Beecham Group Plc v Colgate-Palmolive Pty Ltd

REASONS FOR JUDGMENT 1 The first applicant, Beecham Group Plc ('Beecham') is the registered proprietor of Australian Trade Mark Number 774677 in relation to toothbrushes ('the Macleans Mark'). The Macleans Mark consists of the word 'MACLEANS'. The second applicant, GlaxoSmithKline Australia Pty Ltd ('GSK'), claims to be an authorised user of the Macleans Mark, although, at this stage there is no evidence of any arrangement to that effect. Beecham and GSK claim that the respondent, Colgate-Palmolive Pty Ltd ('Colgate'), has infringed and threatens to infringe the Macleans Mark by use of the sign as shown in Schedule 1 to these reasons ('the MaxClean sign') in connection with the marketing of toothbrushes. Colgate denies that it has used the MaxClean sign as a trade mark and that, if it has used it as a trade mark, its use has not infringed the Macleans Mark.

STATUTORY FRAMEWORK 2 Section 27(1) of the Trade Marks Act 1995 (Cth) ('the Act') provides, inter alia, that a person may apply for the registration of a trade mark in respect of goods. Under s 17, a trade mark is, relevantly, a sign used, or intended to be used, to distinguish goods dealt with or provided, in the course of trade, by a person, from goods so dealt with or provided by any other person. The term 'sign' is defined in s 6 as including any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent and any combination of those. 3 Part 7 of the Act deals with registration of trade marks by the Registrar of Trade Marks. Section 44(1) relevantly provides that an application for the registration of a trade mark ('applicant's trade mark') in respect of goods ('applicant's goods') must be rejected if the applicant's trade mark is substantially identical with, or deceptively similar to, a trade mark registered by another person in respect of goods similar to the applicant's goods. 4 Section 120(1) relevantly 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, that registered trade mark, in relation to goods in respect of which that trade mark is registered. Under s 10, for the purposes of the Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.