mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: World Brands Management Pty Ltd v Cube Footwear Pty Ltd [2004] FCA 769
Outcome: referred to
The above findings are based not only on the evidence in the proceedings, but on commonsense and judicial experience of the process people typically engage in when purchasing footwear. In World Brands Management Pty Ltd v Cube Footwear Pty Ltd [2004] FCA 769 at [7] (albeit in a passing off context) Heerey J said: Turning to the TPA and passing-off claims, I do not agree that the decision of Goldberg J in Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281 establishes some rule of law as to the circumstances which pertain in the retail footwear trade. Nevertheless, his Honour's observations are valuable in another way. They light up and provoke one's memories from personal experience as to the way in which shoes are bought by retail consumers. As counsel for the respondents pointed out, shoes are usually not a quick impulsive purchase of something off the supermarket shelf. Rather, shoes are compared and tried on and thought over. Shoes are expected to last for some years at least. If not well chosen, they may cause discomfort and regret.
Case: Re 'GE' Trade Mark (1972) 1B IPR
Outcome: referred to
To the same effect are the observations of Lord Diplock in Re 'GE' Trade Mark (1972) 1B IPR 543 at 567: [W]here goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a "jury question". By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused. The question does not cease to be a "jury question" when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself. See also Jafferjee v Scarlett [1937] HCA 36 ; (1937) 57 CLR 115 at 122-123.
Case: Jafferjee v Scarlett [1937] HCA 36 ; (1937) 57 CLR 115
Outcome: referred to
To the same effect are the observations of Lord Diplock in Re 'GE' Trade Mark (1972) 1B IPR 543 at 567: [W]here goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a "jury question". By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused. The question does not cease to be a "jury question" when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself. See also Jafferjee v Scarlett [1937] HCA 36 ; (1937) 57 CLR 115 at 122-123.
Case: Johnson &amp; Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Outcome: applied
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. See Johnson &amp; Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 341, 351 ( Johnson ). That is the concept embodied in the definition of "trade mark" in s 17.
Case: Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167
Outcome: cited
In finding that Remington's use was not use as a trade mark, the Full Court gave particular attention to the rotary heads of Remington's product. They were viewed as "vitally important" to the design of the product and having a "purpose quite different from those of a trade mark": at [18]. The fact that the three-headed rotary design was one of the best designs for a rotary shaver was a relevant factor in Remington's favour. Another factor was that Remington had prominently displayed its 'Remington&reg;' trade mark on the packaging of the product and on the product itself "in a way that a mark would be used for goods of this type": at [6]-[7] and [19]. The extent of the use of the 'Remington&reg;' mark is more fully described by the primary judge: Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 at [10] to [12] and [31] to [37].
Case: Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242
Outcome: applied
The case turned on whether the respondent's use of the S-shaped fence dropper was use as a trade mark. Greenwood J held it was not. His Honour said at [60]-[62]: ... has the respondent used, as a trade mark, the three dimensional sign in relation to goods by importation, sale and promotion of articles, embodying the shape, to distinguish those goods in the course of trade from the goods of others? The answer to that question requires examination of the purpose and nature of the impugned use, the relevant context, the way the trade mark has been adopted or applied in relation to goods and the use of brochures, catalogues and advertisements (Johnson &amp; Johnson v Sterling at 347). A part of that contextual analysis involves an assessment of whether use of the trade mark might be illustrative or descriptive of the goods rather than use as a trade mark. In that context, the extent to which a three dimensional shape for the goods or a part of the goods serves function is an important element in the determination of whether use is distinctive of commercial origin or illustrative or descriptive of the embodied shape of the goods. Use of the trade mark must be demonstrated to be use that serves the primary function of a trade mark (Johnson &amp; Johnson v Sterling at 348 and 349; Christodolou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 66 IPR 595). A word trade mark that contains a descriptive element may nevertheless still serve as a badge of origin as language does not necessarily convey only one idea (Johnson &amp; Johnson v Sterling) although the descriptive element may make it difficult to demonstrate that the words serve the primary function of distinguishing the goods. (Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242 per Bennett J [29]). ... Where the trade mark comprises a shape which is demonstrated to involve a substantial functional element in the goods, references to the shape are almost certainly references to the nature of the goods themselves rather than use of the shape as a trade mark.
Case: Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641
Outcome: applied
In Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 658 ( Woollen Mills ) Dixon and McTiernan JJ said: An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. 86 Customers are not to be credited with any "high perception or habitual caution". On the other hand, "exceptional carelessness or stupidity may be disregarded": Woollen Mills at 658. 87 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 ).
Case: Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 ; (2001) 52 IPR 42
Outcome: referred to
The class of potential customers posited by the test is hypothetical, but "imbued with the characteristics" of an actual group of people purchasing the goods: Lahore, Patents, Trade Marks and Related Rights at 54,145; CA Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 ; (2001) 52 IPR 42 at [43] ( Henschke ).
Case: Registrar of Trade Marks v Woolworths [1999] FCA 1020 ; (1999) 45 IPR 411
Outcome: applied
In Registrar of Trade Marks v Woolworths [1999] FCA 1020 ; (1999) 45 IPR 411 at 428 ( Woolworths Metro ) French J distilled the principles relevant to "likely to deceive or cause confusion". They include: i. To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient. ii. A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt ... iii. In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
Case: de Cordova v Vick Chemical Co (1951) 68 RPC 103
Outcome: applied
In Shell at 414, in a passage approved on appeal to the Full Court, Windeyer J said: 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 p 106. Whether there is substantial identity is a question of fact. 77 The applicants' written submissions on substantial identity in relation to the Sole Mark were as follows: While the first respondent's shoes do not have a "D" insignia (as in the registered mark), they are otherwise covered entirely with a very similar diamond shaped pattern. It is submitted that the degree of resemblance here is still overwhelming and such that it can be judged to be "substantially identical" with the registered mark. In addition, the Photon Footwear has a blank panel in place of the "D" insignia, which makes it even closer in visual impression to the Sole Trade Mark than the Cube Footwear and the Gamon Footwear. This blank panel, moreover, is in the same position relative to the shape of the sole as is the panel with the stylised "D" in the Sole Mark. The respondents were unable to give any proper explanation about the presence of this blank panel, which it is submitted, and put to Trenear, was done to convey an impression of closeness to the Wish shoe but without the actual addition of the "D" device - Tr. 69.35. However, it is submitted that all three of the alleged infringing shoes are close enough in their use of the pattern feature on the soles to infringe the Sole Trade Mark on the basis that they are "substantially identical" with the registered mark. 78 YD contended that the stylised D on the heel was the prominent and distinctive feature of the Sole Mark. In the absence of the stylised D, it was submitted that that YD's sole patterns were not substantially identical. 91 At [84] the Court quoted with approval the following passage from the Privy Council's decision in de Cordova v Vick Chemical Co (1951) 68 RPC 103 ( de Cordova ): a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features. The identification of an essential feature depends partly on the Court's own judgment and partly on the burden of the evidence that is placed before it. 92 The essential features of the trade mark are listed at [83]. The other features are two oblique stripes on either side of the shoe, one vertical stripe on the rear, a squarish shaped toe cap, a strip flowing from the bottom of the laces to the toe cap, a facing and a padded collar.
Case: Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38
Outcome: applied
Of the essential features, the D is the most dominant feature of the Shape Mark. Significant weight and importance have been attached to that feature: cf Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 at [18] ( Melbourne Chinese Press ) and All-Fect at [42]. 98 In my view the application to the shoes of YD's label alters the general effect of the shoes without the label: Melbourne Chinese Press at [18], Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 at [53] and Kowa Company Ltd v N V Organon [2005] FCA 1282 ; (2005) 66 IPR 131 , and goes a long way to prevent confusion between the marks.
Case: Aldi Stores Ltd Partnership v. Frito-Lay Trading Company GmbH (2001) 54 IPR 344
Outcome: applied
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.
Case: Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 ; (2003) 59 IPR 318
Outcome: cited
In my view the application to the shoes of YD's label alters the general effect of the shoes without the label: Melbourne Chinese Press at [18], Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 at [53] and Kowa Company Ltd v N V Organon [2005] FCA 1282 ; (2005) 66 IPR 131 , and goes a long way to prevent confusion between the marks.
Case: Kowa Company Ltd v N V Organon [2005] FCA 1282 ; (2005) 66 IPR 131
Outcome: referred to
In my view the application to the shoes of YD's label alters the general effect of the shoes without the label: Melbourne Chinese Press at [18], Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 at [53] and Kowa Company Ltd v N V Organon [2005] FCA 1282 ; (2005) 66 IPR 131 , and goes a long way to prevent confusion between the marks.
Case: Global Brand Marketing Inc v Cube Footwear Pty Ltd [2005] FCA 852
Outcome: referred to
Global Brand Marketing Inc v Cube Footwear Pty Ltd [2005] FCA 852 was an application by the present applicants to amend the statement of claim by adding a cause of action for infringement of the Sole Mark and Shape Mark, the very marks in suit in the present case. Goldberg J said at [33]: The test [for deceptive similarity] necessarily concerns consumers' recollection of the marks in a trade context. It is by its nature therefore not a matter that can be determined at this stage. The applicant conceded that the absence of the stylised D makes its case difficult, but contended that evidence may establish that the cross hatched sole pattern is the distinctive feature of the sole mark. According to the applicant, it is therefore necessary for the Court to hear evidence of consumers' recollections and impressions of the marks and the relevant footwear, and any expert evidence as to the manner in which consumers perceive brands, before the Court is in a position to understand whether any consumers might be deceived by the infringing footwear. The shoes in question appeal to a particular group of consumers, and the Court should have evidence from the relevant consumers, presumably young people, of the fad and whether the brand is distinguished by the cross hatched sole pattern in the absence of the stylised D. 107 In allowing the amendment, his Honour made clear that evidence of consumer recollections would be important in determining whether consumers might be deceived by the alleged infringing footwear. No such evidence has been adduced by the applicants. The applicants have had since 2005 to assemble evidence of consumer recollections. In the circumstances, it is reasonable to infer that they have been unable to find such evidence. As is apparent from what I have said thus far, I have concluded that there is no deceptive similarity between YD's shoes and the applicants' marks without needing to rely on the absence of deception or confusion evidence. 108 YD's cross claim for removal of the trade marks from the Register arises under s 88 of the Act. Under sub-s (1)(b) the Court may order that the Register be rectified by "removing or amending an entry wrongly made or remaining on the Register". Sub-section (2) sets out the grounds upon which an application under sub-s (1) may be made. The only presently relevant ground is that in par (a) "any of the grounds on which the registration of the trade mark could have been opposed under Division 2 of Part 5". Division 2 of Part 5 consists of ss 57 to 62. Section 57 provides that registration of a trade mark may be opposed on any of the grounds upon which an application for registration may be rejected under Division 2 of Part 4. One of those grounds is that described in s 41, that the trade mark is not capable of distinguishing the applicant's goods or services from those of other persons. Section 58 provides that a trade mark may be opposed on the ground that the applicant is not the owner of the mark. YD relies on ss 41 and 58 for its cross claim for removal of the trade marks from the Register.
Case: Blount Inc v Registrar of Trade Marks [1998] FCA 440 ; (1998) 40 IPR 498
Outcome: applied
Section 41 is in part as follows: (2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons. (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. Where the Registrar is "still unable" to decide the question posed by sub-s (3), sub-ss (5) and (6) apply: sub-s (4). The cascading effect of s 41's provisions is helpfully described by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440 ; (1998) 40 IPR 498 at 504-505 ( Blount ). Sub-sections (4) to (6) are not material to the present case, because the marks were accepted for registration without opposition as possessing sufficient inherent distinctiveness as required by s 41(3). The Registrar saw no reason to engage in the further enquiries indicated in sub-ss (5) and (6), and did not seek any evidence as to use. 110 Section 41 as a whole has changed the law relating to distinctiveness by extending the class of marks capable of being registered. Nevertheless, the law that developed under the distinctiveness provision in the earlier legislation (s 26 of the Trade Marks Act 1955) is applicable to s 41(2) and (3). See MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 41 IPR 561 at 572 and Blount at 504.