Shape of Things That Can’t Last: Why Mayne Still Rules the Dropper

In the world of IP, form usually follows function—until it tries to live forever.

Back in 2008, the Federal Court handed down Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27, a shape trade mark case involving humble but hard-working fencing hardware: the S-shaped fence dropper. Though utilitarian in appearance, the legal fallout remains a cornerstone in Australian shape mark jurisprudence.

🐂 For the more urban-oriented: a fence dropper is the vertical rod—typically thick wire—that ties together the horizontal strands of a rural wire fence (think paddocks, not patios). They’re engineered so that when a frustrated bull charges the fence in pursuit of cows, the structure flexes and recoils rather than breaking apart—or shredding said bull to bits. The dropper’s job is to absorb the impact and maintain fence integrity, saving both beast and boundary.

The Case in Brief

Mayne Industries had once patented an S-shaped fence dropper (pictured above), used to hold fencing wire in place. After the patent expired, Mayne sought to rely on a registered shape trade mark over that same S-configuration to prevent competitors from manufacturing identical products.

You can understand Mayne Industries’ motivations.  They had a monopoly through the 20 year reign of their patent, but after that, it would be a free-for-all for cheap knock-offs of their flagship product.

With the introduction of shape trade marks in 1995, they came up with the bright idea of registering the S-shaped dropper’s distinctive shape as a shape trade mark and use it as a trade mark moving forwards, potentially protecting their flagship product with the judicious use of a different IP right, and no longer one with a half-life … this IP right, a trade mark right, can live forever.

However, Justice Greenwood wasn’t having it.

The Court ultimately found that the S-shape was functional, not distinctive, and that Mayne was improperly trying to extend its expired patent rights through trade mark law. The Court accordingly exercised its discretion under section 87(1) to cancel the registration.

Justice Greenwood delivered a sharp reminder that IP regimes each have their own purpose—and their own expiry dates:

“What the applicant cannot do is use the Trade Marks Act as a means of extending the life of the monopoly previously obtained under the Patents Act beyond the expiry of that patent.“
— [2008] FCA 27 at [86]

In applying section 25 of the Trade Marks Act, the Court found that the S-shape was the only commonly known way to describe or identify the dropper, which had been formerly exploited under patent. That meant Mayne’s exclusive rights to use or enforce the mark were taken to have ceased two years after the patent expired—well before the case was brought.

Key Principles That Still Hold the Fence Line

1. Function Over Form Fails
   A shape that serves a predominantly utilitarian function—particularly one previously protected by patent—may face hurdles under section 41 of the Trade Marks Act 1995 (Cth) (if registrability is challenged), and may also be rendered unenforceable under section 25 if the shape is the only commonly known way of identifying an article formerly exploited under patent.

2. Branding Beats Engineering
   To be registrable, a shape must serve as a badge of origin, not just a product design. The court found no evidence that consumers identified the S-shape specifically with Mayne Industries.

3. No Patents in Disguise
   Once a patent expires, the functionality it protected enters the public domain. Registering a shape mark to perpetuate exclusivity over that functionality undermines the statutory bargain at the heart of patent law.

4. Evidence Is Key
   Mayne argued that the S-shape was distinctive and that other viable alternatives (like V- or W-shaped droppers) could serve the same function. But the Court found the S-shape had become the only commonly known way of describing or identifying that kind of dropper in trade. A different evidentiary record—establishing real-world use of alternatives—might have changed the outcome.

Why It Still Matters

Mayne remains the leading Australian authority on shape trade marks where functionality is front and centre. It reinforces a boundary that remains important in product design and branding: you can’t monopolise useful shapes forever.

The Court didn’t say that all shape marks with some functional component are invalid. But where a shape both performs the function and has become synonymous with the product itself—especially following a now-expired patent—the threshold for enforceability becomes exceptionally high.

Interestingly, Justice Greenwood later (post the Mayne Industries decision) mused that the law might still accommodate shape marks with some functional features—so long as the shape also includes something “extra”: a deliberately chosen visual element designed to catch the eye and distinguish the product. In his view, the Trade Marks Act’s express recognition of shape marks shouldn’t be thwarted just because a design has a functional role—what matters is whether it was also adopted to signal origin. The boundary between form-for-function and form-for-branding remains a live question—especially when it comes to infringement, where intention to use a shape as a trade mark could still tip the balance.

So if you’re thinking about trade mark protection for the clever contours of your next product—make sure it’s branding, not engineering, that gives it shape.

ZIP Locked: Zip Co Fights on as Trade Mark Tug-of-War Heads to the High Court

Firstmac’s long-running dispute with Zip Co over the word “ZIP” has taken another sharp turn—this time with Zip Co applying for special leave to appeal to the High Court.

At stake? Whether “honest concurrent use” under s 44(3) of the Trade Marks Act 1995 (Cth)—as invoked via s 122(1)(f) to establish a defence to infringement—is to be assessed through the eyes of the actual user, or must pass muster under an “honest and reasonable person” standard.

In other words: is honesty in the eye of the beholder, or the court?

A Quick Zip Through the Facts

Firstmac, a large non-bank lender, has owned the registered trade mark for “ZIP” in connection with loans since 2004. Zip Co, meanwhile, entered the scene in 2013 with its now-ubiquitous “buy now, pay later” service—branded under names like Zip Pay and Zip Money.

Zip Co’s defence to Firstmac’s infringement claim leaned heavily on “honest concurrent use”—essentially arguing that even if the marks are deceptively similar, the use was honest, longstanding, and concurrent, and would have justified registration in its own right.

At first instance, Justice Markovic bought that argument. But the Full Federal Court didn’t.

The Appeal: A Matter of Perspective

In Firstmac Limited v Zip Co Limited [2025] FCAFC 30, the Full Federal Court (Perram, Katzmann and Bromwich JJ) reversed the primary decision and allowed Firstmac’s appeal. Critically, the Court held that the defences under section 122(1)(f) and (fa) had not been made out.

Why? Because Zip Co could not demonstrate that their use of the ZIP-formative marks (like “ZipMoney”) was honest—particularly after having received adverse examination reports in 2013 that expressly flagged Firstmac’s existing ZIP mark. Despite this, Zip Co forged ahead without legal advice, launching their branded services anyway.

The Full Court accepted that “honest concurrent use” involves a subjective inquiry—but with an objective overlay. As Perram J put it, “[T]he concept of honest use is in terms of a subjective inquiry, [but] this Court has accepted that it has an objective element.” Users must act as an “honest and reasonable person” would in assessing whether they can use a mark. The failure to do so may be fatal to the defence—even if there’s no affirmative finding of dishonesty.

The High Court Question: Honesty, Who Decides?

Zip Co’s special leave application to the High Court squarely challenges the Full Federal Court’s insistence on an objective overlay. They argue that “honest” in “honest concurrent use” should be determined subjectively—based on the user’s actual state of mind at the time of use—not by importing a “reasonable person” test.

To support this, Zip Co draws a comparison with a different high-profile case: the Katy Perry trade mark dispute with Australian fashion designer Katie Taylor. In that case, the issue of honest belief in non-infringement was similarly coloured by the subjective intention of the user—though not necessarily determinative.

Whether the High Court will grant leave and ultimately refine the contours of the “honest concurrent use” defence remains to be seen. But the outcome could reshape the risk calculus for trade mark users who proceed in the shadow of prior marks—particularly in an era of increasing brand overlap and digital ubiquity.

Why It Matters

The appeal goes to the heart of trade mark enforcement in Australia: Should a trader’s actual state of mind be enough to excuse an infringing use — or must they also act with the caution and diligence of a reasonable person?

For now, the “honest concurrent use” defence remains a high bar. But if Zip Co gets its leave — and succeeds — the standard might shift from “reasonable conduct” to “honest intentions.” That would make “honesty” not just a defence, but a question of perspective.

Stay tuned.

Energy Drinks, Trade Mark Battles and a Bunch of Bull

If there’s one thing Red Bull hates more than caffeine-free soft drinks, it’s brand drift. And the latest target of its energy-charged enforcement? A would-be beverage mark from China: SeaBull.

In a decision handed down on 5 June 2025, a delegate of the Registrar refused Shandong Fokun Investment Co’s SeaBull trade mark application — finding it deceptively similar to Red Bull’s registered trade marks under s 44 and reg 4.15A of the Trade Marks Act 1995.

The result? SeaBull joins the long list of Red Bull casualties. When it comes to any other “bull” in the beverage ring, Red Bull’s horns are always up.

The trade mark at issue was the simple word mark SeaBull applied for by Shandong Fokun Investment Co., Ltd on 10 November 2022 in class 32 for non-alcoholic drinks including energy drinks.

The applicant claimed “marine extract” inspiration for the name and tried to distance itself from any reference to Red Bull.

Nice try.

Red Bull’s opposition strategy was as charged as their drinks:

• Reputation: Global market leader, sold in 174 countries, with a dominant presence in Australia since 1999.

• Evidence: Brand Finance rankings, Aussie revenue and market share stats, and an empire of media assets — from Red Bull Racing to Red Bull Records.

• Registrations: Relied primarily on IR 1566986 — a stylised BULL mark registered for Class 32 beverages.

The delegate found that, although the competing marks were not substantially identical:

“The suffix ‘Bull’ is identical in substance… aurally, it comprises one of only two syllables… visually, the word ‘Bull’ is emphasised.”

While the addition of the word Sea tried to add a salty twist, it didn’t do enough to dilute the central BULL impression. The delegate found:

• Consumers are likely to read it as Sea + Bull (not a singular new word).

• “Bull” remains the essential, memorable element.

• Conceptually, SeaBull still evokes the idea of a bull — not something distinct enough to overcome the similarities.

The outcome: Real and tangible risk of confusion → Ground under s 44 established.

The applicant didn’t bother to show up to the hearing and didn’t provide evidence of honest concurrent use, prior use, or other extenuating circumstances. That made the path to refusal even smoother.

It’s difficult to win a case when you don’t adduce any evidence and don’t show up – just saying …

Red Bull won the case and, of course, received an order for its costs too.

🧠 IP Mojo Takeaways

• Adding a prefix won’t save you if the remaining mark is dominant and matches a well-known trade mark.

• Red Bull’s enforcement strategy isn’t just for copycats — even marginal similarities to the word BULL in Class 32 can trigger a full opposition.

• For global brands, consistent evidence of market presence, brand diversification, and registered rights are still the gold standard in trade mark opposition proceedings.

In the end, the only thing SeaBull gave Red Bull was another notch on its IP enforcement belt. For smaller beverage players looking to carve out their own brand, the message is clear:

Don’t poke the bull.