Case: Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365
Outcome: followed
44(1) was considered in considerable detail by the delegate in her decision. In summary, the delegate found as follows: the applicant's trade marks have earlier priority dates than that of the respondent (at [18]); principles applicable to the operation of s 44 can be found in Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-595 (at [20]); the applicant had submitted that the word "network" is understood by the relevant public as being the plural of "channel" and that therefore "Food Channel" and "Food Network" will not be distinguished in the marketplace. The delegate observed that she was aware that there were various entities in the television industry within Australia which used a naming convention for both the overall television network and individual channels within that network. However the delegate was satisfied from her own knowledge of the Australian television market that the public understanding of the relationship between the names is as a result of exposure over time to the naming convention, rather than the result of an inherent equivalence in terminology. Although the delegate understood that most television networks in the Australian market involved several related channels, she was not satisfied that at this stage, and failing an educative process of the public whereby the public came to recognise that a television network as comprising individual television channels, that the terms were the same. Accordingly the delegate did not consider the trade marks, when viewed as wholes, as being deceptively similar (at [21]-[23]); the delegate was satisfied that the market for "printed matter, periodical publications, books and newspapers; paper and cardboard articles; posters, calendars; writing instruments, pencils, pens, stationery, writing pads, greeting cards; photographs", being goods within class 16, is separate from that of the television broadcasting and television entertainment markets (at [24]); the delegate noted that within the applicant's service claims in class 41 in respect of registrations 881666 and 881667 was the item "publication of printed publications." The delegate referred to Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 145 ; (1983) 48 ALR 511 where Lockhart J had considered service marks and the problems of confusion with goods marks. The delegate considered that publication services are closely related to the results of those services, namely printed publications, be they books, leaflets, newspapers or newsletters, and that the presence of those goods within the specification was sufficient to trigger the particular provision of s 44 which deals with goods and services. Accordingly, the delegate was satisfied that some of the applicant's claimed services, namely the "publication of printed publications", were closely related to some of the respondent's goods, namely "printed publications, periodical publications, books and newspapers" (at [25]-[26]). Issues in contention First, I reject the respondent's contention that, because the applicant's trade mark is registered for services and trade mark 967804 relates to goods, s 44(1) is not relevant. Section 44(1) clearly contemplates rejection of the application for the registration of a trade mark in respect of goods , where a trade mark applicant's trade mark is substantially identical with or deceptively similar to, inter alia , a trade mark registered by another person (or sought to be registered) in respect of similar goods or closely related services . As the delegate observed, this issue was considered in some depth by Lockhart J in Caterpillar Loader Hire (Holdings) [1983] FCA 145 ; (1983) 48 ALR 511 , particularly at 522-523. I similarly note the recognition to the possibility of deceptive similarity between a service mark and a mark in respect of closely related goods discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020 ; (1999) 93 FCR 365 at 380.