Is there a serious case?
8 Section 120 of the Trade Marks Act 1995 (Cth) provides that a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. The first question which the section raises is whether the trade mark in question is being used as a trade mark. In this case, this question depends on whether the "MAXCLEAN" sub-brand is being used by Colgate for the purpose of indicating a connection in the course of trade between the MAXCLEAN toothbrush and a particular trade source: see Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 351. This in turn gives rise to the question whether "MAXCLEAN" appears as a mark for distinguishing the MAXCLEAN toothbrush from other toothbrushes in the course of trade: see Mark Foys Limited v Davies Coop & Co Limited (Tub Happy Case) (1956) 95 CLR 190 at 198-200 (the "Tub Happy case"). These questions are to be assessed from the perspective of a person looking at the label, and on the assumptions that a reasonable person would make as to the purpose of the product and nature of its use. In considering these questions, importance is attached to the position and prominence of the disputed word on the packaging, and in its promise in promotion of material: see Shell Co of Australia Limited v Esso Standard Oil (1963) 109 CLR 407 at 422-5. The addition of words or signs, such as, for example, "Colgate (R)" adjacent to "MAXCLEAN", or any other references to Colgate will not avoid trade mark infringements. This distinguishes an infringement action from a passing off suit. As was pointed out by Williams J in the Tub Happy Case at 205:
" … if the defendant uses the words of the plaintiff's trade mark as indicating origin it is still an infringement notwithstanding that the defendant always adds his own name."
See also Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 31 IPR 375 at 383-384.
9 The next question to be considered is whether the MAXCLEAN mark is substantially identical with or deceptively similar to the MACLEANS marks. The relevant principles in examining this question are set out in Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR 641 at 658, per Dixon and McTiernan JJ:
"In deciding [the] question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded." (Emphasis added)
10 The products in the present case are closely related. Both having the appearance of a manual toothbrush although the Colgate MAXCLEAN toothbrush is of course a battery operated toothbrush. See also the remarks of Sheppard J in Wingate Marketing Pty Limited v Levi Strauss & Co (1994) 49 FCR 89. It is no answer in determining deceptive similarity that the products of one party are more expensive and provided to a different class of customer than the product of the other part: see Polaroid Corporation v Sole N Pty Limited [1981] 1 NSWLR 491 at 497; British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54 at 64.
11 It is necessary to show that there is a real danger of deception or confusion occurring and a mere possibility is not sufficient. However, it is sufficient if the use of the disputed mark is likely to cause a number of persons to wonder whether the two products might come from the same source. It is enough if the ordinary person has reasonable doubt. In order to assess this, it is necessary to consider the context in which the mark is used, including the circumstances in which the goods or services will be bought and sold, and the character of the probable customers for the goods or services: see Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-595.
12 Moreover, in cases such as the present, aural comparison is important. In Aristoc Limited v Rysta Limited [1945] AC 68, it was noted with approval at 86, that Luxmoore LJ, in the Court of Appeal, had considered the way in which to make an aural comparison as follows:
"The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of s.12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants." (Emphasis added)
13 In my view, there is a serious case raised by the applicant on the material presently before me on the question whether the word "MAXCLEAN" is used as a trade mark: see Castlemaine Tooheys Limited v South Australia (1986) 161 CLR 148 at 153; Patrick Stevedores Operations No 2 Pty Limited v Maritime Union of Australia (No 3) (1998) 195 CLR 1 at 24. It is evident from the photographs that the word is prominent and positioned immediately above the toothbrush. The size of the lettering of the word "MAXCLEAN"and its distinctive style reinforce this impression. There is a lack of a gap between the "X" and the capital "C", which creates a new word, which can be said to be associated with the product.
14 I do not consider that the addition of the word "Colgate" adjacent to the word "MAXCLEAN" prevents the mark operating being used as a trade mark. In my opinion, "MAXCLEAN" is used as distinguishing mark of the toothbrush, both among other toothbrushes in the Colgate range, and from competing products.
15 In relation to the question of deceptive similarity, there is arguably a close association between the Colgate and MACLEANS branding as a consequence of the aural similarity between the marks "MAXCLEAN" and "MACLEANS". It cannot be assumed that potential buyers of the toothbrushes will be aware of the history of the MACLEANS name in Scotland as a distinguishing feature or that a particular accent will be used. Having regard to both the appearance of the marks and the aural sound, a serious question is therefore raised as to whether a prospective buyer would wonder whether the Colgate product originated from MACLEANS. It was pointed out in argument that the word MACLEANS is sometimes used as a noun as a replacement for the word "teeth", bringing with it an association of whiteness and teeth. While it is true that the evidence indicates that the two products will be located in a similar section of supermarkets, pharmacies and other stores, and that the colouring of the Colgate and MACLEANS packaging is different, nevertheless, this does not mean that the two words may not give rise to probable doubt and wonder as to origin of the Colgate product. Customers will no doubt cast their eye over the range of products before making a purchase, and given the prominence of the word MAXCLEAN, I consider that such a consequence could not be said to be a mere possibility or fanciful.
16 Furthermore, in the present case, as will be discussed in greater detail below, Colgate's marketing experts were aware of the competing MACLEANS mark when they were considering the MAXCLEAN name and were targeting that mark. This is indicated by the Colgate MAXCLEAN marketing material that was put in evidence in these proceedings, which referred to an obituary and "RIP MACLEANS". This shows that experienced experts in the area of toothbrush marketing considered that the MAXCLEAN sub-brand would have an effect on MACLEANS products, and would have an adverse effect upon them, if it did not kill and bury them, to use the colourful language of the marketing experts. The question of whether these experts, in adopting "MAXCLEAN", chose it in the hope or expectation of deriving benefit from its resemblance to "MACLEANS" in that the Colgate MAXCLEAN product might be confused with a MACLEANS product is relevant. As the authorities indicate, a court will more readily infer that promoters, who know their field of business well, were justified in entertaining their hope and expectations, and that it was therefore probable that, in this case, MACLEANS would suffer damage: see Australian Guarantee Corp Limited v Sydney Guarantee Corp Limited (1951) 51 SRNSW 166 at 170-1 per Roper CJ in Eq; Telmark Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1988) 84 ALR 437 at 445 per Gummow J and Twentieth Century Fox Film Corporation v The South Australian Brewery Co Ltd (1996) 66 FCR 451 at 466. In my view, the marketing experts' foresight is of importance in the present application.
17 Accordingly, the first requirement for the grant of an interlocutory injunction is satisfied in the present case.