The European Commission has fined Google EUR2.43 billion (approx. AU$3.6 billion) for misusing its market power over internet searches.
According to the Commission, Google has over 90% market share for internet searches in the EU.
The Commission found that Google had abused this dominant position in internet searching by promoting results for its own Google comparison shopping service over results for competing comparison shopping services.
While this is no doubt the start of a long legal process, Ben Thompson at Stratechery has an interesting, succinct analysis of the application of competition rules to Internet players here which is well worth reading.
The Global Innovation Index attempts to assess the innovation performance of some 127 countries across a wide range of factors, made up of some 81 “pillars”.
Australia comes in at #23, down 4 places from last year. While it scored quite strongly on innovation inputs, coming in at #12, its ranking for innovation outputs – what innovations it produces – came in at only #30. And, in terms of innovation efficiency – the ratio of the innovation output score over the innovation input score, coming in at #76.
Much of the narrative of the report is directed to exploring and promoting innovation in agriculture given the growing global population and the threat to food security posed by climate change.
The introductory overview chapter reports that there are indications of a pick-up of global economic activity. However, investment and productivity increases are still at historic lows. It also reports concerns around faltering economic integration; trade growth being around 2.5% in 2013 – 2014, but falling to 1.5% in 2016.
R & D growth is still lower than before 2011. In addition to reduced public R & D, growth in business R & D has been decreasing from 6% in 2013 to about 4.5% in 2015. The authors of the report call therefore for:
policy actions that foster human capital, research and development (R&D), and other innovation inputs and outputs, as captured by the GII, are now required. Indeed, avail-able economic evidence shows that an increase in R&D can effectively translate into an increase of GDP in the medium and longer term.
The question for Australia may be whether the Productivity Commission’s proposals meet those prescriptions?
The rankings are not strictly comparable as there have been adjustments and refinements to the framework and “technical factors” over the years and 4 countries included in 2016 dropped out while 3 new countries were introduced. ?
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:
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 ….
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 , 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 , 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 :
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)). (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.
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. ?
The Copyright Amendments (Disability Access and Other Measures) Bill 2017 has now been passed by both Houses of Parliament.
The bulk of the amendments introduce reforms to improve access to copyright works by people with a disability to give effect to Australia’s obligations under the Marrakesh Treaty – and simplify the statutory licences for collecting societies and educational institutions.
Schedule 2 amends the term of copyright in unpublished works so that they will not remain in copyright indefinitely. The precise term will depend on when the work is first made public, what type of work it is and whether the identity of the author is generally known.
In broad terms, the term will be reduced to 70 years after the author’s death if the work is never made public. If the work was first made public before 1 January 2019, the term can still run for 70 years after the work is finally made public. If the work is first made public on or after 1 January 2019, anonymous works can still get 70 years after publication if they are first published within 50 years of being made.
Because, if you do, the Full Court has definitively ruled that the error cannot be rectified and any resulting registration will be irredeemably invalid.
This is the first of at least two rulings departing from the trial judge’s reasons which the Full Court made in the course of dismissing Pham Global’s appeal from the decision to revoke its trade mark registrations and find it infringed Insight Clinical Imaging’s trade marks. So Pham Global still lost, but with ramifications for us all.
Since 2008, Insight Clinical Imaging has been using the name INSIGHT and its composite mark for its radiology services largely in Perth, WA.
Mr Pham is a radiologist and the sole director of the company through which a radiology business is conducted in NSW. Originally, the company was called AKP Radiology Consultants Pty Ltd. In December 2011, however, Mr Pham applied to register the Insight Radiology mark as a trade mark for radiology services.
Insight Clinical’s trade mark is below on the left. On the right below is the trade mark applied for by Mr Pham.
In March 2012, AKP Radiology Services first started using the Insight Radiology mark for its business.
On 6 June 2013, Insight Clinical lodged its opposition to Mr Pham’s application.
On 17 June 2013, Mr Pham’s company changed its name from AKP Radiology Services to Insight Radiology Pty Ltd. Then, on 1 July 2013, Mr Pham sought to assign the trade mark application to his company.
Insight Clinical Imaging’s opposition was successful before the Office and Mr Pham’s company appealed unsuccessfully. In accordance with the trial judge’s orders, Mr Pham’s company then changed its name to Pham Global Pty Ltd and sought leave to appeal.
While leave was granted, the appeal was dismissed.
Who is the applicant
The trial judge found that the Insight Radiology mark was designed for, and used by, Mr Pham’s company. It even paid the designer.
Mr Pham, however, maintained that it had not been a mistake that the application was made in his name rather than the company’s. There was no evidence that Mr Pham ever actually licensed his company to use the trade mark. Moreover, Mr Pham’s explanation for why he decided to assign the application to his company – “I just did it” – was not accepted. He explicitly rejected the proposition that he made the assignment in response to Insight Clinical’s opposition to registration of the trade mark or that it was a result of a mistake.
Accordingly, her Honour held that Mr Pham was not the owner of the application when it was made, his company was. In line with the decisions in Mobileworld and Crazy Ron’s, however, her Honour found that the assignment of the application to the company before the trade mark was actually registered rectified the error.
The Full Court then noted that longstanding precedent required that grounds of opposition were assessed at the date the application was filed. That meant that, where the ground of opposition was under s 58 that the applicant was not the owner of the trade mark, the applicant when the application was filed had to be the owner of the trade mark. At , the Full Court said:
Once it is understood that the legislative scheme operates in the context of established principle that the alternative sources of ownership of a trade mark are authorship and use before filing an application for registration or the combination of authorship, filing of an application for registration and an intention to use or authorise use, the relationship between s 27 and ss 58 and 59 of the 1995 Act becomes apparent. The grounds of opposition in ss 58 and 59 reflect the requirements of s 27. Only a person claiming to be an owner may apply for registration. That claim may be justified at the time the application is made based on either alternative source of ownership. But if the claim is not justified at that time, ss 58 and/or 59 are available grounds of opposition. Moreover, if the applicant is not the owner of the mark at the time of the filing of the application, the assignment provisions in ss 106 – 111 do not assist because they authorise the assignment of the mark and thus pre-suppose, consistent with established principle, that the applicant owns the mark.
Well, it’s a nice simple rule; should be pretty straightforward to apply in practice shouldn’t it? Of course, it does mean that the law for trade marks is way out of step with the law for patents and registered designs, sections 22A and 138(3)(4).
When time permits, I shall try to do a post on the new law of substantial identity.
It did not apply to register its trade mark until October 2012. ?
On 17 June 2013, Mr Pham caused AKP Radiology Consultants to change its name to Insight Radiology Pty Ltd. As a consequence of the first instance decision, however, the name of the company was changed again – to Pham Global Pty Ltd. ?
Mr Pham’s company also made a further application to register the words INSIGHT RADIOLOGY alone. Insight Clinical has also opposed it, but it appears to be stayed pending the outcome of the court case. (There was also an earlier application in 2008, TM Application No 1236945 for INSIGHT IMAGING / INSIGHT RADIOLOGY. This application was made by a Daniel Moses and a Jason Wenderoth, but lapsed after acceptance without ever becoming registered.) ?
The same principle applies under s 59, which was also in play. ?
The Australian Bar Association (the ABA) has obtained declarations that Australian Barristers Chambers Pty Ltd and associates (the Chambers entities) have infringed the ABA’s registered trade marks:
No 1587902 – AUSTRALIAN BAR ASSOCIATION; and
No 1558252 – for the ABA “logo”:
by using the names:
Australian Barrister Chambers;
AustBar Chambers; and
in close proximity to an image of the scales of justice. For example:
The ABA has also obtained declarations that the Chambers entities have engaged in misleading or deceptive conduct contrary to s 18 etc. of the Australian Consumer Law by using those names and also by using:
the URL ?www.austbar.com.au?;
the name AustBar Chambers;
the name AustBar ADR;
the tweet identifier ?Australian Barrister@AustBar?;
and all of the above in in proximity to, the scales of justice.
The NSW Bar Association has also obtained declarations that its trade marks for BARADR have been infringed, and s 18 of the ACL contravened, by the Chambers entities by the use of BARADR and the domain names ?www.baradr.com.au? and ?www.austbaradr.com.au?.
As James McDougall points out, the decision is 360 paragraphs long and so will no doubt require further, careful consideration. A few points caught my eye skimming through:
One point which should be noted (as clients often raise it) is Greenwood J’s orthodox rejection of the claim that Chambers’ name(s) were defensible because the business name registration or domain name registration system permitted them. Greenwood J pointed out at :
The circumstance that a domain name registration might or might not meet the eligibility criteria for registration is no answer to the question of whether use of such a domain name is either confusing or misleading or constitutes infringement of a registered trade mark, in Australia. Prior to the introduction of the dispute resolution protocols governing domain name registrations, it had become something of an art form for registrants to register, as domain names, the names of traders who had developed a reputation for a name or mark within a jurisdiction and often internationally. Processes were adopted as a result of that practice to try and address that conduct. Whatever the perceived “validity” might be of the domain name registration ?www.austbar.com.au? within the confines of that system and its protocols, austbar and AustBar are terms, names or indicia associated, particularly electronically, with the ABA.
The signpost point
Greenwood J was prepared to find that AUSTRALASIAN BARRISTERS CHAMBERS by itself, or even in the logo form:
by itself for a virtual chambers of barristers would not have infringed the ABA’s rights. However, traffic to the website was directed by the “signpost” <www.austbar.com.au> and that conduct was infringing:
 As to the use of the name Australasian Barrister Chambers, I do not regard the use of that name as being either substantially identical with or deceptively similar to either TM 902 or TM 252. However, traffic is directed to a website for and on behalf of that company (and later Austbar PL) by use of the domain name ?www.austbar.com.au?. Use of that domain name involves use of a mark or sign in the course of that company’s trade in services for which TM 902 is registered. I regard the use of austbar in this context as a use of a mark or sign deceptively similar to TM 902. Once a person engages with austbar as the conduit to the website operated by Australasian Barrister Chambers, the sense of confusion or wonderment about whether the person is engaging with the ABA or a provider connected with the ABA remains.
 However, by itself, the name Australasian Barrister Chambers might be thought to suggest a set of chambers occupied by barristers “virtually” (and in this case only a virtual presence is relevant), engaged or seeking to be engaged, in work in the Australian and Asian markets for legal services, by seeking direct electronic access to those who engage barristers in that work. In this case, of course, the key electronic point of connection is a domain name using austbar. Barristers might seek greater direct access to the legal profession in this way but it is also important to remember that the website addresses clients and the community directly through the website. Mr Minus, entities controlled by him (or over which he has influence) and other barristers would be entitled, plainly enough, to engage in an undertaking of establishing an online virtual presence for barristers associated together in some way, shape or form. The difficulty is the use of sign, mark or signpost which directs traffic to the site under or by reference to the dominant domain name descriptor austbar associated with the Australian Bar Association. The use of austbar as a mark signposting the electronic route to the site operator is the vice and the infringing conduct.
It will be very interesting to see what form of injunction is fashioned in response to these findings.
Unincorporated associations and ownership trade marks
Greenwood J rejected various attacks on the ABA’s title to its registered trade marks. When the applications for the ABA’s registered trade marks were filed in 2013, “it” was still an unincorporated association, so the 12 members of “its” executive council were the applicants, each described “as trustee for the Australian Bar Association”. Subsequently, three of the original applicants retired from the executive council and assigned their interests to the remaining members. Greenwood J held:
 I accept that as a matter of construction of the TM Act, a joint owner may assign his or her “share” or “interest” in the trade mark to another with or without an assignment by any other joint owner. Mr Colbran QC, Mr Traves SC and Mr Walker were joint owners (with the other nine AB Council members) and joint applicants as trustees for the ABA for each trade mark. When they assigned their interest in each trade mark, the incoming assignees took, between them, that aliquot share of the three assignors impressed with the same trust upon which that interest had been held by them. The interest of each of the remaining nine applicant owners as trustees remained entirely as it was.
 There is no defect in title in the sequence of transfers as discussed.
Chambers’ disclaimer did not help
Chambers’ website seems to have various forms of disclaimer appearing at different times – his Honour considered the evidence was not fully clear about all the forms or timings.
Greenwood J considered that none of the forms sufficiently proved were sufficient. His Honour explained at  that to be effective the disclaimer had to satisfy the following test:
the critical matter in relation to the efficacy of the disclaimer is whether the respondents have discharged the onus of demonstrating that the disclaimer is likely to be seen and understood by all those reasonable fair minded members of the various cohorts engaging with the website (leaving aside extreme and fanciful reactions and isolated exceptions), who would otherwise be misled. In order to be effective, the disclaimer must be such as to leave the fair minded reasonable member of the class in no doubt about the source or origin of the services provided under and by reference to the website; in no doubt about whether the ABA is associated or affiliated with the site operator or the services offered by the operator; and in no doubt about whether the ABA is in some way, shape or form standing behind the website operated by the respondents.
Chambers’ disclaimer did not achieve that. By the time the reader had reached the website, there had already been infringement and misleading or deceptive conduct:
: First, by the time a person engages with the website, they have already been taken there by a sign, the use of which involves an infringement of TM 902 and taken there by reason of conduct in contravention of s 18(1), s 29(1)(g) and s 29(1)(h) of the ACL. The user is already drawn to the site. He or she is already attracted and engaged by the conduct. At that point, the disclaimer needs to operate in such a causative way that it cures an existing problem (if able to do so at all which is likely to be difficult and rare), by making it absolutely clear to the reader who is looking at the site electronically for particular information that this site is not a website operated by the ABA and nor are the services provided by the website the services of the ABA or services associated with or approved by the ABA. One imagines that the disclaimer would need to capture the eyes of the viewer with significant text with appropriate emphasis. Small text located two thirds of the way down the page is never likely to be sufficient and in the facts of this case, it is not sufficient. It is a classic example of the message being “in the small print”.
 Second, in the facts of this case, the truth of the matter is that the unlawful conduct was complete once the trade mark infringement had occurred and once the misleading conduct had taken the person to the site. At that point, the disclaimer had to be powerful enough to undo the harm.
Thirdly, some of the public who would land on the website would be consumers looking to access the views of a national body like the ABA, but misdirected there by Chambers’ cues.
Last week, in Impression Products v Lexmark the US Supreme Court declared that an authorised sale of a patented product abroad exhausts the patentee’s rights within the United States of America. This follows on from 2013’s Kirtsaeng ruling adopting international exhaustion for copyright.
The underlying issue is printer manufacturers’ ongoing attempts to extract value according to usage of the printer by “metering” usage through charges on toner cartridges.
Lexmark has a number of patents over its toner cartridges. It offered patented toner cartridges for sale in two ways: at full price, with no restrictions or, for a 20% discount in return for a signed contractual condition that the customer would not refill the cartridge but return it to Lexmark.
Remanufacturers (vendors of refilled toner cartridges) had been acquiring Lexmark toner cartridges, circumventing the microchips preventing refilling then and reselling them.
In this action, Lexmark had sued two groups of remanufacturers . The first group had obtained the cartridges they refilled within the United States (presumably the original owner of the cartridges was in breach of its contract by passing its used (empty) cartridges along). The second group had acquired their cartridges outside the United States and imported them into the United States for resale.
In summary, the majority of the Supreme Court held:
We conclude that a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.
In the majority opinion, Robert CJ noted that the 1890 decision of Boesch v Graff – the Supreme Court’s only previous consideration of this issue, did not concern parallel imports, but products made in Germany legally by someone other than the US patentee.
Given Lexmark itself appears to have sold the cartridges overseas, Prof. Wasserman Rajec notes that the Supreme Court’s decision does not settle what qualifies as an sale abroad authorised by the patentee.
Ginsburg J dissented
As her Honour did in Kirtsaeng, Ginsburg J dissented from the adoption of international exhaustion:
Because a sale abroad operates independently of the U. S. patent system, it makes little sense to say that such a sale exhausts an inventor’s U. S. patent rights. U. S. patent protection accompanies none of a U. S. patentee’s sales abroad—a competitor could sell the same patented product abroad with no U. S.-patent-law consequence. Accordingly, the foreign sale should not diminish the protections of U. S. law in the United States.
Her Honour also considered that patent law and copyright law were sufficiently different that the rule applicable in copyright (in the USA) should not apply to patent law:
the two “are not identical twins,” id, at 439, n. 19. The Patent Act contains no analogue to 17 U. S. C. §109(a), the Copyright Act first-sale provision analyzed in Kirtsaeng. See ante, at 13–14. More importantly, copyright protections, unlike patent protections, are harmonized across countries. Under the Berne Convention, which 174 countries have joined, members “agree to treat authors from other member countries aswell as they treat their own.” Golan v. Holder, 565 U. S. 302, 308 (2012) (citing Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, as revised at Stockholm on July 14, 1967, Arts. 1, 5(1), 828 U. N. T. S. 225, 231–233). The copyright protections one receives abroad are thus likely to be similar to those received at home, even if provided under each country’s separate copyright regime.
What’s the position in Australia?
Until the High Court makes another one of its ex cathedra policy declarations, the position in Australia is different.
First, when a patentee sells a patented product in Australia, the purchaser gets an implied licence to exercise all the rights in the patent: National Phonograph Co v Menck. Being an implied licence, it could be excluded by appropriate contractual terms.
Secondly, where a patentee itself sells the product in an overseas market, there is also an implied licence to import it into Australia. If the sale in the overseas market was made by a licensee from the patentee which did not also have a licence to sell in Australia, however, parallel importing would infringe.
Ginsburg J dissented from that part of the Court’s ruling relating to international exhaustion. ?
In International Parcel Express v Time Life, the High Court considered that copyright law involved different considerations to patent law and distinguished the patent law treatment in the context of parallel importing of books. ?
Now, you might be thinking that CHÉRI marks out Homart’s product from CHANTELLE rather plainly. But the dreaded Red Bull and Peter Bodum cases reared their heads again.
Sales of Careline’s CHANTELLE product had exploded after it adopted its current get-up: from between $25,000 to $60,000 per year to over $2 million in between June 2014 and early 2016 when Homart introduced its competing product.
Homart’s get-up was nothing like the other products in its CHÉRI range. Its get-up was much closer than any other competing product to Careline’s. The boxes of the products were often displayed in stores stacked, with the lid of the top box open so that customers could see the contents.
Accordingly, the branding on Homart’s product was often not visible, at least initially. CHÉRI itself was not thought to be a particularly distinctive mark, especially as both CHANTELLE and CHÉRI began with the same “shhh” pronunciation. Burley J could not accept the explanation for the adoption of the get-up advanced by Homart’s designer.
After a very careful consideration of the evidence, his Honour summarised:
194 The unique combination of features making up the get-up of the CHANTELLE bio-placenta product are eye-catching. They extend to the packaging in open or closed configuration and provide strong visual cues by which a consumer would note and remember the product. From this combination, quite separately to the name, the consumer is informed of the origin, quality and type of goods being purchased. Homart has taken all of those cues.
195 The suggestion conveyed by the get-up is not, in my view, dispelled sufficiently by the use of the CHÉRI Australia brand name. The name CHÉRI Australia is a relatively weak mark for distinguishing otherwise identical products because:
(a) such reputation as Homart has in the mark CHÉRI is weak and has been significantly dissipated by reason of Homart’s choice to use it in packaging distinctly different to the products in the balance of the CHÉRI range (see section 9 above);
(b) the phonetic and visual similarities between the first letters of both the CHÉRI and CHANTELLE marks diminish the effect of the use of different words (see  above). In this context both Chantelle and Chéri are French sounding names. Both commence with “Ch…”. To persons not familiar with French, they are likely to be weak means of distinguishing otherwise identical products (unlike “Andronicus” and “Moccona” in Stuart Alexander). They are likely to be perceived as words that convey little or no meaning (I make this observation without particular regard to the level of English literacy of the target market and assuming it to be roughly on par within native English speakers); and
(c) the addition of the reference to “Australia” has a similar local geographical connotation to “Sydney” as used in the CHANTELLE bio-placenta product.
198 Further, the trade circumstances to which I have referred in section 5 above demonstrate that often the display of the bio-placenta products in stores may not clearly show the trade mark, for instance, when the products are stacked one on top of the other. In those circumstances consumers are likely to use the visual cues provided by the get-up of the packaging to indicate the product which they seek rather than the names.
199 In my view, it is likely that a not insubstantial number of persons within the relevant class, who are aware of the CHANTELLE bio-placenta product, would be diverted from a search for that product by the get-up of the Homart product. They may note that something seems different about the brand name, but be convinced by the other similarities in the get-up that her or his recollection as to the brand name was mistaken. A consumer familiar with the CHANTELLE bio-placenta product may well recall its get-up, but have no or an imperfect recollection of its name and acquire the CHÉRI bio-placenta product believing it to be the CHANTELLE bio-placenta product. This would be especially likely in circumstances where the store does not stock both brands. The rapier of suggestion caused by the similarity in get-up will in those circumstances result in a sale for Homart.
200 Further, the findings that I have expressed in section 8 above (Development of the CHÉRI bio-placenta product) as to Homart’s intention, lead to the application of Australian Woollen Mills. That authority was applied by the Full Court in RedBull at  (Weinberg and Dowsett JJ, Branson J agreeing) who said:
Without wishing to labour the point unduly, we again point out that where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference from those propositions that the trader, with knowledge of the market, considered that such borrowing was “fitted for the purpose and therefore likely to deceive or confuse…”. Of course, the trader may explain his or her conduct in such a way as to undermine the availability of that inference. Obviously, this reasoning will only apply where there are similarities in get-up which suggest borrowing.
201 In the present case, I am satisfied that this was the intention of Homart. As noted in Red Bull at first instance (Conti J) at , the difference between the brand names is not necessarily decisive of an absence of the requisite intention. Nor, as I have noted above by reference to the Full Court decision in Peter Bodum, is the presence of a brand name determinative of an absence of misleading conduct. In the present case, in any action under s 18 of the ACL, one must look at the totality of conduct of the alleged deceiver.
202 I have found that Homart intentionally adopted a get-up for its product for the purpose of appropriating part of the trade or reputation of Careline. The choice of the CHÉRI Australia brand name was not, in the particular circumstances of this case, sufficient.
In the context of the findings at  above, his Honour had earlier noted at  –  that the cause of action could be made out even if the customer’s mistaken impression was dispelled by the time they had reached, or at, the sales counter. Burley J did discount Careline’s argument that the largely Chinese speaking customer base would not appreciate the different wording in Roman characters.