Case: Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51 ; (1937) 58 CLR 641
Outcome: considered
It is 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 should be restrained ( Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51 ; (1937) 58 CLR 641 ( "Australian Woollen Mills" ) per Dixon and McTiernan JJ at 658). 67 In Australian Woollen Mills at 658 Dixon and McTiernan JJ in a joint judgment explained: 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. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight. 68 In arguing that its use of the words "Chatswood BBQ King" in their context did not constitute the use of a sign or mark that is deceptively similar to the Trade Mark, the respondent placed particular reliance on the following differences between the logo of the Chatswood restaurant and the Trade mark: (i) the inclusion of the word "Chatswood"; (ii) the absence of the "crown" device; (iii) the absence of any stylisation of the words; (iv) the absence of words in which letters are separated by periods; (v) the inclusion of Chinese characters generally and certain Chinese characters in particular; (vi) the emphasis on the particular Chinse character which is stylised in a circle; (vii) the use of capital letters in the word "KING"; (viii) the absence of periods between the letters "BBQ"; (ix) the different font of the English lettering; (x) the arrangement of signage in two lines; and (xi) the distinctive colour scheme of red on a yellow background. 69 The above factors would be of significance were it appropriate to compare the marks side by side. However, as mentioned above, it is not appropriate to do so. I am required first to form a view as to the impression produced on the minds of customers and potential customers by the Trade Mark including by the pronunciation of words in the mark. It is then necessary for me to make a judgment as to the likelihood that the form of the respondent's logo would cause them to form the mistaken belief, at a time when the logo is not before them, that the respondent's logo is the Trade Mark. I am to be concerned with the usual way in which ordinary people behave. I should disregard those with high perception or habitual caution and also those of exceptional carelessness or stupidity.