Re Telmak Teleproducts (Australia) Pty Limited v Coles Myer Limited [1989] FCA 272; 15 IPR 362

Re Telmak Teleproducts (Australia) Pty Limited v Coles Myer Limited [1989] FCA 272; 15 IPR 362 - FCA 1989 case summary — Zoe

[27]

14. Notwithstanding the strong submission made by counsel for Telmak that his Honour's conclusions took account only of the words and their order and failed to give sufficient weight to the matters he relied upon in relation to get up, I find it difficult to disagree in any respect with what his Honour has said. The facts that the words are ordinary English words and are descriptive of the products of the two parties may not be conclusive of what the outcome of the appeal should be, but they are all-important circumstances which must be kept firmly in mind. Counsel for Telmak emphasized the get up as a whole. But the words are a prominent part of the get up upon which counsel rely and must therefore have substantial relevance in the overall consideration of the matter. In relation to get up, I think, contrary to the thrust of counsel's submissions, that it would be wrong to look only at so much of the packaging of the two products as consists of the words in question. The entirety of the get up needs to be considered. As mentioned, the words occupy 10 per cent of the tops and bottoms of the two boxes. The rest of the material on the boxes contains substantial differences. The products which are depicted thereon are closely similar, but they are depicted in different colours and the photographs of them taken from different angles; and whilst the Telmak boxes make claims for the type of cooking for which its pans may be used, the Coles' boxes describe the nature of the finish which its products have. Additionally, the Telmak boxes show dishes prepared, or already cooked, for which its pans may be used. No similar display appears on the Coles' boxes. The similarities caused by the use of the Telmak words in precisely the same order on each box in type or print of the same size constitute an important factor. But, even so, the colour of the type is not the same; it is entirely white in the case of the Telmak boxes, and partly white and partly red in the case of the Coles' boxes.

[29]

16. There is a further factor. His Honour made the point - I have referred to it earlier - that customers would be unlikely to identify the Telmak pan by reference to the Telmak words. Even the Telmak witnesses did not use them when referring to it in ordinary conversation. To use an expression, they were somewhat of "a mouthful". Furthermore, they were not prominently featured in Telmak's television advertising. A video of the advertisement in evidence shows the Telmak box, and thus the Telmak words, fleetingly before the pan itself is displayed and claims for what the pan will do are made. This is what occupies most of the time of the advertisement. In those circumstances it might have been expected, as indeed the evidence established to be the case, that what potential customers would be interested in was the fact that the pan was a dry-fry pan but could be used as an oven although on a stove top. As indeed happened, they would be most likely to ring up Telmak or to go into a store stocking the Telmak pan and ask for the pan they had seen advertised on television. Except in Perth, no customer would be likely to see the two products in the same store. K-Mart did not stock the pans anywhere except in Perth where 750 of the Coles' pans were also for sale. It seems most unlikely to me that any customer seeing the Telmak pan in a shop other than a K-Mart shop, where the two products might be seen in close proximity, would be particularly drawn by the Telmak words and the way in which they were got up. In that situation a customer's curiosity might well be aroused. Two closely similar products would be on display each bearing the Telmak words in the way I have described, but the one priced at about $15 and the other at about $40. One product would bear the Telmak name and be shown as having been made in Australia; the other would have no name and be shown as having been made in Taiwan. In those circumstances, customers would be likely to be confused. Some might be actually misled into thinking that the two products, despite their respective places of manufacture, came from the same source. But that circumstance does not touch the question whether Telmak has established goodwill or reputation in the words and get up in question. For reasons which I have given, I am of opinion that it has not.

[86]

"The real question is the simple and familiar

one. Have the Appellants proved that the use

by the Respondents of the trading style

'Office Cleaning Association' is calculated to

lead to the belief that their business is the

business of the Appellants? It is in these

words 'calculated to lead to the belief' that

the issue lies. It is a calculation often

difficult to make, as the different estimates

in the Court below in this case indicate. The

nature of the words which are used in the

trade name, the circumstances and

peculiarities of the trade, the motives,

proved or presumed, of the trader who would

use the words, all these and many other

factors must be considered by the judge in

determining whether a Plaintiff can succeed in

his claim. It is a question upon which the

judge who has to decide the case has to bring

his own mind to bear and which he has to

decide for himself . . . But instances of

actual deception will be given their due

weight.

In the present case there are certain

considerations to which I think it worth while

to call particular attention.

Foremost I put the fact that the Appellants

chose to adopt as part of their title the

words 'Office Cleaning' which are English

words in common use, apt and more apt than any

other words to describe the service that they

render. This is a trade name, not a trade

mark, case, but I would remind your Lordships

of the close analogy between the two classes

of case . . . So it is that, just as in the

case of a trade mark the use of descriptive

words is jealously safeguarded, so in the case

of trade names the Courts will not readily

assume that the use by a trader as part of his

trade name of descriptive words already used

by another trader as part of his trade name is

likely to cause confusion and will easily

accept small differences as adequate to avoid

it. It is otherwise where a fancy word has

been chosen as part of the name. Then it is

that fancy word which is discriminatory and

upon which the attention is fixed, and if

another trader takes that word as part of his

trade name with only a slight variation or

addition, he may well be said to invite

confusion. For why else did he adopt it?

Secondly I observe that here there is in the

Respondents' choice of name no improper or

sinister motive. The learned judge found that

they did not intend to cause confusion between

their business and that of the Appellants by

dropping the word 'Westminster'. This is not

a matter of conclusive importance. Confusion

innocently caused will yet be restrained. But

if the intention to deceive is found, it will

be readily inferred that deception will

result. Who knows better than the trader the

mysteries of his trade? For myself I find the

Respondents' explanation of their action

satisfactory. They were, I think, justified

in the fear that some potential customers

might think they did not operate outside the

Westminster area and for that reason refrain

from employing them. And it is just this sort

of consideration which makes it undesirable

that a first user of descriptive words should

be entitled to demand that a second user

should differentiate by any form of limiting

words. To speak of a monopoly is inaccurate,

but anything that looks like a monopoly is

suspect.

Thirdly, your Lordships will note that the

Appellants do not claim that the words 'Office

Cleaning' have acquired a secondary meaning,

by which I understand them to mean that they

do not claim that these words mean a service

of cleaning offices as rendered by them and

them alone. Such a claim would indeed be

impossible to maintain. But, while making

this disclaimer, they nevertheless contend

that as a trade name 'office cleaning' is so

much identified with their business that any

trader who ventures to use these words as part

of his trade name must clearly differentiate.

This seems to me to be no more than a

restatement of the familiar problem. The

Court will undoubtedly take into consideration

long user of a descriptive name but will not

forget that, since it is descriptive, small

differences may suffice."

At a glance

Court

Decision date

Before

Source

Judgment (116 paragraphs)

Re Telmak Teleproducts (Australia) Pty Limited v Coles Myer Limited [1989] FCA 272; 15 IPR 362 (21 July 1989)

Parties

Legislation Cited (4)

Cases Cited (3)