Consideration: Grounds 1 to 4
63 As Branson J observed in Blount v Registrar of Trade Marks (1998) 83 FCR 50 at 55, crucial to the concept of a trade mark is its capacity to distinguish the goods or services of one person from the goods or services of another.
64 In that case, her Honour rehearsed the history of the legislative amendments that allowed registration of marks that were only capable of distinguishing on the basis of the prior use of the mark. Under the Trade Marks Act 1955 (Cth), it was established that certain marks could never be regarded as entitled to registration even though they were, as a matter of fact, plainly distinctive of the trade mark applicant's goods. Marks falling in that category were typically geographical names and laudatory or descriptive terms. Things changed with the enactment of the present Act. Section 41(6) was introduced to allow for the registration of such marks in certain circumstances.
65 In Blount at 61, Branson J observed:
61 The concept of adaption to distinguish, which was, as Gummow J pointed out in the Oxford University Press case, central to s 26 of the 1955 Act, is not reflected in s 41 of the Act. Section 41 is concerned with capacity to distinguish. As s 41(6)(a) makes plain, a trade mark which is not to any extent inherently adapted to distinguish may nonetheless be treated under the Act as capable of distinguishing if, by reason of past use, it does in fact distinguish. The Act appears plainly to disclose an intention that it should no longer be the case that a trade mark which is "100 per cent distinctive in fact" should not be able to achieve registration (as to the expression "100 per cent distinctive in fact" see the Oxford University Press case per Lockhart J at 511 and Gummow J at 523). This conclusion is confirmed by recommendation 4B of the report of the Working Party:
Inherent distinctiveness, or acquired distinctiveness or a combination of both, should establish that a mark is capable of distinguishing the specified goods or services, and justify registration.
66 Thus, under the newly introduced s 41(6), a mark which had no inherent capacity to distinguish, could acquire distinctiveness in fact through the prior use of the mark, sufficient to justify the registration of the mark. Neither party suggested that the registrability of such marks was changed by the RTB amendments to s 41 of the Act. Nothing in this appeal turns on the subsequent amendments that have been made to s 41. Further, the parties' submissions were directed to the acquired distinctiveness of the Swancom marks which enabled them to be registered, regardless of the form of s 41 pursuant to which they were registered.
67 The process by which a trade mark is assessed to be registrable and achieves registration, including an assessment of whether a trade mark falls foul of any of the grounds for rejecting a trade mark application, is a separate and distinct exercise from comparing marks to determine whether a registered trade mark is infringed pursuant to s 120(1) of the Act.
68 Once registered, all marks are treated equally for consideration of whether they are infringed pursuant to s 120(1) of the Act, irrespective of how they came to be registered. As the Full Court said in Henschke in relation to the test of deceptive similarity:
43 But there is another important aspect of infringement by use of a deceptively similar trade mark. It is that the test of deceptive similarity must be applied whether the mark of which infringement is alleged is newly registered and almost unknown or has been prominently displayed on well-known merchandise for many years. It must also be applied where the mark appears on goods (or in advertisements of goods) commonly seen, for example, on supermarket shelves in Sydney but rarely seen in Victoria or South Australia. The consumer posited by the test is hypothetical, although having characteristics of an actual group of people.
69 The deceptive similarity enquiry for trade mark infringement purposes is a limited one. Section 10 of the Act makes clear that the essential task is one of trade mark comparison; it is the resemblance between the two marks that must be the cause of the likely deception or confusion.
70 The test for deceptive similarity has been long settled. The authorities make clear that the comparison involves the ordinary consumer's imperfect recollection of the registered mark. The ordinary consumer is not to be credited with any knowledge of the actual use of the trade mark, or of any acquired distinctiveness arising from use of the mark prior to filing.
71 In Australian Woollen Mills v F.S. Walton & Co Ltd (1937) 58 CLR 641, 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.
72 Equally well known is the following passage explaining the relevant comparison from the judgment of Windeyer J 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.
73 In New South Wales Dairy Corporation v Murray-Goulburn Co-operative Company Ltd (No 1) (1989) 14 IPR 26, in a passage not affected on appeal, Gummow J said at 67:
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 Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414-15; [1963] ALR 634; 1B IPR 523 at 528-9; 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.
74 This passage was approved by the Full Court in Henschke at [44] and more recently by the Full Court in Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel (2021) 157 IPR 230 at [27] per McKerracher, Gleeson and Burley JJ and in Hashtag Burgers Pty Ltd & Ors v In-N-Out Burgers, Inc [2020] FCAFC 235 at [64] per Nicholas, Yates and Burley JJ; and PDP Capital at [97] per Jagot, Nicholas and Burley JJ.
75 Justice Yates summed up the test for deceptive similarity in Optical 88 at [111]:
111 At the end of the day the question of deceptive similarity is one to be resolved in a given case by judicial estimation based on the visual and aural impression created by each mark and on the likely effect to be produced by each mark on the minds of likely customers of the goods and services in the course of the ordinary conduct of affairs.
(Citation omitted.)
76 It is necessary to commence the deceptive similarity enquiry having regard to the prior registered mark and the notional consumer's impression or recollection of that mark. The Full Court in PDP Capital noted (at [97]):
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…. [A]llowance must be made for the human frailty of imperfect recollection.
77 The notional consumer's imperfect recollection of the registered mark is central to the test for deceptive similarity. The authorities make clear it is the imperfect recollection of the mark as registered, not any knowledge about the actual use of the mark, or any reputation associated with the mark.
78 The notional consumer's imperfect recollection of the mark is based on the assumption that the consumer has seen the registered mark itself: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 per Moore, Sackville and Emmett JJ at [81].
79 In MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561, the Full Court (at 570) noted the artificiality of the question to be asked, and observed that the person who may be caused to wonder is not one who knows of the actual business of the proprietor of the registered mark, the goods it produces, or the services it provides.
80 There is no scope under s 120(1) to consider the reputation associated with any mark, save (perhaps contentiously) where reputation is a matter of notoriety: Optical 88 per Yates J at [96], Henschke at [44]-[45] and Australian Meat Group at [41]-[42]. The primary judge correctly placed no reliance on the reputation associated with the Swancom marks: J[254].
81 The Full Court in Henschke carefully and comprehensively discussed the place of reputation in trade mark infringement and observed at [45] that it was 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 under s 120(1) of the Act (the Court noted the contrast, in this regard, with infringement under s 120(3) of the Act). There, the Full Court closely analysed four cases which were said to involve a question of infringement by a use of a deceptively similar mark, and in which the reputation of the mark allegedly infringed had been taken into account. Those cases, the Full Court said at [52], were authority for no wider proposition than this:
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 longstanding 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.
82 As we have emphasised, Swancom does not contend that the Swancom marks were notoriously ubiquitous.
83 The authorities emphasise that the imperfect "impression or recollection" of the registered mark which is carried away by the notional consumer for the purposes of assessing deceptive similarity in the context of s 120(1) of the Act is the impression or recollection that is taken from their observation of the registered mark. In the same way that any reputation in the registered mark or idiosyncrasies in its actual manner of use are to be ignored, the consumer's impression and recollection of the registered mark is not to be augmented by knowledge of any factual distinctiveness that the mark may have acquired through use before its filing date.
84 Swancom places reliance on references in the cases to the notional consumer's "knowledge" of the mark in support of its contention that the knowledge of the mark to be attributed to the consumer, when assessing deceptive similarity, includes the "acquired distinctive meaning" of a mark. These cases concern marks registered pursuant to the pre-RTB s 41(6): Optical 88 at [112] and Idameneo at [57]. The passing references in these two cases to the notional consumer's "knowledge" of the mark do not contemplate anything other than the well-known and long standing test for deceptive similarity. The knowledge of the mark credited to the notional consumer is no more than the imperfect recollection of the registered mark, as referred to in the authorities.
85 Specifically, in the context of discussing the assessment of deceptive similarity, Yates J in Optical 88 said (at [112]):
112 The question of the impression of the marks on the minds of likely customers is important because, although they are assumed to have knowledge of the mark alleged to have been infringed, those customers are not to be treated as having perfect recollection of the mark in all its details. Quite to the contrary; in considering the question of deceptive similarity, allowance must be made for imperfect recollection based on impression.
(Citations omitted.)
86 It is clear that his Honour's use of "knowledge" in this passage in Optical 88 was not conveying the broader concept of knowledge for which Swancom contends. His Honour's reference to "knowledge" was made in the context of his discussion of the well-known test for deceptive similarity in Australian Woollen Mills at 659, and the imperfect recollection of the registered mark. His Honour's comments were made after he had expressly stated earlier, at [96], that it is generally recognised that, for the purposes of trade mark infringement under s 120(1) of the Act, consideration of the trade mark owner's reputation in the registered mark is not relevant "save (perhaps somewhat contentiously) where reputation is a matter of notoriety". At [98], his Honour contrasted the position under s 120(3) where, in that context, actual knowledge of the mark is "all important".
87 The Full Court in Idameneo referred, at [57], to the above passage from Optical 88 and observed that "the statutory criterion of 'deceptive similarity' assumes that an intending purchaser or viewer has knowledge of the mark alleged to have been infringed". In that case, the Court was construing a contractual term and considering the use of a trade mark in a specialised market. The Court meant no more than that, in assessing deceptive similarity, the notional consumer is taken to have an imperfect recollection of the registered mark in accordance with the long standing authorities discussed above.
88 In assessing deceptive similarity, the context of the surrounding circumstances is not to be ignored. Context is all important: Shell at 422. In Optical 88, Yates J said (at [94]):
94 As Australian Woollen Mills makes clear, the comparison takes place in a particular context in accordance with a particular standard: "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 in determining whether the impugned mark is, properly judged, "deceptively similar".
89 But consideration of the context of the surrounding circumstances in which the use occurs does not open the door for a detailed examination of the actual use of the registered mark, or any consideration of the reputation associated with the mark. The enquiry into the surrounding circumstances that is required should not be confused with the wider enquiry of the kind that might be undertaken in a passing off action or a claim of misleading and deceptive conduct under the Australian Consumer Law: Optical 88 at [95] per Yates J. Such a wider enquiry into goodwill, if any, around the mark is not appropriate: Henschke at [44]; Pacific Publications Pty Ltd v IPC Media Pty Ltd (2003) 57 IPR 28 per Beaumont J at [102].
90 The deceptiveness that is contemplated must result from similarity in the competing marks; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances, including against the background of the usages of the particular trade: Shell at 410 and 416 per Windeyer J. In Henschke (at [42]) the surrounding circumstances were held to include the way in which wine is marketed and the knowledge that the wine market was a crowded one with topographical and geographical reference being common.
91 In MID Sydney, the surrounding circumstances included the widespread use of the word "Chifley" in contexts other than the property management services in respect of which the mark was registered. The Full Court considered whether the mark "Chifley Tower", registered in respect of property management services, was deceptively similar to the name "Chifley" used in connection with hotel related services. The Full Court noted that "Chifley" was familiar not only as the name of a former Prime Minister but, as the evidence showed, also from its use in a number of geographic and other contexts including suburbs, districts or places known as "Chifley", as well as a Chifley Arcade and a well-known restaurant "The Chifley" in Canberra. The Full Court stated (at 570):
The ordinary person whose reaction is in question need not be credited with an encyclopaedic knowledge of everything to which the name "Chifley" has been applied, but should be credited with a general knowledge that there are several such applications.
92 In PDP Capital, the Full Court, at [111], observed that "[b]eyond 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" as to whether the alleged infringer's trade mark is deceptively similar to the registered trade mark. The Full Court identified that as an important distinction between the enquiry for s 120(1) and the broader enquiry for passing off or misleading and deceptive conduct under the Australian Consumer Law.
93 Contrary to Swancom's submission, the use by Swancom and its predecessors of CORNER, THE CORNER and CORNER HOTEL for professional live music services that contributed to satisfying the requirements for their registration as trade marks by reason of their acquired distinctiveness, was not a relevant consideration when determining the question of deceptive similarity for the purposes of s 120(1) of the Act, beyond having a general bearing on the habits and practices of consumers, as the Full Court noted in PDP Capital. However, Swancom's primary submission in this appeal is, in substance, really no more than a contention that, for the purposes of determining the question of deceptive similarity in the context of infringement, the primary judge should have taken into account Swancom's reputation in the Swancom marks. We reject that contention. It is contrary to established principle. Correctly, the primary judge placed no reliance on the reputation associated with the Swancom marks for that purpose: J[254]. Therefore, error, in this respect, has not been established.
94 We are not persuaded that, in undertaking his assessment of whether the relevant Jazz Corner marks were deceptively similar to the Swancom marks, the primary judge erred in the other respects canvassed in Swancom's submissions.
95 A major theme in those submissions is that, in undertaking his assessment, the primary judge distracted himself by focussing on the perception of consumers of hotel and hospitality services, when the infringement claim related to services in respect of which the Swancom marks were registered (relevantly, live music services).
96 We do not accept that submission. First, as we have noted, the primary judge's starting point was his finding that JCHPL had used the Jazz Corner Hotel and Jazz Corner of Melbourne marks, and that BBPL had used the Jazz Corner of Melbourne marks, in relation to live music services: J[244]. This provided the framework for his Honour's subsequent analysis - trade mark use in respect of live music services.
97 Secondly, we do not accept that his Honour erred by having regard to the meaning of "corner hotel" as perceived by consumers of hotel and hospitality services. His Honour had earlier rejected Swancom's contention that the words "corner hotel" have no signification in respect of live music services: J[154]. At J[247], his Honour returned to that finding, stating that the meaning he had found had some signification for persons who wish to attend a live music performance. This indicates that his Honour did not stray from the framework he had set.
98 Thirdly, at J[253], the primary judge stated that, in assessing deceptive similarity, he had accepted the respondents' submission that consumers of live music services can be expected to be discerning with their choices. In that regard, his Honour said:
253 … Not only will consumers want to see the music they like, they can be expected to be knowledgeable and discerning about the venues they wish to attend to see live music performance. …
99 Once again, this indicates that his Honour did not stray from the framework he had set.
100 Swancom's submission that the primary judge failed to take into account that there was no other live music venue trading under the names THE CORNER or CORNER HOTEL is an iteration of its principal submission that the "acquired distinctive meaning" of a registered trade mark informs the assessment of deceptive similarity in the context of trade mark infringement - a submission we have rejected.
101 Swancom's submission that the primary judge erred by failing to consider that the Jazz Corner Hotel marks incorporate the whole of the distinctive mark CORNER HOTEL, cannot be accepted. It flies in the face of the primary judge's acceptance at J[245] that all the Swancom marks and Jazz Corner marks have the word "corner" in common and, specifically, that the CORNER HOTEL and the Jazz Corner Hotel marks have two words in common.
102 The balance of Swancom's submissions on Grounds 1 to 4 really invite us to carry out afresh the evaluative task that the primary judge had carried out, with a view to us arriving at a different finding to supplant his Honour's finding. That is not an invitation we accept. We are not persuaded that the primary judge erred in carrying out his evaluative task.
103 The primary judge's ultimate findings that the relevant Jazz Corner marks were not deceptively similar to Swancom marks, and that the Swancom marks were not infringed, were open to his Honour. There is no proper basis to interfere with those findings. Grounds 1 to 4 of the first appeal have not been established.