In dismissing Lolicel’s opposition to the registration of SIMPLY DELISH by Stanmar, Assistant Commissioner Rendle excluded evidence witnessed by a patent attorney in Australia because a patent attorney is not authorised to witness a declaration under New Zealand’s Oaths and Declarations Act 1957. The Assistant Commissioner would have dismissed the opposition even if the evidence had been allowed.
Background
Stanmore applied to register SIMPLY DELISH, TMA No. 1163933, in respect of dessert mixes, dessert mousse, dessert puddings and the like in class 30.
Lolicel opposed, claiming use of the mark by Stanmore was likely to deceive or cause confusion and the application was filed in bad faith, respectively, Trade Marks Act 2002 (NZ) ss 17(1)(a) and (2). Lolicel in effect claimed it was the owner of the trade mark and Stanmore was merely its distributor. Stanmar claimed it was the owner and Lolicel was just its contract manufacturer.
Lolicel filed a statutory declaration by its trade mark attorney, a Ms Rimmer, in support of its opposition. Most of the contents of the declaration were based on information provided by Lolicel’s trade mark attorney in South Africa and so were hearsay. Ms Rimmer’s declaration was witnessed in Brisbane Australia by its Australian patent attorney.
Stanmare did not file any evidence in answer but requested a hearing.
(After the hearing was requested, Lolicel sought to file a declaration by one of its employees which “confirmed” the contents of Ms Rimmer’s declaration. As it was filed out of time and an extension of time had not been requested, however, this declaration was excluded from the evidence.)
The declaration was inadmissible
Section 160 of the New Zealand Trade Marks Act requires evidence before IPONZ to be in the form of an affidavit or a statutory declaration in the absence of a direction to the contrary. (There was no direction to the contrary.)
The Rimmer declaration purported to have been made and witnessed under s 11 of the Oaths and Declarations Act 1957 (NZ).
Section 11(1) of the Oaths and Declarations Act 1957 provides:
A declaration made in a Commonwealth country other than New Zealand shall be made before a Judge, a Commissioner of Oaths, a notary public, a Justice of the Peace, or any person authorised by the law of that country to administer an oath there for the purpose of a judicial proceeding, or before a Commonwealth representative, or before a solicitor of the High Court of New Zealand. (emphasis supplied)
The Assistant Commissioner contrasted the specific requirements of s 11 with the terms of s 10 and s 12, the latter of which authorised officers of the armed services of a Commonwealth country, or an ally, to witness both affidavits and statutory declarations.
So it was necessary to show that the patent attorney had authority under the law in Australia to administer an oath for the purposes of a judicial proceeding.
It is clear that a patent attorney can witness a statutory declaration under Australian law – at least for the purposes of matters arising under Commonwealth laws.[1]
The Assistant Commissioner agreed with Stanmore, however, that a statutory declaration was not interchangeable with an affidavit, the truth of which has been sworn on oath or affirmation.
Moreover, it may be noted, s 6(3) of the Statutory Declarations Act 1959 (Cth) provides that the section does not authorise the use of a statutory declaration in a judicial proceeding.
As the declaration was made in Brisbane, the Oaths Act 1867 (Qld) s 16A provides:
(1)A person’s affidavit may be witnessed by any of the following persons without a commission being issued for the purpose—
(a) a justice, commissioner for declarations or notary public under the law of the State, the Commonwealth or another State;
(b) a lawyer;
(c) a conveyancer, or another person authorised to administer an oath, under the law of the State, the Commonwealth or another State;
(d) if the affidavit is witnessed outside Australia—a person authorised to administer an oath under the law of the place in which the affidavit is witnessed;
(e) another person prescribed by regulation for this subsection.
and reg. 4 of the Oaths Regulations 2022 (QLD) prescribes only “a senior police officer”.
The Assistant Commissioner was also referred to s 186 of the Evidence Act 1995 (Cth) which identifies the persons authorised to witness an affidavit for the purposes of court proceedings in the federal jurisdiction as “any justice of the peace, notary public or Australian lawyer”.
As a result, the Assistant Commissioner concluded at [38] – [41] that Lolicel’s Australian patent attorney was not authorised to witness affidavits under Queensland or Australian Federal law. Accordingly, the Rimmer declaration was not admissible in the opposition proceedings before IPONZ.
Hearsay
There was a further problem with the Rimmer declaration. Ms Rimmer had made it on the basis of information supplied by Lolicel’s trade mark attorney in South Africa. In other words, it was hearsay.
The Assistant Commissioner referred to an earlier IPONZ decision, BitFlyer Inc v Coinbase Inc, in which another Assistant Commissioner, recognising that trade mark oppositions dealt with valuable property rights, explained at [36] that hearsay evidence should be given little, if any, weight:[2]
in trade mark oppositions the Assistant Commissioners take the tribunal approach but are guided by and rely on the Evidence Act when assessing the reliability and probity of evidence. A high standard of evidence is expected.
As there was no way of separating statements made by Ms Rimmer from her own knowledge and those which were hearsay, at [52] the Assistant Commissioner concluded that Ms Rimmer’s declaration was inadmissible or of no probative weight.
The Assistant Commissioner appears to have made an exception from this ruling for invoices and emails between the parties as “business records”. At [53], however, the Assistant Commissioner considered these materials, even if admitted, were not adequate to sustain Lolicel’s grounds of opposition.
The substantive grounds
Section 17(1)(a) required the opponent to show that there was an “awareness, cognisance or knowledge” of its mark in the relevant market at the application date to found a likelihood of deception or confusion.
The business records annexed to Ms Rimmer’s declaration did not provide a sufficient foundation for this as they did not address the typical indicators of the extent of use in New Zealand such as sales volumes or advertising and promotional expenditure on the brand in New Zealand.
The s 17(2) ground required Lolicel to show that Stanmore had made its application in bad faith.
At [62], the Assistant Commissioner considered this required Lolicel to prove it was the owner of the trade mark in New Zealand when Stanmore applied to register it and it was unreasonable for Stanmore to have made the application in those circumstances.
While there were email communications between the parties that showed they had dealings with one another before the priority date, these communications left ownership of the trade mark unclear. Accordingly, this ground failed too.
Short comment
As the Trans-Tasman arrangements mean that all Australian and New Zealand patent attorneys are admitted to practise in both Australia and New Zealand, regardless of whether they are based in New Zealand or Australia, precluding patent and trade mark attorneys based in Australia from witnessing statutory declarations for use in IPONZ proceedings seems anomalous as well as inconvenient for businesses.
Statutory Declarations Act 1959 (Cth) [s 8][s8] and, for prescribed persons, see the Statutory Declarations Regulations 1993 (Cth) reg. 4 and items 107 and 111 of Sch. 2. ?
In what is surely only the first step on the long road to the High Court, Yates J has ruled that Lavazza qualità Oro coffee does not infringe Cantarella’s ORO trade mark – because Cantarella’s trade mark was invalidly registered.
As you probably recall, Cantarella famously has registered trade marks for ORO (and also CINQUE STELLE) for, amongst other things, coffee and coffee beverages.[1]
Lavazza has been importing Lavazza qualità Oro coffee into Australia since at least 1979. In about 2017, however, it introduced new packaging in the following form:
Cantarella sued Lavazza for infringing its ORO registrations contrary to section 120(1) of the Trade Marks Act by the 2017 and later years’ forms of packaging.[2] Lavazza denied infringement and also cross-claimed for revocation on the grounds (a) that Cantarella’s trade marks were not capable of distinguishing and/or (b) Cantarella was not the owner of ORO as a trade mark for coffee in Australia.
The issue on infringement was whether ORO was being used as a trade mark – a badge of origin. That fell to be assessed objectively in the setting and context in which ORO appeared on the packaging. Would the relevant public think it was being presented as an identifier of the trade source of the product?
At [375], Yates J did not agree with Cantarella that ORO was the dominant feature of the packaging but it was one (original emphasis) of the dominant features.
At [376], his Honour accepted that LAVAZZA was being used as a trade mark but that didn’t preclude ORO as presented (my emphasis) from also (my emphasis) being used as a trade mark. Instead, his Honour found both LAVAZZA and ORO functioned independently as trade marks – badges of origin.
The flavour of his Honour’s reasoning can be seen in his Honour’s rejection at [377] of Lavazza’s argument that ORO was used only as part of a composite mark – QUALITÀ ORO:
I do not accept that, in this packaging, the word “oro” is used as part of a composite mark QUALITÀ ORO. Whilst, on the packaging, the word “oro” is used in proximity to the word “qualità”, I do not accept that there is any necessary connection between the two words for trade mark purposes. In my view, for trade mark purposes, the two words function independently of each other, particularly given the different sizes and stylistic representations of the two words, with the word “oro” functioning as a trade mark. The word “qualità” is not functioning as a trade mark. Even if traders or customers were to associate the two words because of their proximity to each other on the packaging, it does not follow that the word “oro” is not functioning, in its own right, as a trade mark. As explained above, the existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark: [343] – [346] above.
Similarly, Yates J held the fact that the evidence showed numerous other traders were also using ORO in relation to their products did not avoid infringement. At [379], his Honour explained:
I do not accept that mere common use of a particular word in a given trade means that the word is precluded from functioning as a trade mark in that trade. The circumstances and manner of use of the word in question are critical to determining whether trade mark use of the word is involved. In the present case, whilst background circumstances cannot be ignored, the focus must be on the way in which the word “oro” is used on the impugned packaging.
So, subject to the cross-claim, Lavazza would infringe.
The cross-claims
Lavazza cross-claimed under s 88(2)(a) for revocation on the grounds that the registration of the ORO trade marks could have been opposed (a) under s 41[3] as not capable of distinguishing and/or (b) s 58, Cantarella was not the owner.
Not capable of distinguishing
Under either form of s 41, the central question was whether or not ORO was capable of distinguishing or did in fact distinguish Cantarella’s coffee – when the trade mark in question was filed.
Citing Lord Parker’s speech in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624,[4] Lavazza argued that ORO did not serve as a badge of origin because:
“other persons had registered and/or used in Australia, and/or were continuing to use in Australia, and/or without any improper motive would desire to use in Australia the word ORO in respect of their coffee products”
or, alternatively, because, as a significant part of the Australian public would understand ORO was a laudatory reference to “gold”, it was descriptive.
Yates J rejected the first argument about common usage as inconsistent with the High Court’s majority ruling in the earlier ORO case – which his Honour refers to as the Modena proceeding.
In the the Modena proceeding, Yates J pointed out in a lengthy discussion concluding at [303], the majority held that inherent capacity to distinguish was not tested only by other traders’ desire to use, or use of, the sign. Rather, the ‘ordinary signification’ of the sign had to be ascertained and the legitimacy of other traders’ use tested by reference to that. French CJ, Hayne, Crennan and Kiefel JJ explained:
70 In accordance with the principles established in Mark Foy’s and restated in Clark Equipment, Faulding and Burger King, determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.
71 As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.
…. As the majority explained, the desire of other traders to use the word in question is a function of the meaning that that word bears, according to its ordinary signification, in relation to the goods or services for which the mark is, or is sought to be, registered. ….
Accordingly, it was not for a judge sitting at first instance in the Federal Court to treat the majority in the the Modena proceeding as dealing only with a “narrow” question of distinctiveness of “descriptive” signs rather than a “broader” question of common usage. Moreover, it was not permissible for a judge sitting at first instance to disregard the majority view and adopt the dissenting view of Gageler J.[5]
Yates J then turned to consider the “ordinary signification” of ORO.
First, (albeit at [457]), Yates J rejected Cantarella’s argument that the High Court’s decision was conclusive on the question. Lavazza was not a party to that proceeding so there was no question of stare decisis.
Secondly, in this context, it was significant that the public was a broad consumer market and not a specialised trade or market. At [424], therefore, his Honour explained how the “ordinary signification” of a word fell to be determined:
Bringing these strands together, for presently relevant purposes a word will have an “ordinary signification” if it has been received into Australian English and has a commonly understood and commonly shared meaning by ordinary members throughout the Australian community at large.
(See also [463].)
This would not be satisfied if the word was shown to be used just in a particular locality or by a particular trader or even traders. Nor merely where a numerically large number of people knew the meaning. This latter point proved decisive.
Lavazza led extensive evidence of the use of “oro” by Lavazza and other traders before the relevant priority dates; the promotion of its own LAVAZZA QUALITÀ ORO in Australia in conjunction with “gold”; the permeation of the Italian language and coffee culture in the Australian coffee market; direct evidence from those in the trade (most of whom happened to be Italian speakers) that oro means gold and is used as a quality indication; and census data.
Yates J accepted that a numerically large section of the Australian public did appreciate that “ORO” meant gold in Italian but the evidence fell short of establishing ORO had been accepted into Australian English throughout the Australian community at large in contrast to, say, bravo, encore, en route and tour de force. At [460], his Honour summarised:
Whilst I accept that, speaking generally, a numerically large number of persons in Australia might understand, by their knowledge of Italian or another Romance language, that the word “oro” means “gold” in English, I am far from persuaded that the evidence before me shows that, even at the present time, “oro” has been received into Australian English such that the ordinary signification of “oro” is “gold”. I am satisfied, therefore, that the word “oro” does not have an ordinary signification. It follows that I am not satisfied that, as at 24 March 2000 or as at 30 September 2013, the Australian public, at large, would have understood that the word “oro”, when used in relation to the registered goods, meant “gold”, or was a laudatory reference to “gold”, and, therefore, “premium quality”.
Not the owner
In contrast, his Honour found the evidence established that Cantarella was not the owner of ORO as a trade mark for coffee at the priority dates for its registrations contrary to s 58.
At [490] – [491], Yates J rejected an argument that Cantarella could not own ORO as a trade mark because it was descriptive or in common use or lacked distinctiveness. That was the realm of s 41, not s 58.
As you know, the owner of a trade mark for Australian purposes is the first person to use the sign as a trade mark for the relevant goods or services or, if there has been no use, to apply to register it with the intention of using it as a trade mark – [494] – [498] and [571].
As the case was run, this required first establishing when Cantarella first used ORO as a trade mark for coffee and then examining when someone else’s use first started (and was not abandoned).
Cantarella was able to establish by accessing archived back-up tape that a product code COVIBON3 with the product description “VITT BK ORO BNS” was created in its systems on 2 August 1996. The data also showed that the first sale of COVIBON3 was made on 20 August 1996 “to the firm of solicitors formerly known as Mallesons Stephen Jaques” with sales ensuing to other customers in subsequent months.
Cantarella also led evidence from an employee who during the 1990s worked as a machine operator. His evidence included that Cantarella’s products were packaged using rewind tape – pre-printed film supplied on a roll. These rolls were inserted into an automated in-line packaging machine to create the bags. Part of this process involved inserting a printing plate into the packaging machine to stamp on the film product specific information. He recalled inserting ORO brand plates in “the mid–1990s could be 1993 or 1994”. However, Yates J was not prepared to accept this dating as it was inconsistent with Canteralla’s case based on the creation of the COVIBON3 code.
Turning to the other side of the equation, Lavazza relied on its own use in relation to its LAVAZZA QUALITÀ ORO product or, alternatively, use by a third party CAFFÈ MOLINARI ORO.
As mentioned at the outset, Lavazza’s product has been imported and sold in Australia since 1979. For many years (before the packaging that sparked this litigation), the packaging was in the following form or variations:
This, however, was not use of ORO simpliciter as a trade mark (e.g. at [548]).
Lavazza did establish that Caffè Molinari SpA has been supplying its CAFFÈ MOLINARI ORO product in Australia since September 1995:
The evidence of the lengths involved in establishing this use is quite involved and discussed in detail at [117] – [193]. This included evidence of witnesses from Molinari, the supplier, and CMS / Saeco, the first importer.
A particular twist here is that Modena’s importation and sale of CAFFÈ Molinari Oro coffee was found to be infringing conduct in the earlier Modena proceeding. However, the evidence of prior use in this case was from different witnesses, more extensive than and different to the evidence from Molinari that Modena advanced in the Modena proceeding.
At [574], Yates J found that the use of ORO on the CAFFÈ Molinari Oro packaging was use as a trade mark:
I reach this conclusion having regard to the size, colour, positioning, and prominence of the word “oro” on the packaging in relation to the other packaging elements. I observe that the word “oro” on that packaging is as conspicuous as the other trade mark used—CAFFÈ MOLINARI. I do not accept Cantarella’s contention that the word “oro” is used only as an element in the composite mark MISCELA DI CAFFÈ ORO, and not as a trade mark its own right.
However, the use of ORO BAR on the 3 kg packaging was not trade mark use of ORO alone – ORO BAR was not the same as, or substantially identical with ORO.
His Honour then went on to reject Cantarella’s contention that Molinari had abandoned its use of the trade mark.
At [581] – [582], Yates J recognised that ownership of a trade mark could be lost by abandonment – which required more than “mere” non-use or slightness of use. Despite the changes in Molinari’s packaging over the years, however, Yates J found Molinari had been using the ORO mark continuously as a matter of fact.
Finally, consistently with the decision in Anchorage Capital, Yates J ruled it was inappropriate to exercise his discretion under s 88(1) against non-cancellation of Cantarella’s mark.
In Anchorage Capital, the Full Court considered it was not in the public interest to allow someone, who was not the owner of the trade mark when they applied to register it, to jump the queue. Similarly, at [599], Yates J considered that ownership cannot (my emphasis) depend on the nature and scope of Cantarella’s reputation. Nor should other traders be vexed by use of the registrations “such as happened in the present case”.
Obiter dicta
As it was not necessary for his decision, Yates J commented only briefly on Lavazza’s defences to infringement based on prior use, good faith description as per s 122(1)(b), a right of use (s 122(1)(e)) or honest concurrent user through the operation of s 122(1)(f) or (fa).
However, giving s 58 an operation that is independent of s 44(3) robs the latter provision of practical effect. If the registered owner of a trade mark is truly the owner of that mark, every application under s 44(3) can be met with a s 58 objection by the registered owner. There is, therefore, an apparent conflict between the operation of s 44(3) and the operation of s 58 of the Act.
Yates J also drew attention to other drafting difficulties with s 122(1)(f) and (fa). At [642] for example, his Honour explained:
To explain, the defence under s 122(1)(f) is directed to the case where the infringer has used the very mark that is registered (in this case, the ORO word mark), and the Court is satisfied that the infringer would obtain registration of that mark in that person’s name. On the other hand, the defence under s 122(1)(fa) is directed to the case where the infringer has not used the mark that is registered, but a mark that is substantially identical with or deceptively similar to the mark that is registered, and the Court is satisfied that the infringer would obtain registration of the substantially identical or deceptively similar mark in that person’s name. (my emphasis)
Yates J thought that this wording meant that only the defence under s 122(1)(f) would be available and it would be available only to “LL SpA” – the Italian parent of the Lavazza group. However, it was the local subsidiaries, Lavazza Australia and Lavazza OCS, which were being sued for infringement. The suggestion being that, despite s 7 and s 26, the defence was unavailable to the subsidiaries.
In any event, his Honour’s findings on Molinari’s ownership would preclude the Lavazza companies achieving registration.
I have no inside information about the commercial goals or intentions of any of the parties and, with respect, I would not want to be taken as suggesting Yates J has messed up in any way but one would think that, given Cantarella pursued the Modena proceedings all the way to the High Court, an appeal is likely to be forthcoming.
For ORO, Trade Mark No. 829098 registered since 24 March 2000 and also Trade Mark No. 1583290 registered since 30 September 2013 (which is also the same date the Full Federal Court delivered judgment upholding Modena’s appeal in the case the High Court subsequently overruled. ?
In 2022, Lavazza also started importing into Australia capsules for Nespresso machines. The capsules were gold and had ORO emblazoned in black on them and these were added to the complaint. ?
Given the different dates of the two registered trade marks, the two different version of s 41 were in play. For the “old” version, see [393]. ?
Should special leave to appeal this proceeding eventually be granted, someone will no doubt notice that only Gageler J, now Gageler CJ, remains of the Court that decided the the Modena proceeding. ?
Despite its centrality to understanding what was intended to be achieved, I don’t think the Report itself is actually available online – which (if I am right) is something IP Australia should surely rectify. ?
In a rare case of a successful opposition under s 59, Energy Beverages has successfully opposed in the Court KMA’s attempt to register KANGAROO MOTHER.
Overview
As you might recall, Energy Beverages is the owner of registered trade marks in Australia for MOTHER in respect of amongst other things, non-acoholic beverages in class 5 and pharmaceutical and veterinary preparations, dietetic substances and food and beverages for babies in class 32.[1]
A New Zealand company, Erbaviva, applied to register KANGAROO MOTHER for a range of goods in classes 5, 29, 30, 31 and 32. Subsequently, the application was assigned to KMA. A Mr Zheng was the sole director and shareholder of both companies.
Energy Beverages’ opposition to the application on the basis of ss 42(b), 44 and 60 of the Trade Marks Act was unsuccessful. Energy Beverages “appealed” the Delegate’s decision to the Federal Court on the basis of s 59, s 44 and s 60.[2]
Unlike s 92(4)(a), however, the person opposing registration under s 59 bears the onus of proving the lack of the requisite intention.
In very broad terms, this requires demonstration that the applicant does not have “a resolve or settled purpose at the time the application was filed to use the trade mark as a trade mark in relation to the relevant goods or services. A mere ”speculative possibility“ or ”a general intention to use the mark as some future but unascertained time” is not enough.
What happened
Before he incorporated Erbaviva and later KMA, Mr Zheng worked as the “Assistant to the Group Chairman” of NZ Skin Care Company. NZ Skin Care Company, as its name suggests, sold a range of skin care products and also home cleaning products.
The Group Chairman Mr Zheng assisted was a Mr Liu. Mr Liu was also the Chairman of a Chinese company, Shanghai Urganic. Mr Liu, however, was not a director of NZ Skin Care Company and Shanghai Urganic was not a shareholder in NZ Skin Care Company (although later it did become the ultimate shareholder of that company).
While he was still working for NZ Skin Care Company, Mr Zheng incorporated Erbaviva to sell “Erbaviva” brand skin care products and, after the trade mark application in issue had been filed, KMA. Neither company, however, has ever traded.
In the course of 2018, Erbaviva applied for and became registered as the owner of trade marks for a “Kangaroo Mother” logo and Kangaroo Mother in respect of a range of goods in classes 3, 5 and 21.[3]
In February 2019, Mr Zheng received an email from a Shanghai Urganic employee, Ms Lim,[4] informing him that Director Liu had “mentioned” we should apply for a food trade mark for “Kangaroo Mother”. Ms Lim supplied a catalogue for another company’s products to illustrate the goods under consideration. This exchange led to the application the subject of the appeal.
After some back and forth, Mr Zheng contacted Erbaviva’s then trade mark attorneys with instructions to file a trade mark application in Australia for a range of goods in classes 5, 29, 30, 31 and 32. (With the exception of “chocolate flavoured cola drinks”, Mr Zheng had simply cut and pasted the specification for another, unrelated company’s trade mark he had found on the IPONZ site.)
The attorney indicated he could file for this range of goods but proposed he amend it to ensure that Erbaviva had “the widest scope of protection in those classes.” So, after Mr Zheng approved that proposal, the application wound up in the form under opposition.[5]
What O’Callaghan J found
As the application was filed in Erbaviva’s name, the relevant intention was Erbaviva’s at the time the application was filed. That is, the question was whether or not Erbaviva had an intention to use the trade mark in any of the ways specified in s 59 when it filed the application.
O’Callaghan J held it did not.
First, the goods specified in the application as filed were much broader than those suggested by Ms Lim or proposed to the attorney by Mr Zheng.
Secondly, in cross-examination Mr Zheng’s evidence was that he did not regard Ms Lim’s report about what Director Liu “mentioned” as an instruction.
Thirdly, there were no documents produced through discovery or evidence of any plan or proposal beyond use for “gel candies, pressed candies, drops, powdered dairy products, solid beverages or capsules”.
Fourthly, Mr Zheng had simply cut and paste the specification he proposed to the attorney in a matter of minutes.
Fifthly, although the application had been made over four years ago, there was no evidence of any use or preparations to use.
Sixthly, there was no evidence to support the contention that Shanghai Urganic, NZ Skin Care Company and Erbaviva were part of a “conglomerate” (see “secondly” above).
Mr Zheng’s evidence unfortunately only went as far as claiming Erbaviva intended to use or authorise another company to use. So submissions that it intended to assign to KMA on its incorporation did not fly.
The evidence also included a non-disclosure agreement with an Australian manufacturer of various goods, but the counterparty was NZ Skin Care, not Erbaviva.
So O’Calaghan J found the s 59 ground proven and allowed the appeal to refuse registration. By way of obiter, O’Callaghan J would also have upheld the opposition grounds under s 44 and s 60.
Some observations
As noted above, successful oppositions under s 59 are not very common in view of the onus – unlike removal actions under s 92 in which s 100 places the onus on the trade mark owner to prove use.[6] And this case seems to have been particularly assisted by Mr Zheng’s problematic evidence and the amorphous nature of the relationship(s) with Director Liu.
That said, the first thing to note is that Energy Beverages did not pursue the ground before the Registrar but only on “appeal” where the Court procedures of discovery and cross-examination were deployed.
Next, it is significant that this was an opposition rather than an application under s 92. This is because O’Callaghan J followed Yates J’s decision in Apple (at [232]) and accepted that the whole application should be rejected if it failed in respect of any specified goods. At [28]:
There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole….
In contrast, an application under s 92 may often result in removal of some, but not all, goods or services.
Thirdly, recognising this problem, KMA made an application on the penultimate day of the trial under s 197 to amend the specification of goods for a much more limited scope.
At [35], O’Callaghan J accepted that he should exercise this power in similar manner to that exercised by the Court when considering amendments to patents under s 105 of the Patents Act. That is, the power to amend was discretionary and required consideration of all the circumstances including when the owner became aware of the need to amend and any explanation for delay.
At [36] – [38], O’Callaghan J refused the request. KMA had been aware that Energy Beverages relied on the Apple approach from at least the opening. KMA failed to provide any explanation for its delay or the basis on which it proposed to exclude some goods but not others. Also, Erbaviva had deliberately sought the widest scope of protection possible, much broader than its own instructions.
In that connection, it is unusual to get the communications between the client and the attorney. While it is part of our jobs to ensure the client is getting appropriate protection, this case should serve as a warning against being too enthusiastic.
The question of discovery is also instructive. In October 2022, KMA had made discovery of 5 documents and a number of other documents over which privilege was claimed.
Two days before trial, however, KMA announced it proposed to rely on documents over which it had previously claimed privilege and, in the course of the trial just before Mr Zheng’s cross-examination, KMA sought to rely on a “further, extensive, tranche of documents which ought to have been produced in answer to the order for discovery”. At [62], O’Callaghan J invoked Aon Risk and refused that attempt on the grounds of prejudice and KMA’s failure to adequately explain the delay.
The class 32 goods were specified in TM No 1320799 for the “Mother” mark in gothic script. ?
Because the “appeal” is a hearing de novo, it is possible to raise grounds not raised before the Registrar. ?
After the trade marks were assigned to KMA, the logo mark has subsequently been removed for non-use under s 92 on application by Energy Beverages. KMA did not seek to defend the non-use application. ?
Although not an employee of NZ Skin Care Company, she did have the use of a NZ Skin Care Company email account. ?
S 92(4)(a) can be rebutted by showing use in good faith after the application was filed. And s 92(4)(b) proceedings can be brought only after the expiry of the period specified in s 93 (which is different depending on whether the application was filed before or after the Productivity Commission Implementation Act amendments). ?
The Full Court has allowed Energy Beverages’ (EB) appeal opposing Canteralla’s registration of MOTHER as a trade mark for coffee and related products. However, the Full Court rejected EB’s appeal against the removal of its MOTHERLAND trade mark for non-use. In the process, the Full Court provided helpful clarification of the role of Trade Marks Act s44(3)(b) “other circumstances”.
Some background
Cantarella applied to register MOTHERSKY in class 30 in respect of coffee, coffee beans and chocolate, coffee beverages and chocolate beverages and in class 41 in respect of coffee roasting and coffee grinding (TMA 1819816).
EB – the producer and distributor of the MOTHER energy drink – opposed, relying on its prior registered trade marks for MOTHERLAND (TM 1345404), MOTHER LOADED ICED COFFEE (TM 1408011) and MOTHER (TM 1230388) all registered, amongst other things, for non-alcoholic beverages.
Cantarella countered by seeking the removal of the MOTHERLAND and MOTHER LOADED ICED COFFEE marks for non-use under s 92 and deleting coffee beverages and chocolate beverages from its specification of goods.
The delegate ordered removal of MOTHERLAND (here) and MOTHER LOADED ICED COFFEE (here) from the Register for non-use. The delegate also dismissed EB’s opposition to the registration of MOTHERSKY. On appeal, the primary Judge upheld the delegates’ decisions.
EB sought leave to appeal the decisions in respect of MOTHERLAND and allowing the registration of MOTHERSKY. The Full Court refused leave to appeal the MOTHERLAND decision but allowed leave and upheld the appeal against registration of MOTHERSKY.[1]
MOTHERLAND
At [61], the Full Court quoted the well settled principles for trade mark use from Nature’s Blend:
(1) Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at 19; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645 at [43] (Lion Nathan).
(2) A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347–8; 101 ALR 700 at 723; 21 IPR 1 at 24 (Johnson & Johnson); Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading GmbH (2001) 190 ALR 185; 54 IPR 344; [2001] FCA 1874 at [60] (Aldi Stores).
(3) The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422; [1963] ALR 634 at 636; 1B IPR 523 at 532 (Shell Co).
(4) The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at FCR 347; ALR 723; IPR 24 per Gummow J; Shell Co at CLR 422; ALR 636; IPR 532.
(5) Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at FCR 347; ALR 723; IPR 24; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182; [2002] FCA 390 (Anheuser-Busch).
(6) In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.
The problem for EB was that its product is the energy drink MOTHER and its uses of MOTHERLAND focused on it being a fictional fantasyland tailored to “MOTHER-drinking” consumers.
An example of its use, taken from one of two commercials using MOTHERLAND, is:
Another example of use – the description in the “About Us” page of EB’s YouTube channel was “Welcome to MOTHERland”.
The Full Court considered that EB used only MOTHER as a trade mark in respect of energy drinks; MOTHERLAND was just used as the name of the fictional theme park and no more. Accepting that there could be more than one trade mark used in relation to a product, in context MOTHERLAND was not being used as a trade mark to indicate the trade source of the drink. At [67] – [68]:
The depiction of MOTHERLAND in the commercial with the prominent MOTHER in the well-known gothic script representation in contradistinction to LAND, appended in plain red font, emphasises the use of the distinctive gothic script MOTHER mark as the only mark possessing the character of a brand. MOTHERLAND was the name of the fictional theme park, and no more.
The presence of the dominant gothic script MOTHER mark each time MOTHERLAND appears in the commercial, including as the central part of the mark itself, is part of the context relevant to the assessment of the role of MOTHERLAND: Anheuser at [191]. The focus on the well-known gothic script MOTHER, including as part of MOTHERLAND, supports the conclusion that the gothic script MOTHER is the only mark being used to distinguish the MOTHER energy drinks in the commercial from the energy drinks of others.
There was a further problem with reliance on the commercials. The commercials had been run on television well before the non-use period. The commercials had also remained publicly available during the non-use period as they had been uploaded to EB’s YouTube and Facebook pages. There was no evidence, however, that anyone in Australia had accessed the commercials on either site. At [76], the Full Court explained:
Under existing authority, which has not been challenged in the present application, the mere uploading of trade mark content on a website outside Australia is not sufficient to constitute use of the trade mark in Australia …
Consequently, EB failed to demonstrate that the primary judge’s order to remove MOTHERLAND for non-use in respect of non-alcoholic beverages etc. was attended by sufficient doubt to warrant leave being granted to appeal.
MOTHERSKY
Despite the deletion of coffee beverages from Cantarella’s specification of goods, both parties conducted the proceedings on the basis that “coffee” included coffee beverages, not just the product of the coffee plant or coffee beans.
In contrast to the MOTHERLAND proceeding, the Full Court found that the primary judge made two material errors. First, his Honour had examined whether coffee beverages were similar goods to energy drinks and the powders and syrups for bottling energy drinks and concluded that the respective products had fundamentally different taste and flavour and were presented for sale and consumed in different circumstances.
This was in error. Section 44(1) calls for comparison of Cantarella’s “coffee” across the full scope of its normal and fair meaning to the full scope of EB’s specification. The correct comparison therefore was between “coffee” and “non-alcoholic beverages”.
Given the way the case had been conducted, the Full Court had little difficulty concluding that coffee beverages were “non-alcoholic beverages” within the scope of EB’s registration.
The fact that coffee as a beverage was classified in class 30 and not class 32 was a matter of administrative convenience and, at [132], irrelevant given Cantarella contended “coffee” covered “coffee beverages”.
Further, contrary to the primary judge’s approach, Cantarella’s claim for “coffee beverages” was not limited to “pure” coffee but extended across a range of beverages. Cantarella argued that coffee beverage did not include coffee flavoured milk. The Full Court accepted at [129] that there may be “a penumbra of uncertainty” about when a coffee flavoured beverage is not “coffee”. Treating “coffee” as meaning “coffee beverage”, however, at [128]:
there is nothing in the specification, so construed, which would limit the meaning of “coffee” to any particular coffee beverage or to any particular kind or type of coffee beverage. For example, there is nothing to limit “coffee” to black coffee as opposed to white coffee or coffee made with milk. There is nothing to limit “coffee” to coffee that does not include some additive such as, for example, a flavoured syrup. Further, there is nothing to limit “coffee” to a hot beverage or a freshly-brewed beverage as opposed to a cold or iced beverage. Further still, there is nothing to limit “coffee” to coffee produced by a particular process or prepared in a particular way, or to coffee packaged and promoted in a particular way. There are many permutations of what constitutes “coffee” as a beverage. Thus, coffee beverages cover a range of goods.
Further still, there was a sufficient body of evidence demonstrating that, at the priority date of the MOTHERSKY application, drinks such as pre-packaged iced coffee were regarded in the trade as non-alcoholic beverages and, further, of overlap between the trade channels through which coffee beverages and energy drinks were marketed and sold.
Secondly, the Full Court considered the primary judge materially erred when undertaking the deceptive similarity comparison.
The Full Court recognised that the comparison the test of deceptive similarity called for involved matters of judgment and degree about which opinions could reasonably differ. In the absence of legal error, mere difference of opinion was not enough. In undertaking the comparison, however, the primary judge’s assessment was heavily coloured by his Honour’s conclusion that “coffee beverages” and the goods covered by EB’s MOTHER registration were not the same or even of the same description.
Further, the primary judge erred by comparing only the specific way Cantarella actually used its trade mark with the specific way EB used its mark rather than comparing how notionally the competing marks could fairly be used across their full scope.
Undertaking the comparison themselves, the Full Court concluded that MOTHERSKY was deceptively similar to MOTHER.
First, at [167], while “mother” is a commonly used English word, it is not in any way descriptive of “non-alcoholic beverages” and was inherently distinctive of such goods. This was of considerable importance in the assessment. (emphasis supplied)
Secondly, at [168], “mother” was wholly incorporated in MOTHERSKY and did not lose its identify merely by the addition of “sky”.
Thirdly, at [169] to [170], “sky” did not have a well-understood meaning when added to “mother”. It might for example be understood according to its ordinary signification. Or it might be treated as some sort of playful variant or as creating a diminutive of “mother”. The Full Court considered that “mother” remained the dominanting element and, consequently, the likelihood of confusion arose.
As a result, s 44(1) operated to preclude registration of MOTHERSKY in the face of EB’s MOTHER registration for non-alcoholic beverages.
Other circumstances
It is well established that the registrability of a trade mark application falls to be determined at the date of the application.
Cantarella’s tactic of applying to clear the way for its MOTHERSKY application by removing EB’s blocking registrations for non-use is also long-standing although, of course, as at the date of the MOTHERSKY application, EB’s registrations were still in the way – removal for non-use being prospective, not retrospective.
At [176] – [178], however, the Full Court endorsed the Registrar’s practice (albeit by way of obiter dicta) of allowing an application to proceed to registration if the blocking citation was removed for non-use as “other circumstances” for the purposes of s44(3)(b). There would be “something perverse” in testing the registrability of the application against a mark which will be removed from the Register.
It is understood that an application for special leave to appeal to the High Court has been filed.
Leave to appeal being required under s 195(2) and so EB needed to persuade the Full Court that “(a) whether, in all the circumstances, the decision below is attended with sufficient doubt to warrant it being considered by a Full Court; and (b) whether substantial injustice would result if leave were refused, supposing the decision to be wrong.” citing Decor Corp Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398 – 399 and Primary Health Care Ltd v Commonwealth [2017] FCAFC 174; 260 FCR 359 at [206]. ?
The Agency Group is a real estate agency that operates nationwide including, amongst other places, on the Northern Beaches of Sydney. It services the Northern Beaches from offices in Manly and Neutral Bay.
In the 12 months or so up to 31 March 2023, between them the two offices sold more than 190 properties, with some 40 others up for sale. They had also leased over 300 properties, with another 17 still up for rent. The Agency Group had spent over $4.4 million on advertising its Northern Beaches properties on <realestate.com.au> and <domain.com.au>. In the 12 months to 31 March 2023, the properties serviced by the Neutral Bay and Manly offices had attracted 1,868,000 property views on <realestate.com.au> alone.[1]
And, from February 2017 to March 2023, the two offices had generated almost $40 million in revenue.
H.A.S. Real Estate Agency began trading in the Northern Beaches area in March 2023 from offices in Dee Why, also in the Northern Beaches region. From the start, the business operated as “The North Agency”. Its two directors had been working in real estate in the area since 2007 and 2008.
Screenshots of the businesses’ respective websites before his Honour showed:
The Agency Group also had two registered trade marks for real estate services in class 36:
(TM 1836914) and a second registered trade mark for the figurative letter “A”.
The respondent of course also used “The North Agency” in plain text to refer to itself and in the URL for its website and email addresses etc.
The Self Care v Allergan “problem”
There have been a number of first instance and Full Court decisions since Self Care v Allergan but Jackman J’s decision is the first to confront what the High Court said and what it actually did directly.
At [55], Jackman J distilled helpfully 12 principles from Self Care v Allergan. Then at [56] to [58] his Honour considered a further principle: noting that the High Court at [29] and [33] stated as a matter of principle that trade mark infringement is concerned with a comparison of the two trade marks and is not looking at the totality of the respondent’s conduct as would be the case in passing off or for misleading or deceptive conduct. His Honour observed that:
(1) At [29] footnotes 67 and 68, the High Court expressly endorsed the Full Federal Court’s proposition in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 at 245, “that it is irrelevant that the respondent may, by means other than its use of the mark, make it clear that there is no connection between its business and that of the applicant”;
(2) “On the same page, their Honours said that the comparison is between marks, not uses of marks, and hence it is no answer that the respondent’s use of the mark is in all the circumstances not deceptive, if the mark itself is deceptively similar”;
(3) Also, the High Court approved Gummow J’s statement in the Moo-Moove case that disclaimers are to be disregarded as are price differences, colour and target audiences;[3] and
(4) At [33], the High Court stated “the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit” and cited numerous authorities in footnote 81 endorsing that proposition.
At [59], however, Jackman J recognised that, in explaining why PROTOX was not deceptively similar to BOTOX the High Court in fact took into account additional “matter” extraneous to the two trade marks such as a disclaimer on the PROTOX website that “PROTOX has no association with any anti-wrinkle injection brand”.
His Honour, with respect, rightly pointed out it is impossible to reconcile the principles declared by the High Court with what the High Court actually did. In those circumstances, Jackman J proposed to apply the principles declared by the High Court and disregard what the High Court actually did at [70] and [71] of Self Care v Allergan. Jackman J explained at [60]:
With the greatest respect, those passages are impossible to reconcile with the Court’s approval of the authorities referred to above which state that such additional material used by the respondent is irrelevant to the issue of trade mark infringement. The internal contradiction places a trial judge in an awkward dilemma, which I propose to resolve by simply disregarding the passages quoted above from [70] and [71] as unfortunate errors. On the High Court’s own reasoning, it would be a fundamental error of longstanding legal principle if I were to adopt their Honours’ mode of analysis in [70] and [71] by taking into account on the question of deceptive similarity, for example, that the use by H.A.S. Real Estate of “THE NORTH AGENCY” was typically accompanied by the distinctive N Logo, thereby implicitly disavowing any association with the applicants or their services.
It can be hoped that other judges will also follow this brave course.
It has to be acknowledged, however, that the the High Court went on in [33] after footnote 81 to say:
…. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer’s actual use of the mark[82], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[83]. Consideration of the context of those surrounding circumstances does not “open the door” for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[84].
But, as the cases cited by the High Court show, those decisions were not engaged in the whole circumstances type of inquiry which characterises claims under the ACL and in passing off.
Why The North Agency did not infringe
The issue here is whether the respondent’s use of The North Agency was deceptively similar to The Agency Group’s registered trade mark.
Even on the “traditional” trade mark infringement analysis, Jackman J found that The North Agency was not deceptively similar to The Agency Group’s trade mark.
First, at [69] – [71], the inclusion of “North” in the respondent’s trade mark was a signficant differentiating factor. It was larger and more prominent in advertising material such as the website. But even in plain use such as the website URL and email addresses where “The North” was not given any particular prominence, it remained a striking aspect. As his Honour explained at [76] in rejecting the brand extension or franchising risk, “the Agency” and “the North Agency emphasised different businesses.
Secondly, at [62], Jackman J noted that TM No. 1836914 was not a word mark but a composite mark consisting of words and device elements. This was important as it meant that a trade mark consisting of a number of elements had to be considered as a whole. Moreover, where a trade mark consisted of words and other device elements, care needed to be taken before characterising the words as an essential feature lest what was distinctive because it was a composite mark be converted into “something quite different”.
Thirdly, that was important in this case as (at [63] and [72] – [74], [76]) the word “Agency” was commonly used by real estate agents to describe their businesses. This evidence of trade usage was admissible. It meant that the word itself had less distinctive force. Instead, it was the combination as a whole which operated as the badge of origin.
It is respectfully submitted his Honour’s approach to the significance of the commonality of the word “agency” in both the registered trade mark and the alleged infringement is the sort of contextual significance that the traditional case law has taken into account; assisting the Court to determine what the essential, memorable features of the trade mark are for the purposes of imperfect recollection.
It was the public’s familiarity with “Chifley” as a surname (including a prime minister) and as geographical places that meant The Chifley and Chifley on the Wharf were not deceptively similar to The Chifley Tower in Mid Sydney v Australian Tourism Co. For similar reasons, the High Court had ruled in the Mond Staffordshire case that Mulsol did not infringe Mondsol, way back in 1929 – “sol” and “ol” being commonly used in germicidal and medicinal preparations.
So, if this is the way the Courts will deal with the dilemma posed by Self Care v Allergan, we can probably breathe a sigh of relief (except when acting for a respondent!).
Jackman J went on to reject the claim of infringement of TM by the “N” logo. His Honour considered the slant of the “N” logo coupled with the degree symbol reinforced the idea of a compass pointing north in contrast to a stylised representation of a house.
For completeness, Jackman J did acknowledge at [60] that there would be even less prospects for deceptive similarity if one were to take into account the extraneous considerations referenced by the High Court in Self Care v Allergan and, consequently, the claims under the ACL and for passing off failed too.
The Agency Group’s figures nationally were $2, 788.5 million in sales revenue and, in the 12 months ending on 31 March 2023, there had been 8,748,102 views of its properties on <realestate.com.au> from NSW and a further 15,246,484 page views from the rest of Australia. ?
The Agency Group’s Neutral Bay office had a profile page on Domain: The Agency North but the applicant was not allowed to run a case of misleading or deceptive conduct based on that as a matter of pleadings (@ [104]) and, in any event, (@ [105]) there was not sufficient evidence to support a claim for reputation in the absence of evidence of how many page views there had been of the profile page or other use of the phrase. ?
With the closing stages of the negotiations between Australia and the EU over the proposed free trade agreement almost upon us, the EU has proposed a list of 55 further wine geographical indications it wants to protect.[1] Amongst others, the list includes “prosecco” and “vittoria”. The Department of Agriculture is holding a Public Objections Process to assess the impact of accepting these names.
There are four grounds for potential objection (and only four):
The EU GI name is used in Australia as the common name for the relevant good, including as a type or style of wine.
The EU GI name is used in Australia as the name of a grape variety, plant variety or an animal breed.
The EU GI name is identical to, or likely to cause confusion with, a trade mark that is registered in Australia or the subject of a pending application made in good faith in Australia. Confusion may be likely where a trade mark consists of, or contains, the EU GI name or something so nearly resembling it.
The EU GI name is identical to, or likely to cause confusion with, an unregistered trade mark that has acquired rights through use in good faith in Australia. Confusion may be likely where a trade mark consists of, or contains, the EU GI name or something so nearly resembling it.
You can see what the problem is with a name like “prosecco” as there are lots of Australian producers of wines under that name, all the more so when the grape variety formerly known (or thought to be known) as prosecco was renamed in 2009 by an Italian government decree as “glera”.
SBS Italian published an article (in Italian) looking at the issue.[2]
I also wonder about “Vittoria”, especially if the EU is pressing for protection not just against use of the name itself but terms and expressions which “evoke” that. There are, afterall, lots of wines which are made in a place called “Victoria”.
Whether Australia agrees to these names or not, Australian producers using these names are effectively giving up the potential to sell in the EU (unless they go to the trouble and expense of different labelling).
The consultation process has been running since late March and closes at 12 NOON AEST Friday 21 APRIL 2023. If you want to lodge an objection (good luck!), you must make your submission via here. Be warned: this is a “hard” deadline; finalisation of the deal is that close.
If you are feeling a little bit like “deja vu”; you’re right, there was a whole round of consultations about a much more extensive range of names two years ago.
If like me your Italian is not up to that here’s a link to Google Translate’s interpretation. Lid dip (for the article in the original) Dr Paula Zito. ?
Previously on IPwars.com we looked at why the High Court held PROTOX did not infringe BOTOX. The High Court also ruled that “instant BOTOX® alternative” did not infringe and overturned the Full Court’s ruling that the phrase was misleading or deceptive contrary to the ACL.
A recap
You will recall that Allergan has registered BOTOX as a trade mark for “[p]harmaceutical preparations for the treatment of … wrinkles” in class 5. The product Allergan makes and sells under the BOTOX trade mark is an injectable pharmaceutical which must be administered by a health professional. One treatment of BOTOX preparation can last for up to several months.
Because of its “overwhelming” and “ubiquitous” reputation in BOTOX, however, Allergan has also achieved registration of BOTOX in class 3 for anti-ageing and anti-wrinkle creams.
The second FREEZEFRAME product Self Care sells is INHIBOX. The INHIBOX product is a cream which the user can apply themselves at home and which lasts for up to a few hours to reduce the visible signs of ageing.
The INHIBOX product was sold in two forms of packaging:
Old packaging – Packaging A
New packaging – Packaging B:
Both forms of packaging included the phrase “instant BOTOX® alternative”. You will also notice that the back of both forms of packaging includes a longer declaration: “The original instant and long term Botox® alternative”.
Why “instant Botox® alternative” did not infringe
Self Care’s INHIBOX product being an anti-wrinkle cream falling squarely within the scope of Allergan’s BOTOX registration in class 3, the High Court had identified at [22] that the trade mark owner had to prove two things to establish trade mark infringement under s 120(1):
that the impugned sign was being used as a trade mark; and
that the impugned sign was substantially identical or deceptively similar to the registered trade mark.
At [23], a sign is being used as a trade mark when it is being used as “a badge of origin” to indicate a connection between the goods and the user of the mark.[1]
And whether that is the case is to be determined objectively in the context of the use without regard to the subjective intentions of the user. To repeat the High Court’s explanation at [24]:
Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user[50]. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade[51], the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote[52]. A well known example where the use was not “as a trade mark” was in Irving’s Yeast-Vite Ltd v Horsenail[53], where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark. (citation omitted)
Applying that test, the High Court held that Self Care was not using “instant Botox® alternative” as a trade mark. There were a number of reasons contributing to this conclusion.
First, Self Care did not present the phrase in a consistent style.
Secondly, the phrase was presented alongside two obvious trade marks – FREEZEFRAME and INHIBOX – so that the phrase was less likely to be taken as a trade mark.
And thirdly, while FREEZEFRAME and INHIBOX were presented as trade marks, the phrase “instant Botox® alternative” was a descriptive phrase which in context was used only with that descriptive purpose and nature.
As to the first consideration, the High Court explained at [55]:
The presentation of “instant Botox® alternative” was inconsistent in size, font and presentation on each of Packaging A, Packaging B and the website, indicating “instant Botox® alternative” was not being used as a badge of origin to distinguish Self Care’s goods from those dealt with by another trader[126]. On Packaging A the phrase was presented vertically, marked out by four vertical lines separating each of the words. On Packaging B and on the website the phrase was presented horizontally without any lines separating the words. The arrangement of the words differed. On the packaging, each word in the phrase occupied its own line. On two website pages the phrase occupied a single line. On two other website pages the words “Instant” and “Botox®” shared a line and the word “ALTERNATIVE” appeared on the next line. The font was inconsistent. The packaging used a different font to the website pages, and one website page used a different font to the other website pages. The capitalisation was inconsistent. Three different forms were adopted: “instant Botox® alternative” on the packaging, “INSTANT BOTOX® ALTERNATIVE” on one website page and “Instant Botox® ALTERNATIVE” on three other website pages.
Then, the High Court explained at [56] that the likelihood “instant Botox® alternative” would be taken as a trade mark was diminished because its use was not as dominant as the use of FREEZEFRAME and INHIBOX:
…. This diminishes the likelihood that the phrase “instant Botox® alternative” could be objectively understood to indicate origin in itself[127]. This is because its use was not as dominant as the use of the other signs, FREEZEFRAME and INHIBOX. This is most evident on the packaging. On both Packaging A and Packaging B, “instant Botox® alternative” appeared only once, on the front of the box, in much smaller font than FREEZEFRAME and INHIBOX. FREEZEFRAME and INHIBOX were also featured prominently on the left and right sides of each box. Further …. (citations omitted)
At [57], the High Court recognised that a sign can be both descriptive and used as a trade mark (see also [25]) but the phrase “instant Botox® alternative” was not in this case:
The FREEZEFRAME and INHIBOX script style and presentation is also significant. FREEZEFRAME and INHIBOX were both distinctive and stylised signs that were apt to be perceived as brands. In contrast, “instant Botox® alternative” was a descriptive phrase that had an ordinary meaning and included within it the trade mark BOTOX (identified as such with a ® symbol). It was descriptive of the product to which it was attached as an alternative product. While a sign can both be descriptive and serve as a badge of origin, the better view is that the use of the phrase, consistent with its ordinary meaning, had only a descriptive purpose and nature[128]. As the primary judge found, the phrase amounted to “ad?speak”. (citation omitted)
As the phrase was not used as a trade mark, there was no need to consider whether it was deceptively similar to Allergan’s trade mark.
Some aspects of the High Court’s reasons
In reaching its conclusions, the High Court drew on three different uses – the two forms of packaging and the website collectively. At [54], the High Court said it was permissible “to address them together, identifying relevant similarities and differences in use.”
In this case at least, there appears to have been some overlap between Self Care’s use of Packaging A and Packaging B – the latter being introduced on the market in September 2016, the former still being on the market until February 2017. The website of course was contemporaneous with both.
Nonetheless, it might be thought a bit odd that generally the old form of packaging informed the understanding of the new form of packaging. And, if the question is whether or not the particular use on the packaging is use as a trade mark, one might wonder about the relevance of use elsewhere. It must also be acknowledged that the form of use was one only of the factors contributing to the conclusion.
The High Court’s approach therefore reinforces INTA’s longstanding message that the trade mark owner should ensure it presents its trade mark consistently. Giving this consideration too much weight in isolation, however, risks creating some sort of pirate’s charter.
Ultimately, it might be thought the result is not too surprising. Afterall, phrases like this have not been considered to be trade mark use since the House of Lords’ decision in 1934 that “Yeast tablets a substitute for Yeast-Vite” did not infringe the registered trade mark YEAST-VITE.
In explaining why the Full Court wrongly found use as a trade mark, however, the High Court advanced a very different explanation why “instant Botox® alternative” was not use as a trade mark. The Full Court had impermissibly conflated the tests of use as a trade mark and deceptive similarity. At [60], the High Court then said:
Conflation of those elements is not uncommon. As Shanahan’s Australian Law of Trade Marks & Passing Off observes, “[t]here is a common misconception that an infringer uses a sign as a trade mark if the use indicates or is likely to indicate a connection between the infringer’s goods and the owner of the registered mark”[129]. However, “factors relevant to whether there is a misrepresentation or likelihood of deception have no role to play in deciding the question of what constitutes ‘use as a trade mark’”[130]. As was stated in Coca-Cola Company v All-Fect Distributors Ltd, the inquiry is not “whether the sign indicates a connection between the alleged infringer’s goods and those of the registered owner”[131]. The correct approach is to ask whether the sign used indicates origin of goods in the user of the sign[132]. (emphasis supplied) (citations omitted)
This may be contrasted with the reason why the House of Lords held that there had been no use as a trade mark. Lord Tomlin explained:[2]
This is clearly a use of the word “Yeast-Vite” on the respondent’s preparation to indicate the appellant’s preparation and to distinguish the respondent’s preparation from it. It is not a use of the word as a trade mark, that is, to indicate the origin of the goods in the respondent by virtue of manufacture, selection, certification, dealing with or offering for sale.
The High Court’s endorsement of Coca-Cola v Allfect on this point cannot be the result of some change in the meaning or concept of “use as a trade mark”. In the Yeast-Vite case, Lord Tomlin said:[3]
The phrase “the exclusive right to the use of such trade mark” carries in my opinion the implication of use of the mark for the purpose of indicating in relation to the goods upon or in connection with which the use takes place, the origin of such goods in the user of the mark by virtue of the matters indicated in the definition of “trade mark” contained in s 3.
That is the same explanation of the concept as adopted by the High Court in Gallo at [42] and in Self Care at [23] and [53].
It also cannot really be explained by the introduction into the Trade Marks Act of s 122A and s 123. Lord Tomlin roundly rejected a similar argument by the trade mark owner in Yeast-Vite:
nor do I think it is legitimate to treat special defences available under other sections of the latter Act as constituting a measure of the right conferred by s 39.
It appears therefore that the High Court has resolved the point left open in the Gallo case at [53] – whether a retailer uses the trade mark as a trade mark when using it in relation to the genuine goods of the trade mark owner.[4]
Whether that means our law now needs amendment to provide a defence for parody and satire, or other types of nominative fair use, remains to be seen.
The ACL case
The Full Court had found that the phrase “instant Botox® alternative” conveyed the representations that use of INHIBOX would result in a similar reduction in the appearance of wrinkles to using Botox and, secondly, that the effects would last for a period equivalent to that resulting from use of Botox.
The Full Court found that Self Care had reasonable grounds for the former representation, but not the latter – the long term efficacy representation. Therefore, Self Care’s use of the phrase was misleading or deceptive in contravention of the ACL.
On appeal, Self Care did not contend INHIBOX had a similar long term efficacy to Botox. Rather, it denied that the phrase “instant Botox® alternative” conveyed the long term efficacy representation at all.
Recap of the ACL principles
At [81], the High Court confirmed that determining whether there had been a breach of s 18 required a four step analysis:
Identifying the conduct said to contravene with precision;
Confirming that the conduct was “in trade or commerce”;
Considering what meaning the conduct conveyed; and
Determining whether the conduct in light of that meaning was misleading or deceptive or likely to mislead or deceive.
At [82], the High Court also confirmed that the third and fourth steps required characterisation as an objective matter. This required viewing the conduct as a whole and its notional effects, judged by the conduct in context, on the state of mind of the relevant person or class of persons.
The context includes the immediate context – all the words in the communication and the way they are conveyed, not just the word or phrase in isolation. The context also includes the broader context – all the relevant surrounding facts and circumstances.
Next, in cases of this kind the High Court re-affirmed at [83] that it is necessary to identify an ordinary and reasonable representative member of the relevant class “to objectively attribute characteristics and knowledge to that hypothetical person (or persons), and to consider the effect or likely effect of the conduct on their state of mind.” This required allowing for a range of reasonable reactions to the conduct by excluding from consideration reactions of the ignorant or very knowledgeable, those resulting from habitual caution or exceptional carelessness and the extreme or fanciful.
The misrepresentation was not made
The High Court analysed each of the three types use – Packaging A, Packaging B and the website – separately. But the reasons why “instant Botox® alternative” was not misleading or deceptive are essentially the same.
In the case of Packaging A, the High Court noted the use of the trade marks FREEZEFRAME and INHIBOX and “instant Botox® alternative” on the front of the packaging. On the side of the packaging were printed the words “Clinically proven to erase wrinkle appearance in 5 minutes”. And on the back, there was the vertical script “The world’s first Instant and Long Term Botox® Alternative” in larger, blue lettering than the panel of explanatory text. Under the heading “Freeze wrinkles instantly”, the first paragraph of that explanatory text read:
Why wait for weeks to look dramatically younger when you can wipe away the years this very minute! freezeframe’s exclusive INHIBOX complex is clinically proven to wipe away visible expression wrinkles around the eyes and on the forehead within 5 minutes, so you get an immediate wrinkle freeze and eye lift that lasts for hours. (emphasis supplied)
The remainder of the text included three more references to the effects of INHIBOX being “long term”. This included a heading “And long term!” under which the packaging stated “”freezeframe technology is scientifically proven to reduce the appearance of wrinkles by up to 63.23% in just 28 days“ and ”freezeframe’s Dual Effect technology gives you proven instant wrinkle reduction, plus the world’s best long term wrinkle relaxing”.
Under the heading “Two of the world’s most potent wrinkle erasers* in one formula”– the packaging stated “[i]magine… the power of an instant wrinkle freeze, combined with the long term benefits of the most potent, cumulative facial relaxing technology on the planet. All in one simple formula.”
Despite all these references to “long term”, the High Court held at [102] that both the immediate and broader contexts meant the phrase “instant Botox® alternative” would not convey to the reasonable consumer in the target market that either a single treatment or long term use of INHIBIX would last for an equivalent period to a BOTOX injection.
In the immediate context – the packaging, the words “long term” must be understood in the context of “lasts for hours” and that the treatment was “instant” and working “within 5 minutes”. As a result, “long term” was mere puffery. At [99], the High Court explained:
…. The fact that the effect of Inhibox was said to be instant makes it less likely that the reasonable consumer would believe that those effects would last for as long as those of Botox. Put differently, the reasonable consumer would likely believe it too good to be true that the effects of Inhibox are both instant and as long lasting as those of Botox.
The broader context included that INHIBOX was a cream applied by the user while BOTOX is a pharmaceutical injection requiring a visit to a healthcare professional. INHIBOX was much cheaper. The two products were not sold in the same locations. In these circumstances, the High Court concluded at [101]:
Taking into account that broader context, it is difficult to conceive why the reasonable consumer in the target market would think that a topically self-applied cream obtained from the pharmacy at a relatively low cost and worn in the course of the usual activities of life (including bathing and exercise) would have the same period of efficacy after treatment as an injectable anti-wrinkle treatment that is only available to be administered by healthcare professionals at a higher cost. ….
Moreover, the reasonable consumer would not assume that the use of BOTOX in the phrase indicated a common trade connection between INHIBOX and BOTOX.
Similar reasoning led to the same conclusion in respect of Packaging A and the website even though the latter, in particular, seems to have used “long term” rather more prominently.
The errors made by the Full Court
The High Court’s reasons why the phrase “instant Botox® alternative” was not misleading or deceptive suggest a rather robust approach to assessing the impact of the conduct on the target market. In addition, its reasons provide further guidance about how the conduct should be analysed.
First, at [88] – [89], the High Court agreed the trial judge had made an appealable error by considering only the phrase and the broader context, not taking into account the immediate context as well. So, it is necessary to consider all three aspects.
Secondly, the Full Court had also erred. There are a number of strands to this. One key error was misidentification of the ordinary and reasonable consumer. A second was the false premise that consumers would think the phrase “instant Botox® alternative” conveyed an association between INHIBOX and the trade source of BOTOX.
On the second point at [89], the High Court pointed out that the trial judge had found “instant Botox® alternative” would not convey an association between INHIBOX and BOTOX and there had been no appeal from that finding.
On the first point, the Full Court had found that some members of the relevant class would know that the effects of BOTOX lasted four months. The High Court criticised the factual basis for the conclusions about how long BOTOX lasted and whether consumers knew that.
More generally, however, the High Court said the Full Court had been wrong to assess the effects of the phrase on the target market on the basis that some reasonable consumers would have been misled. At [90], the High Court explained:
…. Further, the Full Court’s statement that the target market “would have included” reasonable consumers who had that knowledge demonstrated a misunderstanding of the relevant test. The ordinary and reasonable consumer is a hypothetical construct to whom the court attributes characteristics and knowledge in order to characterise the impugned conduct. The class in fact will always have reasonable consumers with varying levels of knowledge; the question was whether the knowledge should be attributed to the hypothetical reasonable consumer in this case.
Then, as already discussed above, the High Court proceeded to analyse how the phrase “instant Botox® alternative” would be perceived and understood by the ordinary reasonable consumer in all the circumstances.
Picking up the definition of What is a trade mark in s 17 as explained in Campomar and E & J Gallo at [42]: “the requirement that a trade mark ”distinguish“ goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of ”goods to which the mark is applied“[16]. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark[17]. There is nothing in the relevant Explanatory Memorandum[18] to suggest that s 17 was to effect any change in the orthodox understanding of the function or essential characteristics of a trade mark.” (citations omitted) ?
A unanimous High Court has upheld Self Care’s appeal and ruled that PROTOX and “instant Botox® alternative” do not infringe Allergan’s BOTOX registered trade mark. Nor was “instant Botox® alternative” false, misleading or deceptive conduct contrary to the ACL.
The High Court’s ruling that the reputation of the registered trade mark has no part to play in infringement under section 120(1) has finally settled that issue. More interestingly, in explaining why PROTOX did not infringe BOTOX their Honours also may also have changed how infringement is assessed. Thirdly, the High Court’s explanation why “instant BOTOX® alternative” did not infringe confirms that the plain English 1995 Act fundamentally changed the nature of trade mark use.
Some facts
Allergan owns various registered trade marks in Australia for BOTOX including in class 5 for “pharmaceutical preparations for the treatment of … wrinkles” and in class 3 for “anti?ageing creams” and “anti?wrinkle cream”.[1]
Allergan’s BOTOX product is an injectable pharmaceutical product containing botulinum toxin, type A which is administered by healthcare professionals and which can last for several months. That is, a class 5 product type. It does not sell an anti-ageing or anti-wrinkle cream. Its class 3 registration, however, is a defensive registration under section 185. As the High Court pointed out at [17], it was the reputation Allergan had derived from its extensive use of BOTOX for the goods in class 5 that was the basis for the defensive registration in class 3.[2]
Self Care markets anti-wrinkle creams under the trade mark FREEZEFRAME. Its FREEZEFRAME products come in at least 2 lines – PROTOX and INHIBOX. These creams could be self-administered and could reduce the appearance of ageing for up to a few hours. The image below shows the PROTOX packaging the subject of the litigation:
The INHIBOX labels are similar, but bearing INHIBOX AND the slogan “instant BOTOX® alternative”.
Some differences between trade mark infringement and passing off / ACL
To consider what the High Court did when finding PROTOX did not infringe BOTOX, I want to recall four or five main differences between actions for “traditional” trade mark infringement and passing off or misleading or deceptive conduct contrary to the ACL.
For “traditional” trade mark infringement (that is, infringement under section 120(1)), the trade mark owner just has to prove that the trade mark was registered – there is no need to prove reputation; just the fact of registration;
For “traditional” trade mark infringement at least, it was necessary to show that the accused conduct was conduct in relation to the goods or services for which the trade mark was registered whereas passing off and the ACL were not so limited;[3]
Trade mark infringement can occur where a reasonable member of the public is caused to wonder whether or not there is some connection between the accused conduct while passing off and the ACL require a likelihood of deception or being misled;[4]
At least for trade mark infringement, the accused use must be use as a trade mark; that is, as a “badge of origin” to identify trade source; and
“Traditional” trade mark infringement required a comparison of the mark as registered to the particular sign alleged to infringe alone. The Court has ignored the use of other marks or indicia that may distinguish the relevant goods. In contrast, the comparison for false or misleading conduct or in passing off involves the accused use in context of all the circumstances.
This last point is well illustrated by the June Perfect case.[5] There, Saville Perfumery had “June” registered in fancy script for toiletry articles including shampoo and lipsticks. June Perfect brought out its own range of lipsticks and shampoo under the name “June”. The packaging made it clear that the goods were the products of June Perfect.
The House of Lords held there was a clear case of trade mark infringement as the comparison was between the mark as registered and the sign used by June Perfect. On the question of passing off, however, the House of Lords accepted that June Perfect might be able to use its name in such a way that the trade source of the goods was clearly distinguished from Saville Perfumery. While there was an injunction to restrain June Perfect from infringing the trade mark, the passing off injunction restrained only the use of “June” without clearly distinguishing the trade source of the articles from Saville Perfumery.[6]
There has been some relaxation over time to propositions 1 and 2.
First, section 120(2) extends the trade mark owner’s rights to cover not just the goods or services specified in the registration but also to things of the same description or closely related. Unlike the case with infringement under s 120(1), however, it is a defence to this extended form of infringement if the alleged infringer can show that the way they use their sign is not likely to deceive or cause confusion. Thus, the proviso to s 120(2) states:
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
Thus, Burley J quoted with approval Yates J’s dictum:[7]
So too it is recognised that, for the purposes of considering infringement under s 120(1), it is beside the point that the alleged infringer has added other material to the impugned trade mark, even if those steps were taken to avoid the likelihood of deception: Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 161 (Sir Greene MR) and at 174 (Viscount Maugham); Lever Brothers, Port Sunlight Limited v Sunniwite Products Ltd (1949) 66 RPC 84 at 89; Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 205; Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491 at 495; New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Limited (1989) 86 ALR 549 at 589; Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at 231–232. Considerations of this kind, if raised by an alleged infringer, are relevant when considering infringement under s 120(2) and may be relevant when considering infringement under s 120(3). However, the general position under s 120(1) is that infringement cannot be avoided by, for example, the use of additional matter if the mark itself is taken and used. Once again, if the test is not applied in this fashion a trade mark owner may be deprived of the monopoly conferred by registration. (emphasis supplied by Burley J)
As the High Court recognised in the Self Care case, the 1995 Act introduced a further broadening of what could be infringement in s 120(3). If a trade mark owner could show that its trade mark was well-known in Australia, it could claim infringement by use of a sign on wholly unrelated goods or services where the use would be likely to indicate a connection to the trade mark owner and the trade mark owner’s interests were likely to be prejudicially affected.[8]
With that background, we can turn to the High Court’s reasons.
Self Care and some principles
The appeal is concerned only with infringement under s 120(1). The extended versions of infringement for similar or closely related products (s 120(2)) and “famous” or “well-known” trade marks (s 120(3)) were not in issue in this case.
The High Court at [22] pointed out that infringement under s 120(1) requires 2 distinct questions to be addressed:
Did the alleged infringer use the sign “as a trade mark” – that is, as a “badge of origin” to indicate trade source?
If so, was the sign deceptively similar to the registered trade mark?[9]
These are, as the High Court emphasised, two different issues and the High Court approached them separately.
Use as a trade mark
The High Court confirmed that whether a sign is being used as a trade mark is to be determined objectively, without reference to the subjective intentions of the user. At [24], their Honours explained:
Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user[50]. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade[51], the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote[52]. A well known example where the use was not “as a trade mark” was in Irving’s Yeast-Vite Ltd v Horsenail[53], where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark. [citations omitted]
At [25], their Honours affirmed the longstanding principle that the existence of a descriptive element or purpose was not determinative if there were several purposes for the use of the sign. So long as one purpose is to distinguish the trade source, that will be sufficient.
Further, their Honours acknowledged that the presence of ‘a clear dominant “brand”’ can be relevant to assessing the balance of the label or packaging, but that did not mean that another sign on the labelling was not also functioning as a trade mark.
For the last proposition, the High Court cited Allsop J’s decision in the Budweiser case at [191]. In that case, Anheuser-Busch, the owner of trade mark registrations for BUDWEISER successfully sued the Czech company for infringement by the latter’s use of BUDWEISER on labels such as:
Front label (black & white)Front label (black & white)
At [191], Allsop J explained:
It is not to the point, with respect, to say that because another part of the label (the white section with ‘Bud?jovický Budvar’) is the obvious and important ‘brand’, that another part of the label cannot act to distinguish the goods. The ‘branding function’, if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant ‘brand’ is of relevance to the assessment of what would be taken to be the effect of the balance of the label.
Turning to the PROTOX label, there cannot really be any dispute that PROTOX is used as a trade mark. The question then is whether it is deceptively similar to BOTOX.
The test for deceptive similarity
The High Court discussed the principles for determining whether a trade mark is deceptively similar to another at [26] – [51].
Noting that section 10 defines a deceptively similar mark to be one that so nearly resembles the registered trade mark that it is likely to deceive or cause confusion, at [26] the High Court stated the resemblance of the two marks must be the cause of the likely deception or confusion. And this involved an assessment of the two marks as a whole taking into account both their look and sound.
At [27], their Honours endorsed the much quoted explanation of the principles given by Dixon and McTiernan JJ in Australian Woollen Mills at 58 CLR 658:
“But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.
At [28], their Honours emphasised the artificial nature of the inquiry. Stating at [29]:
…. The notional buyer is assumed to have seen the registered mark used in relation to the full range of goods to which the registration extends. The correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer’s mark (as actually used). …. (original emphasis) (citations omitted)[10]
Returning to this issue, at [33] their Honours emphasised that “the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit”.[11] The High Court continued:
…. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer’s actual use of the mark, as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark. (citations omitted)
Cases approved by the High Court in Self Care have acknowledged that questions of some subtlety can arise assessing the context of a use to determine if the sign is being used as a trade mark and assessing whether the infringing sign is deceptively similar.[12]
All of the cases endorsed by the High Court in these propositions, however, make the same point: the comparison is between the registered trade mark and the mark being used by the alleged infringer without regard to the totality of the conduct by the infringer such as the presence of other trade marks or disclaimers.
One example of the role of impression in this mark to mark comparison, expressly cited by the High Court at [29], is the Chifley Tower case.[13] There, MID Sydney’s registration of CHIFLEY TOWER for building management services was not infringed by Touraust’s proposed use of CHIFLEY for the names of the hotels it managed – such as “Chifley on the Wharf” or “The Chifley”.
One reason was that the services were not the same or of the same description.
Importantly for present purposes, the Full Court also found the marks were not deceptively similar because the public was familiar with many different uses of “Chifley” – apart from MID Sydney’s. This included the name of the Prime Minister, a restaurant and numerous geographical places. With that general background knowledge, therefore, the distinctive power of MID Sydney’s trade mark lay in the combined term, not in the common element CHIFLEY alone.
While this should not be surprising to trade mark lawyers, therefore, where it becomes interesting lies in what the High Court did when finding PROTOX did not infringe BOTOX.
Before turning to that issue, however, the High Court squarely addressed the role of reputation in infringement proceedings under section 120(1).
The role of reputation
Noting that the role of reputation has been contentious for a number of years, the High Court ruled at [50] that reputation is not relevant to infringement under section 120(1).
A number of considerations led the High Court to this conclusion. The first point at [37] was that it is registration which confers the rights in the trade mark on the owner and defines the scope of the registration. If considerations other than the registration could be taken into account “the level of protection afforded to that right would vary and be inherently uncertain.”
Another point was that the legislation specified various matters to be entered on the Register and available for public inspection. Reputation was not one of those matters and at [40] taking into account the reputation which had accrued to a trade mark would be contrary to the objective of the registered trade mark system:
which is to provide “a bright line that delineates the property rights” of a registered owner, for the benefit of the owner and the public, and runs the risk of collapsing the long standing distinction between infringement and passing off. (citations omitted)
Further, the Trade Marks Act expressly identified a role for reputation in four places:
section 60 providing a ground of opposition on the basis of the reputation in the opponent’s trade mark;
the provision for registration as a ‘defensive’ trade mark provided by section 185;
the extended form of infringement provided by section 120(3); and
the provision by section 24 for “genericide” when a trade mark has become known as the generic description of the goods or services.
Why PROTOX did not infringe BOTOX
At [63], the High Court summarised the trial judge’s finding that PROTOX was not deceptively similar to BOTOX. His Honour accepted that the two marks looked and sounded very similar but less so in idea or meaning. Further, the trial judge had held that the reputation of BOTOX was so strong that it was not likely to be recalled imperfectly. Even if there was imperfect recollection, no-one was likely to be deceived. His Honour was reinforced in this conclusion by the close proximity of PROTOX to FREEZEFRAME and the lack of evidence of actual confusion.
At [64], the High Court noted the Full Court held the trial judge had erred by failing to consider whether the use of PROTOX might cause people to wonder if there was some connection to the owner of the BOTOX mark. In finding deceptive similarity, however, the Full Court had made two errors.
First, it had relied on Allergan’s reputation in BOTOX for pharmaceutical preparations to conclude that the public might wonder whether PROTOX was some form of brand extension. Secondly, in doing so, their Honour’s had relied on the way Allergan actually used BOTOX rather than taking into account its notional use for anti-wrinkle creams in class 3.
Considering the effect of the use of PROTOX on potential customers of anti-wrinkle creams in class 3, the High Court accepted at [69] that “pro” and “bo” looked and sounded similar and the common element “otox” was both distinctive and identical. But consumers would not have confused PROTOX or BOTOX:
…. The words are sufficiently different that the notional buyer, allowing for an imperfect recollection of BOTOX, would not confuse the marks or the products they denote. The visual and aural similarities were just one part of the inquiry. (emphasis supplied)
Despite the surprise many trade mark practitioners have felt about the trial judge’s similar conclusion, up to this point the High Court’s reasoning can be seen as consistent with the extensive array of case law endorsed by the High Court which distinguishes trade mark infringement from passing off. After all, as the High Court emphasised from Australian Woollen Mills, the ultimate conclusion onabout deceptive similarity is a question of fact.
However, the last sentence from [69] quoted above picks up what their Honours had said in [68]. In considering the visual and aural impact of PROTOX, it was permissible to have regard to both the packaging and the website from which PROTOX was promoted:
it was necessary to consider the marks visually and aurally and in the context of the relevant surrounding circumstances. Considering both the packaging and the website for Protox accords with assessing the “actual use” of the PROTOX mark as required by the test for deceptive similarity. ….
The High Court then explained at [70] that the packaging and the website together dispelled the risk of implied confusion:
…. The notional buyer sees the PROTOX mark used on a similar product – a serum which is advertised on its packaging and website to “prolong the look of Botox®”. While the reputation of BOTOX cannot be considered, the relevant context includes the circumstances of the actual use of PROTOX by Self Care. “[P]rolong the look of Botox®” may suggest that Protox is a complementary product. However, as was observed by the primary judge, “it will be the common experience of consumers that one trader’s product can be used to enhance another trader’s product without there being any suggestion of affiliation”[136]. In this case, the back of the packaging stated in small font that “Botox is a registered trademark of Allergan Inc” and, although the assumption is that Botox is an anti?wrinkle cream, the website stated that “PROTOX has no association with any anti-wrinkle injection brand”. (emphasis supplied)
It is very difficult, with respect, to see how these conclusions sit with the High Court’s earlier endorsement of the authorities that additional matter such as the presence of disclaimers does not avoid infringement.
Perhaps, given the copious citation of case law endorsing the “traditional” position that it is a mark to mark comparison only, the role of the packaging and the website will ultimately be characterised as reinforcing the finding of deceptive similarity rather than determining it. Indeed, at [71], their Honours concluded there was no real, tangible danger of deception or confusion:
…. As explained, the marks are sufficiently distinctive such that there is no real danger that the notional buyer would confuse the marks or products. The similarities between the marks, considered in the circumstances, are not such that the notional buyer nevertheless is likely to wonder whether the products come from the same trade source. That conclusion is reinforced by the fact that the PROTOX mark was “almost always used in proximity to the FREEZEFRAME mark” and that there was “no evidence of actual confusion”.
instant Botox® alternative
As noted at the outset, the High Court also found that Self Care’s use of “instant Botox® alternative” did not infringe Allegan’s trade mark. Nor was it misleading or deceptive conduct in contravention of the ACL. Given the length of this post, however, consideration of those issues will have to await another day.
Edit: on 3 April to clarify that it is the ultimate conclusion about deceptive similarity that is the question of fact. Thanks, Craig Smith SC.
That is, Allergan has used BOTOX so extensively, its use by someone else in relation to class 3 goods such as anti-ageing creams will falsely indicate a connection with Allergan. Where the reputation in the trade mark is so extensive to achieve a defensive registration, it does not matter whether the trade mark owner actually uses the trade mark for the goods or services covered by the defensive registration. ?
At [19], the “overwhelming” and “ubiquitous reputation of BOTOX”. ?
For an extreme case where the services were so far removed from the goods associated with the reputation – Tabasco sauce – that deception or misrepresentation were so unlikely that there was no contravention of the ACL or passing off, see McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly trading as Tabasco Design [1997] FCA 962; 39 IPR 187. ?
Compare Trade Marks Act 1995 (Cth) s 10 to the High Court’s approval in Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 at [106] quoting Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 201 (Deane and Fitzgerald JJ). ?
Saville Perfumery Ld. v. June Perfect Ld. (1941) 58 RPC 147. ?
As Lord Tomlin explained at 176, “It seems to me, and the form of the second injunction supports the view, that these Appellants may be able by proper precautions to sell the three articles in connection with their name of June Perfect Ld., while clearly distinguishing those goods from the Respondents’ goods. If that can be done there is no probability that the ultimate purchaser will be deceived.”. See also e.g.Puma Se v Caterpillar Inc [2022] FCAFC 153; 168 IPR 404 (Nicholas, Rofe and McElwaine JJ) at [43] (Nicholas, Rofe and McElwaine JJ); In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193; 377 ALR 116; 150 IPR 73 at [80] and [160] (Katzmann J) (affirmed on appeal) and many others. ?
If you know of a court case where s 120(3) has been successfully asserted, please let me know. ?
Curiously, s 120 does not in terms require the trade mark owner to prove that alleged infringer did not have the owner’s consent to use the trade mark. An alleged infringer who claims to be licensed or set up consent must do so by way of [section 123][s123] in the case of services or, in the case of goods, the wonders of [section 122A][s122a]. (I tried to untangle the latter provision in Warwick A Rothnie, ‘Unparalleled importing and trademarks in Australia,’ (2020) 21(3) Business Law International 229.) ?
See e.g.Optical 88 at [95] and Budweiser at [226]. Generally, one might have thought the emphasis in actual use in an infringement context lay in contrast to the situation at the examination and opposition stages where it is necessary to consider all fair and reasonable notional use that may be made by the applicant within the scope of the applied for registration. ?
Stewart J has dismissed Brick Lane’s ACL[1] and passing off complaints against the get-up of Torquay Beverage Co’s Better Beer.
Some facts
On 21 July 2021, Brick Lane issued a press release announcing the launch of its new Sidewinder Hazy Pale ale, a no to low alcohol beer. The range had been in development, behind the scenes, since September or November 2020. Sales of the product to the public began around 2 August 2021 including in outlets such as Dan Murphy’s.
Brick Lane’s Sidewinder Hazy Pale
The domain name had been registered and and Instagram account created on 9 July 2021. From then, the Instagram account, at least, featured an image of the Sidewinder product. Before 21 July 2021, however, there were only 9 followers (and they were likely from Brick Lane or otherwise associated with its development).
On 26 July 2021, Mighty Craft[2] announced to the ASX that it had partnered with Torquay Beverage Co and The Inspired Unemployed to form Better Beer Co and the launch of the new zero carb beer Better Beer. The announcement was picked up and widely reported in industry publications; one of which, Beer & Brewer had a “reach” of 13,000 people and another, Drinks Trade, some 27,000 people. It was not until late October 2021, however, that product actually made it on to retail shelves.
Better Beer’s beer can
There was no suggestion that the respondents had some how copied Brick Lane’s get-up.
On 3 December 2021, Brick Lane launched the second product in its Sidewinder range – an XPA Deluxe.
In April 2021, Better Beer ginger ale was launched.
The claim
As is conventional, Brick Lane argued the get-up of the respondents’ product was liable to misrepresent to the public that the product was Sidewinder or manufactured by or in some way endorsed, approved or sponsored by the manufacturer of Sidewinder.
Brick Lane Sidewinder 4 packBetter Beer 6 pack
The respective get-ups alleged:
x
Brick Lane
y
Respondents
(1)
an off-white 355 ml can
(1)
an off-white 355 ml can (save for the bottled product)
(2)
an off-white cardboard cluster and case (where sold by cluster or case)
(2)
off-white cardboard cluster and case (where sold by cluster or case)
(3)
a curving flared striped design (on the can, cluster and case) in blue and shades of yellow and orange with the dominant flared part of the stripes being vertically aligned
(3)
a curving non-flared striped design (on the can, bottle, cluster and case) in blue and shades of orange and yellow with the stripes oriented horizontally; and
(4)
the use of horizontal black lettering for the Sidewinder name and horizontal off-white lettering against a black background for the name of the particular product on the can and case (the lettering, or background to the lettering, being silver on the cluster packaging); and
(4)
the use of dark blue lettering for the product name, the lettering being rotated vertically; and
(5)
the use of a sans serif typeface in upper case for the “Sidewinder” lettering.
(5)
the use of a serif typeface in title case for the “Better Beer” lettering.
What went wrong
There were two main problems.
First, when the respondents started their conduct – the launch of their product a mere 5 days after the launch of the Sidewinder product, Sidewinder itself did not have any appreciable reputation with the public. At [97], Stewart J explained:
The first reason why Brick Lane’s claim in respect of the Sidewinder Hazy Pale product must fail is that at the relevant time, being 26 July 2021, there was no appreciable knowledge amongst members of the relevant class of the Sidewinder get-up. That is to say, the hypothetical member of the class of consumers purchasing beer is not likely to have any familiarity with the Sidewinder get-up with the result that on seeing the Better Beer get-up they would not be likely to confuse it with the Sidewinder get-up. As it was explained by Burley J in Homart FCA at [125], “it takes a strong case” to establish a reputation that the get-up relied on is associated by consumers with the relevant product. Put differently, even assuming a strong similarity in the respective get-ups, the hypothetical consumer is not likely to be misled or deceived into thinking that the two products are associated if they do not readily associate the applicant’s product’s get-up with the applicant or its product.
The position was different with the Better Beer ginger beer, launched later in April 2022. By then, however, both the Sidewinder and original Better Beer products had been widely promoted and distributed throughout the market so that the public must be taken to have learned to distinguish between them.
The second main reason Brick Lane failed was the strikingly different names prominently plastered over the products and their packaging. At [100], Stewart J explained:
Turning now to the differences and similarities between the relevant products’ get-up, the first observation is that each product bears a distinctive brand name – Sidewinder and Better Beer. Not surprisingly, Mr Hall’s evidence was that the Sidewinder brand name is distinctive, unique and powerful. There is no reason to disagree with that assessment notwithstanding that not everyone encountering the name may associate it with 70s jet boats – they may think of air-to-air missiles or snakes or something else equally distinctive and memorable. Equally, Better Beer is a distinctive brand name. Brick Lane submitted that because it is descriptive it is weak, but I do not accept that. It is alliterative and catchy. Moreover, Sidewinder and Better Beer are rendered in quite different styles of typeface – sans serif and serif respectively. They look and feel very different. They do not have visual or phonetic similarities such as were material to the reasoning in Homart FCA at 195(b).
As in Parkdale v Puxu, this difference was compelling in distinguishing the products.
His Honour accepted that there were distinct similarities between the relevant get-ups and did not put much store in the different orientation of the coloured stripes or banding – vertical vs horizontal.
On the other hand, Stewart J did not think the size of the cans – 355ml instead of 375ml – had any significant role to play. Of the 894 different beers on offer at Dan Murphy’s, at least 50 used the 355ml can format so it could not be described as unusual.
Overall, Stewart J concluded at [113]:
Taking all of the above matters into consideration, I am not satisfied that the hypothetical reasonable consumer of beer would at the relevant date have had any particular familiarity with Brick Lane’s Sidewinder get-up, but even if they did, they would not have been likely to be misled by the similarity of the respondents’ Better Beer get-up to the Sidewinder get-up into thinking that the products were in some way associated. As explained, that arises in particular from the distinctive names used for the different products as well as the differences between the get-ups and the features of the relevant market.
A couple of noteworthy points
As his Honour noted, the question whether there has been a contravention of the ACL in these types of cases is determined when the respondent started the relevant conduct.
Brick Lane argued that the relevant date was when Better Beer was actually on the shelves available for retail purchase – that is, late in October 2021 – by which time Sidewinder was well established in the market.
Stewart J rejected that argument at [42] – [46] finding that the relevant date was when the respondents’ launched (i.e., announced the launch of) their product. As his Honour pointed out, the promotion of a product could give rise to misleading associations regardless of whether the product was actually available for purchase. In the cases which focused on the date sales started, there was no suggestion that there had been advertising or promotion beforehand. On the other hand, in In-n-Out Burgers, the contravening conduct started (at [181] and [193]) when the respondent launched its Facebook page, not later when it opened its store.[3] Correspondingly, the date Cadbury Schweppes started marketing its product in the Pub Squash case[4] was accepted by the Privy Council as the relevant date in passing off.
Secondly, Stewart J sought to explain the role of reputation in an ACL case. Where conduct is directed to a class rather than specific individuals, case law has now established it is not necessary to establish that a substantial or not insubstantial number of that class are likely to be misled or deceived. It is only necessary to show that the ordinary or reasonable member of the class is likely to be mislead or deceived.
Stewart J considered that in this type of case it was nonetheless necessary to show some association in the mind of the public between the get-up and the applicant. After quoting the Full Court in Cadbury Schweppes v Darrell Lea at [99], his Honour explained at [40]:
… although it might be said that a particular reputation is not necessary, it is nevertheless necessary that there is some association in the mind of the relevant sector of the public between the applicant’s product and its get-up such that confusion might arise from the use of the same or a similar get-up in relation to the respondent’s product. Without the pre-existence of such an association, it could not be said that the use by the respondent of the same or a similar get-up suggests a misleading or deceptive association. The inquiry does not proceed on the assumption that the hypothetical consumer member of the relevant class is familiar with the applicant’s product; that is required to be established.
In this case, the respondents had argued that its product was in a different market segment to Sidewinder – the low carb segment vs the low alcohol segment, but Stewart J found the relevant public was the beer market generally. There was no evidence that the different “segments” operated as distinct (sub-)markets. For example, there was no evidence that beer products were arranged on retail shelves in any fashion by market segments.
Brick Lane sought to rely on a Trade Mark examiner’s rejection of Torquay’s trade mark application in the face of Brick Lane’s prior application. Stewart J pointed out at [103] that the competing applications did not feature their respective brand names. His Honour also doubted the examiner’s opinion was admissible evidence in a Court in light of Evidence Act s 76.
Finally, for those of you that recall Lord McNaghten’s famous aphorism “thirsty folk want beer, not explanations”, this case was distinguishable. In Lord Mcnaghten’s case, there had been one brewery in the town of Stone making and selling its Stone Ales for hundreds of years when the competitor opened up as Stone Brewery selling Stone Ales. When Sidewinder and Better Beer launched into the market, however, the consumer was confronted with a plethora of brands and products.
A “craft beer accelerator” and the third respondent. The Inspired Unemployed and Torquay Beverage Co held, respectively, 40% and 60% of the shares in the second respondent, Better Beer Co Pty Ltd. ?
