Case: Anheuser-Busch Inc v Budejovick[yacute] Budvar [2002] FCA 390 , 56 IPR 182
Outcome: followed
Whether a mark is " deceptively similar " is not to be determined by a side by side comparison, but rather by reference to whether there is a likelihood of deception or confusion from a recollection or impression of the registered mark: Anheuser-Busch Inc v Budejovick[yacute] Budvar [2002] FCA 390 at [143] , [2002] FCA 390 ; 56 IPR 182 at 216. Allsop J there observed: [143] The question of deceptive similarity must be judged by a comparison different from the side by side comparison undertaken to assess substantial identity; the question being the likelihood of deception or confusion from a recollection or impression of the registered mark. Thus, a side by side comparison is inadequate, and too narrow a test. The comparison is between, on the one hand, the impression based on recollection of the registered mark used in a normal or fair manner that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the impugned mark as it appears in the use complained of... 101 Section 92(1) and (4)(b) of the 1995 Act provide as follows: Application for removal of trade mark from Register etc. (1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register. ... (4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: ... (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non use application is filed, and, at no time during that period, the person who was then the registered owner: (i) used the trade mark in Australia; or (ii) used the trade mark in good faith in Australia; in relation to the goods and/or services to which the application relates. Section 7 further defines that which constitutes the " use " of a trade mark. An " authorised use " of a trade mark is taken to be a use of the trade mark by the owner: s 7(3). Section 8 defines that which constitutes an " authorised use ". See: Yau's Entertainment Pty Ltd v Asia Television Ltd [2002] FCA 338 at [75] [81], [2002] FCAFC 78 ; 54 IPR 1 at 16 per Hely J (Sundberg and Finkelstein JJ agreeing). The term " during " does not mean " throughout " so as to require a regular and continuous course of conduct for the whole period: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 at 44 per Gummow J. See: Luck J, Case Note (1990) 1 IPJ 63. 132 The first contention advanced on behalf of Gallo Winery was that the prior registered owner of the trade mark, Mr Houlihan, licensed it to Barefoot Cellars and exercised quality control over the BAREFOOT wine to which the mark was applied. The fact that such wines were sold and offered for sale by Beach Avenue Wholesalers during the relevant period -- it was submitted -- was sufficient to constitute a use of the mark by Barefoot Cellars and, in turn, Mr Houlihan. That was a " use ", so it was contended, by the then registered proprietor during the non-use period. 133 Neither Mr Houlihan nor any officer of Barefoot Cellars knew that the BAREFOOT wine exported to Germany in 2001 may ultimately find its way to Australia. But knowledge on the part of Mr Houlihan or Barefoot Cellars that its wine would or may find its way to Australia and be offered for sale, is said by Gallo Winery to be irrelevant. 137 Notwithstanding the views expressed by those authors, it is not considered that there could have been a " use " of the BAREFOOT trade mark during the 2004 2007 period by the registered owner simply by reason of the fact that BAREFOOT wine happened to be offered for sale or was in fact sold in Australia during that period. 138 There was certainly no agreement or other arrangement as between either Mr Houlihan or Barefoot Cellars and Beach Avenue Wholesalers whereby the BAREFOOT wine was to be imported, whether from Germany or elsewhere, and later sold or offered for sale in Australia. 139 In the circumstances of the present proceedings, it is not considered that there was any " use " of the BAREFOOT trade mark by the registered proprietor in Australia arising merely by reason of the fact that the BAREFOOT wine, or some of the wine exported originally to Germany, by some unexplained circuitous route ultimately arrived on Australian shores and was thereafter available for sale in Australia.