deceptively similar

Did the High Court change the law of trade mark infringement to a kind of registered passing off?

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.

  1. 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;
  2. 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]
  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]
  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
  5. “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:

  1. Did the alleged infringer use the sign “as a trade mark” – that is, as a “badge of origin” to indicate trade source?
  2. 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:

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:

  1. section 60 providing a ground of opposition on the basis of the reputation in the opponent’s trade mark;
  2. the provision for registration as a ‘defensive’ trade mark provided by section 185;
  3. the extended form of infringement provided by section 120(3); and
  4. 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 on about 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.

Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ)

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.


  1. 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.  ?
  2. At [19], the “overwhelming” and “ubiquitous reputation of BOTOX”.  ?
  3. 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.  ?
  4. 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).  ?
  5. Saville Perfumery Ld. v. June Perfect Ld. (1941) 58 RPC 147.  ?
  6. 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.  ?
  7. Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 at [364] citing Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380 at [99].  ?
  8. If you know of a court case where s 120(3) has been successfully asserted, please let me know.  ?
  9. 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.)  ?
  10. The High Court cited Shell (1961) 109 CLR 407 at 415; Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 128; MID Sydney v Australian Tourism Co (1998) 90 FCR 236 at 245 and Swancom (2022) 168 IPR 42 at [70].  ?
  11. Citing numerous authorities: New South Wales Dairy Corporation v Murray-Goulburn Co?operative Co Ltd (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73]. See also Self Care at [40] where the High Court acknowledged “the risk of collapsing the long standing distinction between infringement and passing off[101].”  ?
  12. 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.  ?
  13. MID Sydney v Australian Tourism Co (1998) 90 FCR 236.  ?

Did the High Court change the law of trade mark infringement to a kind of registered passing off? Read More »

Big Mac sues Big Jack

Two all beef patties, special sauce, lettuce, cheese, pickles, onions on a sesame seed bun – it’s a …

As you have no doubt heard, late last month McDonald’s Asia Pacific sued Hungry Jacks following the launch in July of the “Big Jack”.[1]

Michaela Whitbourn at the Channel 9 paper has a clean slide over comparison or you can get messy fingers here (your choice whether you skip the ads or not).

Mr Too Aussie’s video suggests the Big Jack is a special or limited time offer. However, Hungry Jack’s did file for and has obtained registration for “Big Jack” as a trade mark, No 2050899, for hamburgers etc. in classes 29 and 30, way back in November 2019. And Ben Butler at The Guardian reports McDonalds is also seeking revocation of that registration on the grounds the application was made in bad faith.[2]

After news of the court proceeding broke, Hungry Jack’s doubled down:

Someone’s suing Hungry Jack’s. They reckon Aussies are confusing the Big Jack with some American burger. But the Big Jack is clearly bigger ….

Hmmm. Earlier this year, Katzman J, in another case about burgers, explained:

What is the line between inspiration and appropriation? That is the question at the heart of the dispute in the present case.

That case didn’t turn out so well for the emulators.

As you will appreciate, McDonald’s have to get TM No. 2050899 cancelled in light of s 122(1)(e). Presumably, in addition to the “bad faith” allegation, McDonald’s is also asserting s 44 and s 60.

These provisions, like s 120, raise the question whether Big Jack is substantially identical with, or deceptively similar to, Big Mac.

You might think, even on the expanded and controversial test for “substantial identity” declared in Pham Global, the side by side comparison doesn’t work out in McDonald’s favour. Mac and Jack look and sound different and, you might think, convey rather different ideas.

What about deceptive similarity tested on the basis of imperfect recollection?

There couldn’t be too many Australians, especially of the fast food consuming public, who wouldn’t appreciate that Big Jack is gunning for Big Mac. But, is there a real and appreciable risk that a significant number of them would be caused at least to wonder whether there was some association with McDonald’s?[3]

Also, you would have to think, all those ordinary Australians would know you can only get a Big Mac in a McDonald’s outlet.

You would probably have to think they pretty much know Hungry Jack’s is a direct competitor, which makes a point of being critical of McDonald’s.[4]

Similarly, pretty much all those ordinary Australians winding up in a Hungry Jack’s take away could hardly be under any illusions that they were in Big Mac land?

Now, at 50(iii), French J did wholly orthodoxly say:

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

Does being in the shop count? Or is that violating the rule that you compare only the allegedly infringing trade mark to the registered trade mark?

What about billboards and the like? No shop context, probably a Hungry Jack’s logo – maybe not.

Also, you might think that “Big Mac” gets into the Woolworths territory of a household name and there could have lots of fun re-running the fight between Woolworths and Henschke.[5]

What do you think?

Would things be any different if we had an anti-dilution law?

Maybe, at 50c to almost $1 more, the Big Jack will turn out to be a commercial flop and Hungry Jack’s will give up. I guess we’ll have to wait and see.

Lid dip: Jasper Kwok


  1. And, by way of fig leaf, Hungry Jack’s also introduced a “Mega Jack”. NSD967/2020 – First case management hearing before Justice Burley on 2 October.  ?
  2. Shades of “merit” and “nerit”, but note the interesting approach in OHIM rejecting Banksy’s – or those representing him – attempt to “trade mark” one of his, er, graffiti.  ?
  3. See Registrar of Trade Marks v Woolworths at [50] per French J.  ?
  4. Just exactly whose burgers are Hungry Jack’s supposed to be better than?  ?
  5. Most recently addressed in the AMG case at [36] – [42]: The more famous your trade mark, the less likely people will recall it imperfectly.  ?

Big Mac sues Big Jack Read More »

capable of being confused with the trade mark

Jessup J has ruled that Idameneo’s use of:

Idameneo's trade mark

does not infringe Symbion’s registered trade mark for:

Symbion's trade mark

(As registered, the trade mark is not coloured; it was generally used in the colours depicted. See s 70(3).)

However, Idameneo’s use of its trade mark did breach its contractual obligations.


On the trade mark infringement front, you might have been thinking like me, “Who would have thought?” It turns out, however, that what enabled Idameneo to escape was the nature of the services: medical imaging services. Although the customer, you or I needing an x-ray, pays the bill and has the service practised on us, the relevant public were the doctors (and the odd dentist) who referred the patient to the service. This constituted a specialist market within Lord Diplock’s definition :

My Lords, where goods are of a kind which are not normally sold to the general public for consumption or domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence, is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused.

By law, the doctor (and presumably the dentist) could not make a referral without providing the patient with the name and address of the service provider: i.e., they had to know who was going to provide the service.

It is rather a messy deal how Symbion came to license its trade mark to the corporate group of which Idameneo was a member. Under the terms of the licence, however, the licensee agreed (for itself and the other members of the corporate group which included Idameneo) by cl. 5.5:

Use of Similar Marks

Except as permitted by this deed, the [respondent] must not, and must ensure that each Licensee does not, use:

(a)       any Trade Mark; or

(b)     any Mark similar to or capable of being confused with any of the Trade Marks or which contain the words SYMBION or FAULDING,

as a trade mark, business name, domain name or otherwise anywhere in the world.

(emphasis supplied)

Jessup J was not prepared to treat the obligation as being 2 separate obligations: not to use similar trade marks or ones capable of being confused …. Rather, his Honour considered that the notion of ‘similar’ had to take colour from its context.

On the other hand, his Honour rejected Idameneo’s argument that the contractual obligation was no different to the test provided by s 10 for deceptive similarity for trade mark infringement:

36. …. The respect in which the test stated by the contractual provision conspicuously differs from that under s 10 is that it is concerned with similarity which is capable of causing confusion, whereas the section is concerned with resemblance which is likely to deceive or to cause confusion.  Here I think that the applicant has the better of the argument.  It is as clear as may be that the parties to the licence agreement were conscious of the circumstance that many of the marks referred therein were registered under the Trade Marks Act; and it may be inferred that they had an active appreciation of the requirements of s 10.  I have no reason to doubt that their choice of different language by which to express the prohibition in cl 5.5(b) was a conscious one.  I consider that for the court to conflate, as it were, the terms of that prohibition into those of s 10 of the Trade Marks Act would be to neutralise that choice, and would go against the parties’ intentions.

In [37], Jessup J went on to note that the contractual prohibition was part of the consideration Symbion had extracted in return for granting the licence and must be thought to have some intended value.

Applying the usual rules of visual comparison and imperfect recollection, the lower threshold established by capable of confusion compared to likely to deceive or cause confusion meant the contract had been breached.

Jessup J did accept that the setting in which the competing marks were used should be taken into account in deciding whether or not cl. 5.5 was breached. The facts that Idameneo used its mark for medical diagnotic imaging while Symbion used its mark for the wholesale distribution of pharmaceuticals, however, did not save Idameneo:

47 But I do not accept the respondent’s factual submission that the circumstances in which the respondent’s mark is used are so distinct from the business activities of the applicant as to leave no realistic scope for confusion by reason of similarity.  Both marks are used in the allied health sector: indeed, before 2008, the applicant’s mark was used by the respondent and its subsidiaries (then not part of the Primary group) in both the pharmaceutical and the imaging parts of that sector.  I think I am entitled to regard it as notorious that there is a degree of contact, at both the professional and the consumer levels, as between these parts, such as would make it quite unsurprising if the same people – to some extent at least – had occasion to encounter both the respondent’s mark and the applicant’s mark from time to time.  And there is some evidence that the respondent’s mark is used in settings, such as the premises of hospitals, where those who have regular business dealings with the applicant – pharmacists and the staff of hospital pharmacy departments, for example – might be expected to be found. …. (emphasis supplied)

Idameneo argued that cl. 5.5 should be read down so as not to apply to its use of its trade mark because it had been using its trade mark before Symbion’s trade mark had been developed and it was in use when the licence was negotiated. Thus, it argued it was unreasonable to read cl. 5.5 as applying to its continued use of the trade mark. Jessup J rejected this argument, noting the strictness of the test for implying terms into a comprehensive, professionally drafted written agreement. Moreover, Idameneo’s business appears to have been something of a sideline or relatively remote activity within the corporate group as a whole. Jessup J pointed out at [42]:

there is no evidence that the applicant … knew of the existence of the respondent’s mark in the period August-October 2008.

Thus, the conditions for implication of a term could not be made out.

Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited [2011] FCA 389

capable of being confused with the trade mark Read More »

DGTEK v Digiteck I

Lander J has upheld the Registrar’s decision to allow Bitech to register DIGITEK for

“TV installation accessories including external TV antennas, none of the foregoing being set-top boxes” in class 9

in the face of Hills’ prior registration for DGTEC, DGTEK and DGTECH in respect of

“Digital and electronic products including televisions, video players, DVD players, CD players, decoders and cameras” also in class 9.

While the competing marks were deceptively similar, they were not in respect of the same goods or goods of the same description. At [110]:

…. The goods are fundamentally different. The brown goods which comprise the Hills products are goods which are digital and electronic and provide the display to the consumer visually or audibly. Bitek’s goods are as they have said; goods which allow the brown goods to function. They provide support of varying types to the brown goods.

At [114]:

It is right as Hills contend that the goods are interdependent and they rely on each other for their functionality. However, that does not take the matter far. Whilst the goods cannot operate on their own, they are not interchangeable. They are not “commonly used as alternatives or substitutes” for each other:… They each have their uses which are quite separate and distinct even though when they are put together they assist to perform the end function: ….

His Honour also rejected argument that the goods passed through the same trade channels, distinguishing the Gallo Full Court’s finding that beer and wine were similar goods because:

[126] …. the clear impression I have is that goods of the kind under the Hills’ mark are marketed at the retail level and by direct advertising to consumers. TV installation accessories are mainly sold to professional installers at the wholesale level. A retail store may have for sale some accessories but only as a side line.
[127] Where a retail store does have TV accessories for sale it does not display them in the same manner as brown goods. Brown goods are used as the bait for consumers. Consumers want to see the product which will at least from the consumers’ point of view deliver the visual image or audible sound. TV installation accessories do not have the attraction from a sales point of view that brown goods have.
Lander J agreed with Kenny J’ ruling in McCormick that the s 60 ground of opposition could defeat an application independently of the operation of s 44(3).
However, his Honour rejected Hills’ opposition on the basis of the old form of s 60: although Hills proved it had more than $20 million of sales under its DGTECH mark of set top boxes, there was simply no proof that it had a reputation in the mark, the sales might well have resulted from the fact that Hills had a marketable product (apparently it was the only set top box in the market at the time). His Honour noted Kenny J had recognised in McCormick that it was often common to infer reputation from sales and advertising figures. It was not appropriate, however, to do so in this case:
[195] The evidence by itself does not prove any reputation at all. It may tend to prove that the goods sold under the mark are very marketable goods. In this case the goods being marketed under the DGTEC mark were set-top boxes which having regard to changes in the industry were marketable to persons who wanted to upgrade their analogue equipment.
[196] I do not think the bald evidence supports a finding of a reputation in the mark.
[197] In my opinion, the Hills’ mark had not acquired a reputation in Australia of the kind that is contemplated in s 60. The mark had only been used on set-top boxes prior to the priority date and although Hills, and previously the company, had sold in excess of $20 million worth of set-top boxes, there is no evidence that the mark under which the set-top boxes had been sold had a reputation of the kind contemplated in this section.
[198] For that reason alone, I would have dismissed Hills’ objection under s 60.

Striclty obiter

Even if Hills had established a reputation, Bitek’s mark would not have been like to deceive or cause confusion as a result of that reputation, so the old form of s 60 still would not have applied.

[208] Assuming, contrary to my opinion, that the Hills’ mark had acquired a reputation, it had only acquired, at the priority date, a reputation in respect of set-top boxes. Hills did not contend for any other reputation. If that was the case, the use of the Bitek mark in respect of its goods was not likely to deceive or cause confusion because the goods were unrelated to a set-top box. Bitek’s goods specifically excluded set-top boxes. A consumer wishing to acquire a TV installation accessory or external antenna bearing the Bitek brand would not in my opinion be likely to be confused or deceived as to the origin or provenance of those products because of Hills’ mark’s reputation in set-top boxes. For that further reason, Hills could not rely upon s 60 to defeat Bitek’s application for registration.

In case it became necessary on appeal, Lander J would have rejected Bitek’s attempt to rely on s 44(3) honest concurrent user or “other circumstances”.

Bitech failed on “honest concurrent user”  and “other circumstances” because the use occurred after the priority date.

Under “other circumstances”, Bitek sought to rely on the inconvenience it would suffer through loss of the goodwill it had built up. If it had been permissible to take use after the priority date into account under “other circumstances”, Lander J would still have rejected this:

[187] However, I would not have exercised my discretion in favour of Bitek under s 44(3)(b) even if events after the priority date were relevant for two reasons. First, because Bitek had not used the mark prior to the priority date. It did not make any sales under the brand. Secondly, its case was that its goods are not sold by reference to its mark. As Hills contended, Bitek’s case was that the consumers of its goods are unlikely to be concerned with brands because brands are unimportant with TV installation accessories.

[188] If that is so, then it seems to me that little goodwill could have attached to the brand or the mark since it has been used and in those circumstances where there is a finding under s 44(1), there would be insufficient evidence to support the exercise of discretion in favour of the applicant for registration. If Bitek is right that its consumers do not depend upon brand or mark, then little would be lost to Bitek in arranging for a mark which is not deceptively similar to the Hills’ mark.

Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94

ps The decision also addresses removal for non-use and infringement issues which, in view of the length of this post, will need to be the subject of a later post.

DGTEK v Digiteck I Read More »

The value of descriptive ‘trade marks’?

Lea Lewin looks at why Virgin lost its opposition (in the Office) to Qantas‘ attempt to register

ALL DAY, EVERY DAY, LOW FARES

in the face of Virgin’s ‘trade mark’ for:

EVERY DAY LOW FARES

Unfortunately, Virgin’s ‘trade mark’ doesn’t exactly leap off its website (or the evidence it filed).

Given Qantas is on the verge of registration (and apparently using its ‘mark’ through Jetstar), I can see why Virgin would want one too. Duets looks at some reasons from a US perspective and some other things to think about.

But, surely the real question here, is how can any trade mark system allow anyone to register either (purely descriptive) ‘mark’?

The value of descriptive ‘trade marks’? Read More »

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