Case: The Shell Co of Australia Limited v Esso Standard Oil (Australia Limited) [1961] HCA 75 ; (1963) 109 CLR 407
Outcome: applied
respondent submits that when one has regard to the fact that the concept employed by the parties in their consent orders eschewed the broader concept of deceptive similarity as explained in The Shell Co of Australia Limited v Esso Standard Oil (Australia Limited) [1961] HCA 75 ; (1963) 109 CLR 407, it is at least open to raise a reasonable doubt as to whether what the respondent did, as previously found by me (in Natural Floor Covering Centre Pty Ltd v Monamy (No 3) [2006] FCA 602 at [12] ) was in fact a use that was the same or substantially identical with either of the registered marks. (The respondent does not accept that that finding was one which should have been arrived at on the facts, but has left such rights as he may have to deal with that matter to be the subject of an appeal rather than seeking leave to reopen generally.) The respondent referred to the decision of Windeyer J in the Shell Co of Australia Limited v Esso Standard Oil (Australia Limited) (1961) 109 CLR at 414-415, where his Honour considered the concept of 'substantial identity' within the meaning of the then Trademarks Act 1955 (Cth) and the decided cases on those words, both here and in England, in contradistinction to the other concept used in the legislation of 'deceptive similarity'. He explained that the task was to compare side by side the similarities and differences noted and the importance of those assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from that comparison. He said that the judgment ought to be by eye alone for the purposes of determining substantial identity, but noted that in an animated depiction where matters do not stand still fleeting glimpses of substantial identity were not enough, although the position may be different with regard to deceptive similarity. Since order 1 does not refer to the latter concept I need not deal with it. Given that these are proceedings which are criminal in nature in which the liberty of the subject is in issue, it seems to me that I should err on the side of caution in construing order 1. Having now had the benefit of the argument put by the respondent, I am of opinion that the words 'substantially identical' as used in that order could be construed as denoting the concept in s 120 of the Trademarks Act 1995 (Cth) and as expounded in judicial decisions and that it is a reasonable construction of order 1 to read it in the way submitted by the respondent today. That is so even though this is not necessarily the only construction that one would make. That is to say, the parties were identifying a limited legal concept as defining the extent of the protection that the order was seeking to give to the applicant's two trademarks and they accepted that the particular depiction, included as part of order 1, was an infringement of them. While that is not, for the reasons I have given in my earlier judgements, the construction which I would place on the words, I am not satisfied beyond reasonable doubt, having now reflected upon the new argument put by the respondent through his counsel today, that that is the only way one would read the consent orders in light of the heads of agreement which the respondent signed on 12 December 2005.