Kolotex Glo Australia P/L v Sara Lee Personal Products (Australia) P/L t/a Hilton Hosiery

[1993] FCA 364

KOLOTEX GLO AUSTRALIA PTY LIMITED v. SARA LEE PERSONAL PRODUCTS (AUSTRALIA)
PTY LIMITED t/a HILTON HOSIERY
No. G153 of 1993
FED No. 364
Number of pages - 6
Trade Marks
(1993) AIPC 91-104

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Wilcox J(1)

CATCHWORDS

Trade Marks - Registration of the words "Sheer Relief" as a trade mark in connection with women's hosiery - Use by the respondent of the words in the phrase "Sheer Relief For Active Legs" - Use in connection with the marketing of sheer pantyhose and stockings - Whether the words "Sheer Relief" are merely descriptive of the goods - Whether the words are being used by the respondent as a trade mark.

Trade Marks Act 1955, ss.24, 26 and 62.

Kolotex Glo Australia Pty Limited v Sara Lee Personal Products (Australia) Pty Limited t/a Hilton Hosiery

HEARING

SYDNEY, 25 and 26 May 1993

#DATE 3:6:1993

Counsel for the Applicant: D M Yates and S Burley

Solicitors for the Applicant: Webeck Farland Pender

Counsel for the Respondent: R J Webb

Solicitors for the Respondent: Darvall McCutcheon

ORDER

THE COURT ORDERS THAT:

1. The respondent, its servants and agents be restrained from infringing registered trade mark no. A417123 and, in particular, from using the trade mark "Sheer Relief" in the course of trade in relation to women's hosiery.

2. Within 28 days or such further time as the parties may agree in writing or the Court allow, the respondent deliver up on oath to the applicant, or destroy under the supervision of the applicant, all packaging and promotional materials used in connection with women's hosiery which contain the words "Sheer Relief".

3. The applicant's claim for damages and/or an account of profits be reserved.

4. The respondent pay to the applicant its costs of the proceeding incurred up to the making of these orders.

5. The matter be stood over for mention at 9.30am on Wednesday, 14 July 1993 with liberty to any party to apply in the meantime on 2 days' notice.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. (See also Order 37 rule 2(3)).

JUDGE1

WILCOX J The parties to this proceeding are competitors in the hosiery trade. For over 20 years the applicant, Kolotex Glo Australia Pty Limited, has marketed lines of pantyhose and stockings styled "Sheer Relief". The lines have proved highly successful, annual sales over recent years being in the order of two million units. The products are sold throughout Australia, and in New Zealand, through department, speciality and discount stores and some pharmaceutical chains.

1. In 1984 a company associated with the applicant registered the name "Sheer Relief" in Part A of the Register of Trade Marks kept pursuant to the Trade Marks Act 1955. The registration was in respect of hosiery (Class 25). The applicant for registration apparently disclaimed any right to the separate exclusive use of the words "sheer" and "relief" and the registration was conditioned accordingly. In 1986 the trade mark was assigned to the applicant.

2. The respondent to the proceeding is Sara Lee Personal Products (Australia) Pty Limited. That company trades as Hilton Hosiery. It manufactures and distributes a range of hosiery products under the name "Kayser". During 1992 the respondent decided to market lines of pantyhose and stockings which would be directly competitive with Kolotex "Sheer Relief". In an internal memorandum, called a Development Work Request and dated 27 July 1992, Alison Saunders, the Product Manager of Hilton Hosiery, gave instructions for the development of the new product. She identified the project as "Sheer Relief copy". She described the objective of the project in this way: "Copy Sheer Relief exactly". Against the words "New Product Description", she wrote "As per Sheer Relief". She noted that the range would include pantyhose and stockings.

3. Even before the date of this memorandum, Ms Saunders consulted Hilton Hosiery's advertising agents in relation to the promotion of the new product. Various names were discussed; it is not necessary to recount the detail. By the end of September 1992, Hilton Hosiery had decided that the new products would be called "Sheer Support". There had been discussion about a sub-title or caption, the proposal at that stage being that the packaging bear the words "True Relief for Active Legs". Shortly after the end of September, the relevant officers of Hilton Hosiery decided to substitute "Sheer" for "True".

4. The new products were launched early in 1993. Both products were marketed in cardboard packets featuring on their front a picture of a smartly-dressed young woman against a city background. In the case of each product, the word "Kayser" was printed in large block letters above the photograph. In each case, underneath that word, the title "Sheer Support" was printed, using large, bold running script. In the case of the pantyhose, but not the stockings, there appeared between the words "Sheer Support" and the photograph, in smaller block letters, the words "Sheer Relief for Active Legs". The front of the packs indicated whether the product they contained was pantyhose or stockings and itemised three features: cotton gusset, reinforced heel and reinforced toe.

5. The backs of the packs were substantially similar, except for the reference to pantyhose or stockings as the case might be and different information about sizes. In each case the titles "Kayser" and "Sheer Support" were used. These titles were followed, in the case of pantyhose, by the words, in prominent but smaller block letters, "Sheer Relief For Active Legs" and, in the case of stockings, "Sheer Relief For Active Legs That Doesn't Show".

6. The titles on the backs of the packets were followed by some descriptive material, including the following two sentences in the case of pantyhose:
   

"Compression is greatest at the ankle, where it's needed the most, and decreases up the leg. This unique process brings sheer relief for active legs and delivers support that is sheer." (Original emphasis)

1. In the case of the stockings, the same two sentences were used, except that the concluding phrase was "that doesn't show".

2. The applicant objected to the respondent's use, on its packaging, of the words "Sheer Relief". In a letter sent by its patent and trade mark attorneys to the respondent on 25 February 1993, it contended that this use was an infringement of its trade mark, as well as being actionable under the Trade Practices Act 1974 and the various State Fair Trading Acts. The attorneys called upon the respondent to cease using the words. The respondent declined to do so. On 9 March 1993 its patent and trade mark attorneys responded with a letter in which they asserted that the words "Sheer Relief" were not used by their client as a trade mark but merely as part of a phrase descriptive of its products.

3. On 18 March 1993 the present proceeding was instituted. The Statement of Claim filed that day identifies three causes of action: infringement of the applicant's trade mark, passing off and breaches of ss.52 and 53 of the Trade Practices Act.

4. The respondent filed a Defence raising a number of issues, most of that are not now pressed. But they include two claims that are pressed: "that the expression 'Sheer Relief' ... is and at all material times has been a phrase descriptive of the character or quality of hosiery" and that its use of the words was not use as a trade mark. The respondent also filed a Cross-claim seeking an order of expungement of the registration of the applicant's trade mark. But this claim was abandoned at the hearing. No question now arises regarding the validity of the registration. There never has been an issue regarding the assignment of the registration to the applicant.

5. Having regard to the respondent's concession concerning the validity of the registration of the trade mark it is not necessary for me to deal at length with the elements of registrability. Words may only be registered as a trade mark if they are inherently capable of functioning as such and are in fact inherently adapted to distinguish the applicant's product (Trade Marks Act ss24, 26). In relation to inherent capability, counsel for the applicant put a submission relating to the meaning of the mark:
   

"The mark is for a combination of words. The mark is a pun. The reference to Sheer can convey, on the one hand, the translucent or diaphanous nature of the fabric, yet, on the other hand, qualify Relief in the sense of the relief being ... absolute or unqualified. Relief conveys a freedom from tiredness or fatigue. Thus each word of the combination can work separately but also as a qualification for the other which enhances the meaning of each. The combination is a clever play on words which does not have an exclusive meaning but displays an attractive plurality of meanings. The combination is not a convenient description of the goods themselves. That is not their ordinary signification; without significant use the combination does not describe any particular article."

1. Counsel for the respondent did not dispute that the word "Sheer" had a double meaning. But he did dispute the contention that the term "Sheer Relief" was not descriptive of the goods. He said that the articles were sheer, in the sense of translucent or diaphanous, and that they were so designed as to provide wearers with relief from tiredness. Consequently, he argued, the words informed potential purchasers of the nature of the goods.

2. I cannot agree that the words "Sheer Relief" constitute a description of the goods. I accept that the word "sheer" is an adjective apt to describe them. If it were followed by a suitable noun, such as "pantyhose", "stockings" or a more general word like "garments", the resultant combination of words would clearly be descriptive of the goods. But the word "relief" does not describe the goods themselves; rather, the condition said to be experienced by their wearers.

3. In Mark Foy's Limited v Davies Coop and Company Limited (1956) 95 CLR 190 one of the issues that the High Court of Australia had to determine was whether the words "Tub Happy" were merely descriptive of articles of clothing manufactured by the respondent. A majority of the Court held that they were not, notwithstanding that the words conveyed an allusion to washability. Williams J, with whom Dixon CJ agreed, accepted at 201 that the words were intended to contain a meaning. He added: "And it may not be hard to find out that meaning but the words do not refer in any ordinary sense, laudatory or otherwise, to any character or quality of articles of clothing, still less do they do so directly".

4. The present case is even stronger, from the viewpoint of the registered owner of the trade mark. In Mark Foy's case the critical words at least attempted to refer to a characteristic of the clothing, washability; although in figurative language. But the word "relief" does not refer to a characteristic of the respondent's products. I reject the respondent's defence that the subject words are used descriptively.

5. The respondent's alternative defence is more strongly arguable. Counsel says that, in packaging its products, the respondent did not use the words "Sheer Relief" as a trade mark; it merely included these words in a description of the benefit of using the products. As counsel points out, "sheer" and "relief" are each ordinary English words. The combination of the two words may be aptly used to describe a condition of absolute or complete release from worry or oppression, including physical tiredness.

6. Section 62(1) of the Trade Marks Act provides:
   

"A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or the registered user of the trade mark using by way of permitted use, uses a mark which is substantially identical with or deceptively similar to, the trade mark, in the course of trade, in relation to goods or services in respect of which the trade mark is registered."

1. It will be noted that, in terms, this sub-section requires merely that the registered trade mark, or a mark substantially identical with or deceptively similar to the registered mark, be used "in the course of trade", in relation to the goods or services in connection with which the mark is registered. However, in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 the Full High Court held that the use referred to in s.62(1) is limited to a use of a mark as a trade mark. It is not an infringement of the registered trade mark to use it otherwise than as a trade mark, for example in the course of comparative advertising: see Irving's Yeast-Vite Ltd v Horsenail (1934) 51 RPC 110. In Shell Kitto J, with whom Dixon CJ, Taylor and Owen JJ agreed, explained the meaning of the concept of using a registered mark as a trade mark. At 425 he posed the question -
   

"whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant" (the alleged infringer) "was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?"

1. In the earlier Mark Foy's case it was argued on behalf of the respondents that they were not using the words "Tub Happy" as a mark. The submission was rejected, Williams J saying at 205 that the respondents were "emphasising them in relation to their own cotton garments for the purpose of indicating a connection in the course of trade between the goods and themselves". Dixon CJ agreed with this.

2. In relation to the question whether the respondent is using the words "Sheer Relief" as a trade mark, I find it helpful to bear in mind two passages in the judgments given in the United Kingdom Court of Appeal in J B Stone and Co Limited v Steelace Manufacturing Company Limited (1929) 46 RPC 406. This decision has been cited with apparent approval in High Court judgments. At 415 Lord Hanworth MR dealt with the position arising where the words are ambiguous in their import:
   

"I think the proprietor of a registered trade mark is entitled to make use of that trade mark upon and in connection with the goods in respect of which it is registered, and his right of property is to prevent any other person making use of that trade mark upon or in connection with goods in such a manner as to indicate and for the purpose of indicating that they are the goods of the manufacturer who is entitled to that trade mark. Other persons are not entitled to use this ambiguous phrase unless it is plain that it is not used by them as indicating the Plaintiffs' goods."

1. It will be noted that his Lordship thought it an infringement for a person who is not the registered owner of the trade mark to use the mark to suggest that its goods were those of the registered owner. This is the converse case to that postulated in Shell and Mark Foy's.

2. At 417 Lawrence LJ dealt with a different point, the significance of the registered mark being a fancy word:
   

"In my judgment it is absurd to say that the registration of the fancy word 'Alligator' in respect of steel belt lacing interferes with the use by the Defendants of a bona fide description of the character and quality of their steel belt lacing. It is admitted that the word 'Alligator' has up to the present time been used upon or in connection with the goods manufactured by the Plaintiffs and upon or in connection with no other goods; and further, it is proved that the Defendant themselves have for several years past carried on their business of manufacturing and selling steel belt lacing without using that word. In my opinion the object of Section 44 was to safeguard traders in cases where the registered trade mark consisted of more or less descriptive words forming part of the ordinary English language, without the use of which other traders would find some difficulty in describing certain qualities of their goods; but was never intended and does not operate to enable a trader to make use of a rival trader's registered trade mark consisting of a fancy word having no reference to the character and quality of the goods in order more readily to sell his own goods."

1. It seems to me that this passage may be applied to the facts of the present case. In its context, and taking advantage of the double meaning of the word "sheer", the registered mark is a fancy word. The evidence shows that the respondent has marketed sheer pantyhose and stockings for many years. But it has not previously found it necessary to use the words "sheer relief" in order to describe its products.

2. Having regard to the principles indicated in the authorities I have mentioned, I have reached the conclusion that the words "Sheer Relief" contravene s.62. It seems to me that the words are being used by the present respondent in such a manner as to indicate that they are connected in some way with the goods produced by the applicant. That this is the nature of the use is most clear in relation to the pantyhose, where the phrase "Sheer Relief for Active Legs" is used three times. The first two uses are in the form of a sub-heading or caption immediately following two other titles, "Kayser" and "Sheer Support", each of which is obviously intended as an identification of the goods. The phrase "Sheer Relief for Active Legs" acts as a third title or caption. It does so by using two catchy and memorable words, which contain a clever double meaning and are already well-known in the trade. Having regard to the evidence that the respondent set out to copy the applicant's product exactly, there can be little doubt that its intention was to appropriate, if it could, the reputation attaching to that sub-title. It appears to have achieved some success in that endeavour. There is evidence of two incidents, in different stores, where customers picked the respondent's product from the display shelves in the belief that it was that of the applicant.

3. The use of the additional words "for active legs" is important in considering whether the words "Sheer Relief" are used by the respondent for product identification; but, once it is concluded that they are so used, the existence of the other words cannot derogate from the conclusion that there is an infringement.

4. If the words "Sheer Relief" had been used on the pantyhose packet only in the sentence above the size table, I would not have concluded that the use constituted an infringement of the applicant's trade mark. But it seems to me that the captions seek to use the words as identifiers, thus infringing the applicant's rights.

5. The applicant's position in relation to the stockings is less strong. The words "Sheer Relief" are not used on the front of the packet. On the back of the packet they are used in the longer phrase "Sheer Relief For Active Legs That Doesn't Show"; and, once again, in the sentence above the table. But it seems to me that the caption "Sheer Relief For Active Legs That Doesn't Show" is an identifier, like the preceding two titles "Kayser" and "Sheer Support Stockings". Once again there is an attempt to harness for the respondent's benefit the product recognition that attaches to the registered trade mark.

6. In my opinion the applicant has made good its infringement claim. At this stage the applicant seeks merely injunctive relief, the matter of damages or an account of profits being reserved for later consideration. I think that the applicant is entitled to injunctive relief. I propose to make orders restraining the respondent from using the trade mark "Sheer Relief" in the course of trade in relation to women's hosiery and for the delivery up to the applicant, or the destruction under supervision, of all packaging and promotional materials of hosiery containing the words "Sheer Relief". The respondent must pay the costs to date.

1. In the circumstances it is not necessary for me to deal with the applicant's claims of passing off or under the Trade Practices Act. I certify that this and the preceding twelve (12) pages are a true copy of the Reasons for Judgment of the Honourable Justice Wilcox.