Case: Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 , 96 FCR 107
Outcome: followed
A " trade mark " is defined by s 17 of the Trade Marks Act 1995 (Cth) as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. The function of a trade mark, it has repeatedly been said, is "to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods -- to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market": In re Powell's Trade Mark [1893] 2 Ch 388 at 403 4 per Bowen LJ. Use "as a trade mark" in s 120(1) is use of the mark as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , [1999] FCA 1721 ; 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] per Sundberg J. See also: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407 at 424 5 per Kitto J; Rothnie W, Gray Goods Billow onto the Open Main: Section 123 of the Trade Marks Act 1995 (1996) 7 AIPJ 87 at 89 90. 43 And whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Windeyer J there observed: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. [(1951) 68 RPC 103 at] [2], at p. 106. Whether there is substantial identity is a question of fact... In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [38] , [1999] FCA 1721 ; 96 FCR 107 at 121. Black CJ, Sundberg and Finkelstein JJ there observed that the similarities and differences should be noted and the importance of these similarities and differences assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. 58 It is considered that the impression which would be left on the mind of a person of ordinary intelligence would be that there was a deceptive similarity as between the mark used by Gallo Winery and that used by Lion Nathan and as pleaded in its Amended Defence . The similarity is such that persons would wonder whether the products came from the same source; an actual probability of deception need not be established: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Kitto J was there dealing with an application for registration of a trade mark and the statutory phrase " likely to deceive " and observed (at 595): ... It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough--for there must be a real, tangible danger of its occurring ... --it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. ... No intention to deceive or cause confusion is required and there is no element of culpability to be inferred from the word " deceive ": Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [39] , [1999] FCA 1721 ; 96 FCR 107 at 122 per Black CJ, Sundberg and Finkelstein JJ. 93 Reference may also be made to Tavener Rutledge Ltd v Specters Ltd [1959] RPC 355. Lord Evershed MR there referred to the prospect of a plaintiff being able to establish the mark of a defendant causing confusion. His Lordship continued at 359 60: ... If the plaintiffs establish that then, as I have said, the defendants may still have another line of defence and may say, "Though it may generally be as you say a mark likely to cause confusion, in fact the way I have used it and in the circumstances and environment in which I have used it, it is not likely to cause confusion." Cited: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [43] , [1999] FCA 1721 ; 96 FCR 107 at 123.