4.5 Consideration
65 In ground 1 of the draft Notice of Appeal Combe contends that the primary judge erred in his consideration of deceptive similarity in 7 respects, which we have identified in [22] above. For the following reasons we consider that this ground identifies error of a type that warrants appellate intervention.
66 Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another if it so nearly resembles the other mark that it is likely to deceive or cause confusion. The question of resemblance is to be viewed having regard to the approach set out in the authorities to which we have referred above, but in each case it is necessary to commence the enquiry having regard to the prior registered mark and take the impression of the notional consumer, based on recollection, of that mark for the purposes of making a comparison with the mark that is said to be deceptively similar. In the present case, the primary judge placed significant emphasis on two conceptual aspects of the prior VAGISIL marks. First, the "central idea" of the marks (at [49], [50]), and secondly, the descriptive component of the marks, which was said to be the same as the central idea (at [50]). Both were said to convey VAG or VAGI, being slang words meaning vagina or vulva (at [1]).
67 The primary judge concluded that because the idea was descriptive, it was necessary to discount the first letters VAGI in their entirety for the purposes of analysis, and focus on the aspect of the mark which is distinctive, namely the letters SIL. Turning to the VAGISAN application, the primary judge again discounted the first letters VAGI in their entirety and considered that the final letters SAN were sufficiently distinctive to warrant a conclusion that VAGISAN was not deceptively similar to VAGISIL (at [50], [51], [54], [75]).
68 For the following reasons, we respectfully disagree with this approach.
69 First, at the outset it may be observed that the words have the same first five letters. In Dr Wolff's application, VAGIS is followed by only two letters, AN, which come at the tail of the word. Combe's prior marks are VAGIS followed by the two letters IL. VAGISAN has three syllables as does VAGISIL with VAGIS in both pronounced in the same way. Both marks look very similar, with only the final letters, AN or IL, to distinguish the two. An ordinary consumer, imperfectly recalling the VAGISIL mark and encountering VAGISAN is likely to remember some, but not all aspects of the former. A distinctive component of VAGISIL is the first two syllables. These are likely to be remembered. In speech the marks sound very similar. The first two syllables are the same. The final syllables SIL and SAN are both sibilant. The only difference in sound lies at the end of the word, which may be mispronounced or slurred or less readily recalled as the first parts of the word.
70 Secondly, to the extent that consumers consider the meaning of the made up word, they may, depending on the context and the goods to which it is applied, consider VAG or VAGI to be a reference to the vagina. That is a potent "idea" that sits in common for both VAGISAN and VAGISIL. The idea of a mark has a role to play in the analysis of deceptive similarity, although, as with many such tests, it forms only part of the overall analysis required to satisfy the statutory requirements of s 10 of the Act. An absence of visual or aural similarity is likely to lead to a conclusion that the two marks are not deceptively similar, despite similarity of idea.
71 In a comparison between marks, the role of the "idea" must be carefully considered. In Cooper Engineering the application was for registration of the words "Rainmaster". The opponent's mark was "Rain King". Dixon, Williams and Kitto JJ cited (at 538) the principles summed up by Parker J in In the Matter of an Application by the Pianotist Company Ltd. for the Registration of a Trade Mark (1906) 23 RPC 774. After pointing out the differences between the suffix "master" and the word "King" in appearance and sound their Honours continued (at 538-539):
The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods.
72 It is apparent from the foregoing that where there are visual or other features in common, commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive: see also Sports Café Ltd v Registrar of Trade Marks [1998] FCA 1614; 42 IPR 552 at 557 (Wilcox, Heerey and Lindgren JJ); Jafferjee at 121-122, 122-123. Conversely, dissimilarity in idea may point in the other direction (although in Hashtag Burgers the Full Court noted at [81] that there may be room for debate as to how far one can go with the idea, absent visual or aural similarity). Where, as here, the marks under consideration had many features in common, the primary judge ought to have considered the common idea to be a factor in favour of a finding of deceptive similarity.
73 Thirdly, in concluding that the vaginal reference in VAG and VAGI was descriptive, the primary judge appears to have assumed, notwithstanding his observation at [66], that the class 3 and class 5 goods in respect of which registration was sought and also the goods of the same description to which the VAGISIL marks were registered were confined to goods relevant to use on the vagina. However, deceptive similarity for the purposes of s 44(1) is not to be considered having regard to actual use, but rather to the extent of the monopoly sought. That is, as his Honour correctly noted, having regard to the full extent of the goods in respect of which the application is sought: Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; 129 CLR 353 at 362 (Mason J); MID Sydney at 245. In the present case, the class 3 and class 5 goods were not so confined. Indeed, it is difficult to see how that reference could be descriptive in the context of soaps or cosmetics, and only in very specialised circumstances may goods described as "pharmaceutical products, sanitary products for medicinal purposes; dietetic substances for medical purposes" potentially come within that description. In this regard, we respectfully consider that the primary judge fell into error.
74 Even if the goods in respect of which registration is sought were to be confined to feminine hygiene products, in our respectful view the conclusion as to deceptive similarity reached by the primary judge was not correct as a matter of evaluation. As we have noted, the correct comparison is to take the word VAGISIL and, holding that in mind as the notional consumer or trader, consider whether that consumer would be caused to wonder whether VAGISAN, when applied to the goods specified in the application, might not be the same source as VAGISIL in respect of those goods.
75 At [54], his Honour decided that the words VAGISIL and VAGISAN are not deceptively similar "substantially because the distinctiveness of the mark comes from SIL in the neologism VAGISIL".
76 While it was not impermissible to consider the different elements of the VAGISAN and VAGISIL marks, including whether those elements were descriptive, his Honour's analysis appears to have led the primary judge to assign less significance to the common VAG, VAGI or VAGIS element of the two marks than was appropriate having regard to the association with the word "vagina". Where, as here, the dominant aspect of the VAGISIL mark is the first five letters, in our view that is also the part of the mark that the consumer is likely to recall. Indeed, the consumer is more likely to recall the VAG or VAGI component because it carries connotations as a reference to the vagina or the vulva and is a word that represents a topic regarded with some awkwardness amongst consumers. Having noted the central idea conveyed by VAG or VAGI, the primary judge did not consider whether that part of the mark was more likely to be fixed in the consumer's mind than the whole of the VAGISIL mark. In our assessment, that was an important consideration because, to the extent that VAG or VAGI is associated with vaginas, this is likely to be a striking feature of the trade marks for consumers who are relatively unused to the mention of that intimate and internal female body part in public discourse. At [61] of his Honour's reasons, the primary judge referred to:
… evidence to the effect that vaginal dryness is an embarrassing or taboo subject and that cross-culturally women differ substantially in the likelihood of discussing the issue with a physician. The implication is that the same is true of other vaginal maladies, real or perceived. Ms Thevessen's evidence was also that many women are embarrassed to buy products like that so when they go into stores they would tend to get the product, buy it and get out quickly without drawing attention to the purchase. There was also evidence of a survey conducted in Germany (exhibits AT-7 and AT-8) showing that more than half the purchasers of such products bought them without the advice or intervention of a healthcare professional
77 Widespread discomfort around the discussion of female genitalia is reflected in the euphemistic description of the relevant products as "feminine healthcare" and "feminine hygiene". It is most likely that the consumer would take away a recollection that there is a trade mark for "VAG, VAGI or VAGIS something" and not have a clear recollection of the final letters in the word. In so doing, in our view when they come across VAGISAN, they are less likely to recall the final two letters of VAGISIL, and will be caused to wonder whether they are goods produced by or associated with the same trader.
78 It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead's Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.
79 In Broadhead's Application the Court of Appeal concluded that the trade mark ALKA-VESCENT for a specification of goods including effervescent tablets for making "seltzer water" was too close to the mark ALKA-SELTZER, which was registered for effervescent tablets for making seltzer water. At 214-215, Lord Evershed MR addressed the common syllable "Alka" in the two trade marks as follows:
The learned judge thought that the "Coca-Cola" case was inappropriate for consideration in connection with this case, because the words "Coca" and "Pepsi", or the parts of the formulae "Coca" and "Pepsi", were purely fancy names or words having no meaning of significance except as brand names. I do not think that is right. I think that the Assistant Comptroller rightly paid attention to the "Coca-Cola" case and did so because it had this feature in common with the present: that there was a common half in each of the two competing formulae in the "Coca-Cola" case as there is in this case, "Cola" in the Canadian case and "Alka" in this. I think that he was right in saying that, following the observations of Lord Russell, where you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common - although it does not flow from that (nor did the Assistant Comptroller, as I read his decision, make it so appear) that you must treat the words as though the common part was not there at all.
There is, however, this distinction between the cases which is of significance. In the present case it happens that the common part, "Alka", is obviously the more emphatic. The evidence shows that to the sufferers from all these maladies it is the "Alka" disyllable which is the more firmly fixed in their minds, whereas in the "Coca-Cola" case the common "Cola" was the subsidiary and unemphatic part, the words "Pepsi" and "Cola" being the more important: but that only emphasises after all what Lord Russell said, what the Assistant Comptroller said, what Roxburgh J said and what everyone from time to time says; and although it is obvious, it is perhaps worth repeating, that each case has to be decided on its own particular and peculiar circumstances.
80 Lord Evershed found that the word "ALKA" was a word commonly used in the trade as an abbreviation of "alkaline" (at 214.28) but nevertheless the application for ALKA-VESCENT was a mark that was, in effect, deceptively similar to ALKA-SELTZER. The later "VESCENT" aspect of the mark did not serve to distinguish. The point being that even were there to be a descriptive component common to the trade, it is necessary to conduct the comparison to which we refer.
81 In addition, in the present case, the findings of fact do not permit a conclusion that VAGI or VAGIS was a prefix commonly used in the trade as an abbreviation: contrast Mond Staffordshire where the High Court held that the suffix -SOL was commonly used in germicidal or medicinal preparations, such as "Lysol", "Phenol" and others (at 477-478) and MID Sydney where the Full Court found that the word "Chifley" was a familiar name to consumers (at 246). But were they to have done so, the question remaining to be asked is whether or not, having regard to the whole of the VAGISAN application, it was deceptively similar to VAGISIL. For the reasons given, we consider that it was.
82 In this regard we further note that the comparator mark VAGISIL is a made-up word. It has no intrinsic meaning. Any reference within VAGISIL to the nature or quality of the goods to which it refers amounts to an allusion, where those who perceive the mark would need to pause and consider what it means having regard to the goods on which it is applied: Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; 254 CLR 337 at [59].
83 Having regard to these matters, in our view ground (1) of the appeal is established with the consequence that ground (3) is also made out, such that the VAGISAN application should not proceed to grant. We do not consider that the matter raised in ground (2) gives rise to any separate point on appeal and as a stand-alone ground reject it.