Case: Sports Cafe Ltd v Registrar of Trade Marks (1998) 42 IPR 552
Outcome: considered
Angelides , Isaacs ACJ characterised as "trite law" the principle that in a composite mark, however prominent a single word may be, the whole trade mark must be considered. Different considerations apply to a word mark and a mark that includes a distinctive geometric device, so that even though words may be deceptively similar, the rendition of a particular device may take the trade mark outside of deceptive similarity ( Crazy Ron's [96]-[99] and [103]). As the Full Court noted in Crazy Ron's , each case must be considered on its own facts and each trade mark evaluated. Whether a word constitutes an essential feature of a composite mark is determined by the overall impression of the mark and the prominence and character of the word in question, as well as other words and devices present. The totality of the device mark must be considered ( Sports Cafe Ltd v Registrar of Trade Marks (1998) 42 IPR 552). That is, the visual form of presentation may render two marks different. In Sports Cafe , the Full Court held that it was relevant to consider how a cited mark may be used informally, especially in speech, noting (at 557) the Australian tendency to shorten expressions. However, their Honours were careful (at 559) to state that, whether or not the shortened expression used for the mark may convey a certain idea, consideration of deceptive similarity needed to be made in consideration of the whole of the mark. Their Honours distinguished between a device mark which contains words on one hand and a word mark on the other. However, in considering an opposition to registration of a trade mark, care must be taken in evaluating the use of the trade mark and evidence of different ways by which the goods to which the trade mark is applied are or may be described. Invariably, a trade mark consisting of words and devices will be referred to by one or more of the words. This does not mean that the devices or other words are eliminated from consideration of the registrability of the mark. It does not mean that the consumer disregards or fails to recall the trade mark or the devices when referring to the goods in a shortened form. I accept that Bavaria NV's beer has been marketed and promoted by reference to "Bavaria Beer", "Bavaria Premium" and "Bavaria Holland" as well as by reference to "Bavaria" alone. I accept that consumers may use each of these terms aurally to refer to the beer, as a brand. However, it is the trade mark that is the subject of opposition and I do not accept that the fact of such usage of itself determines the predominant elements of the mark. The new label Bavaria NV appears to accept that there are difficulties with the word "Bavaria" being adapted to distinguish its beer but emphasises that Kitto J's observations in Clark Equipment apply to the use of a geographical term where the word is used simpliciter or with no addition except a description or designation of the goods. It submits that its composite trade mark, which uses visual components and other geographical references, is sufficient, as it was in Sports Cafe, to distinguish its trade mark from what may otherwise be a reference to "Bavaria" as the source of the beer.