Primary Health Care

The Full Court has dismissed Primary Healthcare’s appeal from the decision rejecting its attempt to register “Primary Health Care” for medical services.

The judgment is 438 paragraphs long; Greenwood J providing 77 paragraphs on aspects of s 41 (old form), Katzmann J providing 80 paragraphs and the balance being the leading judgment of Rangiah J.

While Greenwood J and Katzmann J agreed generally with Rangiah J on s 41 (old form), it appears there are some nuances to consider! Katzmann J disagreed with Rangiah J about the application of s 43.

Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174

AIPPI Sydney

Over the weekend, I shall be attending the annual Congress of AIPPI in Sydney.

Lots of interesting sessions and practitioners from all round the world

If you are attending or in the vicinity, say “hello”.

ALDI lookalike survives moroccanoil, but is not natural

Morroccanoil Israel Ltd (MIL) has successfully obtained injunctions against some of Aldi’s lookalike products, but only on the basis that the marketing misrepresented they were “natural” products and further that their argan oil content conferred certain “performance” characteristics. MIL’s claims that the products infringed its trade marks and “passed off” failed. MIL did successfully appeal the Registrar’s refusal to register “Moroccanoil” as a trade mark and fended off Aldi’s attempt to have MIL’s trade marks removed on the grounds that they were not capable of distinguishing.

Katzmann J’s decision runs to 741 paragraphs, so there is a lot more ore to be mined than I shall cover in this blog post.

MIL has two registered trade marks in Australia1 in respect of, amongst other things, hair care products:

TM 1221017
TM 1375954

 

 

 

 

 

Although its get up varied over time, you can get a good idea of how it sold its products in Australia from the following:

Aldi (Like Brands, only cheaper) introduced its own range of Moroccan Argan Oil products such as:2

 

The Trade Mark Infringement Claim

MIL put its case on trade mark infringement on Aldi’s use of Moroccan Argan Oil, not the get up of any product packaging.

Despite Aldi’s reliance on the presence of the PROTANE (or PROTANE Naturals) or VISAGE house brands, Katzmann J had little difficulty despatching the claim that Aldi did not use Moroccan Argan Oil as a trade mark over the fence for six. The term was not purely descriptive; argan oil was only one ingredient of many and only the 11th or 12th ingredient in terms of volume. Viewed objectively, it clearly presented as a badge of origin, especially when depicted with oil drops instead of “o”.

However, Katzmann J held that Moroccan Argan Oil was not deceptively to either trade mark. A central consideration was that each of MIL’s trade marks was a composite mark. “Moroccanoil” was a prominent feature, but the prominent “M” was an equally prominent feature.3

Further, by the time Aldi came to adopt “its” trade mark, there other players in the market using the expression “Moroccan Argan Oil”.

Treating “Moroccanoil” as the relevant essential feature of MIL’s trade marks, Katzmann J accepted that the interposition of “Argan” between “moroccan” and “oil” may well not interrupt the recall of the brand moroccanoil but nonetheless went on to hold at [220]:

…. In my view, there is no real, tangible danger that an ordinary or reasonable consumer with an imperfect recollection of one or other or both those marks or, as was argued, the name “Moroccanoil”, would wonder whether a mark called “Moroccan Argan Oil” is or is associated with either of the composite marks that are the First and Second Trade Marks.  Ignoring similarities in the get-up of the respective products, including the colour-scheme and packaging, I am not satisfied that the hypothetical consumer would mistake the Aldi “Moroccan Argan Oil” mark for the First or Second Trade Marks or wonder whether the Aldi product is made by the owner of the First and Second Trade Marks.  Considering each of the First and Second Trade Marks as a whole, I find that the Aldi mark is not deceptively similar to either of the MIL marks.

Four other points

First, MIL placed heavy reliance on what it said was evidence of 58 consumers being confused that Aldi’s product was MIL’s. These included reports of people who said, or were reported to have said, that they had bought MIL’s products in Aldo’s stores although, of course, MIL’s products were not available in Aldo’s stores.

Only one of those consumers gave direct evidence and Katzmann J considered there were sufficient deficiencies in her evidence to regard her as an unreliable witness.

For example, the witness had a clear recollection of seeing different Aldi products displayed together although it appears to have been accepted they were only displayed in different parts of the store, she referenced MIL’s get up rather than its trade mark, she admitted to being distracted by a distressed child and it emerged that she had not disclosed her previous experience working in advertising as the basis for concluding Aldi’s product was some kind of brand extension.

All the other evidence was the more typical hearsay evidence of employees of MIL and its distributor and stockists about what customers told them. Katzmann J accorded this evidence no weight. Her Honour’s reasons warrant very careful consideration, especially as this type of evidence (if not its scale) is very typical.

206 That is because the evidence largely consists of reports given to others in a way that makes it impossible to decide what was responsible for the confusion. Certainly, there is nothing to suggest that any deceptive similarity arising from the get-up of the products or aspects of it were disregarded. The evidence provides either no or no sufficient foundation for the conclusion that any purchase of an Aldi product was made because of the deceptive similarity of the respective marks.

The indirect nature of the evidence was critical as it meant there was no context to assess the conduct:

207 …. Matters such as the following are often left unclear, or are completely unexplained: whether the person was aware of MIL’s products when they encountered the Aldi products, and if so to what extent; which Aldi product(s) were in issue; in what circumstances the alleged confusion occurred, including what level of attention the person gave to the Aldi products at the time; whether there were other factors at play that might have led to the person acting in the way that they did; and any other relevant circumstances. It would be essential to understand these matters in order to accord any weight to the evidence.

208 In view of the way in which the evidence was adduced (predominantly through witnesses to whom the reports were either directly or indirectly made by anonymous consumers), and in the absence of contemporaneous records, it was not possible for these matters to be explored in cross-examination.

209 Furthermore, even at face value a number of the reports do not bespeak of confusion, let alone deception. In one case, reported by Ms Williamson, the consumer said that she had bought products at Aldi that “look like” MIL’s products. While this is illustrative of similarity, it does not denote deceptive similarity. Some of the evidence consists of second-hand hearsay, such as the complaints received by Thierry Fayard. As a matter of common experience this evidence is unreliable ….

Secondly, MIL sought to rely on Aldi’s alleged intention to trade on MIL’s reputation in its trade marks. There does not seem to have been any real dispute on the evidence that Aldi had set out to “benchmark” its products at least partly on MIL, but also partly on another competing product by Organix:

214 Ms Spinks’4 evidence is insufficient to demonstrate that by the choice of the name “Moroccan Argan Oil” Aldi set out to mislead consumers into thinking that the Aldi brand was moroccanoil. No precise evidence was led as to how Aldi settled on the name “Moroccan Argan Oil” and no questions on this subject were asked in cross-examination. If its object were as alleged, then one would think it would call its products “Moroccan Oil”. The name Aldi chose was different. The name Aldi chose —“Moroccan Argan Oil” — was the name then used by Organix, whose products Aldi had used as the “benchmark” for its shampoo and conditioner. Further, the ultimate product was not taken to market before Aldi had received advice as to compliance with Australian laws. Ms Spinks said that an organisation known as “Silliker” (Silliker Australia Pty Ltd) was retained to undertake “due diligence checks” to ensure that proposed product packaging and labelling complied with relevant “regulations” and the Australian Consumer Law. She was not challenged about this evidence in cross-examination.

A third aspect is that MIL also sought to lead evidence of 13 other major brands which Aldi was said to have knocked off “lookalikes”. MIL wanted to use this evidence as tendency evidence under s 97 of the Evidence Act to show that Aldi deliberately copied product get ups to take advantage of their reputation.

Katzmann J accepted that could potentially be relevant evidence. MIL’s application failed, however, because its notice was not sufficiently specific to comply with the stringent requirements for the admissibility of such evidence and it was given too late. Moreover, the evidence would not carry matters further than the direct evidence of Ms Spinks. At [129]:

… tendency evidence is generally used to prove, “by a process of deduction, that a person acted in a particular way, or had a particular state of mind, on a relevant occasion, when there is no, or inadequate, direct evidence of that conduct or that state of mind on that occasion”: …. Here, however, there was direct evidence from Ms Spinks of the development process in relation to the goods in question. The evidence MIL wished to adduce as “tendency evidence” consisted merely of samples and images of other, unrelated products. It did not include any evidence as to how or why the get-up for the particular products was selected. It takes the evidence given by Ms Spinks no further. Consequently I am not persuaded that the evidence in question has significant probative value.

Even if the tendency evidence had been admitted, it would not have helped on the trade mark case as it was evidence of a tendency to adopt features of get up, not the trade mark itself.

Finally on this part of the case, Katzmann J held that Aldi’s hair brushes and dryers etc. were goods of the same description as the hair care products in class 3 covered by MIL’s registrations. As with Aldi’s own hair care products, however, there was no likelihood of deception or confusion so s 120(2) did not come into play.

The ACL claims

MIL brought three claims under the Australian Consumer Law alleging that Aldi had engaged in misleading or deceptive conduct by:

  1. misrepresenting that its products were MIL’s products or in some way sponsored or associated with MIL (i.e., a passing off type claim);
  2. misrepresenting that its products were made from, or substantially from, natural ingredients; and
  3. misrepresenting that the argan oil in the products gave the products performance benefits which they did not in fact have.

As noted above, MIL succeeded only on the latter two claims.

In relation to the passing off claim, Katzmann J accepted that Aldi had modelled the get up of some of its products on MIL’s get up5 and sought to appropriate some of the reputation of MIL’s products to its own benefit. At [380]:

Aldi unquestionably modelled its Oil Product on the MIL Oil Treatment. Ms Spinks referred to it as “the benchmark” product. Aldi copied several of its “diagnostic cues”, including the use of a bottle very similar in style, size, shape, and colour, the same pump mechanism for the extraction of the oil from the bottle, the use of a cardboard box, and the prominent use of a similar colour for both the bottle’s label and the box. Ms Spinks accepted in cross-examination that Aldi’s object was to achieve an exact colour match with the bottles and conceded that consumers would associate the colour of the bottle and the type of packaging with the MIL product. ….

and

384 The evident purpose of copying important features of the MIL Oil Treatment was to remind consumers of that product. It would be naïve to believe that in doing so Aldi was not seeking to capitalise on MIL’s reputation and attract to itself some of its custom. I find that in adopting the particular get-up for the Aldi Oil Treatment bottle and box, Aldi copied from the get-up of the MIL Oil Treatment and box and that it did so in order to appropriate part of MIL’s trade or reputation or the trade of MIL’s authorised distributors and resellers.

That was not sufficient in itself for a finding of misleading or deceptive conduct. The question was whether or not Aldi had sufficiently distinguished its products from MIL’s.

Katzmann J considered that, if regard were paid only to the similarities between the respective get ups, there would have been a likelihood of deception. However, it was necessary to have regard to the respective get ups as a whole. When considered as a whole, there were important differences which served sufficiently to distinguish Aldi’s products:

  • first, ALDI’s products were prominently branded with its well-established house brands PROTANE or VIGOUR;
  • secondly, MIL’s products featured the very prominent large “M”, which was not replicated in ALDI’s get up;
  • thirdly, in MIL’s products “moroccanoil” appeared vertically, while Aldi used “moroccan argan oil” horizontally only;
  • fourthly, there were significant differences in the packaging, especially the shampoo and conditioner which were closer to the Organix product than to MIL’s;
  • fifthly, the closest products – the competing oil treatment products – were sold by MIL in a glass bottle, but Aldi had used a plastic bottle only;

Her Honour considered that none of these differences were concealed and were at least as conspicuous as the similarities. Further, viewed as a whole, the Aldi range was cheaper and the use of the house mark clearly marked the products out as a different brand. Further, the two businesses marketed their products through completely different trade channels and at very different price ranges.

MIL’s heavy reliance on the similarity of the turquoise colours used did not avail:

413 Colour-blind, inattentive consumers, and consumers with an imperfect recollection of the MIL products might confuse the colours. I accept Professor Quester’s evidence that consumers are unlikely to detect subtle differences in colour between two sets of products as they would not ordinarily engage in a side-by-side comparison. Indeed, I am prepared to accept that a not insignificant number of consumers might think the colours are the same. On the other hand, as Ms Spinks’ evidence shows, at the time Aldi entered the market with “Moroccan Argan Oil”, at least one other company, Organix, was selling hair care products in turquoise containers and also under the name “Moroccan Argan Oil”. Other products, like Pure Oil of Marrakesh, were sold in cartons, bottles and other containers featuring various shades of blue.

414 Knowledge of third-party usage of a particular get-up or name can affect the chances that a consumer might be misled or deceived.

As in Cadbury v Darrell Lea, MIL did not have a monopoly in the colour.

MIL also failed in its attempt to rely on the printing of “Moroccan Oil” on (at least) some Aldi receipts. At [428], they were issued after purchase, which was too late.

As one would expect, the failure of this part of MIL’s ACL claim was also fatal to its passing off claim.

Natural products

I don’t propose to go into the detail of why the use of the brand name Protane Naturals was misleading or deceptive other than to record that Katzmann J did find the brand name deceptive since the relevant products were not substantially “natural” products. There is some quite involved evidence about what a “natural” product is or may be if you are going to get into that sort of thing.

Performance representations

Some of Aldi’s products claimed on their packaging to “helps strengthen hair” and “helps protect hair from styling, heat and UV damage” and similar claims.

Katzmann J rejected Aldi’s argument that this was a reference to the capabilities of the product as a whole rather than as a result of the use of moroccan argan oil. Apart from the presentation on the packaging and the prominence given to that oil, Aldi’s own internal documents claimed it was the argan oil that conferred these attributes.

MIL’s scientific evidence established, however, that there was too little argan oil (which is apparently very expensive) in Aldi’s products to have the desired effects. Needless to say, the expert evidence dealing with this part of the case is also rather involved.

Wrap up

Overall and barring the outcome of any appeal, this seems like a rather Pyrrhic victory for MIL. I don’t have any idea how much damages will flow for the breaches of the ACL. Nonetheless, here is plenty of scope for Aldi to continue using its lookalike get up; the prevention of which was surely the point of the exercise. What is more, the result was achieved only after a very lengthy trial including, amongst other things, eight experts: 2 lexicographers, four marketing experts and two chemists!

Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823

  1. Following her Honour’s decision (and barring any appeal), it will have three including TM No. 1463962 “moroccanoil” in respect of Hair care products, including oil, mask, moisture cream, curly hair moisture cream, curly hair mask, curly and damaged hair mask, argan and saffron shampoo, hair loss shampoo, dandruff shampoo, dry hair shampoo, gel, mousse, conditioner and hair spray in class 3. ?
  2. In addition to hair “lotions” such as shampoo, Aldi also marketed hair brushes and powered hair dryers and the like. ?
  3. Those of you who read 140 year old case law might also be thinking about the striking colour scheme. Katzmann J, citing the 5th edition of Shanahan and the Office Manual, held that MIL’s trade marks were not limited to the specific colours as there was no endorsement under s 70 and so the marks were taken to be registered for all colours. One could be forgiven for thinking this approach renders the Register seriously misleading at times. ?
  4. The Aldi employee charged with introducing the range. ?
  5. The Aldi shampoo and conditioner products were “benchmarked” on Organix’ get up, not MIL’s. ?

Government response to Productivity Commission IP report

The Government has published its response to the Productivity Commission’s Intellectual Property Arrangements – Final Report.

Further comment will have to await. In the meantime, the media release notes:

A key priority will be to align Australian inventive step law with international best practice to ensure that the necessary protections are available to deserving inventions. The Government has also accepted the Productivity Commission’s recommendation to phase out the Innovation Patent System.

and, in not accepting the proposal to adopt a general “fair use” defence to copyright:

It is important copyright reform is considered in a holistic context rather than focused on individual issues. We will continue to work closely with stakeholders over the next 12 months to develop effective options for copyright reform.

The Australia Copyright Council is very pleased.

There will also be a new IP Policy Group (within government) to, er, monitor IP policy!

According to the Government’s Media Release, the Government is still considering the merits of a number of other proposals and “will work on these further”.

Australian Government Response to the Productivity Commission Inquiry into Intellectual Property Arrangements (pdf)

Media release 25 August 2017

More third party website blocking injunctions

Nicholas J has granted another round of injunctions ordering ISPs to block access to offshore copyright infringing sites.

Having established the ground rules in the earlier applications (here and here), the ISPs didn’t turn up; essentially just filing submitting appearances and agreeing to be bound by the orders.

According to this News report, once these orders are implemented a total of “65 piracy sites and 340 domains” will be blocked in Australia. That is claimed to be “95 per cent of the criminal trade blocked”.

Apparently, the film companies:

plan, later this year, to sue any individual that continues to download pirated content.

Roadshow Films Pty Ltd v Telstra Corporation Limited [2017] FCA 965

Shape shopped

Mortimer J has dismissed Shape Shopfitters claims against Shape Australia for misleading or deceptive conduct, passing off and trade mark infringement.

Much of the focus of the decision is on the misleading or deceptive conduct claim (and will have to be the subject of a future post). This post will look at the trade mark infringement claim.

Shape Shopfitters has registered Trade Mark No. 1731525 for shopfitting, construction and advisory services relating to construction in class 37 for this trade mark:

TM No. 1731525

It alleged that Shape Australia infringed that trade mark by using these signs:

Shape Australia provided construction services, apparently on a much larger scale, but was not specifically engaged in shopfitting – sub-contracting out those parts of its jobs. Also, Shape Australia did not provide its services to the particular people who were customers of Shape Shopfitters.[1]

Mortimer J found that Shape Australia’s trade marks were not deceptively similar to Shape Shopfitters’. Her Honour considered that the imperfect recollection of the relevant public would recall not just the word SHAPE, but also its collocation with the word Shopfitters (albeit it was subsidiary) and the distinctive “bottle cap” shape of the border.

Of the four elements comprising Shape Shopfitters’ trade mark (apart from the blue colouring), Mortimer J explained:

  1. The use of capitals for the word “SHAPE” in the applicant’s Mark is, I accept, a feature likely to be recalled. In part, it is the use of capitals which is likely to make the word “shape” stick in the memory, as well as its proportionate size in the Mark. It is also correct that the word “Shopfitters” is much smaller, as is “Est 1998”. I see no basis to find that the latter phrase would be generally recalled, however I consider the word “Shopfitters” may well be recalled in conjunction with the word “SHAPE”. There is an alliterative effect between the two words, as well the positioning of “Shopfitters” underneath the word “SHAPE”. An industry participant’s eye (to take the applicant’s wider class of people) will, in my opinion, be drawn to that word as well and what is just as likely to be recalled is the phrase “SHAPE Shopfitters”, rather than just the word “SHAPE”.

As a result, the prospect that the word mark would be deceptively similar was roundly dismissed. The two devices with the word in a circle were closer, but the absence of the word Shopfitters and the difference between a circle and the “bottle cap” border were decisive.

  1. The Circle Mark and the Transparent Mark have a closer similarity, because of – in combination – the use of capitals of the word “SHAPE”, the placement of that word inside a circle, and the use of a circle itself. However, as I have set out, in my opinion even imperfectly, a reasonable industry participant of ordinary intelligence and memory is likely to recall the word “Shopfitters” in conjunction with the word “Shape”, especially because of the alliteration involved. I also consider such a person will recall the applicant’s Mark has a distinctive border that is not a smooth circle.
  2. I do not consider the evidence about several industry participants referring to the applicant as “SHAPE” affects these findings in a way which means that word would be recalled as the only essential feature of the applicant’s Mark. Rather, that evidence is evidence of the contraction of the applicant’s business and trading name in ordinary speech, and such a contraction does not necessarily carry over to what a reasonable person is likely to recall of the applicant’s Mark. It goes only to how industry participants might refer to the applicant in conversation.

Given these findings, it was unnecessary for her Honour to express an opinion on whether the registration of Shape Shopfitters’ trade mark with the blue background imposed a limitation on the scope of the registration.[2]

Mortimer J’s conclusions do not explicitly turn on the fields of activity of the respective parties, apparently a closely fought battle in the context of the misleading or deceptive conduct case. Indeed, at [258] her Honour expressly said it made no difference whether the relevant public was defined as the “buyers” of construction services or participants in the commercial construction industry.

Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3) [2017] FCA 865


  1. Although Shape Australia was much larger than Shape Shopfitters, you might recall that for much of its life it had operated under the name ISIS Group Australia and had changed its name after Shape Shopfitters came on to the scene and the name of the ancient Egyptian goddess took on some rather unfortunate (to say the least) connotations.  ?
  2. Referring to s 70 read with the definition of “limitation” provided by s 6.  ?

Should Michelin’s X block Continental’s Xking?

Over at the IPKat, there is a report about a CJEU decision upholding Michelin’s opposition based on its “X” trade mark to the registration of Continental’s “XKING” mark (below on the right), both in respect of tyres.

Michelin X v Continental Xking

You should read the report, if for no other reason, than the revelation of the EU’s “scientific” approach to trade mark conflicts.

Putting to one side the peculiar procedural posture the CJEU seems to take in these kinds of ‘appeals’, Merpel quite rightly thunders about scope afforded to ‘descriptive’ marks. After pointing out that it has taken 5 years to get to this point, Merpel says:

The end result here is that one trader with a weakly distinctive trade mark for the single letter X, distinguished from the letter of the alphabet only by the merest stylisation, can prevent the registration (and potentially use) of a stylised mark XKING. It must also follow that the same trader can prevent other X-formative marks, especially if the other element is in some way laudatory (and the word “king” is hardly at the top of the laudatory scale). Might it be said that this hands too strong a right to the trader?

Merpel makes a cogent case for the rejection of the opposition. What I wonder about, however, is what is the ordinary consumer likely to recall imperfectly? Would the ordinary consumer recall the mark is just an “X” alone so that the inclusion in Continental’s mark of rather bland “KING” is sufficient to dispel any potential for confusion? Or is the putative consumer likely to be struck by the common use of the hollow (or white) X? Under our version of trade mark law, all that is required is a (significant?) number of people being caused to wonder and the nature of the recollection is explained by Latham CJ:[1]

They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form… The court must endeavour to put itself in the position of ordinary purchasers of goods who have noticed a trade mark as being distinctive of particular goods, but who have not compared that mark with any other mark, and who are quite probably not aware of the fact that another more or less similar mark exists.

[socialpoll id=”2454828″]

If you’re really motivated, leave a comment explaining why!


  1. Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115 at 122.  ?

No damages for unjustified threats

Following on from the Full Court’s warnings in Australian Mud Company v Coretell, Dowsett J has now dismissed Morellini’s claim for damages for unjustified threats. This is a short point, but it bears notice as people often come to me thinking it is enough to show there has been an unjustified threat – it isn’t, if you want monetary compensation.

Mizzi and Morellini are both in North Queensland and came up with machines for planting sugar cane. Mizzi patented his. Dowsett J found that Morellini’s machine did not infringe Mizzi’s patent and Mizzi had made unjustified threats of patent infringement. On appeal, the Full Court also ruled that Mizzi’s patent was invalid for false suggestion.

There was no dispute that Mizzi had made unjustified threats. On 5 April 2010, it had caused to be published in the Canegrower trade magazine a notice about its pending patent and an article by “Invention Pathways” about the consequences “[i]f the patent owner decides to pursue his rights ….” Then in June 2011, Mr Mizzi made oral threats to a Mr Girgenti about the use of a Morellini machine.

The problems for Morellini were essentially two fold. First, much of the evidence about people’s reluctance to deal with Morellini related to things which happened before the threats were made or in circumstances where Dowsett J could not attribute them to the actual threats as opposed to just rumours circulating in the industry:

There is no direct evidence that anybody declined to deal with Mr Morellini as a result of the threats. It seems that even before the newspaper article on 5 April 2010, there was a degree of reluctance concerning any such dealings. That reluctance cannot have been attributable to the threats. Mr Morellini has not demonstrated that any adverse effect resulted from either of the threats.

Secondly, Dowsett J accepted that damages could be available for lost sales opportunities and delayed sales, if they could be linked to the threats. However, Morellini did not provide detailed evidence about how he would have exploited his machine commercially and why he had not been exploiting it “in more recent times”. That is, Dowsett J wanted to know what was Morellini’s plan (if he had one) for exploiting his machine commercially and why he had not been doing so.

Mizzi Family Holdings Pty Ltd v Morellini (No 3) [2017] FCA 870

100 blogs about IP

Not quite 100 flowers, but Feedspot has posted a listing of 100 IP blogs from around the world.

Some of them, I subscribe to myself.

You may find some interesting too!

Pham Global 2: the new law of substantial identity

Having ruled that Pham Global’s trade mark was invalidly registered because Mr Pham was not the owner of the trade mark when he filed the application, the Full Court also indicated a substantially expanded role for the test of substantial identity in stating that Pham Global’s trade mark was substantially identical with Insight Clinical’s.

To recap, Insight Clinical’s trade mark is on the left below while Pham Global’s is on the right:

The trial Judge had applied the well-known ‘side by side’ test explained by Windeyer J:[1]

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 103, at p 106. Whether there is substantial identity is a question of fact ….[2]

capped with Gummow J’s summation in Carnival Cruise:

Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are “substantially identical”: Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936; (1994) 120 ALR 495 at [62].

Generally, courts have found that the two trade marks must be virtually identical before a finding of substantial identity will be made.

The trial Judge had applied what many would consider to be a conventional analysis in rejecting substantial identity. At [18], her Honour held:

…. Whilst both composite marks use the word “insight”, there are clear visual differences in presentation. The appearance of the words “insight” and “radiology” in the IR composite mark run into each other, are equally prominent (the same font and size) and appear all in lower case. This is quite distinct from the words in the ICI composite mark where the letter “S” is capitalised in “inSight” and the words “Clinical Imaging” are secondary and beneath “inSight” in smaller and unbolded font. The capitalisation of the word “Sight” in “inSight” has the effect of emphasising the word “Sight”. There are also distinct visual differences in the appearance and positioning of the device. The ICI composite mark has a complete inner circle and is all in green with clear lines whereas the IR composite mark does not have a complete inner circle, the outside circle is in black and the lines are different. There is not a “total impression of resemblance”. The visual differences combined with the different wording, albeit that “imaging” and “radiology” may be interchangeable in relation to the services to which the marks relate, make the marks sufficiently different on a side by side comparison.

The Full Court held that the trial Judge had erred by failing to identify the essential features in the trade marks and make the comparison based on them. At [52], the Full Court stated:

…. The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark. (emphasis supplied)

The Full Court held that the essential features of the two trade marks were the words “insight” and, to a lesser extent, the circular “eye” image. The words “radiology” and “clinical imaging” were merely descriptive and the differences in the circular devices were relatively minor. At [56]:

The essential elements are the words “Insight” and the device. The word is the same in both marks. The device appears to the left of the word in both marks. While the differences which her Honour noted do exist, the dominant cognitive clues in both marks is a device which is circular in shape evoking an eye to the left of the word “Insight”, in circumstances where the other words “clinical imaging” and “radiology” are descriptive of the services offered. The importance of the visual differences which her Honour noted, and which we accept exist, must be assessed having regard to these essential elements of the marks. Once this necessary exercise is undertaken, we consider that not only is there a total impression of resemblance between the marks, but also that the differences between the marks are slight having regard to their essential elements or the dominant cognitive clues which they present.

Accordingly, the Full Court considered that Insight Clinical’s opposition to registration of the trade mark should also have succeed on the grounds that Pham Global was not the owner of the trade mark based on Insight Clinical’s prior use of its trade mark.

The Full Court’s analysis, with respect, has all the hallmarks of a deceptive similarity analysis. Given their earlier ruling that the trade mark was invalid because Mr Pham as not the owner when he applied to register it, this part of the Full Court’s decision is obiter.

For most purposes, it does not make much difference as most cases involving a comparison of marks ultimately turn on deceptive similarity.

It is (if followed), however, particularly significant in the context of ownership disputes. As Janice Luck (here and here) has noted, the Full Court’s approach gives much wider scope for the operation of s 58. It blurs the operation of the test for substantial identity with the test for deceptive similarity in ways arguably previously thought outside the scope of an ‘ownershp’ objection. In Carnival Cruise under the 1955 Act, for example, Gummow J had continued after the summation of principle quoted above:

…. The phrase “substantially identical” as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work, p. 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s. 33) or prior public recognition built up by user (para. 28 (a)). [3] (emphasis supplied)

It means that we won’t be able to concede, or skip over, the “substantially identical with” limb of trade mark comparisons in future.

The Full Court’s explanation of the operation of s 60 will have to await a future post.

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ)


  1. The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414; [1963] HCA 66.  ?
  2. Notwithstanding the high authority of Windeyer J’s statement, it is worth noting that Lord Radcliffe appears to have been referring to identification of essential features in the context of assessing whether or not a trade mark was likely to cause confusion or deception – the test for deceptive similarity. Thus, Lord Radcliffe rejected the appeal against the finding of infringement because “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.” Compare de Cordova to s 10.  ?
  3. Note also the questions his Honour posed at 58.  ?