Case: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 , 96 FCR 107
Outcome: cited
" trade mark " is defined by s 17 of the Trade Marks Act as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Registration of a trade mark confers " exclusive rights ". Section 20(1) provides as follows: If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered. The function of a trade mark is " to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods &#8212; to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market ": In re Powell's Trade-Mark [1893] 2 Ch 388 at 403 to 404 per Bowen LJ. 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: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] , [2008] FCA 605 ; 76 IPR 161 at 171 per Sundberg J; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [19] , [2008] FCA 934 ; 77 IPR 69 at 73 to 74. Noted: Andreazza A, "Barefoot Gets the Boot: Trade Mark Infringement and Removal for Non-Use" (2008) 21(5) IPLB 85. For subsequent proceedings, see E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180. In the absence of any statutory definition of the phrase " substantially identical ", the meaning of that phrase is to be determined by its ordinary or usual meaning, namely that which is " in substance " the same or " essentially " the same: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 at [70] [1999] FCAFC 1020 ; , 93 FCR 365 at 387 per Branson J. Whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Windeyer J there observed (some citations omitted): 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 R.P.C. 103 , at p. 106]. Whether there is substantial identity is a question of fact ... In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co [1999] FCA 1721 at [38], 96 FCR at 121 per Black CJ, Sundberg and Finkelstein JJ. See also: E &amp; J Gallo Winery [2008] FCA 934 at [41] to [43], 77 IPR at 78.