Case: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212
Outcome: applied
this area it is impermissible to take into account any matter added to the respondent's mark or any differences in get-up. The marks must be understood in their entirety. Both parties placed reliance upon the reasons given by Lord Radcliffe in de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 105-106. I will not set them out. Lord Radcliffe's reasons were examined by a Full Court of this Court in Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at 231 [84]. For present purposes Crazy Ron's establishes a number of principles: The question of deceptive similarity is not to be judged by a side by side comparison. Instead what is involved is a comparison, on the one hand, of the impression based on recollection of an applicant's mark that persons of ordinary intelligence would have and the impression such persons would get from the respondent's mark (at 227 [73]). In that regard it is important to consider the "idea of the mark" (at 228 [74]). In assessing deceptive similarity, questions of aural impression may be important (at 228 [75]). In that context I regard the aural similarity between Malt Balls and Maltesers as negligible. The risk of deception must be tangible but it is enough if an ordinary person entertains a reasonable doubt (at 228 [76]). Allowance must be made for imperfect recollections in considering whether a mark so nearly resembles another mark that it is likely to cause confusion or deception (at 228-229 [77]-[78]). That principle extends even to marks which are not just invented words. 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 (at 229-230 [79]). It is likewise established that, generally, reputation is irrelevant to the question of infringement. Despite the apparent breath of that proposition, however, it is also accepted that if a particular word or words has come to signify exclusively the goods of the proprietor of a mark (the mark including those words) then the use of that or those words by another would be an infringement. No doubt this involves some apparent departure from the general principle that reputation is irrelevant but it is sanctioned by authority: Crazy Ron's at 232 [88]-[89]. A corollary appears to be that in assessing the notion of a consumer's imperfect recollection of a mark, the fact that a mark is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods or services is a relevant consideration: Crazy Ron's at 232-233 [90]. The application of these principles is, so it seems to me, relatively straightforward. The Maltesers marks are very famous. Consumers generally must be taken to be familiar with them. That is relevant to assessing a consumer's imperfect recollection of the mark. So viewed, a comparison between the impression held in the consumer's mind and the direct impression of Sweet Rewards' mark is one which, in this case at least, occurs in a context in which the chances of the average consumer having forgotten the Maltesers mark are vanishingly small. So too, an aural examination leads to the same result. "Maltesers" does not sound like "Malt Balls". In particular, the pronunciation is phonetically different: "mal-tesers" is syllabically distinct from "malt balls". I do not think that the colour red would cause confusion but even if there was such a risk such risk is clearly overcome by the effect of the other matters to which I have referred. My conclusions are therefore that: (a) the trade mark used by Sweet Rewards was the Delfi mark so that Mars' claim fails; (b) even if the trade mark use by Sweet Rewards were as Mars alleges, consumers are so familiar with Maltesers that they could not possibly be confused by the Malt Balls packaging more formally, there is no likelihood of imperfect recollection by them of the Maltesers mark leading to confusion; and (c) that conclusion is assisted by an aural consideration. Disposition It follows that none of the applicant's claims have been made good. The application should be dismissed with costs. Rulings on evidence Objection was taken by Sweet Rewards to paragraph 8 of the affidavit of Sarah Jane Armstrong sworn 29 May 2008 and to exhibit SJA-2 to that affidavit on the grounds of hearsay. Ms Armstrong had given evidence of certain discussions she had with various retailers about the distribution of the Delfi products. The purpose of that evidence was to show that the reputation of the Delfi range was limited.