4.4 Consideration
94 The infringement findings of the primary judge depended on the application of s 120 of the Trade Marks Act and the principles relevant to determining whether one mark is deceptively similar to another.
95 The test for deceptively similarity has been long settled. In Australian Woollen Mills, Dixon and McTiernan JJ described it as follows at 658:
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 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.
96 A little later, their Honours emphasised that the determination for the Court is one of estimation and impression, it is never susceptible of much discussion (at 659).
97 The distinction between consideration of whether one mark is deceptively similar to another, rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark, when conducting the comparison. In this context, allowance must be made for the human frailty of imperfect recollection. In New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd [1989] FCA 124; (1989) 86 ALR 549, in a passage in his judgment not affected by the proceedings on appeal, Gummow J said 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 (Australia) Ltd (1963) 109 CLR 407 at 414-15; 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.
This passage was approved by the Full Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42 at [44] (Ryan, Branson and Lehane JJ) and more recently by the Full Courts in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at [27] (McKerracher, Gleeson and Burley JJ) and Hashtag Burgers at [64].
98 The determination of whether a sign used as a trade mark is deceptively similar to a registered trade mark involves an evaluative exercise upon which reasonable minds might differ. An appellate court can only intervene "if it is first shown that [the] assessment was affected by error of fact or law": Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 at [92] (Keane CJ, Stone and Jagot JJ); Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153; (2015) 327 ALR 630 at [123] (Bennett, Katzmann and Davies JJ). Questions of judgment, nuance and degree are involved. Moreover, in a case of this kind, absent an error of principle, and unless the appeal court comes to an affirmative conclusion that the decision of the primary judge is wrong, weight should be given to the primary judge's opinion: S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd [1988] FCA 1463; (1998) 88 FCR 354 at 361 (Hill, Nicholson and Emmett JJ). Error may lie in the taking of a false step in the reasoning, or manifest itself where the appellate court has a sufficiently clear difference of opinion: Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; (2018) 261 FCR 301 at [49] (Perram J). Where the process of evaluation by the primary judge has miscarried, the Full Court should carry out its own evaluation: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; (2017) 251 FCR 379 at [55] (Greenwood, Jagot and Beach JJ); Aldi Foods at [2]-[10] (Allsop CJ, with whom Markovic J agreed) and [49]-[50] (Perram J); see also Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd [2018] FCAFC 105; (2018) 264 FCR 422 at [35]-[37] (Murphy, Gleeson and Markovic JJ); Verrocchi v Direct Chemist Outlet Pty Ltd [2016] FCAFC 104; (2016) 247 FCR 570 at [45]-[47] (Nicholas, Murphy and Beach JJ); Hashtag Burgers at [8]; Combe International at [12]-[15].
99 The task of an appellate court in reviewing an evaluative assessment was explained by Allsop J (as his Honour then was) in Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd [2001] FCA 1833; (2001) 117 FCR 424 at [28]-[29] (Drummond and Mansfield JJ agreeing):
[28] …First, the appeal court must make up its own mind on the facts. Secondly, that task can only be done in the light of, and taking into account and weighing, the judgment appealed from. In this process, the advantages of the trial judge may reside in the credibility of witnesses, in which case departure is only justified in circumstances described in Abalos v Australian Postal Commission (1988) 171 CLR 167; Devries v Australian National Railways Commission (1993) 177 CLR 472 and SRA v Earthline, supra. The advantages of the trial judge may be more subtle and imprecise, yet real, not giving rise to a protection of the nature accorded credibility findings, but, nevertheless, being highly relevant to the assessment of the weight to be accorded the views of the trial judge. Thirdly, while the appeal court has a duty to make up its own mind, it does not deal with the case as if trying it at first instance. Rather, in its examination of the material, it accords proper weight to the trial judge's views. Fourthly, in that process of considering the facts for itself and giving weight to the views of, and advantages held by, the trial judge, if a choice arises between conclusions equally open and finely balanced and where there is, or can be, no preponderance of view, the conclusion of error is not necessarily arrived at merely because of a preference of view of the appeal court for some fact or facts contrary to the view reached by the trial judge.
[29] The degree of tolerance for any such divergence in any particular case will often be a product of the perceived advantage enjoyed by the trial judge. Sometimes, where matters of impression and judgment are concerned, giving "full weight" or "particular weight" to the views of the trial judge might be seen to shade into a degree of tolerance for a divergence of views [citations omitted] … However, as Hill J said in Commissioner of Taxation (Cth) v Chubb Australia (1995) 56 FCR 557 at 573 "giving full weight" to the view appealed from should not be taken too far. The appeal court must come to the view that the trial judge was wrong to interfere. Even if the question is one of impression or judgment, a sufficiently clear difference of opinion may necessitate that conclusion.
100 As noted, there is no criticism advanced on appeal of the primary judge's recitation of the principles relevant to assessing deceptive similarity. Instead, PDP challenges the primary judge's reasoning.
101 We do not consider that the first three arguments advanced have merit.
102 It is true that the primary judge, at the invitation of PDP, commenced by looking closely at the WS Device Marks and comparing them to the New Wicked Mark. In so doing, her Honour pointed out similarities and differences between the marks, some in fine detail. Had that been the end of the analysis it would have reflected error by confusing the test for substantial identity with that for deceptive similarity. But it was not. Her Honour went on to consider aural similarities and differences ([171]). She also considered the meaning of the respective marks ([172]) and what might be considered by the ordinary consumer to be the essential features of the WS Device Marks that would strike the eye or fix in the recollection of consumers ([178]). Only then did the primary judge proceed to consider what persons of ordinary intelligence and memory who see the WS Device Marks are likely to recall of those marks ([179]). The primary judge found that such people are likely to recall both words ("wicked" and "sister"), and that they are stylised ([179]). Her Honour rejected the argument that the first word "wicked" with its first letter "W" stylised in the form of a pitchfork was an essential, distinctive and memorable feature of those marks. In so doing, her Honour considered that whilst all of the four words in "Wicked Sister Fine Foods" formed part of the marks, the two words "Wicked Sister" were the most likely to be retained by the ordinary consumer ([171]). She rejected the contention that "wicked" was of greater prominence. In her evaluation, the word "wicked" as an adjective used in conjunction with the noun "sister" was not a strongly distinguishing feature. We consider these matters to be typical of the type of evaluation that a court is asked to undertake. PDP has not demonstrated error in the primary judge's approach.
103 Her Honour explained her view that "wicked" was not a strongly distinguishing feature of the Wicked Sister Marks by reference to the Full Court decision in the Telstra Corporation case. In that case the Full Court found that YELLOW as a trade mark was not deceptively similar to YELLOW DUCK, YELLOW ZONE or YELLOW DOOR because the word "yellow", when used as an adjective, tended to fade as a strongly distinguishing feature in the presence of the arbitrary noun that actually distinguished the services in question. The Full Court also noted the clear phonetic and visual differences between the marks and the different idea conveyed by them. Plainly enough, in the present case it is the registered mark that includes the two words WICKED SISTER and the impugned mark that uses WICKED alone, but the analysis remains applicable and her Honour was entitled to consider that matter in reaching her evaluative conclusion.
104 PDP seek to distinguish Telstra Corporation. They submit that in that case the word YELLOW was a plain word mark without stylisation. Although they accept that WICKED is an ordinary English word to which no party can claim exclusive right "in and of itself", they submit that the stylisation of the word WICKED, and in particular the pitchfork stylisation of the first letter "W", is "critical" as an unusual feature. However, it is necessary to look at all of the elements of the mark in their context, including the size, prominence and stylisation of words and device elements, and their relationship to each other: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1 at [91]-[103] (Moore, Sackville and Emmett JJ); Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428; (2009) 177 FCR 300 at [21]-[22] and [32] (Bennett J); Optical 88 FCA at [100]. Even were it to be assumed for present purposes that "wicked" had no distinctiveness (which we doubt), it would not be appropriate to ignore its presence in the WS Device Marks, or to conclude that because it is an ordinary word, consumers would only pay attention to aspects of stylisation of that word and ignore the presence and meaning of the word in the context of the mark as a whole.
105 Furthermore, the primary judge plainly accepted that the relevant goods in question were fast moving consumer goods, and took that factor into account when weighing up whether or not a consumer, not credited with any high perception having regard to that circumstance, would be caused to wonder at the similarity between the marks ([179]-[181]).
106 In their fourth argument PDP submit that the primary judge emphasised the evidence as to how the parties' respective goods were in fact sold and overlooked the need to consider the full scope of PDP's registrations for the WS Device Marks, including the way in which they could be used in relation to the goods the subject of the registrations. They also submit that, in the passage emphasised below, the primary judge erred by conducting a side by side comparison of the respective marks.
107 At [181] her Honour said:
The evidence establishes that the goods are likely to be purchased in a supermarket or online from a supermarket or equivalent retailer. The goods are displayed in considerable quantities together. That is, the Wicked Sister Products are displayed together in the refrigerated section and the Wicked dips can either be displayed together at room temperature or placed in the refrigerated section with the berries. As Mr Valentine explains, the choice of where the Wicked dips are displayed is one for the retailer (see [83] above). Based on my observations of the evidence, while both products can be, and in the case of the Wicked Sister Products are, displayed in refrigerated sections, they are found in different parts of the stores. That is, the Wicked Sister Products are displayed in the refrigerated section in the dairy aisle while the Wicked dips, when refrigerated, are in the refrigerated section of the fresh produce area. In any event, consumers are able to view the products and their associated trade marks. While a consumer is not to be credited with any high perception, given the way they are displayed and the ability to view the brand and the product, I do not accept that simply because the goods are fast moving consumables consumers are more likely to be confused.
(Emphasis added)
108 There is force in the criticism advanced by PDP insofar as [181] suggests that the comparison to be made is between, on the one hand, the use of the impugned sign on goods bearing the sign by the accused infringer and, on the other hand, the actual use of the registered mark by its owner.
109 The relevant question is whether the impugned sign is deceptively similar to the registered trade mark having regard to the goods in respect of which that mark is registered. In that regard, it is necessary and appropriate for the Court to consider the course of business and the way in which the particular class of goods are sold. This gives the setting, and the habits and observations of the ordinary consumer considered in the mass affords the standard, to determine whether the impugned mark is, properly judged, deceptively similar: Australian Woollen Mills at 658.
110 It is relevant to consider such contextual matters in order to set the broad standard of analysis by reference to the likely behaviour of the ordinary consumer. Typically, the characteristics of that consumer may be discerned from:
(a) whether or not the goods are expensive or of personal or intimate interest, in which case closer attention may be given to detail of trade marks;
(b) whether or not the goods are cheaper or a fast moving consumer good where the consumer may be less involved and pay less attention to trade marks;
(c) how the goods are promoted and acquired which may indicate the relevance and importance of aural or visual aspects of the mark; and
(d) the outlets from which goods of the class are typically acquired, which may indicate how trade marks are likely to be displayed and perceived.
111 However, it is important to bear steadily in mind that the issue under s 120 is not whether the alleged infringer's conduct is deceptive or confusing, but whether the alleged infringer's trade mark is deceptively similar to the registered trade mark. Beyond having a general bearing on the habits and practices of consumers, more granular detail of actual trade circumstances of either parties' conduct is not relevant to the inquiry. This represents an important distinction between an infringement action under s 120 and proceedings for misleading or deceptive conduct under the Australian Consumer Law or the tort of passing off, where the inquiry into surrounding circumstances is broader, a point recently made with some emphasis by the Full Court in Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207; (2018) 268 FCR 623 at [68] (Allsop CJ, Besanko and Yates JJ).
112 It was not appropriate for the primary judge to descend to fine detail about the actual uses of the WS Device Marks. However, consideration of the trade context of use of goods within the scope of the registration was appropriate and necessary. In [181] the primary judge concluded that the goods are likely to be purchased in a supermarket or online from an equivalent retailer and that they are likely to be displayed in considerable quantities together, most likely in refrigerated sections of the stores. Those observations are typical of the required consideration of trade circumstances for goods sold in supermarkets of the type within the WS Device Marks' registrations. It is the further finding that the Wicked Sister Products (being those products defined by the primary judge at [91]) are displayed in the refrigerated section in the dairy aisle while the Wicked dips, when refrigerated, are in the fresh produce section, that involved an overly detailed focus on the actual presentation of the Wicked Sister Products rather than the uses authorised by the scope of PDP's registrations for the WS Device Marks.
113 In this regard we do not consider that this reasoning in [181] vitiates the conclusions of the primary judge in relation to the question of deceptive similarity. It may be noted that this paragraph appears following her Honour's conclusion at [179] that persons of ordinary intelligence would not, upon recalling the Wicked Sister Marks, consider that the New Wicked Mark was so similar that they would be left to wonder whether the goods sold under the New Wicked Mark came from the same source. Her Honour had also found at [180] that the goods in question are fast moving consumer goods sold at a low price point. There is no suggestion on appeal that that finding is not applicable to the goods within the scope of the Wicked Sister Marks' registrations. Accordingly, the observation of concern might be considered to be a stray remark. It went nowhere in her Honour's reasoning, because she had already acknowledged and applied herself correctly to the question of whether or not the ordinary consumer, with an imperfect recollection of PDP's marks, would be caused to wonder as to the source of the goods to which the New Wicked Mark had been applied.
114 Finally, we note that the emphasised sentence in [181] of the primary judgment (set out at [107] above), contrary to the submission advanced by PDP, does not suggest that the primary judge erroneously conducted a side by side comparison. We understand the observation to indicate that the primary judge considered that when goods are on display in the refrigerated section of a supermarket, consumers are able to see the product upon which the trade mark is applied. The evidence of typical displays of goods of the type falling within the registrations shows that observation to be apt.
115 PDP's final argument challenges the "little weight" that the primary judge gave to evidence going to actual confusion given by three trade witnesses, Mr Brebbia, Ms Medley and Mr Masluk ([194]).
116 In her findings at [195]-[198] the primary judge observed that none of these witnesses were as close to the hypothetical shopper as a witness could be, each having a personal or trade affiliation with either Mr Polly or PDP. Nor was it apparent to her Honour that these witnesses compared the New Wicked Mark with the WS Device Marks ([196]) or how they reconciled the difference between the New Wicked Mark applied to the impugned products with their knowledge of the differences between that mark and the WS Device Marks ([197]), citing the remarks of Nicholas J in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; (2012) 294 ALR 661 at [143].
117 We consider that her Honour's findings as to weight were within the range of conclusions reasonably open to her Honour on the basis of the evidence provided. No error is apparent in her evaluation of this evidence.
118 Mr Brebbia is an Italian food manufacturer who produces chilled dairy products on behalf of PDP. On a visit to Australia he observed the sale of some of Grasshopper's WICKED caramel sauce dip and believed that it was "part of the WICKED SISTER range" because: (1) the word "Wicked" was stylised in the same way as it appeared in the Wicked Sister brand; (2) the location of the products on the shelf close to where he would expect to find the WICKED SISTER range; and (3) the fact that the impugned product was also a dessert product. The latter two considerations are largely extraneous to the question of whether the marks are deceptively similar and no aspect of the evidence gives guidance as to how much weight Mr Brebbia gave to any of the three considerations.
119 From June 2015 to July 2017 Ms Medley was a category manager at Coles for chilled desserts when PDP supplied Coles with its Wicked Sister Products. At an unspecified date (her affidavit was sworn in September 2019) she saw WICKED branded dipping sauces and believed them to be manufactured by or on behalf of PDP "due to the similarity in branding" between the the WICKED dipping sauce and the Wicked Sister Products. Like Mr Brebbia, she had a professional affiliation with PDP that went well beyond that of the ordinary consumer. In her evidence she gives no guidance as to why she regarded the brands to be similar, whether it was because of the New Wicked Mark or because of the get up of the packaging or otherwise.
120 Mr Masluk is a friend of Mr Polly. In 2018 he visited a Coles supermarket and found a product called "wicked chocolate dip". He believed it to be part of the "WICKED SISTER range" because the wicked chocolate dip: (1) shared the common word "wicked" and similar style and lettering; (2) was a type of dessert similar to those sold under the WICKED SISTER range; and (3) it was located in the refrigerated section of the supermarket. Similarly to Mr Brebbia, Mr Masluk gives no evidence as to the influence of the latter two considerations in the formation of his belief.
121 In Vivo Nicholas J (with whom Dowsett J agreed) observed at [137] that although evidence of actual confusion may be highly persuasive, it must be assessed and evaluated by the Court to determine what weight should be given to it. This involves consideration of the quality of the evidence by reference to its internal logic, other evidence available in the case, and the Court's own knowledge of human affairs.
122 In our view it was entirely open to the primary judge to form the view that because of the content of the evidence and the particular circumstances of each witness, their evidence should weigh slightly in the balance. The same may be said of her Honour's conclusion that the evidence of Mr Polly, summarised in the primary judgment at [146]-[148], should not be given much, if any, weight. Mr Polly's evidence of undocumented complaints from third parties to PDP left no rational basis upon which one could form an understanding as to the basis for the complaints received.
123 Accordingly, ground 2 of the appeal must be dismissed.