Reverse confusion
111 Acceptance of the notoriety of the THORPEDO mark and its association with Mr Thorpe gives rise to the question whether the public may be confused and wonder whether 'Torpedoes' has a connection with the THORPEDO mark and/or Mr Thorpe ('reverse confusion'). Where a name or a word is clearly associated in the public mind with a particular person, such as Mickey Mouse and Minnie Mouse with Walt Disney, their use by another as trade marks would be likely to deceive, as suggesting that the goods are somehow connected with that person (Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448).
112 Both parties accept that s 60 has no application if confusion only arises because of the reputation of the THORPEDO mark.
113 Enterprises submits that s 44 is not concerned with reverse confusion, that it is limited to confusion where the public believes that the subsequent mark is connected with the earlier mark. If the Act were intended to cover reverse confusion, where the public believes that the earlier mark is connected with the subsequent mark, it would, Mr Ellicott suggests, have been made clear in the statute. Enterprises draws comfort from the fact that s 60 is clearer in this regard and submits that s 60 is 'far broader than section 44'.
114 Mr Wood submits that s 44 deals with the question of similarity of marks, not the reputation of either mark nor the direction of the confusion, in contrast with s 60 where direction is made relevant and it is made clear that it is only the reputation of the registered mark that is relevant.
115 The question is whether the reputation of the mark for which application is made is relevant in the question of deceptive similarity in s 44. This raises the question whether s 44 is 'directional', that is, whether the deceptive similarity is determined only by making the comparison as against the registered mark. This involves determining whether a consumer would be caused to wonder whether goods with the proposed mark come from the registered mark's source. Alternatively, the non directional construction would include consideration as to whether a consumer would be caused to wonder whether goods bearing the registered mark come from the source of the proposed mark. The language of the section 'an application for the registration of a trade mark … must be rejected if the applicant's mark is … deceptively similar to a trade mark registered by another person' (emphasis added) may indicate that a directional approach is mandated. The section does not say, for example, that as a result of registration there is deception, which would indicate a non-directional approach. This is in contrast to the more neutral language, in a directional sense, of s 28 of the Trade Mark Act 1955 (Cth) which refers to 'a mark … the use of which would be likely to deceive or cause confusion … shall not be registered as a trade mark'.
116 Section 44 directs reference to s 10 of the Act for deceptive similarity. Section 10 provides that 'a trade mark is taken to be deceptivelysimilar to another trade mark if it so nearly resembles that other trade mark' as to deceive or cause confusion. This language is somewhat more consistent with a directional approach. Further, the Working Party Report, in dealing with permissible grounds of oppostion (at page 47) spoke in terms of the prior reputation in Australia of the registered mark whereby use of the proposed mark would be likely to deceive or confuse and did not refer to the reputation of the proposed mark.
117 Combining the effect of s 44(1)(a)(i) and s 10, the registration of the THORPEDO mark must be rejected if the THORPEDO mark is substantially identical with the Sportswear marks or if it so nearly resembles the Sportswear marks that it is likely to deceive or cause confusion (emphasis added).
118 Section 43 provides:
'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.'
119 It seems to me that, under s 43, it is the connotation of the trade mark the subject of the application that is relevant so that the question whether the use of the THORPEDO mark (with its connotation) would be likely to deceive or cause confusion arises. This section is not directional and the difference in language supports the submission that s 44, by contrast, is directional. Sportswear does not, in its notice of appeal or in submissions, rely on s 43.
120 There have been cases where the opponent's reputation was considered and whether the reputation in the registered trade mark was sufficiently substantial to lead to the possibility that goods covered by the proposed trade mark would be identified with the opponent (e.g. Pioneer Hi-Bred Corn Co. v Hy-Line Chicks Pty Ltd [1979] RPC 410 ('Pioneer Hi-Bred') at 423-424). Counsel were, however, unable to find a case where such 'reverse confusion' has been directly considered, although in Woollen Mills at 658, Dixon and McTiernan JJ said:
'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'. (emphasis added)
121 In any event, it must be borne in mind that what is being compared for the purposes of deceptive similarity are the marks themselves. To focus on an issue of whether there is established a reputation sufficient to support a business goodwill for a passing-off action diverts attention from the real issues that arise under s 44 (Pioneer Hi-Bred at 439; Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 ('Carnival Cruises')at 383). Reputation is only relevant as one of the surrounding circumstances affecting an evaluation of whether consumers would be likely to be deceived or confused. Reputation of the proposed mark is then a factor which may mean that resemblance to the registered mark will still not result in deception or confusion and, in that context, I have already dealt with it. Sportswear draws some comfort from s 44(4) and submits that the limited scope of that subsection, dealing with continuous use by an applicant for registration of a trade mark in respect of similar goods, is consistent with the relevance of reverse confusion s 44(1). Enterprises did not specifically address this point but it seems to me that it is equally arguable that, as s 44(4) specifically allows for some prior use of the proposed trade mark but only in limited circumstances, it suggests that otherwise, the use, including reputation, of the proposed mark is irrelevant.
122 Mr Wood submits that, if it is accepted that the word Thorpedo is so clearly associated with Mr Thorpe and that the connotation is as strong as the respondent's evidence suggests, there could be deception of confusion as to the source of goods sold under the Paradise Legends mark or T device mark so that people might be caused to wonder whether those goods were associated with Mr Thorpe. In theory, he submits, such an association may not be in the interests of the registered owner and that Mr Thorpe's reputation may be short-lived. The latter aspect of this submission is dealt with by the fact that the date for consideration of deceptive similarity is the relevant date. In any event, the evidence in the present case establishes that the reputation has not been short-lived. Mr Wood also points to what could collectively be described as a number of unfair scenarios, where the benefits of registration would be watered down by the fact that mere fame would enable the subsequent registration of an otherwise deceptively similar mark. This elevates the factor of reputation beyond the relevance that it has to a determination of deceptive similarity of two marks. The question is whether or not there is confusion in a representation that one mark is in some way associated with another's goods; it is not a question of which party would be damaged and which party would profit (Shell at 416).
123 Does s 44 mandate a consideration whether, by reason of the reputation of the opposed mark (the THORPEDO mark), purchasers of the goods with the registered mark (the T device mark), may be caused to wonder whether the source of those goods is Mr Thorpe or Enterprises? In my opinion, the answer is no. The reputation of the THORPEDO mark is relevant, in the way I have dealt with it. As I have said, that reputation, relevant as a circumstance to be taken into account in considering deceptive similarity under s 44, indicates that purchasers of goods would be less likely to be deceived or confused. In any event, there is no evidence that purchasers of Sportswear's goods would be confused as to the source of those goods.