Case: Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Ltd [2004] FCAFC 196
Outcome: applied
In Shell at 410 Windeyer J said that deceptive similarity must be considered against the "background of the usages in the particular trade". In Woollen Mills at 658 Dixon and McTiernan JJ said: The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected .... 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. See also Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 at [75] ( Crazy Ron's ). 90 In Crazy Ron's at [79] the Full Court said: If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark. The other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark. 97 Third, YD's shoes are labelled YD on the inside sole. In cases where an additional feature is added to an alleged infringing mark, the feature can affect the overall impression and provide a "significant" point of dissimilarity: cf Crazy Ron's at [97]-[98]. In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH (2001) 54 IPR 344 ( Aldi Stores ) Lindgren and Hill JJ held that the registered mark TWISTIES was not infringed by the words CHEESY TWISTS, as the dual mark was visually different from the registered mark. The presence the YD label is akin to the distinguishing additional feature in Aldi Stores , particularly as it is the most prominent feature of YD's shoes. 99 Finally, the context is all important. In the present case the risk of confusion is mitigated by the circumstances in which the products are bought and sold: &#8226; Purchasers of the shoes in suit are metro-shoppers. They are fashion conscious and discerning in their choices. They are likely to be well informed about the products before purchasing them. The steps involved in a purchase (see [26]) constitute a relatively lengthy process in the course of which a customer will become well informed about a product before making a purchase. &#8226; Metro-shoppers review product labels. Branding, labels and logos are important features to this class of consumer. Their purchasing habits are refined, and this lessens the chance of confusion. &#8226; YD's shoes are sold only in YD stores. The stores display YD's signage, and customers are well aware that they are in a YD store when purchasing an item. &#8226; The applicants' and YD's shoes are relatively expensive items compared with impulse products such as soft drinks and confectionary: cf. All-Fect at [41]. Purchasers of shoes generally tend to be discerning in their purchasing habits. &#8226; While it is not necessary for the applicants to lead evidence of actual deception (cf Crazy Ron's at [95]), it is relevant that there was no such evidence. 133 Allsop J's decision was set aside on appeal: Crazy Ron's . However the Full Court (Moore, Sackville and Emmett JJ) approved Allsop J's treatment of the s 58 issue. Having at [47] to [48] summarized what is set out at [132] above, their Honours said at [128]: In the light of the findings made by the primary Judge, it is tolerably clear that, while the application was still on foot and at the time of grant, Crazy John Pty Ltd claimed to be, and was the owner of, the 1999 Mark. Crazy John Pty Ltd intended to use the 1999 Mark by licensing it. There was material upon which his Honour could conclude that Crazy John was the owner of the 1999 Mark and intended to authorise another member of the group to use it. The grounds of invalidity referred to in ss 58 and 59 are not made out. 134 I think I should follow Crazy Ron's . There the date at which the validity of registration was to be tested was squarely raised. The decision on this issue was based on the definition of "applicant" in s 6. The relevant date was not an issue in Lomas . The Full Court did not refer to the definition of "applicant". The question there was who was the owner at the priority date. The parties were not in dispute as to the time at which to test ownership. Nor was the proper date at which the rights of the parties were to be determined an issue in Southern Cross . Further, the Trade Marks Act 1905 contained no definition of "applicant". Kitto J's five propositions were, as his Honour said, taken from Romer J's judgment in In re Jellinek's Application (1946) 63 RPC 59 at 78. That was a decision under the Trade Marks Act 1938 (1 &amp; 2 Geo 6 c 22), which contained no definition of "applicant".