67 As French J has observed, s 33 of the Act gives effect to the intention disclosed in the Second Reading Speeches for the Trade Marks Bill 1995, that there is to be a presumption of registrability when an application to register a trade mark is examined by the Registrar of Trade Marks ("The Registrar"); see also Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56. Under the Trade Marks Act 1955 (Cth)("the 1955 Act") the position was otherwise: the Registrar was to accept an application for registration only if satisfied that there was no lawful ground of objection to it.
68 Section 33 of the Act provides, so far as is here relevant:
"33(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it.
(2) [not here relevant]
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it;
the Registrar must reject the application.
(4) [not here relevant]".
69 Thus, although s 44(2) of the Act is not drawn in terms of the Registrar's satisfaction, the practical effect of s 33 is to import into the test established by s 44(2) the notion of the Registrar's satisfaction (or, on appeal to a judge of the Court, the judge's satisfaction) (Blount v Registrar of Trade Marks at 59). A decision as to "satisfaction" is open to review if it is affected by error of law, or if the decision-maker takes into account extraneous matters or excludes from consideration relevant matters. However, because s 44(2) of the Act is concerned ultimately with matters of impression to which different minds could give different answers, this Court, sitting on appeal from a judge of the Court, will, in the absence of demonstrated error, be careful to avoid entering into a consideration on the merits of whether or not it would have been satisfied that an application should have been rejected on the ground specified in s 44(2) of the Act (Minister for Immigration and Ethnic Affairs v Wu Shan Liang (1996) 185 CLR 259 per Brennan CJ, Toohey, McHugh and Gummow JJ at 275-276 and per Kirby J at 291).
70 The Act contains no definition of the expression "substantially identical". The expression is therefore to be understood in its ordinary or usual sense of in substance, or essentially, the same.
71 The expression "deceptively similar" is defined by the Act, although it was not defined by the 1955 Act. Section 10 of the Act provides:
"For the purposes of this Act, a trade mark is taken to be "deceptively similar" to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion".
72 As French J has also observed, the Act was intended to be "an evolution from, rather than a revolutionary change of, the 1955 Act". For this reason, many of the authorities on the proper construction of the 1955 Act, and indeed, the 1905 Act, will inform the construction of the Act. However, in construing the Act, proper weight is to be given to the differences between it and the earlier legislation. One difference, to which reference has already been made, is that the Act gives effect to a presumption of registrability which did not operate under earlier legislation.
73 A further difference between the Act and its predecessors is that the Act provides separately for grounds for the rejection of an application for the registration of a trade mark (Part 4 Division 2) and grounds upon which the registration of a trade mark may be opposed (Part 5 Division 2). Whilst the registration of a trade mark may be opposed on any ground upon which an application for the registration of a trade mark may be rejected, except the ground that the trade mark cannot be represented graphically (s 57), some of the grounds upon which registration of a trade mark may be opposed are not grounds upon which an application for the registration of a trade mark may be rejected.
74 The 1955 Act dealt in ss 28 and 33 with circumstances in which a trade mark was not entitled to registration because of its capacity to cause deception or confusion. Section 28, so far as is here relevant, provided:
"28 A mark:
(a) the use of which would be likely to deceive or cause confusion;
…
shall not be registered as a trade mark".
Section 33 provided:
"33(1)Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.
(2) Subject to this Act, a trade mark is not capable of registration by a person in respect of services if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same services, of services of the same description as those services, or of goods that are closely related to those services, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.
(3) Where, in accordance with this section, a trade mark is not capable of registration by reason of the existence of another trade mark, the Registrar may defer acceptance of the application for registration of the first-mentioned trade mark until the second-mentioned trade mark has been registered."
75 The comparable provisions of the Act are ss 43, 44 and 60. Section 43 of the Act, which appears in Part 4 Division 2, provides:
"43 An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion".
76 Section 44 also appears in Part 4 Division 2 of the Act. Section 44(2), which is concerned with services, is set out above. Section 44(1) contains equivalent provisions applicable to applications for the registration of trade marks in respect of goods.
77 Section 60, which appears in Part 5 Division 2 of the Act, provides:
"60 The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion."
78 Having regard to the definition of "similar goods" and "similar services" contained in s 14 of the Act, it can be seen that s 33 of the 1955 Act and s 44 of the Act are concerned with the same general issue, namely the prevention of the registration of a trade mark the use of which, by reason of the trade mark's resemblance to a registered trade mark, may impinge on the statutory rights of the registered owner.
79 The broad provision contained in s 28(a) of the 1955 Act is now reflected in two separate sections of the Act - ss 43 and 60. Section 43, which is a ground for the rejection of an application for registration of a trade mark, looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion. Section 60, which is a ground of opposition to registration, is concerned with whether the use of the trade mark of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.
80 The fact that s 43 is found in Part 4 Division 2 of the Act, whilst s 60 is found in Part 5 Division 2, reflects, in my view, an appreciation of the practical reality that before the acceptance for registration and advertising of an application for registration of a trade mark, the information available to the Registrar touching on issues of likely deception and confusion will be limited. The Registrar will be in a position to assess the extent to which the trade mark for which registration is sought resembles a registered trade mark. He or she will also be in a position to appreciate the proper uses which may be made of the registered trade mark on the one hand, and of the trade mark for which registration is sought, should it be registered, on the other. However, the Registrar cannot reasonably be expected to be cognisant of the reputation of registered and unregistered trade marks generally or, indeed, of the extent, for example, to which all Australians, whose circumstances and geographic locations are diverse, may be assumed to be familiar with particular words. As French J has pointed out, the acceptance stage is not the time for detailed adversarial examination of an application.
81 The position will change following the filing of a notice of opposition to registration. An opponent is entitled to rely on evidence in support of the opposition and the applicant for registration may rely on evidence in answer to the opposition. By this means, material which could not ordinarily be expected to be available to the Registrar for the purpose of determining whether an application for registration of a trade mark should be accepted, may become available to him or her for the purpose of determining whether the trade mark should be registered.
82 The above analysis provides support, in my opinion, for the view that s 44(2) of the Act, at least to the extent that it is relied upon as a ground for the rejection of an application for registration, is principally concerned with the inherent qualities of the trade marks under consideration having regard to the uses which may be expected to be made of them, and not with matters which might be expected to be the subject of evidence following the filing of an objection to registration. Additional support for this view can be found in the terms of s 60 of the Act. The fact that the ground for opposing registration of a trade mark provided by s 60 requires not only that the trade mark for which registration is sought be substantially identical with, or deceptively similar to, another trade mark, but also that, because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion, tends to confirm that the test for deceptive similarity is not a test intended to be complicated by considerations of reputation in trade marks.
83 I turn to consider whether any of the authorities compel a different construction of s 44(2) of the Act. The proper approach to the question of whether one trade mark so resembles another as to be likely to deceive was said by the High Court in Cooper Engineering Co. Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 538 to be well settled and summed-up by Parker J, as he then was in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 in the following passage:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods … you must refuse the registration, or rather you must refuse the registration in that case." (citations omitted)
The High Court (Dixon, Williams and Kitto JJ) then went on to say:
"It is sufficient if persons who only know one of the marks and perhaps have an imperfect recollection of it are likely to be deceived."
84 The High Court indicated in the Cooper Engineering case, at 539, that the question of whether one trade mark so resembled another trade mark as to be likely to deceive is, in substance, a two stage test. First, do the marks really look alike or sound alike? Secondly, if they do, is the resemblance likely to deceive? The court rejected a contention that it would be sufficient that the two marks conveyed the same idea (see also, Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 607).
85 Nothing in the Cooper Engineering case, in my view, is inconsistent with the notion that the test of whether a trade mark is "deceptively similar" to a registered trade mark within the meaning of ss 10 and 44(2) of the Act is a test concerned with the inherent qualities of the two marks seen in the light of the proper uses that may be made of them.
86 The decision of the Full Court of the High Court in the Southern Cross Refrigerating Co case is, in my view, supportive of the above approach. The trade marks under consideration in that case were identical. There was thus no issue concerning their near resemblance. The High Court found that the applicant's goods were not of "the same goods or description of goods" as the opponent's within the meaning of s 25 of the 1905 Act, a provision corresponding with s 33 of the 1955 Act. Nonetheless, the High Court dismissed an appeal from the decision of Kitto J that the use of the trade mark by the applicant would be likely to deceive within the meaning of s 114 of the 1905 Act, a provision corresponding with s 28(a) of the 1955 Act. At 608 the High Court indicated that an inquiry under s 114 of the 1905 Act "may, and frequently will, require the consideration of matters additional to and distinct from those which are relevant to an inquiry under s 25". Amongst the additional matters which the High Court identified as being relevant to the wider inquiry under s 114 were the extent of the reputation of the registered trade mark and the likelihood that the applicant and the opponent would be likely to find markets substantially in common areas and among the same classes of people.
87 It may also be noted that in Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 441 Gummow J, in giving consideration to ss 28(a) and 33 of the 1955 Act, appears to have proceeded on the basis that a decision under s 28(a) called for consideration of evidence, including evidence touching on reputation and the marketing practices of the applicant and the opponent, but that a decision under s 33 called only for a consideration of the extent of the resemblance of the two trade marks.
88 It is not in dispute on this appeal that in applying the test provided for by s 44(2) of the Act, consideration is not to be given to the actual use made by the owners of the trade mark cited against the applicant for registration. The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration. See also Berlei v Hestia Industries Ltd (1973) 129 CLR 353 per Mason J at 362.
89 In deciding whether there is a reasonable likelihood of deception or confusion such that the application for registration must be rejected the marks are not to be compared side by side but rather:
"[a]n attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark …. 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". (Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd (1937) 58 CLR 641 per Dixon and McTiernan JJ at 658).