Another case considering t-shirt branding. Has Silberquelle been transplanted into Australian law?
The Australian airline Qantas has had its opposition against the “t-shirt” mark below rejected by the Federal Court (Qantas Airways Limited v Edwards  FCA 729).
The decision makes interesting reading in a number of respects, but this note only considers a discreet issue.
Is use on a t-shirt trade mark use? If so, in respect of what goods/services?
One of Qantas’ opposition grounds relied on its reputation in its flying kangaroo logo (below). Those who get to “turn left” on boarding will likely be well acquainted with the use of that logo in respect of pyjamas. Of course, Qantas does not charge separately for these pyjamas, they are provided in the course of its services together with ear-plugs and face masks. Nevertheless, Qantas relied on this as a brand extension into clothing as part of its argument that use of Edwards’ Mark on class 25 goods would be likely to cause confusion.
Qantas had also made use of its tail-fin mark (below) in respect of pantihose (with Kolotex branding) and on stockings and flight socks.
Yates J considered that Qantas’ use was “plainly for endorsement purposes”, and was not persuaded that they had been used as marks for clothing or footwear in their own right. What was clear was that Qantas’ use was “very closely connected” to its core services (ie. transportation).
Trade mark use is a conceptual issue. Placing a brand on the front of a t-shirt will not necessarily demonstrate trade mark use for such goods. Each case will be decided by reference to its specific facts. The recent OzEmite decision provides another example of the nuanced assessment required, in a different context (Alex Horne’s note can be seen here).
From a comparative law perspective, it is notable that Yates J’s decision echoes the reasoning of the CJEU’s in Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH.
Briefly, Silberquelle involved a non-use challenge to Maselli’s Austrian registration for WELLNESS in respect of alcohol-free drinks in class 32. The CJEU was asked to rule on whether the use of WELLNESS on bottles for alcohol-free drinks that were given free of charge to purchasers of other goods (clothing) amounted to genuine use. The CJEU held that this was not genuine use. Genuine use requires use in accordance with the essential function of a mark, namely to guarantee the identity of the origin of goods to the consumer by enabling him or her to distinguish such goods from those of other traders without confusion. That condition is not fulfilled “where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter”.
That the assessment requires an objective and fact-specific assessment from the viewpoint of the relevant consumers can be seen from the even earlier decision of the Federal Court in Top Heavy v Killin (1996) 34 IPR 382. In that case, it was held that the use of CHILL OUT on a t-shirt (as shown below left, in which a Coca-Cola bottle made up the “i”) did not infringe a registration for a CHILL OUT logo (shown below right) for clothing in class 25. Lehane J considered that “in general terms the message is … an exhortation to the reader … to relax”, rather than a message relating to trade origin of the t-shirts. It was noted earlier in the decision that “questions of this sort arise where a word or phrase, claimed to be used as a trade mark, is capable of being read as descriptive of a characteristic, quality or function of the goods in relation to which it was used”. Due to the finding that there was no trade mark use, there was no need to consider the issue of whether the respective marks were deceptively similar.
Other more recent cases involving “t-shirt use” in the branding context include the following.
- Sport Direct Holding BV v Reece Pty Ltd  ATMO 78 (25 August 2015): referring to Silberquelle, a Hearing Officer at IP Australia held that use of REECE on t-shirts and on company uniforms (that had to be purchased by employees) was not trade mark use in respect of such goods. Rather the use was to market the primary activities of the registered owner (plumbing services).
- Fenty & Ors v Arcadia Group Brands Ltd & Anor  EWCA Civ 3 (22 January 2015): the UK Court of Appeal upheld a finding that Topshop’s sale of t-shirts showing a “striking” image of Rihanna (depicted below) amounted to passing off.