Case: C A Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 , 52 IPR 42
Outcome: followed
The comparison, it should be noted, is different to that undertaken in a passing off action where the plaintiff points to the goodwill built up around a mark by reason of prior use and then points to the conduct of the defendant as leading to deception, or perhaps merely confusion, and the consequent damage to that goodwill of the plaintiff: Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 49 FCR 89 at 128 9 per Gummow J. Essentially what is required when considering whether a mark is deceptively similar to another is a comparison between the mark of the registered owner and that of the alleged infringer: C A Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at [44] , [2000] FCA 1539 ; 52 IPR 42 at 62. Ryan, Branson and Lehane JJ there considered that it was not appropriate to undertake a wider inquiry of the kind undertaken in a passing off action or in a proceeding in which a contravention of Part V of the Trade Practices Act 1974 (Cth) is alleged. 198 The discretion presently conferred by s 101(3) of the 1995 Act, it has been said, confers a " broad discretion ": C A Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at [72] , [2000] FCA 1539 ; 52 IPR 42 at 73. And it is a discretion, it is considered, no longer constrained by any requirement to establish " exceptional circumstances "; it is a discretion which may be exercised " when it is reasonable to do so ": Kowa Co Ltd v Organon [2005] FCA 1282 , 223 ALR 27. Lander J there indicated that he was of the view that it was not reasonable not to remove the mark in issue. Of the discretion, his Honour concluded: [97] ... There are significant differences in the section considered by the Court of Appeal in Lyons [(1959) 76 RPC 120] and s 101(3). In the English section, regard had to be had to the bona fide use of the trade mark during the relevant period. No such regard is had in s 101(3). It is always dangerous to have regard to a statement of principle in relation to the exercise of a discretion in a section in an Act which is not in pari materia with a section of a second Act for the purpose of considering the way in which a discretion should be exercised in that second Act. [98] In Upjohn [(1998) 42 IPR 576] it was said that the power may be applied in "exceptional circumstances". Section 101(3) does not say that. There is no warrant to read the expression "exceptional circumstances" into the subsection. That would be to give the subsection a construction contrary to its express terms. In my opinion, the discretion which is to be exercised under s 101(3) is to be exercised as the subsection itself says, "when it is reasonable to do so". To suggest that the party against whom the non-use has been put in a case such as this should establish exceptional circumstances is to put too high a hurdle in that party's path. 207 The present proceedings, it is considered, stand in stark contrast to those confronting both the trial judge and the Full Court in C A Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 , 52 IPR 42. The trial judge there had indicated that he would have allowed the mark to remain registered, even had it not been used. The registered proprietor of the mark had died in 1972 and no steps had been taken to transfer the mark until 1997. The beneficial interest in the mark had at all times resided directly or indirectly in members of the Henschke family. The only " formal " deception which could be pointed to was an impression that it may have been the partnership, rather than the executors, who owned the " Hill of Grace " trade mark. The persons using the mark were the persons who gave the mark its value. See also: Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 at [223] [225], [2008] FCA 100 ; 75 IPR 478 at 503 per Jacobson J.