelton when he said he would object to a yellow welt stitch on a black Derby style boot. Although the shade and tone of the yellow stitch varied over the years, the applicants now use a standardised yellow colour. Further, although the vast majority of welts used by Griggs were black they had, from time to time, used other welts such as brown or translucent brown similar to the sole.
Mr Shelton said that the use of consistent yellow thread goes back prior to 1990 and that 50% of the shoes manufactured by Griggs bore each and every aspect of the trade dress. I took this to be a reference to 50% of the Z welt footwear produced.
Mr Shelton accepted that the 1460Z boot was a Derby boot which was common to the trade. He was also aware that contrasting stitching had been used in the 1950s but said that at that time yellow stitching was not a common colour. However, as Mr Shelton pointed out, the applicants were not pretending that they were the first to use contrast stitching. They adopted what was used in the industry at the time and stitched in yellow which was not particularly common. The applicants’ point rather was that yellow stitching taken in conjunction, and in combination, with the other distinctive features results in a get‑up which is distinctive of the Dr Martens products. Mr Shelton’s objection was not to contrast stitching around the sole but rather to the use of yellow stitching around the sole if the manufacturer was trying to imitate the Dr Martens products.
In the early 1990s Griggs started to expand its range when it introduced various categories of footwear. The classic range contained the elements of the trade dress relied upon in these proceedings. There was also a children’s range, an industrial range with a steel cap, a terrain range and a catwalk range which was comprised of unusual fabrics and leathers. The idea of the expanding of the range was to broaden the customer base. All these products were described on the footwear as “The ORIGINAL”.
Mr Shelton agreed that the use of Griggs’ soles and angled heels in a wide range of shoes was common and had been used since the 1950s. However he did not agree that Griggs’ soles and heels and angled heels and Commando sole combinations were common since the 1950s. He said that the angled heel was not common with the Commando sole, although this had been done earlier. Again, not much point is served by this sort of analysis as the applicants do not claim originality in the individual distinctive features but rather they claim originality in the combination of all the distinctive features as being an identification of trade source.
A matter of significance raised with Mr Shelton was the difference in the description of the distinctive features in the Canadian litigation and these proceedings. Mr Shelton said that the Australian lawyers had drawn up the list of distinctive features and given them to him to sign. He said he was not the author of the distinctive features in the Australian proceedings or in the Canadian proceedings. However, I would expect that Mr Shelton would be able to identify with a degree of certainty and precision the particular items or features which he regarded as distinctive of the Dr Martens footwear. This difference was said by the respondents to cast doubt upon the strength of the applicants’ case as to the relevant reputation in the particular distinctive features. One would expect the distinctive features to be the same in whatever country or places the boots and shoes are presented. The distinctive features should remain the same but the nature of their description may vary depending upon the appropriateness of the language and the particular context. However it is apparent that a different view has been taken in Canada than in Australia.
This is also confirmed by the letter of demand dated 6 October 1995 which was sent to Bata. Mr Shelton was taken through the distinctive features relied upon in that letter and it was apparent that the distinctive features there relied on were an overstatement of the applicants’ case. Mr Shelton said that that letter had been sent on his instructions but that the reason why the facts were not correctly stated in the letter in relation to the Dr Martens footwear was due to one or two misunderstandings. He agreed that the claims in the letter somewhat overstated the applicants’ position. For example, the feature being the yellow welt stitch thread which sews the welt to the insole prior to the heat sealing process was not correct in relation to the New Zealand product produced by Accent Footwear Limited. The claim that uppers are made from black leather was not correct as the uppers are not exclusively black leather. The claim that a distinctive feature is the BEN cleated sole was not accurate as Mr Shelton acknowledged that the BEN sole was not distinctive of the Dr Martens footwear. The reference to the heel tag was not a feature as such other than as being a vehicle for the identification of the name Dr Martens. The words “The ORIGINAL” in a stylised logo were not used on the BEN soles.
In April 1995 Griggs applied to the United Kingdom Patent Office to register a trade mark in relation to articles of footwear. The mark consisted of:
“a 3-dimensional article of footwear incorporating the following features: a heel tab, sole bearing longitudinal ribbing, yellow welt stitching, the welt being darker in colour than the sole and an under sole, all of the shape and configuration as shown in the above representations.”
The representation of the mark displayed the DMS sole and a 1460Z boot. On 3 October 1995 the Patent Office wrote to Griggs’ patent agents stating that the features of the footwear being claimed were in fact commonly known and used. It was stated that the application was accepted in error and that the Registrar intended to refuse the application. A number of objections to the application were lodged. The significance of this trade mark application is that it does not incorporate the distinctive features in the terms relied upon in these proceedings. It does not refer to the welt stitch thread being sewn in a large and visible looped stitch, nor to the grooved sole edge. Mr Shelton said the trade mark application was still current and that his company had submitted further evidence in the last few weeks before he was cross‑examined.
As I have noted earlier, notwithstanding the letter of demand to Bata, Mr Shelton agreed that the BEN or Commando sole was not a distinctive feature of the Dr Martens product and he said that the Australian proceedings was the first time the BEN sole was said to be a distinctive feature. It is not being relied upon in the Canadian proceedings. Further, it was not relied upon or referred to in any of the consent judgments which have been obtained. In cross‑examination Mr Shelton said that it had been his company’s consistent position that the BEN or Commando sole was not a distinctive trade dress item or feature. Mr Shelton said that he thought they had gone “over the top” by saying that the BEN sole was a distinctive feature and he said that was always his position, notwithstanding the fact that in paragraph 40.6.2 of his affidavit he identified the BEN or Commando sole as a distinctive feature of the Z welt footwear. His explanation for this inconsistency was that he “overlooked” that particular paragraph. It was curious that Mr Shelton said that he was not aware that in these proceedings it was being alleged the BEN sole was a distinctive feature as was the DMS sole. He said it only came to his knowledge when Mr Garde QC, senior counsel for the Bata respondents, pointed it out during cross‑examination. I find this surprising having regard to paragraph 40.6.2 of his affidavit. It is not unreasonable to assume that Mr Shelton read the affidavit before he signed it. Indeed he said that he reviewed the affidavit. He also said his reference in of his affidavit to thick laces being either yellow or black, brown and yellow or black being a distinctive feature was also “over the top” although he later maintained that when used in combination with the other features they added up to an overall distinctiveness of the Dr Martens footwear.
I certify that the preceding four hundred and fifty‑nine (459) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Goldberg Associate:
Dated: 16 April 1999
Counsel for the Applicants: Mr R C Macaw QC and Mr B J Hess Solicitor for the Applicants: Coltmans Price Brent Counsel for the Bata parties: Mr G H Garde QC and Mr M A Roberts Solicitor for the Bata parties: Septimus Jones & Lee Counsel for the Figgins parties: Mr C D Golvan Solicitor for the Figgins parties: McKean & Park Counsel for the Windsor Smith parties: Mr C D Golvan Solicitor for the Windsor Smith parties: Baldwins Counsel for the Rivers parties: Mr B N Caine Solicitor for the Rivers parties: Freehill Hollingdale & Page Dates of Hearing: 27-31 October 1997
3, 5, 6, 7, 17-21, 25-28 November 1997
1-5, 8, 9 December 1997
2-6, 9, 10 February 1998Date of Judgment: 16 April 1999
24
0
0