The judgment below
Burchett J commented it was apparent "that neither of the marks sought to be registered is substantially identical with the cited mark, and the sole question raised by the appeal, is whether the appellant's marks are deceptively similar to the cited mark". In dealing with that question, his Honour mentioned a number of authorities, in particular Australian Woollen Mills Ltd v F S Walton & Company Limited (1937) 58 CLR 641 at 658. That case emphasised that, in issues of deceptive similarity, the marks ought not be compared side by side and regard must be had to "the impression or recollection which is carried away and retained", as well as the effect of "spoken description". His Honour then said:
"Where as in this case, two marks look or sound alike, that is in itself a reason for taking into account, in deciding whether they are likely to deceive, the fact that they convey the same idea: Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536 at 539, per Dixon, Williams and Kitto JJ. In this respect, the meaning does matter, and in taking it into account the court should not overlook the significance of the onus. As Williams J said in Sym Choon and Company Limited v Gordon Choons Nuts Limited (1949) 80 CLR 65 at 78:
'The basic principle is that the proposed mark must be so unlike the rival mark that it is not reasonably probable that a purchaser who knows of the latter and has an imperfect recollection of it is likely to be confused.'
Applying these propositions to the present case, the idea of a sports cafe is common to the cited mark and the marks proposed for registration. It is true that in the cited mark the word 'circuit' is emphasized; and on this fact counsel for the applicant substantially rested his whole case. He suggested that the words 'the sports cafe' were 'buried' in the cited mark. But graphic though this metaphor may sound, it cannot get over the awkward fact that the words do actually comprise three of the only four words contained in the mark. The mark is not just 'circuit', it is 'the circuit sports cafe'. If, as would be usual in relation to a restaurant or cafe, the establishment were referred to in conversation or in the making of a booking over the telephone, the applicant's argument is met by the reality that the words 'sports cafe' might well be used. Although the word 'circuit' is prominent, it is used as a qualifying word, either suggesting that the cafe in question is on a circuit, or that the sports in question are circuit sports. Taken 'as a whole', as Gummow J said it should be in Johnson & Johnson v Kalnin (1993)26 IPR 435 at 441, the cited mark cannot be divorced from the idea either of sports generally or, alternatively, of circuit sports. Of course, it is beyond doubt that the proposed marks express the idea of sports.
When the marks are compared as a whole, and bearing in mind that allowance must be made for imperfect recollection, even the devices associated with the two device marks reinforce the impression created by the identity of some of the words in the cited mark with all of the words in the proposed marks, and by the common idea of sports. For the oval of the cited mark leaves, on a mind accustomed to the conventional representation of shapes by drawing, the impression of a circle seen from a little distance, that circle being intersected on one side by a much smaller straight sided figure (the squat triangle). It will be remembered that the proposed device mark also has a smaller figure at one side of a circle, and imperfect recollection might very well overlook that in the one case the figure is an oblong and in the other a triangle and in the one case it is at the bottom of the circle and in the other at the top. Thus, while the devices are plainly different when compared side by side, the impression one might leave in the mind, particularly in association with the common idea of sports, might well be recalled, after an interval of time, by the other, so as to cause confusion.
Although it is true that the word 'circuit' is emphasized by being written in very large letters in the cited mark, no comparison of the impressions made by the marks can properly be made on the basis of blanking out the other words, which actually appear. The word 'circuit' simply refers to an inanimate thing, on which, it is true, activities may take place. But the word 'sports' evokes activities themselves, and dramatic activities at that. It is much the more vivid word. Such words are likely to echo in the mind. Just as in the mark 'Polo Club', the word 'Polo' carried more distinction than the blander word 'club' (see Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 at 230), so here, its meaning makes the word 'sports' too striking for the applicant's argument to be accepted."
The arguments on appeal
Counsel for the appellant, Mr D K Catterns QC, argued that Burchett J's reasoning involved four steps:
"(a) the Appellant's marks contain three of the four words in the cited mark;
(b) if the cited mark were spoken, the words 'sports cafe' might be used;
(c) the concepts embodied in the device marks are similar; and
(d) the word 'Sports' is a vivid word which is likely to echo in the mind."
Mr Catterns pointed out that steps (a) and (b) involve a comparison between the words contained in the appellant's mark and the words contained in the cited mark; however, these words formed only one component of the appellant's device mark. He submitted that, contrary to the view of Burchett J, the appellant's device mark and the cited mark do not look alike, so it is immaterial that they both embody the concept of a sports cafe. He went on:
"The right which a registered proprietor obtains (under section 20 of the Act) is a right to exclusive use of the mark as registered, in the sense that the registered proprietor does not obtain exclusive rights to the component parts of the registered mark. Therefore, the registration of a 'device' mark, or a mark containing multiple elements including words, is not the same as the registration of the words themselves. The registered owner of a device mark incorporating words may not be able to prevent the use of the words themselves by another trader, particular if the mark used by the other trader incorporates its own distinctive visual (or other) elements. This is all the more so if the words in the registered mark are presented in such a way that their significance or distinctiveness is minimised.
These matters must be borne in mind when considering questions of registrability. A comparison of the words used and aural comparisons are relevant to the overall question of deceptive similarity, but the other elements of a mark cannot be disregarded."
Mr Catterns submitted that a comparison based predominantly on the words contained in the relevant marks is wrong in law, in that it gives a registered proprietor a greater monopoly than that to which it is entitled.
Mr Catterns particularly criticised what Burchett J said in the last paragraph of his reasons extracted above. He contended his Honour erred in concentrating on the "idea" of the marks, rather than on a viewer's likely recollection of the marks themselves. He submitted that, taking into account the essential features and overall effect of each mark, when considered as a whole and allowing for imperfect recollection, the Court should hold there is no real risk that people will be caused to wonder whether the appellant's services are provided by the entity offering services under the cited mark.
Counsel for the Registrar, Mr D M Yates SC and Mr D R Sibtain, accepted the legal standard posited by Mr Catterns. But they emphasised the appellant's onus of proof and the doctrine of imperfect recollection: see Aristoc Ltd v Rysta Ltd [1945] AC 68 at 86 and Reckitt & Colman (Australia) Limited v Boden (1945) 70 CLR 84 at 89. They referred to the comment of Lord Radcliffe in de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106 to the effect that marks are usually remembered by general impression or a significant detail, rather than as a photographic recollection of the whole. Counsel also referred to the need to consider aural similarity, which they said was particularly important where the ideas of the two marks are similar. They said that, while similarity between the ideas of the marks is not decisive, "if two marks look alike or sound alike, a comparison of the idea conveyed by each mark is relevant to the question of deception or confusion". Finally, they emphasised the role of the primary judge in determining an issue of deceptive similarity and suggested an appellate court ought to intervene only where it concluded the primary judge had erred in law or principle.