Case: Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75 ; (1961) 109 CLR 407 
Outcome: applied
was referred to what Windeyer J said in Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75 ; (1961) 109 CLR 407 at 414 415 concerning the different ways of assessing the criteria of 'substantially identical with' on the one hand, and 'deceptively similar to' on the other. His Honour 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. ... On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.' The applicant submitted that: (i) The essential features of the registered mark are the star logo and the word 'STARR'. The essential features of the respondent's mark are the star logo and the word 'Star'. (ii) The star logo in both marks is eye catching. The star logo appears at the front of both marks. It is the first thing seen when looking at the marks. (iii) The star logo in both marks abuts the word part of the mark. (iv) The differences in the star logos are minor. The differences in the word part of the marks are also minor; the registered mark has an additional 'R' and the word is capitalised. The word 'Partners' is in lower case in the registered mark and is not an essential feature. Similarly, the word 'REALTY' is not an essential feature of the respondent's mark. (v) Comparing the two marks side by side, demonstrates that the essential features are substantially identical to each other and the differences do not detract from the total resemblance of the two marks. The applicant referred to s 10 of the Act which provides: 'For the purposes of this Act, a trade mark is taken to be "deceptively similar" to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.' I was referred to what Windeyer J said in Shell concerning 'deceptive similarity', quoted at [25] supra, and to what was said by Dixon and McTiernan JJ in Australian Woollen Mills at 658: 'In deciding this question, the marks ought not, of course, to be compared side by side. 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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The cause of business and the way in which a particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.' As noted in the extract from the judgment of Windeyer J in Shell quoted in [25] supra, following the side by side comparison of the marks, the noting of their similarities and differences and the importance of these assessed against the essential features of the registered mark, it is the total impression of resemblance or dissimilarity that emerges from the comparison that determines whether the criteria of 'substantially identical' is satisfied. Apart from the partial star logo, and even that is different in each mark, the positioning of that logo with respect to the 'STARR'/'Star' word and the aural similarity of the 'STARR'/'Star' words, the two marks have a number of differences. I am of the view that the word 'Partners' is an essential feature of the registered mark because it articulates the very structure of the applicant's business a franchise operation involving various unrelated parties (the partners) carrying on discrete businesses under a common banner. If that be right, then the essential features of the two marks are quite different, both visually and aurally; and even if it is not right, that difference between the two marks, particularly coupled with the difference between 'STARR' and 'Star', are sufficiently significant themselves to militate against any conclusion that they are substantially identical. In my view, there is no substantial similarity, let alone identity, visually or aurally, between the two marks. There seemed to be common ground as to the governing principles to be applied in a case where the question is whether a mark so nearly resembles a registered mark that it is likely to deceive or cause confusion. It is a different comparison than that for substantial identity; in the case of deceptive similarity, it is one of impression based on recollection: Shell at 415, which will be an imperfect recollection, measured against a standard of side by side comparison. As Windeyer J said in Re Bali Brassiere Co. Inc's Registered Trade Mark and Berlei Ltd's Application [1968] HCA 72 ; (1968) 118 CLR 128 at 139: 'The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand.'