Jackman J has dismissed The Agency Group’s claims of trade mark infringement and misleading or deceptive conduct / passing off against The North Agency. In doing so, his Honour directly confronted the problem arising from the High Court’s reasons in Self Care v Allergan.
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.
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 , Jackman J distilled helpfully 12 principles from Self Care v Allergan. Then at  to  his Honour considered a further principle: noting that the High Court at  and  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  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”;
(4) At , 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 , 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  and  of Self Care v Allergan. Jackman J explained at :
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  and  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  and  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  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, 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. 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.
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  – , 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  in rejecting the brand extension or franchising risk, “the Agency” and “the North Agency emphasised different businesses.
Secondly, at , 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  and  – , ) 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  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 (@ ) and, in any event, (@ ) 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. ?
- See Self Care v Allergan at  footnotes 81 and 84. ?