Deceptive similarity - discussion
197 According to the submissions for Yellowbook and Mr Khoury the primary judge's analysis of the issue of deceptive similarity was riddled with error. As explained below, however, there appears to be only one immaterial error in his Honour's analysis and one potential inconsistency which is readily able to be resolved.
198 The immaterial error can be noted briefly. At [402] the primary judge described the yellowbook.com.au mark and the Telstra yellow pages mark as starting with the same word followed by another word of one syllable. The Telstra mark starts with yellow and ends with a word of two syllables. This immaterial error was not one of the numerous grounds on which the primary judge was said to have erred and thus it may be disregarded.
199 The potential inconsistency is that the primary judge said he agreed with the delegate that the ".com.au" suffix should be ignored at [391], but after further analysis said he gave that component of the mark "little significance" at [394]. On a fair reading of the whole of this part of his Honour's reasons, and having regard to the fact that before the delegate the parties agreed that the ".com.au" component of the yellowbook.com.au mark should be ignored (a fact the primary judge accurately recorded at [391]), it should be understood that the primary judge's overall conclusion was that the ".com.au" component of the yellowbook.com.au mark had little significance in assessing deceptive similarity.
200 This, said Yellowbook and Mr Khoury, meant that the primary judge found deceptive similarity by disregarding half of the yellowbook.com.au mark. The ".com.au" signified that the mark related to a domain name which militated against any conclusion of deceptive similarity. Moreover, the primary judge did so by illegitimately comparing the idea of the marks rather than the marks themselves. While the idea of a mark is a legitimate consideration in respect of pictorial and device marks, it cannot be a substitute for the text of s 10 which requires the marks themselves, being the whole of the marks, to so nearly resemble each other that it is likely to deceive or cause confusion. For word marks, such as the present, the primary judge's focus on the idea of the marks has led him into error.
201 These submissions are not persuasive.
202 First, the primary judge did not disregard or, as it was put, "parse" the trade mark so that it became equivalent with the idea of a yellow book which was then found to be deceptively similar to the idea of Telstra's yellow pages marks . The primary judge gave little significance to the ".com.au" part of the mark for the reasons he explained, particularly the lack of distinctiveness of that suffix and the nature of the consumers who would be using a free service, likely to be doing so in a rush, and unlikely to be giving other than scant attention to small differences in branding.
203 As a matter of principle the primary judge's reasoning is correct. There is no hard and fast rule concerning the significance of a domain name suffix, although when two domain names are being compared, the significance might usually be limited. But, as the primary judge concluded, in the circumstances of this case, and having regard to the nature of the consumers, the suffix had little significance. The primary judge's analysis is also consistent with authority, as the primary judge explained at [405] by reference to Cooper Engineering at 538.
204 In REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559; (2013) 217 FCR 327 ("REA Group") the issue involved trade marks which were also domain names, realestate.com.au and realestate1.com.au. Justice Bromberg said:
[127] In determining whether one name suggests the business of another, the subsidiary elements of a name are generally not regarded as significant. Thus in Hornsby [Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216], the locality word ("Sydney") which prefixed the three descriptive words was given no particular weight. The comparison made was focused upon the dominant descriptive words alone. Similarly, in British Diabetic Association v Diabetic Society Ltd, the prefix "British" was "put on one side" in the comparison made between "British Diabetic Association" and "Diabetic Association": [1995] 4 All ER 812 at 831 (Robert Walker J).
[128] The lack of attention which may be paid to a suffix such as ".com.au" is illustrated in Architects Australia [Architects (Australia) Pty Ltd v Witty Consultants Pty Ltd [2002] QSC 139]. In that case a comparison was made between the names "Architects Australia" and "architectsaustralia.com.au". To the suggestion that ".com.au" differentiated the two names, Chesterman J said at [21]:
The words in contest in this case are not merely similar, they are precisely the same. The extended suffix ".com.au" does not detract from this conclusion. It does no more than indicate that details of the business are to be found electronically, on the Internet
See further (but in a trade mark context) Kenny J in Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 at [155].
[129] When considering whether the use of "www.solarhut.com.au" was deceptively similar to "SOLAHART" in relation to an allegation of trade mark infringement, Perram J in Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544 said at [49]:
In the context of domain names, one should put to one side in the analysis the various accoutrement of domain names such as "www" and ".com.au" to which consumers do not pay [sic] any substantive attention.
[130] The tension created by ".com.au" being both essential to the term "realestate.com.au" being recognisable as a name or brand but at the same time subsidiary (because substantive attention will not ordinarily be given to it), means that the term is not readily recognisable as a name. In the absence of prior familiarity, it is only faintly recognisable as an intended name for a business or brand. The act of recognition requires a focus and attention not required when a distinctive word or phrase is recognised as a name or brand. The additional scrutiny given to a name not readily recognisable as such, means that in a comparative exercise with a very similar term, including an exercise based on recollection, small differences are more likely to be noticed.
205 Justice Bromberg continued:
[238] I do not accept Real Estate 1's contention that for all purposes, an assessment of deceptive similarity in the context of domain names must involve the court ignoring what Perram J in Solahart described at [49] as "the various accoutrement of domain names such as 'www' and '.com.au'". Perram J continued that accoutrements of that kind are not paid substantive attention by consumers. He said:
These do not have any impact on the questions either of substantial identicality (from which analysis they must be excised) or on deceptive similarity.
[239] Real Estate 1 relied on that observation. However, I do not understand Perram J to have there been making an all encompassing statement of the kind that Real Estate 1's contention suggests. His Honour was there dealing with the use of the trade mark SOLAHART in the domain name "www.solarhut.com.au". The comparison in that case was between a concocted name registered as a trade mark and the use of a very similar word ("solarhut") as part of an internet address. All that I think Perram J was saying was that substantive attention is not paid by consumers to the common accoutrements of an internet address when seeking to identify or distinguish a brand, because of the usually limited function of accoutrements in that context. When used as part of an internet address, "www" and ".com.au" do not ordinarily serve the function of providing cues to brand or product identity. In that context, consumers in pursuit of brand identity are likely to be oblivious to terms that will not be ordinarily recognised as dealing with brand identity.
[240] Where, however, a trade mark itself incorporates the accoutrements of a domain name as cues to product or brand identity, the position is different to that considered by Perram J. It is clearly different when the use of the same accoutrements as those incorporated in a trade mark are used not as cues to an address but, like the trade mark itself, as cues to the brand or trading identity of a product or a business…
[241] In my view, the display of the term "realestate1.com.au" in the heading of a sponsored link would have been regarded by many consumers to be the trading and domain name of the business whose link it was. One of the central distinguishing features of REA's realestate.com.au trade marks is the idea that the term "realestate.com.au" is both a brand name and a domain name at the same time. When Real Estate 1 used "realestate1.com.au" as a trading name, it took up that precise idea. In that context consumers are likely to pay substantive attention to ".com.au" because it serves the function of identifying the brand whose domain name is also being used as a brand. The whole of the domain name is likely to be read or at least scanned. In a circumstance such as that, there was in my view, a real danger of confusion on the part of a consumer familiar with REA's realestate.com.au trade marks. That principally arises because in a scanning process of the kind which can occur on a search results page, the "1", which is not very distinct in the context of a domain name in ordinary type face, is likely to be missed by some consumers.
206 It must be recalled that Bromberg J was dealing with two marks each of which was also a domain name. In the present case, the mark yellowbook.com.au was also a domain name for the service of an online directory, whereas the Yellow Pages marks did not involve a domain name but were also for directory services including services provided online. In that context, of consumers using the two online services, the primary judge was satisfied that the ".com.au" component would not itself be distinctive and warranted being given little significance. The reasoning in REA Group depended on its own facts and evidence and does not suggest any error by the primary judge in the present case. As the primary judge concluded, when dealing with marks in respect of the same services, online directories provided for free, the nature of the consumer is critical to the assessment of deceptive similarity. We agree with the primary judge's view that consumers of these free online services will be paying scant attention to a non-distinctive suffix ".com.au" irrespective of the professed intention of Yellowbook that this forms an integral part of its branding.
207 Secondly, the argument sought to be made that the services to which the marks related are closely related but not necessarily the same does not go far. The point the primary judge was making, and about which he was correct, is that the main Yellow Pages mark in class 35 and the yellowbook mark (at [404]):
are in respect of online business directories means that the services are likely to be marketed to and used by the same type of consumers. Both services are provided over the internet and are directed at Australian consumers.
208 The submission that this Telstra mark is not in respect of "an online business directory", as is the yellowbook mark, is without merit. The Telstra mark is used in respect of an online business directory, such use being within the scope of the class 35 registration. Even if it be the case that Telstra had engaged in blocking of internet search engines, as the primary judge found, the evidence fell short of establishing that searches for yellowbook would not also produce results from Yellow Pages, and that this was merely one consideration amongst many (at [411]). Yellowbook and Mr Khoury did not explain how the primary judge could be said to have erred in this regard, other than a bald assertion that his factual finding was wrong.
209 Thirdly, although there is visual and aural similarity in this case, we do not accept the submission that the primary judge was not entitled to consider the idea of the marks that would be left in the mind of consumers because the marks are word and not pictorial or device marks.
210 There are statements in some of the authorities that, if read in isolation, might suggest that the idea of a mark can only be considered once visual or aural similarity is found. For instance, in Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552 ("Sports Café Ltd") at 557, the Full Court of this Court said that:
the fact that two marks convey a common idea becomes relevant only if the marks themselves look or sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.
211 We consider that the point that the Full Court was expressing in this passage was that ideational similarity is not sufficient independently of a consideration of whether the marks look or sound alike. As we explain below, the idea of a mark must still be relevant to an assessment of whether the two marks look and sound alike. Indeed, immediately before the passage quoted above, the Full Court had quoted from the decision of the High Court of Australia in Cooper Engineering. The High Court said (at 538-9):
The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article … But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods.
212 The comments by the High Court which were being summarised in the quotation by the Full Court in Sports Café Ltd were emphasising the point that mere ideational similarity is not sufficient, although s 10 of the Act contains no such express restriction. Even then, it has been observed by Professors Burrell and Handler that the comments of the High Court were "closely tied to marks that are suggestive of the qualities or characteristics of the goods or services in question". Hence, it is arguable that it could be consistent with the decision in Cooper Engineering for a court to conclude that despite the absence of visual or aural similarity, the word mark "Red Star Brand" for glass is a mark that "so nearly resembles" the picture mark of a star on glass "that it is likely to deceive or cause confusion": Burrell R and Handler M, Australian Trade Mark Law (Oxford University Press, 2010) 183-184 citing La Societe Anonyme des Verreries de l'Etoile's Trade Mark (1894) 11 RPC 142. But the short point relevant to this case is that the commonality of idea is part of the process of determining if the marks look or sound alike.
213 It was said in submissions by Yellowbook and Mr Khoury that Jafferjee v Scarlett (1937) 57 CLR 115 ("Jafferjee v Scarlett"), in which reference was made to the importance of the idea of a mark at 121, concerned pictorial marks and nothing therein supported use of that concept for word marks. Jafferjee v Scarlett, it may be accepted, involved pictorial marks. However, as explained at 122 the "idea of the mark" is a tool courts use to assist their analysis in recognition of the fact that consumers, unlike a court, do not have the opportunity to compare marks side by side. The usual circumstance is that a consumer will see one mark and have a memory of the other mark. Because the issue is whether or not the consumer is likely to be deceived, and not whether on a side by side comparison of the two marks a court considers consumers might be deceived, the "idea of the mark" enables the court to place itself, as best as possible, into the minds of the consumer. Nothing in Jafferjee v Scarlett suggests that this analytical tool is confined to pictorial or device marks. No rational reason for excluding this approach from consideration when it comes to word marks has been put forward. Subsequent authority is also to the contrary.
214 Crazy Ron's involved both a composite mark and a word mark. In discussing the relevant principles at [72] to [81], the Full Court referred to the idea of the mark and drew no distinction between word and pictorial or device marks (see also the decision of the Full Court in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 at [91]). To the contrary, the Full Court in Crazy Ron's referred with approval to Aristoc Ltd v Rysta Ltd [1945] AC 68; (1944) 1B IPR 467; [1945] 1 All ER 34 which involved two word marks, in particular the observation of Viscount Maugham adopting the reasoning of Luxmoore LJ in the Court of Appeal in Re Rysta Ltd's Application [1943] 1 All ER 400 at 407; (1943) 60 RPC 87 and 108-9 that:
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 the Trade Marks Act 1938, s 12, 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.
215 Justice Parker, in Re Application by Pianotist Company Ltd (1906) 1A IPR 379 at 380, said:
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 - then you may refuse the registration, or rather you must refuse the registration in that case.
216 This is what the primary judge did.
217 Further, in Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353 ("Berlei v Bali") the High Court dealt with two word marks, Berlei and Bali-Bra. As the Full Court explained in Crazy Ron's:
[78] Aristoc v Rysta was applied by the High Court in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353; 1 ALR 443. 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 CLR 362; ALR 449) 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 CLR 362; ALR 450):
… 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 812.
[79] Fifth, 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.
218 The submissions for Yellowbook and Mr Khoury did not explain how the proposition, that the "idea of a mark" was relevant only to pictorial or device marks and not to word marks, could be reconciled with the decisions in Berlei v Bali, Cooper Engineering and Crazy Ron's. Nor did they provide any principled basis to confine the reasoning in those cases, and Jafferjee v Scarlett, to pictorial or device marks. In summary, we agree with the observation of Greenwood J in NV Sumatra Tobacco Trading Co v British American Tobacco Australia Services Ltd [2011] FCA 1051; (2011) 198 FCR 435 at [49] that:
although words conveying the same idea cannot enable a de facto monopoly to arise, the fact the two marks convey the same idea can be taken into account in deciding whether the two marks which look and sound alike are likely to deceive or cause confusion. The presence of a common idea may be more likely to be recalled in connection with the relevant transaction than the precise details of the mark: Jafferjee v Scarlett (1937) 57 CLR 115 at 121 and 122; [1937] ALR 404 at 407. However, everything depends upon context as the suggestion of differing ideas may also serve to reduce the risk of confusion: Johnson & Johnson v Kalnin (1993) 114 ALR 215 at 219 ; 26 IPR 435 at 440.
219 Having found that the impression that would be left in the mind of relevant consumers would be yellow (book and pages being parts of the marks but less distinctive, and .com.au being of little significance), the primary judge found visual and aural similarity between the marks (at [402]). Yellowbook is visually and aurally similar to Yellow Pages. In the context of the relevant consumers, the finding of deceptive similarity was sound. The submission for Yellowbook and Mr Khoury should be rejected. The primary judge did not err in his analysis by reference to the idea of the marks.
220 Fourthly, the notion that the primary judge recited but failed to apply the definition in s 10 of the Act finds no support in his Honour's reasons. The primary judge's analysis was directed to determining whether or not the yellowbook mark did so nearly resemble the Telstra marks that it is likely that the yellowbook mark would deceive or cause confusion. Although framed as a plea against illegitimately substituting glosses for the statutory test in s 10, when analysed, the submissions for Yellowbook and Mr Khoury amount to the proposition that when compared side by side the mark yellowbook.com.au cannot be said to so nearly resemble the Yellow Pages marks that it will be likely to deceive or cause confusion. That this is so is apparent from the submission that the "character string" yellowbook.com.au, objectively, cannot be said to so nearly resemble the "character string" Yellow Pages so as to be likely to cause deception or confusion. If one thing is clear from the authorities, however, it is that a side by side comparison is wrong in principle because it cannot disclose whether the disputed mark is likely to deceive or cause confusion. Accordingly, the approach of the primary judge was orthodox and consistent with principle. The submissions for Yellowbook and Mr Khoury involve an invitation to enter into error.
221 It may be accepted that the fact that two words convey the same idea is insufficient to satisfy s 10. But that is not what the primary judge found. Nor is it the case that the primary judge's reasoning gives Telstra a monopoly over any words that convey the idea of a collection of yellow pages. These submissions appear to overlook the closely related services to which the trade marks related, the prominence of the word yellow in the various marks, the non-distinctiveness of the words pages and book, and the circumstances in which consumers would be confronted by the yellowbook mark.
222 To the extent that it was submitted that the Yellow Pages marks are so strong that consumers would notice even subtle differences so that there was no plausible, let alone tangible and real, risk that the yellowbook mark would be likely to deceive or cause confusion, no error in the analysis of the primary judge was identified. The primary judge rejected that proposition for a number of reasons, not the least of which was the circumstances in which consumers would see the mark, that is, in trying to find or to use a free service, where they would be paying scant, if any, attention to subtle differences in branding. The submissions for Yellowbook and Mr Khoury failed to grapple with that conclusion of the primary judge and its significance for the conclusions he reached. In failing to do so, they thus also failed to articulate any error which would warrant the grant of leave to appeal. In common with the primary judge, why it is that the fact that yellowbook.com.au constitutes a domain name would remove any possibility of deceit or confusion remains in the realm of assertion, unconnected to the factual analysis carried out by the primary judge about the consumers who would be confronted with the disputed mark and the circumstances in which they would do so.
223 It was otherwise submitted that the primary judge's conclusion that it is the word yellow in the yellowbook mark and the Telstra Yellow Pages marks that would leave an impression with consumers was inconsistent with his earlier conclusion at [233]-[234], in the context of Telstra's appeal, that Telstra's proposed mark "yellow" was not distinctive. Yet the exercises in which the primary judge was engaged were different. In one case he was considering whether the word "yellow" was inherently adapted to distinguish Telstra's goods and services. He found it was not. In the other case he was considering whether the yellowbook mark so nearly resembled Telstra's Yellow Pages marks so as to be likely to deceive or confuse. In that context, it was necessary for the primary judge to consider the marks as a whole (which, contrary to the submission for Yellowbook and Mr Khoury, he plainly did) and for him to consider also the impression which the marks would leave in the minds of the relevant consumers. It does not follow that, in the context of determining deceptive similarity, the primary judge had to first find that "yellow" was inherently able to distinguish before he could logically conclude that the impression left by the yellowbook mark and the Telstra marks would be yellow. Contrary to the submissions for Yellowbook and Mr Khoury, it cannot be said that the primary judge, in so concluding, improperly reduced a complex composite mark to a single word, contrary to the caution expressed in Crazy Ron's at [100]. The marks in the present case are not complex composite marks. They are relatively simple word marks, a point the primary judge rightly noted at [402].
224 Nor does the fact that the primary judge, in the context of Telstra's appeal in respect of its proposed "yellow" trade mark, concluded that yellow is the colour internationally associated with business directories (at [140]) assist Yellowbook and Mr Khoury. It is Australian consumers, not international consumers, who would be faced with the yellowbook mark and the Telstra marks. In the Australian context, for many years, Telstra was a monopoly and, on the evidence, remains the overwhelmingly dominant provider of directory services. The submission for Yellowbook and Mr Khoury assumes that, in such a context, an Australian consumer would simply think of a business directory when confronted with yellow, rather than a Telstra business directory. But given Telstra's pre-existing marks in that context, the primary judge's conclusion of the real likelihood of confusion was sound.
225 The submissions otherwise constituted assertions that the primary judge should have found different facts, such as that the consumers of the two services would be different as consumers did not recognise Yellow Pages as having an online manifestation. These assertions were based on nothing more than a different view of the weight of the evidence from that taken by the primary judge in circumstances, moreover, where the same submission had been put to and rejected by the primary judge. The primary judge, for example, said at [410] that:
Yellowbook submits that Mr Harvy's evidence is that consumers did not recognise that the YELLOW PAGES directories were available in an online as well as printed form. Based on this view of the evidence Yellowbook argues that if consumers are not aware that YELLOW PAGES Online existed they could hardly be deceived into thinking that yellowbook.com.au was in fact YELLOW PAGES Online. But this is not Mr Harvy's evidence. In my view his evidence is that Telstra wanted to improve consumer recognition of Telstra's online directory, but he did not suggest that consumers did not recognise and use it. The evidence shows that Telstra's marketing efforts were directed both at maintaining and increasing consumer recognition and use of its online directories.
226 The same submission rejected by the primary judge is made in support of the application for leave to appeal by way of mere assertion that the facts found by the primary judge were wrong. Nothing, however, discloses any error by the primary judge in his weighing up of the evidence and the drawing of inferences therefrom.
227 These conclusions dispose of most of the proposed grounds of the Yellowbook appeal.
228 Proposed ground 7 is that the primary judge erred by assuming that "book" could not be a verb. The proposed ground was not developed in any meaningful way. It is not apparent what difference results from treating "book" as a verb other than that, when preceded by the word "yellow" the phrase "yellowbook" becomes difficult to comprehend at all. In any event, if the primary judge made that assumption, it may be inferred to be one that relevant consumers would also make. The point, accordingly, does not assist Yellowbook and Mr Khoury.
229 Proposed ground 10 is that the primary judge erred by imputing to consumers knowledge of the classes in which the Telstra marks were registered and the yellowbook mark sought to be registered. Again, this proposed ground was not developed. The primary judge's reasons do not bear out this proposed ground.
230 Proposed ground 12 is that the primary judge erred in concluding that yellowbook and Yellow Pages were visually and aurally similar and the required comparison was between yellowbook.com.au and Yellow Pages. This is a variant of the submission that his Honour parsed the mark yellowbook.com.au, a submission rejected above. The primary judge's observation at [402] that "the YELLOWBOOK and YELLOW PAGES marks are visually and aurally similar. They start with the same word followed by another word of one syllable", understood in context, relates back to his conclusions that the marks both convey the impression of yellow and neither book nor pages are distinctive. In any event, the primary judge explained the extent of visual and aural similarity found, being the same first word followed by another word (of one syllable said the primary judge, when pages is two syllables, but that is immaterial). The primary judge was not saying that the case was of the Berlei/Bali kind where the words, particularly when spoken, sound almost the same.
231 Proposed ground 13 alleges error in the primary judge's view that the Walking Figures logo which forms part of Telstra's composite mark is not easily pronounceable and could not be typed into an internet search (at [403]). This proposed ground also remained undeveloped. In any event, why any error in respect of one of Telstra's marks (if error there be) would lead to a different result is not apparent. Moreover, the primary judge was correct to observe that the composite mark, involving the walking fingers with Yellow Pages underneath, is not easily pronounceable and could not be typed into an internet search. The internet search would be for Yellow Pages, not Yellow Pages with walking figures logo. Further, nothing in the submissions explains why these observations were irrelevant or illegitimate for his Honour to consider.
232 Proposed ground 15 is that the primary judge erred by regarding as relevant the fact that consumers would be likely to access the website for yellowbook.com.au at the same time as they needed the information. To the contrary, this was highly relevant to the likelihood of deception and an inference the primary judge was entitled to draw from the very nature of the service in respect of which the yellowbook mark was sought to be registered. A consumer who wants to find business contact details is not engaging in a substantial purchase as a result of careful consideration and forethought. Such a consumer, as the primary judge said, is using a free service and most likely paying scant attention to branding differences.
233 Proposed ground 16 is that the primary judge failed to consider the argument that the Yellow Pages marks are so strong that no deception or confusion is likely. It is said that, despite the primary judge having considered precisely this issue at [408], he did so only in the context of the decision in Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 and should have considered the same issue separately from that decision. This proposed ground lacks any merit. The primary judge dealt with the argument. No more can be said.
234 Proposed ground 18 is that the primary judge erred in placing the onus on Yellowbook and Mr Khoury to prove that search results for yellowbook would not also produce results for Yellow Pages when, as the opponent to registration, Telstra bore this onus. This is a reference to [411] of his Honour's reasons. However, his Honour well understood that Telstra bore the onus of establishing deceptive similarity (at [371]). Without entering the fraught waters of evidentiary and other forms of onus, the fact is that Yellowbook and Mr Khoury positively asserted that a search for yellowbook would not have yielded results for Yellow Pages because Telstra had engaged in search engine blocking. Telstra did not have to disprove that in order to succeed in its opposition. If the evidence had established that matter as a fact, then perhaps it would have been entitled to some weight. But, as the primary judge said, the evidence did not establish that fact and, in any event, it was only one aspect of deceptive similarity on which Telstra relied.
235 For these reasons none of the proposed grounds of appeal relating to s 44(2) of the Act are sustainable.