Case: Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242
Outcome: discussed
The next use of the words GO WACKO relied upon as use as a trade mark, is in the expression DOGS GO WACKO FOR SCHMACKOS which appears on the front of Effem's packaging. It is possible for a word or words forming only part of a composite expression to be used as a trade mark. Examples are found in Kolotex Glo Australia Pty Ltd v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1 (" Kolotex ") and Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242. There are also cases in which a word (which is a registered trade mark) appears in an expression used by an alleged infringer where it has been held that such use does not constitute infringement. Pepsico was such a case. Before discussing the two authorities where words within an expression were used as trade marks, it is desirable to refer to the judgment of the High Court in Mark Foy's Ltd v Davies Coop and Company Ltd [1956] HCA 41 ; (1956) 95 CLR 190. 20 Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd is a more recent authority. It concerned the alleged infringement of the applicant's registered mark, LIVING WATER. The applicant had used the mark in relation to water produced by its "Wellness water filter". One of the classes in respect of which the mark was registered was Class 32, which covers "bottled water, spring and mineral water". The respondent advertised, distributed and sold its bottled water by reference to "Pro-Bio Living Waters". One issue was whether the expression used by the respondent constituted a single mark or two marks. Bennett J concluded that the words "Living Waters" were used by the respondent as a trade mark in itself. This conclusion was partly based on the way in which the expression was graphically represented. Bennett J accepted the applicant's submission that "Pro-Bio" had been deliberately created as an embellished mark on bottles and signs, while "Living Waters" was more understated. There were differences in font, style and size of the two components. The two components performed quite distinct and separate functions. "Pro-Bio" was used to identify the source of the product range. "Living Waters" was used as a secondary mark in respect of the products that formed part of the respondent's Living Waters' bottled water range. Bennett J concluded that "Pro-Bio" was used to denote the company that was the origin of the "Living Waters" range. 21 In the present case, the words said to be an unregistered trade mark, GO WACKO, appear in the expression DOGS GO WACKO FOR SCHMACKOS on the front of the packaging. There is a natural connection within the entire expression between GO and WACKO and that latter word loosely rhymes with SCHMACKOS later in the expression. This rhyming gives prominence to the words WACKO and SCHMACKOS particularly when spoken. However the entire expression appears in a black border against a yellow background which tends to integrate the expression and focus attention on it as a whole. Also the expression is significantly less prominent than the obvious indicator of the nature and source of the goods, the word SCHMACKOS, which appears elsewhere on the front of the packaging in much larger text, again in a black (and thicker) border with the bright yellow background. That word tends to dominate the front of the packaging though often in association with the description of the specific product and an image of a dog. I do not think the words GO WACKO in the expression on the front of the packaging would be taken to be a signifier of the source of the goods by a person looking at the packaging. Again I have had regard to the repetition of the words on the back of the packaging and their use in advertising to which I now turn. 22 The advertising relied on by Effem was television advertising. A DVD recording of twelve advertisements was tendered by Effem. However, ultimately only seven of the advertisements were relied on to demonstrate, amongst other things, the use of the words GO WACKO as a trade mark. The titles of the advertisements relied on were: "Vet", "Crackle 'N' Crunch", "Bath", "Tea party", "Things that go bump", "Builder's mate", "Sing" and "Be nice to cat". Each of the advertisements involved a story acted out by speaking clay animation figures together with voice-overs. It is unnecessary to describe each advertisement in detail, as all except "Be nice to cat" had a very similar format. The six with the common format involved a story generally which developed, with minor variations, in a sequence. 23 There is an opening scene or scenes involving a dog and its owner which create a context in which the dog is asked to do something. In the advertisements listed (excluding "Be nice to cat"), this is to submit to an examination by the vet, take a bath, participate in a child's tea party, investigate noises caused by an intruder, retrieve a dropped hammer and sing a song. In each instance, the dog shows great reluctance to do the requested act. A person then seeks to induce the dog to do the act by offering food but is unsuccessful. The dog is then offered a SCHMACKOS product which is referred to by name in the voice-over, having the effect of highlighting the offering of a SCHMACKOS in contrast to the earlier offering. The dog is then given SCHMACKOS by a person, who refers to the product as a SCHMACKOS. 24 An image of the packaging is then shown, generally taking the form discussed earlier in relation to the actual packaging but with the word SCHMACKOS appearing in exaggerated form. The dog responds positively and vigorously and does what had been requested in an exaggerated way. The advertisement concludes with a jingle sung as a voice-over, with the words DOGS GO WACKO, DOGS GO WACKO, FOR SCHMACKOS. The way it is sung, the first two phrases are sung quickly, with no discernible prominence given to the words GO WACKO. The word SCHMACKOS is emphasised by being drawn out and sung in an exaggerated warbling voice. At about the same time, the words DOGS GO WACKO FOR SCHMACKOS appear as a superimposed graphic. The "Be nice to cat" advertisement ends slightly differently, not with the jingle but with a song sung more slowly and concluding with the lines I'D GO WACKO WITHOUT SCHMACKOS AND YOU.