Legal Principles
72 The general principles governing a trade mark infringement claim were not substantially in dispute between the parties. For the most part, the argument concentrated on the application of these principles to the facts. Nonetheless, it is important to recall the principles.
73 First, as the primary Judge pointed out, the question of deceptive similarity of marks, unlike substantial identity, is not to be judged by a side by side comparison. As Windeyer J said at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, at 415:
'On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.'
See, too, CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, at 61, per curiam.
74 In assessing the impression created by the mark, it is important to consider 'the idea of the mark', that is 'the idea which the mark will naturally suggest to the mind of one who sees it': Jafferjee v Scarlett (1937) 57 CLR 115, at 121, per Latham CJ (with whom McTiernan J agreed). As Latham CJ observed in Jafferjee (at 122):
'it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived…. Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks. They will be guided, so far as they are influenced by trade marks at all, by a general recollection or impression of the mark which they have seen.'
75 Secondly, the question of deceptive similarity involves factual issues in respect of which similarities of sound may be important. Dixon and McTiernan JJ explained the approach to be taken in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, at 658, as follows:
'But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.
In deciding this 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. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.'
Later their Honours observed (at 659) that the question is:
'never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.'
76 Thirdly, it is necessary to show a tangible danger of deception or confusion, although it is enough if an ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 594-595, per Kitto J; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, at 382, per French J (Tamberlin J agreeing).
77 Fourthly, as is implicit in the passage quoted above from Australian Woollen Mills, the Court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion. For example, in Aristoc Ltd v Rysta Ltd [1945] AC 68, the House of Lords held that the respondents were not entitled to register 'Rysta' as a trade mark in respect of stockings in the face of the appellants' 'Aristocrat' registered mark for the same goods. Viscount Maugham (with whom Lords Thankerton and Wright agreed) adopted (at 86) the reasoning in the dissenting judgment of Luxmoore LJ in the Court of Appeal: Rysta Ltd's Application (1943) 60 RPC 87. Luxmoore LJ said (at 108-109):
'The answer to the question whether the sound of one word resembles too nearly the sound of another so as 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 assistance ministering to that person's wants.'
Viscount Maugham accepted Luxmoore LJ's view that there was a tendency to slur a word beginning with 'a' and that the similarity between the pronunciation of 'Rysta' and 'Ristoc' was fairly obvious. Aristoc v Rysta thus recognises that the concept of imperfect recollection may be applied to the pronunciation of a particular word included in a trade mark.
78 Aristoc v Rysta was applied by the High Court in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353. The proprietor of the trade mark 'BERLEI', registered in respect of clothing, succeeded in expunging from the register the trade mark 'BALI-BRA', registered in respect of brassieres. Mason J (with whom Stephen J agreed) held that the use of 'BALI-BRA' 'would be likely to deceive or cause confusion' within the meaning of s 28(a) of the Trade Marks Act 1955 (Cth). His Honour considered (at 362) that the strength of the proprietor's case lay in the finding that the two marks were phonetically alike, one being pronounced 'Burley' and the other 'Barley'. Mason J accepted that the likelihood of confusion arising from phonetic similarity was reduced because the evidence showed that brassieres were usually bought after inspection or a fitting. But, his Honour said (at 362):
'that risk is not eliminated. No doubt orders are sometimes placed by telephone. And in considering the likely reaction of a customer it is important to take into account, not the person whose knowledge of the two marks and the goods sold under them enables her to distinguish between them, but the person who lacks that knowledge. As Luxmoore LJ said in Rysta Ltd's Application…
"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".'
See, too, a decision of the House of Lords to the same effect on similar facts in Berlei (UK) Ltd v Bali Brassiere Co Inc [1969] 2 All ER 813.
79 Fifthly, the authorities also recognise that the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word (as in Aristoc v Rysta and Berlei v Bali). If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark. The other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark.
80 These principles are illustrated by Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, a decision strongly relied on by the respondents in the present case. In Saville, the infringement action was brought by the proprietor of a trade mark consisting of the word 'June' printed in a special manner. The word appeared with a bar as a background behind the letters. The word 'June' therefore occupied a prominent position in the mark. A relatively small garland of flowers joined the ends of the bar in the form of an arc. (The report of the case does not reproduce the mark, but Mr Shavin helpfully provided the Court with a copy of the mark itself.) The appellant's trade mark was registered in respect of perfumery, including toilet articles and had been extensively used and advertised. The respondent sold toilet articles under the name 'June'. Not surprisingly, it was found that some members of the public asked for the respondent's preparation by the name 'June'.
81 Viscount Maugham (with whom Lord Russell of Killowen and Lord Romer agreed) said that it was manifest from an inspection of the respondent's mark that the distinguishing feature was the word 'June' in a special script. It was that essential feature that the appellant had used as a mark for goods of the class for which the respondent's mark was registered. That use was one which (at 175) was:
'likely to deceive or cause confusion in the minds of purchasers with a normally imperfect recollection of the precise picture representing or containing the registered mark'.
This passage suggests that the notion of imperfect recollection is based on the assumption that consumers will see the registered mark itself.
82 The primary Judge in the present case supported his finding that the phrase 'Crazy John' was one of the essential features of the 1995 Mark by citing observations of Greene MR in the Court of Appeal in Saville. His Lordship there said (at 162) that in deciding whether a feature is a distinguishing feature of a mark, not only ocular examination but evidence of what happens in practice in a particular trade is relevant. He was persuaded by evidence that it was by the word 'June' that
'traders and members of the public who see the mark on the goods which they purchase describe the Appellants' goods.' (Emphasis added.)
Greene MR continued (at 162):
'Now the question of resemblance and the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing features'.
83 Saville was applied by the Privy Council in de Cordova v Vick Chemical Co (1951) 68 RPC 103, an appeal from Jamaica. The Privy Council held that registered trade marks containing the word 'VapoRub' had been infringed by the importation and use of an ointment bearing on the jar the trade name 'Karsote Vapour Rub'. The first of the registered marks (No 1852) consisted of the words 'Vicks VapoRub Salve' and a triangle with the words 'Vicks Chemical Company' printed on the sides and other subsidiary words below the triangle. The second registered mark consisted of the single word 'VapoRub'.
84 Lord Radcliffe emphasised (at 105-106) that the infringer had used one of the 'essential features' of the registered trade marks:
'They have not used the mark itself on the goods that they have sold, but a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features. The identification of an essential feature depends partly on the Court's own judgment and partly on the burden of the evidence that is placed before it. A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.' (Emphasis added.)
Since the evidence showed that 'VapoRub' was commonly used by members of the public to mean 'Vicks VapoRub', Lord Radcliffe considered that 'VapoRub' had to be treated as an essential feature of Mark 1852. See also Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 (Burchett J).
85 Reference should also be made to the decision of a Full Court of this Court in Henschke v Rosemount. Henschke was the proprietor of the trade mark 'HILL OF GRACE', registered in respect of wine and spirits. It sought to restrain Rosemount from using a mark 'HILL OF GOLD' in connection with the sale of wines. The infringement suit failed at first instance and Henschke appealed.
86 On appeal, Henschke argued that the high reputation of Hill of Grace was important on the question of trade mark infringement under s 120(1) of the TM Act. The Full Court (at 61-62) accepted that the likelihood of deception must be judged against the relevant circumstances. These include the usages of the particular trade, the characteristics of consumers of the relevant products and the ways in which wines are marketed. However, their Honours pointed out that the test of deceptive similarity must be applied whether the mark of which infringement is alleged has been newly registered and is therefore almost unknown, or has been prominently displayed on merchandise for many years. The Court said (at 62 [44]):
'[e]ssentially what is required is a comparison between the mark of the registered owner and that of the alleged infringer. A wider inquiry of the kind that might be undertaken in a passing off action, or in a proceeding in which contravention of Pt V of the TP Act is alleged, is not appropriate.'
87 Their Honours quoted with approval a passage from the judgment of Gummow J in New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, not affected by the appeal proceedings, as follows (at 589):
'In determining whether "MOO" is deceptively similar to "MOOVE", the impression based on recollection (which may be imperfect) of the mark MOOVE that persons of ordinary intelligence and memory would have, is compared with the impression such persons would get from "MOO"; the deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1953) 109 CLR 407 at 414-5; Polaroid Corp v Sole N Pty Ltd [1981] 1 NSWLR 491 at 498. The latter case is also authority (at 497) for the proposition that the essential comparison in an infringement suit remains one between the marks involved, and that the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit.'
88 The Court in Henschke v Rosemount observed (at 62-63 [45]) that, consistently with the nature of the test of deceptive similarity as interpreted in the authorities, including Saville:
'[i]t is not easy to see what relevance the reputation an applicant may have in a particular mark (even the "icon status" of that mark) has in an action for infringement brought in reliance on s 120(1) of the TM Act… Nor, with certain exceptions to which we shall come, were we directed to a course of authority in which, where there has been a question of infringement by use of a deceptively similar mark, the reputation of the plaintiff in the mark allegedly infringed has been taken into account. Indeed, the course of authority has been quite to the contrary. The search has concentrated on such matters as ascertaining the essential element of a mark, the impression taken away by one who looks at it, and how it sounds when pronounced…'
89 Their Honours analysed the advice of Lord Radcliffe in de Cordova, since the decision had been invoked to support the proposition that reputation evidence can be taken into account in an infringement suit under s 120(1) of the TM Act. They considered (at 63 [46]) that de Cordova stood for the principle that the Court should take into account the significance of a particular word or phrase among traders or consumers in a particular market:
'[i]f among those persons particular words have come to mean exclusively the goods of a proprietor of a registered mark, the registered mark being or including those words or a "fancy word" composed of them and, when pronounced, sounding virtually the same, then use by another trade of those words in relation to goods in the class for which the mark is registered will infringe because, necessarily in the circumstances, use of the words by that trader is likely to cause confusion.'
90 The Court in Henschke v Rosemount also considered the decision of another Full Court in Registrar of Trade Marks v Woolworths Ltd. In Registrar v Woolworths, the majority (French and Tamberlin JJ) concluded that the word 'Woolworths' was so well known that it was the element of the allegedly infringing mark ('WOOLWORTHS Metro') most likely to be recalled. The Court in Henschke v Rosemount thought that Registrar v Woolworths stood for this proposition (at 66 [52]):
'in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.'
Any wider proposition was inconsistent with established authority. See, too, Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH (2001) 190 ALR 185, at 217 [155], per Lindgren J.