Caterpillar Loader Hire (Holdings) Pty Ltd & Ors v Caterpillar Tractor Co [1983] FCA 143

Federal Court of Australia|1983-07-19|Before: Neaves JJ, Lockhart J, Neaves J, Franki J

CATCHWORDS Trade mark - service maérk - action fer infringement = "Caterpillar" registered for both goods and services - whether

use of mark for services likely to deceive or cause confusion - whether "Caterpillar" used in good faith to describe character or

CATERPILLAR LOADER HIRE (HOLDINGS ) PTY. LTD. (tradin as Willougby's Caterpillar Loader Hire Service), MILJAN ANTON

WILLOUGHBY and BARBARA JEAN WILLOUGHBY v. CATERPILLAR TRACTOR CO.

ON APPEAL TROM TYE SUPREME COURT OF SOUTH AUSTRALIA

CATERPILLAR LOADER HIRE (HOLDINGS) PTY. LID. (trading as Willoughbv's Caterpillar

. Loader Hire Service), MILJAN ANTON WILLOUGHBY and BARBARA

Each of the defendants being the defendant Caterpillar Loader

and agents and Miljan Anton Willoughby and Barbara Jean Willoughby be restrained from infringing the trade mark "Caterpillar" registered in the plaintirtzl s name wunaer tne

as No 277469 in relation ainter alza to rental ana leasing services in respect cio macninery ana #culpment seing services included in Class 36) and che trade mark "Cateroillar" vegistered in the plaintiff's name under the

Trade Marxs Act 1955 in Part A of the Register of Trade Marks

as No. 327470 in relation inter alia to rental and leasing

services in respect of machinery and equipment including the hire of bulidozers and other earth moving machines (being

Order 1 is stayed for fourteen (14) days and the matter is remitted to the Supreme Court of South Australia for the hearing of any application which the appellants may wish to make for a further stay of that order for a reasonable

Orders 1 , 2, 3, 4, 6, and 8 of the orders made by the

The appellants pay the respondent's costs of the appeal.

SOUTE AUSTRALIA DISTRICT REGISTRY ) No. G26 of 1982

ON APPEAL FROM THE SUPREME COURT OF SOUTH AUSTRALIA

CATERPILLAR LOADER HIRE (HOLDINGS) PTY. LTD. (trading

as Willoughby's Caterpillar Loader Hire Service), MILJAN ANTON WILLOUGHBY and BARBARA JEAN WILLOUGHBY

I have had the benefit of reading the separate draft judgments prepared by Lockhart and Neaves JJ. in which the facts of the case are set out. I will not set out the facts again. Lockhart J. and Neaves J. have dealt with the background to the

amendments to the Trade Marks Act 1955 ("the Act") by No. 130 cf

1978 when the Act was extended to cover services. I approach this case by bearing in mind that the Act only gives protection, so far as inivingement 18S concerned, where the marx alleged to infringe 1s used in relation to gocds or services "in respect of

which the trade mark is registered". (Ss.58(1) and 62(1)).

Before the learned trial Judge the respondent sought

relief in respect of its registrations numbered A327470 and é

A327469, Both were registrations of service marks in Part A of the Register. Number A327470 was in Class 37 (Construction and

"Rental and leasing services in this class in respect of machinery and equipment including the hire of bulldozers and other earthmoving machines, construction and repair services, including maintenance and repair of earth moving and other machinery, maintenance work, care and repair of gocds, engineering construction being services included in Class No. 37 ..7".

Number A327469 was in Class 36 (Insurance & Financial Services)

"Rental and leasing services in this class in respect of machinery and equipment, financing,

financial services, fanancial securities, financial transactions, insurance, insurance agents, insurance brokers, insurers,

investment, investment trusts, hire purchase, financing of hire purchase, agents and brokers for agricultural credit, agents and brokers for credit from farming development, financing of credits for wholesale dealers, arranging for time payment for gocds, capital investment, arranging credit, credit recovery

agents, advice and enquiries red depositing of securities and shares, farming surveys, financ1 monetary transactions and associ ane Financieli services, pe included in Class No. 36 ...".

I consider that it 1s only relevant to consider the position with regard to these registrations and not to complicate the matter by looking at the position in relation to the respondent's registration of a trade mark for "Caterpillar" for goods in respect of machinery which had existed for many years. That mark, No. A10,993, was in respect of "Machinery; Agricultural and horticultural machinery, and parts of such

Section 23 of the Act, dealing with the removal of a trade mark on the ground of non-use, does provide that use in relation to "goods that are closely related to those services" may be relevant where the application is to expunge a mark registered in respect'of services. Section 33 provides that a mark which is substantially identical with, or deceptively similar to, a trade mark shall not be registered in respect of services if it is already registered in respect of "goods that are closely related to those services". Section 36({1A) provides that the Registrar may require the association of trade marks where one is registered in respect of any services, and it is substantially identical with another trade mark registered in

respect of "goods that are closely related to those services".

Section 37 provides that associated marks can only be assigned or transmitted as a whole and s.38 deals with use of associated trade marks. In my opinion, ss.23, 33, 36 and 37 have the essential purpose of protecting the public. Although those sections may be favourable to the registered proprietor they do

not extend his rights in relation to infringement of his trade

Lockhart J. and Neaves J. have dealt with the different views taken by the members of the Federal Court in Angoves Pty.

Ltd. v. Johnson (1982) 43 A.L.R. 349 and, if it were necessary, I

would accept the view that the majority of the Court expressed a preference for the concept that s.58(1) only covered the use of the identical mark. For some reason, not clear to me, in contradistinction to s.58(1), s.62(1) uses the word "mark" and not "trade mark". It refers to a mark being deceptively similar to the registered trade mark in respect of, in this case services, for which the mark is registered. The words "deceptively similar" are to be interpreted in accordance with

"For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion".

I mention that the definition of "trade mark" in s.6 1s different

The first question is whether the use of the name "Caterpillar Loader Hire Service" for the type of business carrieG on by the first appellant is a use which falls within s.58(1) or s.62(1) of the Act. The use must be use as a trade mark. The main argument advanced by the appellants was that the use of the word "Caterpillar" by them was not a use to indicate the origin of the services and therefore not use in a trade marx sense but was a use to indicate the origin of the machines. I reject this argument. In my opinion, apart from any question of the effect of s.64(1)(b), that name must be liable at least to cause confusion within the meaning of s.62(1) as extended by s.6(3). The next question is whether the addition of the word ""Willoughby's"- removes the likelihood of deception or confusion. In my opinion it does not. It was common ground that the name "Willoughby's Caterpillar Loader Hire Service" was used by the first appellant as a trade mark. No evidence of deception or confusion was before the learned trial Judge but, when considered in relation to the registration of "Caterpillar" for the services for which the respondent has registration, in my opinion that mark is likely to deceive. Although the mark in question is "Willoughby's Caterpillar Loader Hire Service" so that the word "Willoughby's" is part of the mark, I consider that the principle applied in Saville Perfumery Ld. v. June Perfect Ld. (1941) 58 R.P.C. 147 is applicable. In that case Viscount Maugham at p-174, with whom Lord Russell of Killowen and Lord Romer agreed,

"Now as the Master of the Rolls pointed cut, it is true that on @ careful reading of the printed metter used in connection with the shampoo powder and the lipstick it apvears that the origin of the goods to-indicate which the word 'June' is used, 1s either the June Hair Curler Co. or June Perfect Ld. 'But', as he then pointed out, 'this circumstance, relevant though it may be upon the question of passing-off, is immaterial upon the question of infringement. In an infringement action, once it 1s found that the Defendant's mark is used as a trade mark, the fact that he makes it clear that the commercial origin of the goods indicated by the trade mark is some business other than that of the plaintiff, avails him nothing, since infringement consists in using the mark as a trade mark, that is, as indicating any origin.' "

See also Kerly's Law of Trade Marks and Trade Names, 10 Ed.

As Williams J. said in Mark Foys Ltd. v. Davies Coop &

"Needless to say, if the defendant uses the words of the plaintiffs' trade mark as indicating origin it is still an infringement not withstanding that the defendant always adds his own name."

It would be logical to conclude that there was some association between the services the first appellant provided and the services for which the respondent had registration. It might be thought that the first appellant was a registered user of the respondent's service mark or that it held a franchise from, or

was a subsidiary or an authorised agent of, the respondent.

It 1S not irrelevant to bear in mind that there coula pe a registration for a trade mark in relation to services without there being any registration cf the same worc in relation to

goods or without there being any gocds known by the same name.

This then takes me to the question of the effect of s.64(1)(b). This section is applicable if the acts alleged to constitute an infringement are the use "in good faith" of a déscription of the character or quality of (the defendant's) ... services". It seems clear that s.64(1)(b) only applies where descriptive words are used descriptively in relation to the goods the subject of the relevant registration. The same principle

Section 24, dealing with registration in Part A provides, inter alia, that a trade mark is registerable if it contains or consists of a word "not having direct reference to the character or quality of the goods or services in respect of which registration is sought ...". The words in s.64(1)(b) differ scmewhat and instead of the words "direct reference to" one finds the words "a description of". This may be a matter of

some consequence. (Picot Ltd. v. Goya Ltd. [1967] R.P.C. 573 at

p-578). I am disinclined to give a broad construction to s.64(1)(b). The corresponding section, 53A, of the Trade Marks

Act 1905 was considered in Mark Foy's Ltd. v. Davies Coop & Co.

"... protects the use by any person of any bona fide description of the character or

quality of his goods. But that means a description and not a meré suggestion in fanciful language. It does not protect an

attempt by the defendants to usurp & Metaphorical phrase like 'Tub Happy' however magnetic the force of its public appeal may be."

His Honour also cited the following passage from J.B.

Stone & Co. Ltd. v. Steelace Manufacturing Co. Ltd. (1929) 46 R.P.C. 406 at p.417 where Lawrence L.J. said:

"In my opinion the object of s.44 (of the English Trade Marks Act 1905 which corresponds to s.53A of the Commonwealth Act) was to safeguard traders in cases where the registered trade mark consisted of more or less descriptive words forming part of the ordinary English language, without the use of which other traders would find some difficulty in describing certain qualities of their goods; but was never intended and does not operate to enable a trader to make use of a rival trader's registered trade mark consisting of a fancy word having no reference to the character and quality of the goods in order more readily to sell his own gocds."

Dixon C.J. at p.195 agreed with the judgment of Williams J.

The section was also considered by McTiernan J. in F.H. Faulding & Co. Ltd. v. Imperial Chemical Industries &c. Ltd. (1965) 112 C.L.R. 537. At p.543 his Honour said in relation to

"What this provision protects is the use of a mark that is genuinely descriptive of the character or quality of goods in connexion

with which 1t 1s used, where the use 1s purely for the purposes of description."

"This evidence satisfies me that in describing its cream as a Barrier Cream the defendant was using the word BARRIER as a reference to the character or quality of its cream and that the word BARRIER can be regarded as a correct description of the creams. However, I think that the defendant is not entitled to the protection of s.64(1)(b) for the reason, as I hold, the word BARRIER in its setting on the

defendant's package is not used purely for the purpose of description."

An appeal from this judgment was dismissed but upon

different grounds. I consider that the judgments in the appeal

did not qualify the views of McTiernan J. which I have set out.

Eclipse Sleep Products Inc. v. The Registrar of Trade

Marks (1957) 99 C.L.R. 300 was a case concerning an application to register a mark in respect of mattresses. Broadly, the mark consisted of a device which depicted a spring enclosing the words "springwall mattress". In a joint judgment at pp.322-323 Dixon

"Section 53A of the Trade Marks Act, however, the meaning of which was discussed to some extent in Mark Foy's Ltd. v. Davies Coop & Co. Ltd. (1956) 95 C.L.R. 190, provides that no registration under the Act shall interfere with the use by any person of any bona fide

description of the character or quality of his goods. The object of this section is not to afford a guide as to whether a word is adapted to distinguish the goods of the proprietor of the trade mark from those of other persons. It 1s intended only to protect traders in the bona fide use of a word which has been registered and must pe treated as adapted to distinguish such goods."

"Section 53A would however protect the bona fide use by other traders of the words 'SPRING' and 'WALL' in order to describe the character or quality of their goods, assuming the compound word to be an essential feature of the applicant's mark. Accordingly there does not appear to be any sound reason for requiring the applicant to disclaim any right to the exclusive use of the words 'SPRING' and 'WALL' as a condition of granting the application. But, as s.53A applies only to verbal descriptions, not to require the applicant to disclaim any right to the exclusive use of the device of the border might well result in the applicant's acquiring the exclusive right to use upon mattresses containing border stabilizer springs a device indicating that they do contain such springs."

considered by Higgins J. in Thomson v. B. Seppelt & Sons Ltd.

(1925) 37 C.L.R. 305, a case where it was sought to register

"Great Western" for wines. Higgins J. at p.315 said that in his

opinion the words "Great Western" were not a description of the

Pty. Ltd. v. Johnson, supra. In my opinion the use of the word

"Caterpillar" by the first appellant in the mark "Willoughby''s

Caterpillar Loader Eire Service" Goes not describe the "cualiczy" of the services nor indeed their "character". The word may, és is submitted by the appellants, indicate that Caterpillar

vehicles are being hired but I do not consider that that is a description of the character of the services. If there was a particular type of loader which some people might describe as "Caterpillar" because of its construction, we might have to consider whether that type of loader could be properly described as a caterpillar loader regardless of who was the manufacturer. In any event the loaders being hired by the first appellant were not of a construction appropriate to be described as "Caterpillar". "Caterpillar" is a word which is not descriptive in any relevant sense. Because of the conclusion I have reached it is unnecessary to consider whether the appellants' use of the

name was bona fide. I mention that I have examined the judgments

in Caterpillar Tractor Co. v. Caterpillar Loading Pty. Ltd. (1981) 28 S.A.S.R. 307 and in the appeal to this Court, 38 A.L.R.

I would dismiss the appeal with costs. The respondent

indicated that the only injunction which it was concerned to

retain was that in order 1(a) made by the trial Judge.

The orders are set out in the judgment of Lockhart J.

It will be seen that order 1(a@) was made by the learned trial

Judge not cnly in respect of the aerendants ana gach of shem but

alse in vespect of 'the directors, servants anda agents or any cor

of them by the aicectors, servants and agents cr any Of them De restrainea. The effect of the erder i(a) would therefore pve to restrain not only the acts of the defendants by their directors, servants and agents but also the independent acts of the directors, servants and agents. The order in its present form

would appear to extend to persons, whether parties or not, for

example, to present and future servants and agents. In my opinion, although our attention was not directed to this question, I do not think the Court can endorse the order in its

I propose that order l(a) of the learned trial Judge be affirmed in an altered form so that the opening four lines read: "Each of the defendants being the defendant Caterpillar Loader Hire(Holdings) Pty. Ltd. by itself, its directors, servants and agents and Miljan Anton Willoughby and Barbara Jean Willoughby be

I would vacate orders l(b), 2, 3, 4, 6 and 8. I would stay order l(a) for fourteen days and remit the matter to the Supreme Court of South Australia to hear any application which the appellants may wish to make for a further stay of that order for a reasonable period tc enaple it to be complied with ina

NS AetTendants Tetng THe LerSsenrant BUSS TLL waY cancer

Yare(Nolasngs) Pty. Ltd. by ttseif, its diresctors, servants and aqents and Miljan Anton Willoughby and Barbara Jean Willoughby be restrained from infringing the trade mark "Caterpillar" registered in the plaintiff's name under the Trade Marks Act 1955 in Part A of the Register of Trade Marks as No. 327469 in relation inter alia to rental and leasing services in respect of machinery and equipment (being services included in Class 36) and the trade mark "Caterpillar" registered in the plaintiff's name under the Trade Marks Act 1955 in Part A of the Register of Trade Marks as No. 327470 in relation inter alia to rental and leasing services in respect of machinery and equipment including the hire of bulldozers and other earth moving machines (being

Orders 1 , 2, 3, 4, 6, and 8 of the crders made by the

ON APPEAL FROM THE SUPREME: COURT OF SOUTH AUSTRALIA

CATERPILLAR LOADER HIRE (HOLDINGS) PTY. LTD. (trading as Willoughby's Caterpillar Loader Hire Service), MILJAN ANTON WILLOUGHBY and BARBARA

the word "Caterpillar". The trade marks are cegistered in the name of the respondent, a company incorporated in the U.S.A., under the Trade Marxs Act 1955 ("the Act") 1n Pact A of the Register of Trade Marks. Trade mark No. 327469 is registered in relation to various services, including rental and leasing services in respect of machinery and equipment. These services

were treated by the Registrar of Trade Marks as falling within

Class 36, namely "insurance and financial services".

Trade mark No. 327470 is also registered in relation to various services including rental and leasing services in respect of machinery and equipment including the hire of bulldozers and other earth moving machines. These services were treated by the Registrar as: falling within class 37, namely "construction and

The validity of the registration of the trade marks has not been challenged.

The respondent applied for registration of the two trade marks on 1 February 1979 and registration was granted on 23 June 1980. The registration subsists for seven years from 1 February 1979. 1 February 1979 was the date on which the Trade Marks Amendment Act 1978 (No. 130 of 1978: "the Amendment Act") came into operation and introduced into the Act for the first time the

registration of trade marks in relation to "services".

The two trade marks were reqgistered as associated trade Marks pursuant to s.36. The Schedule to the Register records the

associated marks as including the trade mark "Caterpillar" registered in i911 in respect of machinery of which the

The facts material to the appeal may be briefly stated. For many years the respondent's Australian subsidiary, Caterpillar of Australia Limited, has distributed throughout Australia a wide range of earth moving and other equipment manufactured by the respondent in the U.S.A. including a range of loaders, some with wheels and others with tracks, bearing the

; ; ("Cavill"), a@ company' incorporated in South Australia, was registered as the registered user of both service marks. Since

October 1972 Cavill has been the sole dealer in South Australia and Western New South Wales in "Caterpillar" equipment manufactured in the U.S.A. by the respondent and exported to

Australia. The equipment sold by Cavill under the name

"Caterpillar" consists of earth moving and construction equipment including loaders, some with wheels and others with tracks. Cavill is the sole dealer authorised by the respondent to service

"Caterpillar" machinery and equipment in South Australia.

Since about April 1973 Cavill has haired out "Caterpillar" fork lift trucks to the public, but it does not hire out "Caterpillar" loaders exceot in a limited number of cases either where one of its customers wishes to purchase a loader but one is not immediately available or where a loader is being repaired or serviced by Cavill for a customer and in either

case the customer wishes to use a loader in the meantime.

In 1959 Miljan Anton Willoughby and his wife Barbara Jean Willoughby, the second and third appellants, commenced

business-in partnership as sand and metal contractors under the

name. "M.A. & B.J. Willoughby". They acquired and used two trucks for the purpose of carrying on the business. In about 1973 they purchased a second hand "Caterpillar" front-end loader manufactured by the respondent. They hired out the machine with Mr Willoughby as its operator at hourly rates. About twelve months later they bought a second "Caterpillar" front-end loader from Cavill. By then they had disposed of the trucks and thereafter confined their activities to hiring out front-end

In August 1974 Mr and Mrs Willoughby applied for and

were granted registration under the Business Names Act 1963

(S.A.) ("the Business Names Act") of the business name

"Caterpillar Loader Hire Service in respect of the business

described as hire of front-end loaders" ts commence on 1

September 1974. They continued to use that business name until

In February 1976 the patent attorney acting for the respondent wrote to Mr and Mrs Willoughby complaining of their use of the word "Caterpillar" as part of their business name "Caterpillar Loader Hire Service". Correspondence then ensued between the patent attorney and the solicitors for the respondent on the one hand and the solicitors for Mr and Mrs Willoughby on the other hand. Mr and Mrs Willoughby placed an advertisement in the Adelaide Advertiser published on 15 June 1976 stating that their business was not connected with Caterpillar Tractor Co. of the U.S.A.

_ On . 2 November 1976 Mr and Mrs Willoughby gave notice under the Business Names Act that on 27 October 1976 they had ceased. to use the business name "Caterpillar Loader Hire Service". On the same day Mr and Mrs Willoughby caused the first appellant to be incorporated. Upon its incorporation the first appellant tock cover the business previously carried on by Mr and Mrs Willoughby under the name "Caterpillar Loader Hire Service". In late November 1976 the first appellant was granted registration under the Business Names Act of the business name "Willoughby's Caterpillar Loader Hire Service". Mr and Mrs Willoughby are the only shareholders and directors of the first

Since its incorporation the first aprellant has carried on the business of hiring front-end ioaders under the name "Willoughby's Caterpiliar Loader Hire Service". The business has continued to be the hiring out at hourly rates of front-end

loaders manufactured by the respondent with operators to work

In November 1976 the first appellant owned two "Caterpillar" front-end loaders. It acquired three more and by the date of trial (August 1982) it owned five of them. Each machine bears the name "Caterpillar". It owns three vans which are. used by operators to provide a "back-up service" for the loaders let. out om hire. Until June 1977 the words "Caterpillar Loader Hire" were painted om both sides of each van in large black lettering and beneath those words but in less bold Iettering the word "Service" appeared 'in script design.

The first appellant also used letterheads, invoices and statements on the top of which there were two configurations depicting front-end loaders, and the words "Caterpillar Loader Hire Service". The words "Caterpillar Loader Hire" stood out more prominently than the word "Service". The first appellant arranged for the insertion in the White and Yellow Pages of the Adelaide Telephone Directory of entries under the name "Caterpillar Loader Hire Service". The entry in the Yellow Pages was in the form of an advertisement displaying the woras

"Caterpillar Loader Hire" in contrast to the wora "Service". In

June 1977 the word "Willoughby's" was superimposed, in script

design, above the words "Caterpillar Loader Hire" on che

signwriting on the vans and on the first appellant's stationery.

In about June 1977 Mr Willoughby took steps to change

the entries in the telephone directory. Altered entries first appeared in October 1978. The entry in the Yellow Pages appeared as "Willoucghby's Caterpillar Loader Hire Service" with prominence still being given to the words "Caterpillar Loader Hire". The shirts and overalls worn by operators of the machines had embroidered on them a monogram bearing the name "Willoughby's

Caterpillar Hire Service". There has been no change in the style

In December. 1980 the respondent commenced these proceedings in the Supreme Court of South Australia to restrain

the appellants from infringing the two registered trade marks "Caterpillar". The learned trial Judge (Walters J.) gave

judgment in favour of the respondent and granted injunctions restraining the appellants from infringing the two marks. His Honour granted certain other relief to which I shall refer later.

The appellants appealed to this Court from his Honour's judgment.

Before turning to the arguments advanced before us I shall say something about service marks and their place in the Act. This is the first case to my knowledge where service marks

have come under the scrutiny of the courts of this country. Some

reference to the history of service marks ana the purpose they serve is called for as 1t assists in both understanding and

Until the Amendment Act Australian Trade Marks Acts limited their recognition of trade marks to marks used or

proposed to be used in relation to goods. This limitation still applies in the United Kingdom notwithstanding the recommendation

of the Mathys Committee which was established to examine British trade mark law and practice. In its report in 1974 (CMND 5601)

"(L) That provision should be made in the Trade. Marks Act for the registration. of

marks used or proposed to be used for distinguishing services offered in the course of trade or business.

(ii) That the provisions relating to marks for goods. in. the Trade Marks Act should apply sao far as tis feasible to marks for services.

(Lit) That the prohibition of registration of identical and nearly resembling marks for services should apply inthe case of closely related services.

(iv) That there should be provision for the refusal of Marks for services which conflict with the same or nearly

resembling marks already registered for closely related goods and vice versa."

Extension of the registration of trade marks to include marks used in relation to services has been effected in the trade marks legislation of many countries. The U.S.A. was the first to

legislate in this respect by the Lanham Trade Mark Act 1946. By

43 countries including the U.S.A., Canada. France, Italy, Sweden, USSR. the Philippines, Taiwan and d«orea had amenaed thezr trade marks laws to provide statutory protection for service

The twentieth century has witnessed the growth and increasing importance of commercial and industrial services. This has been reflected in the demand by organizations representing industry, trade, commerce and the professions for the extension er trade marks legislation to include the

registration of marks used to distinguish services. The services

involved are extensive and include insurance, finance, advertising, the construction and repair industry,

communications, transport, education, entertainment, hiring and

Various circumstances combined to delay the introduction of legislation to provide for service marks until the enactment in 1978 of the Amendment Act. Those circumstances were the comparatively recent expression of the need to extend the

protection of the Act to service marks, the tendency of Australian trade marks legislation to follow the United Kingdom legislation, the absence of any extension by the United Kingdom Parliament of protection to service marks and the long held view in this country, since dispellec or at least seriously doubted, that the Commonwealth had no sower to legislate for registration

of service marks based on tne judgment cf che High Court in

Attorney-General For the State of New South wWaies v. The Srewer7

Emplovees Union of N.S.W. ("Union Lapel Case") (1908) 5 C.L.R.

Prior to the Amendment Act coming into operation on l February 1979 the protection of service marks was left largely to passing off actions, business names and companies legislation, the registration under the Act of trade marks for goods used in the course of supplying a service (for example, the proprietor of a hotel chain registering goods marks in respect of packaged foods, towels and linen, stationery and souvenirs) and the comsumer protection provisions of the Trade Practices Act 1974

("the Trade Practices Act"), in particular ss. 52, 53 and 55A.

The way in which the Act was amended to extend its protection toa services was broadly to apply the provisions retating to goods .marks sq far as feasible to service marks. This has also been the practice in other countries where service marks are registered, notably the U.S.A. and Canada. The principal machinery adopted by the Amendment Act to achieve this purpose was to extend the definition of a "trade mark" in sub-s.

6(1) of the Act to include a mark used in relation to services.

(a) except in relation co Part XI. 2 mark used or vorcrcsed to 26 used in rceaiaticn to goods 2f services For the survose cr indicating, or so aS tO indicate, a

connexion in the course of trade between the goods or services and a

person who has the right, either as proprietor or as registered user, to

use the mark, whether with or without an indication of the identity of that person; and (b) in relation to Part XI, a mark registrable, or registered, in Part C of the Register;" In this way the provisions as to registration, associated trade marks, infringement, assignment, registered users, certification and defensive marks apply equally to marks

The Act defines: neither "services" nor "goods". In the absence of a statutory definition of "services" in the Act it will fall to the courts tc give meaning to the word. Some guidance may be obtained from the Mathys Committee's

recommendation (para. 67) that any definition of "services" in the Trade Marks Act 1938 (U.K.) should be broad enough to include

"(i) consultancy and advisory services which- involve no goods;

(iL) similar services which involve goods and can be provided either with or without the promotion, or sale, of goods; and

(iii) services which necessarily involve the use, or sale, of goods."

The definition of "services" in the Trade Practices Act 1974 (sub-s. 4(1)) may also be a useful quide. The breadth of

the notion of services is lilustrated by the eight classes of

services which nave been adoptea by the Traae Marks Regulations - Statutory Rules 1979 Ne. 11. That classification corresponds to

the classification of "services" used under the Nice Aqreement of

1957, as subsequently revised, to which Australia has acceded.

Although service marks are in their infancy in Australia they may give rise to problems of confusion between service marks themselves, and between goods marks on the one hand and service marks on the other, of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone. It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade Marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely rélated. Examples that .present practical difficulties are the sale of godds. such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials onthe one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on

In addition to similarity between qoods anda services there may be confusion between trade marks used by different proprietors for similar services: for example the business of a real estate agent of selling flats on the one hand and the

business of managing flats and bodies corporate on the other.

Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale er promotion of goods. Parliament recognised this potentiality for confusion between marks for goods and services where they are closely related to each other by amending various sections of the Act. including s. 23 as to non-use of trade marks, 3.33 as to Prior registration cof conflicting marks and s.36 relating to

The potentiality for confusion between trade marks lies behind the legislative purpose of refusing registration to marks the use of which would be likely to deceive or cause confusion (para. 28(a))}. This was the case with marks for goods and now

extends to marks for services whether as between themselves or as

Until the "association" provisicns of the Trade Marks

Act 1905 (U.K.) were introduced one person could not register two

marks substantially the same: In the Matter of John Player & Sons' Application for a Trade Mark (1901) 18 R.P.C. 65. The Act

does not deny registration to confusingly similar trade marks owned by the one person, but by the "association" provisions (ss. 36 - 39) the Act seeks to ensure that such marks remain in the same ownership. By sub-s. 36(1) the Registrar may at any time require that two trade marks be entered in the Register as "associated trade. marks" where the words are substantially identical or soa neariy resemble each other as to be likely to deceive or cause confusion and some of the goods or services for which one mark is registered, or is the subject of an application for registration, are of the same description as, or are closely

At a glance

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Judgment (391 paragraphs)

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