Case: Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410
Outcome: cited
in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 424 Richardson J in the New Zealand Court of Appeal said, in considering a provision similar to s 60, that: for myself I prefer to use a more neutral term such as "awareness" or "cognisance" or "knowledge" and on that basis to ask: having regard to the awareness of the opponent's mark in the New Zealand market for goods covered by the registration proposed, would the use of the applicant's mark be likely to deceive or cause confusion to persons in that market. Fourth, the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) is helpful in interpreting the s 60. Paragraph 4.10 of the Explanatory Memorandum provides as follows: 4.10 TRADE MARK SIMILAR TO TRADE MARK THAT HAS ACQUIRED A REPUTATION IN AUSTRALIA Section 60(a) 1 . The intention of section 60 of the Act is to implement Australia's obligations to protect well known marks under the Paris Convention for the Protection of Intellectual Property and the 1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The provisions have not been written so as to establish a new class of trade marks ("well-known" marks) or to prescribe a particular threshold of how well-known a mark must be. Rather, the test has been written so that it can be applied to all marks. The test depends on the extent of the reputation in Australia that has been acquired by a sign. In light of that reputation, the question to be asked is whether the use of a subsequent trade mark would be likely to result in deception or confusion. Section 60 is a ground for opposition to a trade mark application for registration, which can also be used under section 88 as a basis for cancellation of a registration by the courts. 2. Under the current arrangements the provisions of section 60 require that the applied-for mark be substantially identical with, or deceptively similar to, the trade mark forming the basis of opposition before consideration of any deception or confusion, resulting from the reputation of the opponent's trade mark, can take place. Substantial identity and deceptive similarity are tests undertaken in examination of an application before the opposition process, and have very well established scope. 3. There have been a number of instances where a trade mark has an established reputation in Australia, and use of a subsequently applied-for trade mark would deceive or cause confusion, even though the subsequent trade mark is not substantially identical with, or deceptively similar to the original trade mark. However, because of the way paragraph 60(a) of the Act is written it is not possible to currently use this provision to prevent registration of a mark which fails the tests for substantial identity or deceptive similarity, but which nevertheless will cause confusion or deception in relation to a well-known mark. The tests for deception and confusion are all well established in judicial authority, and hinge on the question of whether or not a reasonable number of people may be caused to wonder if a trade connection exists between the marks. By removing the requirement for substantial identity or deceptive similarity from section 60, the ground for opposition under section 60 can be used to oppose the registration of a trade mark because of the possible deception or confusion arising solely from the reputation of a trade mark. 4. Under the amended provisions the consideration of oppositions would take into account the extent of the reputation of the opposing mark at the time the opposed mark was applied for, and the likelihood of deception and confusion occurring in the marketplace because of this. 4.10.1 Items 31 32 1. New paragraph 60(a) of the Act provides that a trade mark may be opposed where another trade mark has a reputation, and the registration of the opposed mark will cause confusion or deception in the market place, whether or not the reputation is built on a mark that is identical or deceptively similar to the opposed mark. In light of this material I consider that the following is clear.