Case: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15 ; (1952) 86 CLR 536
Outcome: applied
the respondent submitted that any emphasis solely on the similarities would be misconceived. In considering marks as a whole where they contain common words, one should look primarily to those aspects of the marks that are not common: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15 ; (1952) 86 CLR 536 at 538 539; Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 at [40]; Chantelle v Kabushiki Kaisha Chandeal (1996) 36 IPR 549 at 568; and Re London Lubricants (1920) Ltd's Application [1925] 42 RPC 264 at 279. But while greater weight may have to be given to some aspect of a registered mark over other aspects in assessing the impression it may create for the determination of the ultimate question whether another mark so nearly resembles that registered mark that it is likely to deceive or cause confusion the authorities are quite clear that the marks have to be considered as a whole: Cooper Engineering at 538; SAP Australia at [27] and [41]. The two marks, 'STARR Partners' and 'Star REALTY', along with their respective star logos, are neither visually nor aurally similar. Indeed, they are quite distinct. One is reminded of what the High Court said in Cooper Engineering at 538 539: 'In the present case the prefix of the two words is the same word "Rain", but the suffix "master" differs from the suffix "King" in appearance and in sound. This makes the two marks as a whole quite distinct and the marks must be judged as a whole. "Rainmaster" does not look like "Rain King" and it does not sound like it. There is not a single common letter in master and in King. The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.' Similarly here, the fact that the two marks convey the same idea, a star in word and a star in logo, is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. But that is not this case and for that reason, the applicant's submissions based on the same idea should be rejected. At the conclusion of its judgment in Cooper Engineering , the High Court said (at 539): 'The learned registrar was right in holding that the only similarity between the two marks is the common prefix "Rain" and that this similarity is not sufficient to create a reasonable likelihood of deception when the remaining portions of the marks are so different.'