mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Kowa Company Ltd v N V Organon (2005) 66 IPR 131
Outcome: referred to
The onus is on the opponent to establish that one of the grounds is made out. Before the delegate the applicant was the opponent. Different views have been expressed in the authorities as to the standard at which the onus must be discharged. There are decisions to the effect that the opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered: Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 ; (2003) 59 IPR 318 and Kowa Company Ltd v N V Organon (2005) 66 IPR 131. See also Lomas v Winton Shire Council (2002) FCAFC 413 at [17] to [19], Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 61 IPR 257 at [4] and McCorquodale v Masterson ( McCorquodale ) (2004) 63 IPR 582 at [24].
Case: Lomas v Winton Shire Council [2002] FCAFC 413
Outcome: referred to
The onus is on the opponent to establish that one of the grounds is made out. Before the delegate the applicant was the opponent. Different views have been expressed in the authorities as to the standard at which the onus must be discharged. There are decisions to the effect that the opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered: Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 ; (2003) 59 IPR 318 and Kowa Company Ltd v N V Organon (2005) 66 IPR 131. See also Lomas v Winton Shire Council (2002) FCAFC 413 at [17] to [19], Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 61 IPR 257 at [4] and McCorquodale v Masterson ( McCorquodale ) (2004) 63 IPR 582 at [24].
Case: Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 61 IPR 257
Outcome: referred to
The onus is on the opponent to establish that one of the grounds is made out. Before the delegate the applicant was the opponent. Different views have been expressed in the authorities as to the standard at which the onus must be discharged. There are decisions to the effect that the opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered: Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 ; (2003) 59 IPR 318 and Kowa Company Ltd v N V Organon (2005) 66 IPR 131. See also Lomas v Winton Shire Council (2002) FCAFC 413 at [17] to [19], Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 61 IPR 257 at [4] and McCorquodale v Masterson ( McCorquodale ) (2004) 63 IPR 582 at [24].
Case: McCorquodale v Masterson (2004) 63 IPR 582
Outcome: applied
The onus is on the opponent to establish that one of the grounds is made out. Before the delegate the applicant was the opponent. Different views have been expressed in the authorities as to the standard at which the onus must be discharged. There are decisions to the effect that the opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered: Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 ; (2003) 59 IPR 318 and Kowa Company Ltd v N V Organon (2005) 66 IPR 131. See also Lomas v Winton Shire Council (2002) FCAFC 413 at [17] to [19], Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 61 IPR 257 at [4] and McCorquodale v Masterson ( McCorquodale ) (2004) 63 IPR 582 at [24]. 49 In order to succeed under s 43 of the Act, an opponent must show that there is a connotation in the proposed trade mark, and that because of that connotation, the use of the mark would be likely to deceive or cause confusion. See McCorquodale at [25] and [26]. 50 The word "connotation" is defined in the Oxford English Dictionary as: "1 The signifying in addition; inclusion of something in the meaning of the word besides what it primarily denotes; implication. b That which is implied in a word in addition to its essential or primary meaning." 52 Whether there is a likelihood of deception or confusion is to be answered "not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered": Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353 at 362. Here, the GLENN OAKS mark is the relevant mark in suit. The surrounding circumstances provide guidance as to what is proper, normal and fair use of the respondent's mark and whether confusion exists: McCorquodale at [52]-[53] and [60] in particular. See also, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1954) 91 CLR 592 at 494-495, Registrar of Trade Marks v Woolworths (Woolworths Metro) [1999] FCA 1020 ; (1999) 45 IPR 411 at [50] and Johnson &amp; Johnson v Kalnin (1993) 26 IPR 435 at 438.
Case: Pfizer Products Inc v Karam (2006) 70 IPR 599
Outcome: referred to
On the other hand, Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 was of the view that the opponent has simply to establish a ground of opposition; not clearly establish a ground. 10 I need not enter upon this controversy, because the outcome of the appeal does not differ according to which approach is adopted. 11 The applicant's case was primarily based on ss 43 and 60. Section 43 provides: "An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion."
Case: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1961] HCA 75 ; (1963) 109 CLR 407
Outcome: applied
Customers are not to be credited with any "high perception or habitual caution". On the other hand, "exceptional carelessness or stupidity may be disregarded": Australian Woollen Mills Limited v. F. S. Walton &amp; Co Ltd ( Woollen Mills ) [1937] HCA 51 ; (1937) 58 CLR 641 at 658 and Woolworths Metro at [49]. In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd ( Shell ) [1961] HCA 75 ; (1963) 109 CLR 407 at 410 the High Court said that deceptive similarity must be considered against the "background of the usages in the particular trade." See also Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353 at 362 per Mason J.
Case: MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561
Outcome: cited
The Full Court held in favour of Rosemount on the basis that the second element of both marks - 'Grace' and 'Gold' - were "peculiar and distinctive", sounding different and evoking quite distinct impressions: Henschke at [57]. In applying the relevant tests, the Court considered the characteristics of involved and uninvolved consumers in the market, saying at [41]-[42]: "So, in this case, no doubt it was relevant to know that the wine market is a crowded one but that, although names incorporating topographical or geographical references are common, 'Hill of ...' is almost unique. Equally, we see no reason to doubt that the characteristics of consumers of wine, and of particular categories of consumers, were relevant; so too was the way in which wine is marketed, including -- for example -- the way wines are commonly described in restaurant wine lists. The significance of surrounding circumstances of that nature was discussed in the judgment of the Full Court in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 at 245 6; 42 IPR 561: such circumstances provide the context for consideration of the question whether a near resemblance between two marks is likely to deceive or cause confusion. " (Emphasis added)
Case: CA Henschke &amp; Co v Rosemount Estates Pty Ltd (2001) 52 IPR 42
Outcome: applied
Second, involved and uninvolved purchasers of bourbon and scotch whisky products review product labels. This is the fair and normal way in which consumers behave. In this case, confusion is mitigated by the circumstances in which such products are bought and sold. Bourbon products are typically labelled as bourbon, bourbon whiskey or Tennessee whiskey. Importantly, a consumer of these products must be 18 years of age. Bourbon products are much more expensive than impulse products such as soft drinks and confectionary: cf. All-Fect at [41] and Shanahan's Australian Law of Trade Marks &amp; Passing Off 3 rd ed (Shanahan), 176 and 211-212. Purchasers of alcohol generally tend to be discerning in their purchasing habits: cf Henschke &amp; Co v Rosemount Estates Pty Ltd ( Henschke ) (2001) 52 IPR 42 and Shanahan at 211-212. Where goods are denoted as being from a particular country, this constitutes another factor that reduces the possibility of confusion: Green's Application (1946) 64 RPC 14. 68 A more recent decision, not dissimilar to the present case, is Henschke , albeit an infringement case. The marks in issue were: &#8226; Hill of Grace (owned by Henschke, being the registered mark used on bottles of wine) &#8226; Hill of Gold (owned by Rosemount, being the alleged infringing mark used on bottles of wine). 69 The Full Court held in favour of Rosemount on the basis that the second element of both marks - 'Grace' and 'Gold' - were "peculiar and distinctive", sounding different and evoking quite distinct impressions: Henschke at [57]. In applying the relevant tests, the Court considered the characteristics of involved and uninvolved consumers in the market, saying at [41]-[42]: "So, in this case, no doubt it was relevant to know that the wine market is a crowded one but that, although names incorporating topographical or geographical references are common, 'Hill of ...' is almost unique. Equally, we see no reason to doubt that the characteristics of consumers of wine, and of particular categories of consumers, were relevant; so too was the way in which wine is marketed, including -- for example -- the way wines are commonly described in restaurant wine lists. The significance of surrounding circumstances of that nature was discussed in the judgment of the Full Court in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 at 245 6; 42 IPR 561: such circumstances provide the context for consideration of the question whether a near resemblance between two marks is likely to deceive or cause confusion. " (Emphasis added)
Case: Registrar of Trade Marks v Woolworths [1999] FCA 1020 ; (1999) 45 IPR 411
Outcome: applied
Whether there is a likelihood of deception or confusion is to be answered "not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered": Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353 at 362. Here, the GLENN OAKS mark is the relevant mark in suit. The surrounding circumstances provide guidance as to what is proper, normal and fair use of the respondent's mark and whether confusion exists: McCorquodale at [52]-[53] and [60] in particular. See also, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1954) 91 CLR 592 at 494-495, Registrar of Trade Marks v Woolworths (Woolworths Metro) [1999] FCA 1020 ; (1999) 45 IPR 411 at [50] and Johnson &amp; Johnson v Kalnin (1993) 26 IPR 435 at 438.
Case: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1954) 91 CLR 592
Outcome: applied
Whether there is a likelihood of deception or confusion is to be answered "not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered": Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353 at 362. Here, the GLENN OAKS mark is the relevant mark in suit. The surrounding circumstances provide guidance as to what is proper, normal and fair use of the respondent's mark and whether confusion exists: McCorquodale at [52]-[53] and [60] in particular. See also, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1954) 91 CLR 592 at 494-495, Registrar of Trade Marks v Woolworths (Woolworths Metro) [1999] FCA 1020 ; (1999) 45 IPR 411 at [50] and Johnson &amp; Johnson v Kalnin (1993) 26 IPR 435 at 438.
Case: Australian Woollen Mills Limited v. F. S. Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641
Outcome: applied
Customers are not to be credited with any "high perception or habitual caution". On the other hand, "exceptional carelessness or stupidity may be disregarded": Australian Woollen Mills Limited v. F. S. Walton &amp; Co Ltd ( Woollen Mills ) [1937] HCA 51 ; (1937) 58 CLR 641 at 658 and Woolworths Metro at [49]. In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd ( Shell ) [1961] HCA 75 ; (1963) 109 CLR 407 at 410 the High Court said that deceptive similarity must be considered against the "background of the usages in the particular trade." See also Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353 at 362 per Mason J. 62 Third, there is no evidence that the GLENN OAKS mark would be used or would be likely to be used on a bottle of bourbon labelled solely as 'whisky' or 'whiskey'. While that does not limit the prospective use of a label of this nature, I infer from the absence of such evidence that such use would not be in the fair and normal course: Woollen Mills at 658, Woolworths Metro at [49] and All-Fect at [41]. In my view, the hypothetical scenario that the applicant proffers is one that will not, in all likelihood, eventuate. It cannot, therefore, lead to consumer confusion for the purposes of the Act. However, to cover this hypothetical case, the Court's order will state that bourbon in the statement of goods does not include bourbon which is labelled only as 'whiskey' or 'whisky'. 67 That passage was cited with approval in Cooper Engineering Co. Pty Ltd v Sigmund Pumps Limited [1952] HCA 15 ; (1952) 86 CLR 536 at 538 and in Woollen Mills at 658, where Dixon and McTiernan JJ described the comparative analysis as follows: "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 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 course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight."
Case: Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353
Outcome: cited
Whether there is a likelihood of deception or confusion is to be answered "not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered": Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353 at 362. Here, the GLENN OAKS mark is the relevant mark in suit. The surrounding circumstances provide guidance as to what is proper, normal and fair use of the respondent's mark and whether confusion exists: McCorquodale at [52]-[53] and [60] in particular. See also, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1954) 91 CLR 592 at 494-495, Registrar of Trade Marks v Woolworths (Woolworths Metro) [1999] FCA 1020 ; (1999) 45 IPR 411 at [50] and Johnson &amp; Johnson v Kalnin (1993) 26 IPR 435 at 438. 55 Customers are not to be credited with any "high perception or habitual caution". On the other hand, "exceptional carelessness or stupidity may be disregarded": Australian Woollen Mills Limited v. F. S. Walton &amp; Co Ltd ( Woollen Mills ) [1937] HCA 51 ; (1937) 58 CLR 641 at 658 and Woolworths Metro at [49]. In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd ( Shell ) [1961] HCA 75 ; (1963) 109 CLR 407 at 410 the High Court said that deceptive similarity must be considered against the "background of the usages in the particular trade." See also Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353 at 362 per Mason J.
Case: Dunn's Trade Mark (1890) 7 RPC 311
Outcome: cited
In Dunn's Trade Mark (1890) 7 RPC 311 at 318-319 Lord Macnaghten said that a tribunal should refuse to register "words which involve a misleading allusion or suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood". His Lordship's comments were referable to the principle underlying a predecessor of s 43. In two Trade Mark Office decisions which applied Lord Macnaghten's observations, connotation was said to be more than a mere "allusion" or "suggestion": see Aktion Zahnfreundlich v Suntory Limited (1998) 42 IPR 593 and Effem Foods Pty Ltd v Star-Kist Foods, Inc (2000) 50 IPR 121.
Case: Suntory Limited v Aktion Zahnfreundlich [1998] 42 IPR 593
Outcome: cited
In Dunn's Trade Mark (1890) 7 RPC 311 at 318-319 Lord Macnaghten said that a tribunal should refuse to register "words which involve a misleading allusion or suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood". His Lordship's comments were referable to the principle underlying a predecessor of s 43. In two Trade Mark Office decisions which applied Lord Macnaghten's observations, connotation was said to be more than a mere "allusion" or "suggestion": see Aktion Zahnfreundlich v Suntory Limited (1998) 42 IPR 593 and Effem Foods Pty Ltd v Star-Kist Foods, Inc (2000) 50 IPR 121.
Case: Effem Foods Pty Ltd v Star-Kist Foods, Inc [2000] 50 IPR 121
Outcome: cited
In Dunn's Trade Mark (1890) 7 RPC 311 at 318-319 Lord Macnaghten said that a tribunal should refuse to register "words which involve a misleading allusion or suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood". His Lordship's comments were referable to the principle underlying a predecessor of s 43. In two Trade Mark Office decisions which applied Lord Macnaghten's observations, connotation was said to be more than a mere "allusion" or "suggestion": see Aktion Zahnfreundlich v Suntory Limited (1998) 42 IPR 593 and Effem Foods Pty Ltd v Star-Kist Foods, Inc (2000) 50 IPR 121.
Case: Johnson &amp; Johnson v Kalnin (1993) 26 IPR 435
Outcome: cited
Whether there is a likelihood of deception or confusion is to be answered "not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered": Berlei v Hestia Industries Ltd [1973] HCA 43 ; (1973) 129 CLR 353 at 362. Here, the GLENN OAKS mark is the relevant mark in suit. The surrounding circumstances provide guidance as to what is proper, normal and fair use of the respondent's mark and whether confusion exists: McCorquodale at [52]-[53] and [60] in particular. See also, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1954) 91 CLR 592 at 494-495, Registrar of Trade Marks v Woolworths (Woolworths Metro) [1999] FCA 1020 ; (1999) 45 IPR 411 at [50] and Johnson &amp; Johnson v Kalnin (1993) 26 IPR 435 at 438.
Case: Carlton &amp; United Breweries v Royal Crown (2001) 53 IPR 599
Outcome: cited
First, for both involved and uninvolved purchasers of bourbon products, the words Glen or Glenn is more likely to be associated with a person's name than with a place denoting Scottish origin. Most uninvolved scotch whisky consumers, particularly those of pre-mixed drinks, would also think of a person's name before thinking of a Scottish place. The LMMA Report indicates that scotch whisky drinkers prefer pre-mixed drinks. There was no evidence of any pre-mixed drinks with the name Glen or Glenn. Involved scotch whisky consumers are in the same position. Consumers in the involved malt whisky class are discerning in their choice and are very knowledgeable about the products they purchase. Purchasing habits are more refined, which lessens the chance of confusion. Glen or Glenn, as a person's name, overshadows the connotation propounded by the applicant. Accordingly, that connotation is not strong enough to cause "enough persons in the relevant public to be deceived or confused": Carlton &amp; United Breweries v Royal Crown (2001) 53 IPR 599 at 606; The Kendall Co v Mulsyn Paint and Chemicals ( Kendall ) [1963] HCA 1 ; (1963) 109 CLR 300 at 305.
Case: The Kendall Co v Mulsyn Paint and Chemicals [1963] HCA 1 ; (1963) 109 CLR 300
Outcome: applied
First, for both involved and uninvolved purchasers of bourbon products, the words Glen or Glenn is more likely to be associated with a person's name than with a place denoting Scottish origin. Most uninvolved scotch whisky consumers, particularly those of pre-mixed drinks, would also think of a person's name before thinking of a Scottish place. The LMMA Report indicates that scotch whisky drinkers prefer pre-mixed drinks. There was no evidence of any pre-mixed drinks with the name Glen or Glenn. Involved scotch whisky consumers are in the same position. Consumers in the involved malt whisky class are discerning in their choice and are very knowledgeable about the products they purchase. Purchasing habits are more refined, which lessens the chance of confusion. Glen or Glenn, as a person's name, overshadows the connotation propounded by the applicant. Accordingly, that connotation is not strong enough to cause "enough persons in the relevant public to be deceived or confused": Carlton &amp; United Breweries v Royal Crown (2001) 53 IPR 599 at 606; The Kendall Co v Mulsyn Paint and Chemicals ( Kendall ) [1963] HCA 1 ; (1963) 109 CLR 300 at 305.
Case: Green' Appn (1946) 64 RPC 14
Outcome: cited
Second, involved and uninvolved purchasers of bourbon and scotch whisky products review product labels. This is the fair and normal way in which consumers behave. In this case, confusion is mitigated by the circumstances in which such products are bought and sold. Bourbon products are typically labelled as bourbon, bourbon whiskey or Tennessee whiskey. Importantly, a consumer of these products must be 18 years of age. Bourbon products are much more expensive than impulse products such as soft drinks and confectionary: cf. All-Fect at [41] and Shanahan's Australian Law of Trade Marks &amp; Passing Off 3 rd ed (Shanahan), 176 and 211-212. Purchasers of alcohol generally tend to be discerning in their purchasing habits: cf Henschke &amp; Co v Rosemount Estates Pty Ltd ( Henschke ) (2001) 52 IPR 42 and Shanahan at 211-212. Where goods are denoted as being from a particular country, this constitutes another factor that reduces the possibility of confusion: Green's Application (1946) 64 RPC 14.