similar to or capable of being confused with

Idameneo (No. 789) won its appeal from Symbion. The competing trade marks can be viewed here.

The Full Court agreed with the trial judge that the contractual restraint against using:

any Mark similar to or capable of being confused with any of the Trade Marks or which contain the words SYMBION

imposed a different standard to the trade mark infringement test of substantial identity or deceptive similarity. However, the Full Court did not treat it as a single over-arching test.

For the purposes of the outcome, however, the crucial point was that both companies were using their respective marks in different specialist markets. Hence it was important to consider how persons in the relevant specialist market would react to Idameneo’s sign:

  1. Here, although the Symbion registration does extend to diagnostic and imaging services, there was no evidence that the goods or services of Symbion and Idameneo would find markets in substantially common areas or among the same classes of people. To the contrary, the evidence established that each of the parties currently operated in distinct and different specialised markets. And, as we have found above, the Symbion marks, on the one hand, and the Idameneo mark, on the other, are not the same and do not closely resemble one another. Thus, although the Symbion marks had been used in the same sector as the Idameneo mark prior to the demerger in 2008 and for a time afterwards, they were always distinct and did not so closely resemble one another that there was a real risk of anyone being caused to wonder whether the respective marks identified or were associated with services that come from the same source.
  2. The parties must have intended in cl 5.5(b) that Idameneo not “use… any Mark … capable of being confused with any of” the Symbion registration or Symbion device mark as a restraint that protected Symbion’s legitimate commercial interests in those two marks themselves and the reputation and goodwill associated with them. While the Symbion device mark had been used to brand the Healthcare imaging business before the merger in 2008, by April 2010 only the Idameneo mark was used by Idameneo for all its imaging businesses, including Healthcare. Having regard to the lack of resemblance between the marks and the lack of any evidence of any possibility of confusion in the specialised markets, Symbion’s claim based on a breach of cl 5.5(b) must fail.

(emphasis supplied)

As the Court accepted that the contractual formulation must have a broader scope than the statutory test (albeit to no practical effect in this case), which formulation will you use when you are drafting a contractual restraint delimiting competing users’ respective fields of use?

Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164 (Rares, Gilmour and Dodds-Streeton)