Case: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 ; (2004) 209 ALR 1
Outcome: considered
is well-established that the impression conveyed by the whole of the mark must be considered ( Angelides v James Stedman Hendersons Sweets Limited [1927] HCA 34 ; (1927) 40 CLR 43 at 68; Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 ; (2004) 209 ALR 1 at [100] ). In Angelides , Isaacs ACJ characterised as "trite law" the principle that in a composite mark, however prominent a single word may be, the whole trade mark must be considered. Different considerations apply to a word mark and a mark that includes a distinctive geometric device, so that even though words may be deceptively similar, the rendition of a particular device may take the trade mark outside of deceptive similarity ( Crazy Ron's [96]-[99] and [103]). As the Full Court noted in Crazy Ron's , each case must be considered on its own facts and each trade mark evaluated. Whether a word constitutes an essential feature of a composite mark is determined by the overall impression of the mark and the prominence and character of the word in question, as well as other words and devices present. The totality of the device mark must be considered ( Sports Cafe Ltd v Registrar of Trade Marks (1998) 42 IPR 552). That is, the visual form of presentation may render two marks different. Bavaria NV draws a comparison between BAVARIA which, it says, is not (by itself) an essential feature of the trade mark, and the words CRAZY JOHN, which were held by the Full Court not to be an essential feature of a composite mark consisting of those words and a device, being a relatively large fantasy cartoon character holding a mobile telephone astride a stylised globe ( Crazy Ron's at [97]). In drawing that conclusion the Full Court pointed out that the words themselves were not especially prominent and were subsidiary to the fantasy character which occupied the dominant position in the overall image. The Full Court emphasised that it is necessary to consider a composite mark as a whole and that caution needs to be exercised in characterising words in a complex composite registered trade mark as an essential feature of the mark (at [100]). The trade mark the subject of the application did not, as it should not, contain the symbol &reg;. Similarly, the trade mark, as advertised, did not include the symbol of a registered mark next to the word BAVARIA. However, Bavaria NV has sold products in Australia under labels containing the &reg; symbol next to the word BAVARIA. The image of the trade mark that was included in the Delegate's decision also incorporated the &reg;. The use of the &reg; symbol is not relevant to an understanding of the trade mark but its presence is of some relevance to BBA's submissions on the prominence of the reference to BAVARIA. BBA submits that the placing of the &reg;, the indication of registration, next to the word BAVARIA on the labels indicates that Bavaria NV considers that word to be the essential feature of the mark. To my mind that positioning is equivocal. If Bavaria NV or the consumer were of the view that the word BAVARIA represents the brand name not associated with a geographical indication or place of origin, the positioning of the registration mark is neutral. However, I do accept that it draws attention toward the word BAVARIA, being the more prominent word on the label, and away from the smaller sized HOLLAND. BBA contends that the evidence does not establish any use of the trade mark in Australia prior to or near the priority date, or at all. Bavaria NV's trade marks Bavaria NV argues that abbreviations or alterations to the trade mark are unlikely to be helpful in considering a trade mark application, giving as an example that, if "McDonalds" is reduced to "Maccas", they are two different trade marks and the use of one is not the use of the other. It submits that, to make reference only to the aural use falls into the trap or vice described by the Full Court in the Crazy Ron's case: the substitution of a word mark for a word and device mark. Bavaria NV submits that the words in the trade mark are BAVARIA HOLLAND BEER and that those are the words which, if there were an aural rendition of the mark, would be used. Bavaria NV also draws a distinction between the use of the trade mark and post-priority date activities (eg. marketing) which make reference to "Bavaria" or "Bavaria Beer". Bavaria NV concedes that post-priority date evidence as to the use of the trade mark is relevant in order to see whether or not it would be likely to cause confusion but says that this is not the trade mark. Bavaria NV insists that for the purposes of this case, which involves an opposition to registration, the requirement to consider the use of the trade mark imports only a consideration of the use made of the trade mark as a whole and makes irrelevant the use made of one part of the trade mark in referring to Bavaria NV's goods, including the evidence of its own use of the single word "Bavaria" to refer to the beer. There was no evidence of any actual confusion or misunderstanding by consumers of the origin of Bavaria NV's beer. While such evidence is not essential, the evidence or lack thereof can be, as it may be in an infringement case, ' of some significance ' ( Crazy Ron's at [95]). Bavaria NV's evidence, through Mr Petrus Swinkels and Mr Carroll, is that they are unaware of any complaints or queries from any customers regarding the origin of Bavaria NV's products or of any confusion as to the origin of the beer arising from the use of the word BAVARIA on the labels. Part of Mr Petrus Swinkels' role as Export Manager for Bavaria NV was to be made aware of issues raised in export markets concerning the products sold by Bavaria NV, including those sold under the trade mark. He continued to be informed of such issues when he became a member of the Board of Directors and then Chairman of the Board of Directors. Mr Swinkels says that during his entire employment with Bavaria NV he never received or was informed of a complaint or query from a customer or distributor concerning the origin of the products sold by Bavaria NV, including products sold under the trade mark. The available evidence supports Bavaria NV's submission that there is no body of consumers which has been deceived or confused, in Australia or worldwide, in a way that BBA says is self-evident. I am not satisfied that the consumer would associate the trade mark with the State in Germany. I am not satisfied that the trade mark connotes more than a European origin of the beer. I am not satisfied that the trade mark connotes that the beer has characteristics attributable to a Bavarian origin. Mr Crossland's evidence is that in his opinion Bavaria NV's beer does not have the characteristics of a Bavarian pilsener. This does not establish that Bavaria NV's beer does not have the quality of a Bavarian beer. Mr Crossland has not conducted a comparison between Bavaria NV's beer and a statistical or broad range of Bavarian beer. Mr Antonius Swinkels' evidence that Bavaria NV brews its beer in Holland according to the method introduced by Bavarian brewers over a hundred years ago is not challenged other than by way of an observation that he conducted no independent research but relied on historical material.