Case: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Outcome: followed
It is considered that the impression which would be left on the mind of a person of ordinary intelligence would be that there was a deceptive similarity as between the mark used by Gallo Winery and that used by Lion Nathan and as pleaded in its Amended Defence . The similarity is such that persons would wonder whether the products came from the same source; an actual probability of deception need not be established: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Kitto J was there dealing with an application for registration of a trade mark and the statutory phrase " likely to deceive " and observed (at 595): ... It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough--for there must be a real, tangible danger of its occurring ... --it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. ... No intention to deceive or cause confusion is required and there is no element of culpability to be inferred from the word " deceive ": Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [39] , [1999] FCA 1721 ; 96 FCR 107 at 122 per Black CJ, Sundberg and Finkelstein JJ. 68 In resolving this question, the fact that goods serve different purposes is not conclusive; nor is any one particular consideration conclusive. Assistance, however, has been provided as to those matters which may be taken into account: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ there, at 606 7, gave content to the task to be undertaken as follows: The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods... There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application [(1946) 63 RPC 59]. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application [(1946) 63 RPC 59] , Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description'": In re an Application by John Crowther &amp; Sons (Milnsbridge) Ltd. [(1948) 65 RPC 369 at 372]. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt &amp; Colman (Australia) Ltd. v. Boden [1945] HCA 12 ; [(1945) 70 CLR 84 at 94] when he said: "What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments".