case_title: Colorado Group Ltd v Standbags Group Pty Ltd [2007] FCAFC 184 , 243 ALR 127

case_text: Lion Nathan placed reliance upon Colorado Group Ltd v Standbags Group Pty Ltd [2007] FCAFC 184 , 164 FCR 506. Just as in the Colorado case, Lion Nathan contends that the image cannot be divorced from the word such that the words alone had the capacity to distinguish the wine. In reaching a like conclusion in the Colorado case, Allsop J concluded: [110] Here, though the evidence was less than precise as to what the mark plus device use was by CGL, the examples in evidence reveal an important, perhaps even dominant, effect of the word "Colorado", but always with a device. That device was part of the trade mark use; it had a capacity to distinguish. It did not, in my view, operate as a separate mark, nor as a mere descriptor. It operated as part of a combination with the word "Colorado", in part reinforcing it. In these circumstances, I agree with the primary judge's concluded view that though the word "Colorado" is important in the impression, it cannot be said to have been used alone, rather than as part of a composite mark (with the device) to show origin. Kenny and Gyles JJ gave separate judgments but also agreed with Allsop J. 186 Although it may be accepted that a combination of a word and an image may in some circumstances strip, in the mind of a consumer, the association with a trade source previously associated with the word alone, such is not the present case. Rejected is the contention of Lion Nathan that -- if there was a use of a trade mark during the non-use period -- it was the use of a mark other than the word " BAREFOOT " . If there was a use of a mark during the non-use period, the addition of the image of the bare foot did not have the consequence that the word itself as a trade mark was not also being used. 187 One of the final contentions advanced by Gallo Winery was that any such use as there was of the trade mark during the non-use period was a use " in good faith " within the meaning of s 100(1)(c) of the 1995 Act. 188 Lion Nathan denies that any use was a use " in good faith ". Upon its analysis, during the non-use period there were 59 bottles provided to customers, of which 18 were given away free. Forty-three bottles, according to their analysis, were provided to Centro Euro Wines .


case_outcome: considered

case_text: It was no part of the case presently advanced by Gallo Winery to rely upon its international reputation or to advance any claim founded upon passing off: cf Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302. 212 It is not considered that either at May 2004 or May 2007, or at present, that it would be " reasonable " to allow the trade mark of Gallo Winery to remain registered. 213 And there are no " special facts and circumstances " which warrant an exercise of discretion in favour of Gallo Winery . No " sufficient reason " has emerged which would warrant leaving the mark on the Register.


case_outcome: followed

case_text: It is necessary to make an attempt to estimate the effect or impression produced on the mind of persons of ordinary intelligence and memory. It is the impression or recollection which is carried away and retained that is necessarily the basis of any mistaken belief that the challenged mark is the same: Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ. See also: Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [84] [89] per Sundberg J. The " recollection " may be imperfect: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 at [87] , [2004] FCAFC 196 ; 209 ALR 1 at 21 per Moore, Sackville and Emmett JJ. 62 The word " RADLER " is not a word having any meaning found in either the Macquarie or Shorter Oxford Dictionaries. It is a German word and, not being a word of everyday usage in the English language, its use would unquestionably leave an impression on the mind of a person. The word " RADLER ", it is considered, would leave an impression on the mind of a person who knew what the word meant and would leave an even firmer impression upon the mind of a person who had no such knowledge. And it is a word given prominence in the Lion Nathan sign. But those factors either alone or in combination would not be such as to remove the likelihood of deception or confusion. Contrast: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 , 209 ALR 1. 63 An essential feature common to both the mark of Gallo Winery and the sign as pleaded by Lion Nathan remains the word " BAREFOOT " which, it is considered, would leave a considerable impression on the mind of a consumer of ordinary intelligence. Notwithstanding the distinctiveness which the word " RADLER " brings to the sign of Lion Nathan , it would not be sufficient to remove the likelihood of deception otherwise arising. 64 Again, it should be noted, any deceptive similarity with the Gallo Winery mark would not have arisen had Lion Nathan been free to rely upon the combination of words and the image of the bare foot.


case_outcome: cited

case_text: The Applicant accepts that other cases which have resolved whether the goods there in issue were " goods of the same description " are not determinative. But it does contend that some guidance may be gleaned from decisions which have held or suggested that the following are " goods of the same description ": namely, " rum and a rum cocktail or a Daiquiri " (" Daiquiri Rum " Trade Mark [1969] RPC 600 at 609 per Lord Reid, at 613 per Lord Morris, at 615 per Lord Pearce); wines and spirits ( In re Australian Wine Importers' Trade Mark (1889) 6 RPC 311) ; and beer and rum ( In re Turney and Sons' Trade Mark (1893) 11 RPC 37 at 44 5). Of these decisions, it is of significance to note that in the Australian Wine Importers case the Court of Appeal dismissed an appeal from a decision of Kay J. Cotton LJ held at 316: ... Well, it is not confined to the same goods, but it is "the same goods or description of goods ;" and if it were necessary to decide it absolutely on that point, my opinion would be that there was an application for registration with respect to the same description of goods ; because although wine and whiskey, and wine and spirits are in a great many ways considered as different goods, yet we are not considering here how chemists would describe them, but whether manufacturers would describe them as being the same description of goods or not. We find that they are goods which are generally sold by the same persons, and for the purposes of trade may, in some respects, be considered as the same description of goods; for they are both alcoholic, and although there may be differences in them, they may fairly be considered as coming within the same description of goods, though they are not the same goods. ... Lindley LJ similarly concluded at 318 19: Of course one has to look at the trade. One must look at it from a business point of view. They are alcoholic and spirituous. They are sold in this country constantly by the same people. Wine and spirit dealers are common enough in this country, and I am not sure that they are not the same description of goods ; but whether they are or not, it seems to me that they are so uncommonly near the line that we ought not to depart from the view taken by Mr. Justice Kay, and say to the Comptroller, "You must register in favour of these wine merchants a mark which is already on the Register in favour of a spirit merchant who is also a wine merchant." It appears to me that Mr. Justice Kay has taken the right view of the case, and that we ought not to interfere with his Order. These observations disclose, at the very least, that questions of fine judgment may be involved.


case_text: And whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Windeyer J there observed: 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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. [(1951) 68 RPC 103 at] [2], at p. 106. Whether there is substantial identity is a question of fact... In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [38] , [1999] FCA 1721 ; 96 FCR 107 at 121. Black CJ, Sundberg and Finkelstein JJ there observed that the similarities and differences should be noted and the importance of these similarities and differences assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. 59 In reaching this conclusion considerable assistance has been gained from the decision of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227. Polo Textile was there the registered proprietor of the mark " Polo " in respect of manchester, including sheets and towels. It was concluded that Domestic Textile did not avoid infringing that mark by selling bed linen products using the mark " Polo Club ". Burchett J concluded that it was of importance that the distinctive impact of the word " Polo " was likely to affect the mind while the presence or absence of the blander word " Club " may escape notice. See also: de Cordova v Vick Chemical Co (1951) 68 RPC 103.


case_text: Albeit only during the course of closing submissions by Lion Nathan , Gallo Winery supplemented its earlier contentions by placing reliance upon O 11, r 10 of the Federal Court Rules . That rule requires a matter to be specifically pleaded if it " might take the other party by surprise ": Dyno Wesfarmers Ltd v Orica Australia Pty Ltd [1999] FCA 554 , 46 IPR 386 ; Delta Metallics v Hawley-Jacobs t/as Fightboi Health & Fitness Centre [2006] FCA 334 at [8] per Kenny J.


case_title: Dyno Wesfarmers Ltd v Orica Australia Pty Ltd [1999] FCA 554 , 46 IPR 386


case_text: An overseas manufacturer uses a trade mark in Australia if he " projects " his goods into the course of trade in Australia, by means of sales to Australian retail houses, goods bearing his mark and the goods bearing his mark are displayed or offered for sale or sold in Australia: Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1967] HCA 51 ; (1967) 116 CLR 254 at 271. 108 The period of the alleged non-use is said by Lion Nathan to have been from 7 May 2004 to 8 May 2007. 109 Prior to the acquisition of the trade mark in January 2005 by Gallo Winery , there is no evidence that the then registered owner (Mr Michael Houlihan) exported BAREFOOT wine to Australia or caused it to be sold in Australia. And as from January 2005 to May 2007, there is no evidence that Gallo Winery itself exported BAREFOOT wine to Australia or caused it to be sold or offered for sale in Australia. 134 Reliance is placed by Gallo Winery upon both the decision, and the following observations of Windeyer J, in Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd [1967] HCA 51 ; (1967) 116 CLR 254 at 266 7: ... As a proposition of law it is no doubt perfectly correct that the goods when sold and delivered in London no longer belonged to the manufacturer. But when it is said that a trade mark is used to distinguish the goods of one man from those of another, that abbreviated statement obviously does not refer to the goods of the owner of the mark in the sense of goods which he owns or possesses. After the goods have been sold by him his mark may still, using the definition of trade mark in the Act, be used in relation to those goods for the purpose of indicating a connexion in the course of trade between them and him, the registered proprietor of the mark. The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade. ... Reliance is also placed upon the commentary on that decision by the authors of Shanahan's Australian Law of Trade Marks and Passing Off (3 rd ed, 2003). 135 The decision of Windeyer J, it may be noted, was affirmed by Barwick CJ, McTiernan, Taylor and Owen JJ. On appeal their Honours relevantly concluded as follows: By the Act a trade mark means "a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person" and "use" in s. 23 must be understood in this context. Its denotation is not limited by any concept of the physical use of a tangible object and we have no doubt that when an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer. Indeed, in this case, the respondent is the only person who has the right to use the mark and the retailer to whom the goods have been sold for re-sale does not, in any relevant sense, use it.: [1967] HCA 51 ; (1967) 116 CLR 254 at 271. Their Honours also went on to conclude: It is conceded that there is a use of the mark in this country by an overseas proprietor where he advertises his mark in this country. Further, it is conceded that there is a use by such a manufacturer of his mark where the property in the goods sold by him by wholesale to traders in this country does not pass until their arrival into Australia. It would, in our view, be an extraordinary result if the maintenance of the Australian trade mark of an overseas manufacturer who is projecting goods of his manufacture on to the Australian market by means of sales to retail houses here can be made to depend upon whether the property in the goods the subject of such sales passes on shipment or upon or after their arrival in Australia.: [1967] HCA 51 ; (1967) 116 CLR 254 at 271 2. See also: Colman W J, Use of a Trade Mark in Australia (1968 1971) 6 Syd LR 52. 136 The commentary on that decision in Shanahan's Australian Law of Trade Marks and Passing Off is as follows: Use through intermediaries [2.175] If a trader uses a sign to distinguish the origin of a product, that sign should continue to do so as the product passes through the hands of others on its way to the ultimate consumer. Each time that the product is "traded" there will be, for the purposes of the 1995 Act, a use of the sign by the first trader to distinguish that trader's dealing with the product. The "ultimate consumer", submits Gallo Winery, was the Australian purchaser. 140 In Estex Clothing the London manufacturer knew that its goods had been sold into Australia. But Gallo Winery contends that the result in that decision would have been the same even had the manufacturer not known to whom the goods were sold or the market into which they were to be sold. So much, contends Gallo Winery , is supported by the reliance placed by Windeyer J on Jackson & Co v Napper (1886) 35 Ch D 162 , 4 RPC 45 at 57 9, a decision which Windeyer J observed " contains much that is instructive ". In a passage commencing at 178, Stirling J observed: The case as to the other five classes of goods rests on different considerations, and raises the question what is meant by the user of a trade-mark in England. Now, in considering that, I do not think I can do better than refer to what Lord Westbury said in McAndrew v. Bassett [4 DJ&S 380] with respect to the essential ingredients of a trade-mark. He says [4 DJ&S 384]: "An element of the right to the property in a trade-mark may be represented as being the fact of the article being in the market as a vendible article, with that stamp or trade-mark, at the time when the defendants imitate it. The essential ingredients for constituting an infringement of that right probably would be found to be no other than these : first, that the mark has been applied by the plaintiffs properly (that is to say), that they have not copied any other person's mark, and that the mark does not involve any false representation ; secondly, that the article so marked is actually a vendible article in the market ; and, thirdly, that the defendants, knowing that to be so, have imitated the mark for the purpose of passing in the market other articles of a similar description." It seems to me, according to that passage from Lord Westbury's judgment, that the trade-mark has been used in England if you find that the articles marked with it have been actually vendible articles in the market in England ; and that is the test which I proceed to apply to the various classes of goods which remain. Gallo Winery's contention is that knowledge or intention on the part of the registered proprietor is not determinative; that which matters is whether its goods, to which its trade mark had been applied, were on the market at all. The trade mark, it is contended, is used in Australia if the product to which the mark is applied is on the Australian market. 141 The decision in Estex Clothing , it is considered, does not support such a contention so widely expressed. 142 Rejected in Estex Clothing was the proposition that the fact that property had passed in the goods outside of Australia was sufficient in itself to establish that there had not been a use of the trade mark in Australia. And, as is correctly submitted by Lion Nathan, if the sale by the retail house of the goods bearing the overseas trader's mark was sufficient on its own to constitute use by the overseas trader, there would have been no reason for the Full Court to have gone on to emphasise the acts of the overseas trader in projecting the goods into the Australian market. 143 In the circumstances of the present proceedings, and leaving intention or knowledge aside, there are no objective criteria comparable to those that existed in Estex Clothing such that it can be concluded that the registered proprietor of the trade mark " projected " its goods into any market other than Germany. 144 Such authorities as have discussed Estex Clothing have not confronted the factual situation where goods have been exported to one country and thereafter arrived in Australia without the knowledge of the registered owner of the trade mark, or without any agreement or understanding being in place whereby the goods exported were to make their way or may make their way into Australian trade, or without any objective criteria such that it could be concluded that goods had been projected into the Australian market. 145 In Estex Clothing the goods exported were being forwarded from England to Australia, and it is not considered that the language employed by their Honours should be construed as contemplating anything beyond what they literally said. By exporting the goods from England into Australia the " overseas manufacturer projects into the course of trade in this country ... goods bearing his mark ". Such other authorities also seem to contemplate that there has to be an export of goods from overseas into Australia. Thus, in Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490 , 163 FCR 530 , Tamberlin J referred to Estex Clothing and summarised its effect as follows: [42] ... Put another way, where an overseas company has registered a trade mark in Australia for products it exports to the Australian market, then it is that company, when and if it distributes the goods into Australia, which can be said to have "used" its trade mark. See also: Asia Television Ltd v Yau's Entertainment Pty Ltd (No 2) [2000] FCA 838 at [9] , [2000] FCA 838 ; 49 IPR 264 at 268 per Gyles J. 147 Estex Clothing , it is considered, provides no support for a conclusion that the export of wine from the United States into Germany in February 2001 was also the projection in a comparable manner of that wine into the Australian market as it occurred over a year later in July 2002. 148 This conclusion is consistent with the interpretation of Estex Clothing provided by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670. His Honour there referred to Estex Clothing and continued (at 688): It was argued that Estex Clothing Manufacturers Pty. Ltd. v. Ellis and Goldstein Ltd. decided that a retailer who sold imported goods bearing an Australian registered trade mark did not use the mark, and that therefore a "distributor" did not use a mark which was already on the goods. In my opinion the Estex Case is not authority for that proposition. It is authority for the proposition that the foreign owner of an Australian mark uses it in Australia when he sells goods for delivery abroad to Australian retailers and those retailers import them into Australia for sale and there sell them. It demonstrates that such a situation does not differ from that where he sells the goods for delivery in Australia to the retailer or where he advertises the goods in Australia. ...


case_text: The discretion to allow a mark which has not been used to remain registered is that now set forth in s 101(3) of the 1995 Act. That sub-section provides as follows: If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established. The discretion, it has been said, requires there to be " special facts and circumstances, or an overriding question of public interest ": Figgins Holdings v Beltrami SpA (1998) 46 IPR 411 at 418 19.


case_text: A " trade mark " is defined by s 17 of the Trade Marks Act 1995 (Cth) as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. The function of a trade mark, it has repeatedly been said, is "to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods -- to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market": In re Powell's Trade Mark [1893] 2 Ch 388 at 403 4 per Bowen LJ. Use "as a trade mark" in s 120(1) is use of the mark as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , [1999] FCA 1721 ; 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] per Sundberg J. See also: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407 at 424 5 per Kitto J; Rothnie W, Gray Goods Billow onto the Open Main: Section 123 of the Trade Marks Act 1995 (1996) 7 AIPJ 87 at 89 90. 54 It is necessary to make an attempt to estimate the effect or impression produced on the mind of persons of ordinary intelligence and memory. It is the impression or recollection which is carried away and retained that is necessarily the basis of any mistaken belief that the challenged mark is the same: Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ. See also: Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [84] [89] per Sundberg J. The " recollection " may be imperfect: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 at [87] , [2004] FCAFC 196 ; 209 ALR 1 at 21 per Moore, Sackville and Emmett JJ.


case_title: Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 , 75 IPR 478

case_text: 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 & 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.


case_title: Hermes Trade Mark [1982] RPC 425

case_text: Reliance is placed by Gallo Winery upon the obiter comments of Falconer J in Hermes Trade Mark [1982] RPC 425. In that decision an application was made for the removal of the trade mark " Hermes ", in relation to watches, for non-use during a five year period. That application was rejected. Falconer J nevertheless went on to observe that, had it been necessary to exercise the statutory discretion conferred by s 52 of the Trade Marks Act 1938 (UK), his Honour would have allowed the mark to remain on the Register. Relevant to that conclusion were five factors: there had been no abandonment of the trade mark; the registered proprietors still had a residual reputation in the mark; there had been sales by the registered proprietors of watches since the relevant period ended; the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and the registered proprietors were not aware of the applicant's sales under the " Hermes " mark. 203 That list of considerations is, obviously enough, not an exhaustive catalogue of factors that may be taken into account. But it does provide some assistance. No attempt was made in the present proceedings to establish any reputation or sale of Gallo Winery's wines in Australia under the trade mark BAREFOOT prior to May 2004. No question of any " residual reputation " thus arises in the present proceedings by reason of earlier sales in Australia. But there have been sales in Australia since May 2007 of Gallo Winery's wines using the BAREFOOT trade mark and there certainly has been no intention on the part of Gallo Winery to abandon its use of that mark. And Lion Nathan knew that there was a risk that Gallo Winery may have been able to establish a use of its mark during the three year period 2004 2007. 204 As is frequently the case with any exercise of discretion, the considerations relevant to the exercise are seldom all one way.


case_title: In re Australian Wine Importers' Trade Mark (1889) 6 RPC 311


case_text: A " trade mark " is defined by s 17 of the Trade Marks Act 1995 (Cth) as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. The function of a trade mark, it has repeatedly been said, is "to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods -- to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market": In re Powell's Trade Mark [1893] 2 Ch 388 at 403 4 per Bowen LJ. Use "as a trade mark" in s 120(1) is use of the mark as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , [1999] FCA 1721 ; 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] per Sundberg J. See also: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407 at 424 5 per Kitto J; Rothnie W, Gray Goods Billow onto the Open Main: Section 123 of the Trade Marks Act 1995 (1996) 7 AIPJ 87 at 89 90.


case_title: In re Turney and Sons' Trade Mark (1893) 11 RPC 37


case_text: In Estex Clothing the London manufacturer knew that its goods had been sold into Australia. But Gallo Winery contends that the result in that decision would have been the same even had the manufacturer not known to whom the goods were sold or the market into which they were to be sold. So much, contends Gallo Winery , is supported by the reliance placed by Windeyer J on Jackson & Co v Napper (1886) 35 Ch D 162 , 4 RPC 45 at 57 9, a decision which Windeyer J observed " contains much that is instructive ". In a passage commencing at 178, Stirling J observed: The case as to the other five classes of goods rests on different considerations, and raises the question what is meant by the user of a trade-mark in England. Now, in considering that, I do not think I can do better than refer to what Lord Westbury said in McAndrew v. Bassett [4 DJ&S 380] with respect to the essential ingredients of a trade-mark. He says [4 DJ&S 384]: "An element of the right to the property in a trade-mark may be represented as being the fact of the article being in the market as a vendible article, with that stamp or trade-mark, at the time when the defendants imitate it. The essential ingredients for constituting an infringement of that right probably would be found to be no other than these : first, that the mark has been applied by the plaintiffs properly (that is to say), that they have not copied any other person's mark, and that the mark does not involve any false representation ; secondly, that the article so marked is actually a vendible article in the market ; and, thirdly, that the defendants, knowing that to be so, have imitated the mark for the purpose of passing in the market other articles of a similar description." It seems to me, according to that passage from Lord Westbury's judgment, that the trade-mark has been used in England if you find that the articles marked with it have been actually vendible articles in the market in England ; and that is the test which I proceed to apply to the various classes of goods which remain. Gallo Winery's contention is that knowledge or intention on the part of the registered proprietor is not determinative; that which matters is whether its goods, to which its trade mark had been applied, were on the market at all. The trade mark, it is contended, is used in Australia if the product to which the mark is applied is on the Australian market.


case_text: When addressing the requirement for a " use in good faith " for the purposes of the former s 23(1)(b) in the Trade Marks Act 1955 (Cth), in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 354, Gummow J observed: Section 23(1)(b) of the Act also uses the expression "use in good faith" as a criterion for expungement for non-use. There is, in relation to the comparable provisions in the Trade Marks Act 1938 (Eng), authority to the effect that in order to qualify as such use there must be a real or genuine use in a commercial sense, rather than colourable activity and "token" use designed to lead trade rivals to think that the registered proprietor was using its mark in a way which gave it the protection of the legislation: see Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72 ; KODIAK Trade Mark [1990] FSR 49; D R Shanahan, Australian Law of Trade Marks and Passing Off (2nd ed, 1990), pp 272-274. 104 If an allegation is made that there has been a non-use of a trade mark under s 92(4)(b), the burden is on the opponent to rebut the allegation of non-use: s 100(1)(c). And that burden can be discharged if there has been " an obstacle to the use of the trade mark ": s 100(3)(c). 105 Section 100 provides in relevant part as follows: Burden on opponent to establish use of trade mark etc. (1) In any proceedings relating to an opposed application, it is for the opponent to rebut: ... (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services. (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if: ... (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period. See: McKeough J, Stewart A and Griffith P, Intellectual Property in Australia (3 rd ed, 2004) at [19.76].


case_outcome: distinguished

case_text: In addition to contending that the Gallo Winery trade mark should be removed for non-use, the Respondent further maintains (at least in its written submissions) that the " sign " that it uses in marketing its beer is the words " BAREFOOT RADLER " and the image of a bare foot; denies that the sign BAREFOORT RADLER is " substantially identical or deceptively similar to " Gallo Winery's BAREFOOT trade mark; denies that the goods in relation to which the sign is used are " goods of the same description as wines " and contends that its use is " not likely to deceive or cause confusion ". 23 The resolution of these competing submissions involves a resolution of the following questions, namely: (i) what is the " sign " being used as a trade mark by Lion Nathan ? (ii) is the " sign " being used by Lion Nathan " substantially identical with " the trade mark of Gallo Winery ? (iii) is the " sign " being used by Lion Nathan " deceptively similar to " the trade mark of Gallo Winery ? (iv) are the radler beers of Lion Nathan " goods of the same description " as the BAREFOOT wine of Gallo Winery ? (v) is the manner in which Lion Nathan uses its sign " not likely to deceive or cause confusion "? (vi) has there been a " non-use " of the BAREFOOT trade mark during the period from 7 May 2004 to 8 May 2007? The resolution of this question, as it was advanced in submissions, separately involves a consideration as to: (a) whether there were sales of the BAREFOOT wine during the non-use period; (b) whether the wine was offered for sale during the non-use period; (c) if the wine was sold or offered for sale during the non-use period, whether there was a use of the trade mark by Barefoot Cellars as an authorised user; (d) if the wine was sold or offered for sale during the non-use period, whether there was a use of the trade mark by Beach Avenue Wholesalers as an authorised user; (e) whether the negotiations as between Gallo Winery and McWilliams Wines during the non-use period constituted a use of the trade mark; (f) whether there was an " obstacle " to the use of the Gallo Winery trade mark; (g) even if there was a use, which mark was in fact being used; and (h) whether any use was a use " in good faith ". (vii) if there has been a " non-use " of the trade mark by Gallo Winery , should the discretion conferred by s 101(3) of the 1995 Act be exercised so as to allow its trade mark to remain on the Register? Depending upon the manner in which one or other of these questions may be answered, other questions may not necessarily have to be answered. With the concurrence of the parties, however, the course has been taken of answering each of these questions should the matter proceed further. 24 Section 120(2) dictates that Lion Nathan infringes the trade mark of Gallo Winery if Lion Nathan " uses as a trade mark a sign that is substantially identical with, or deceptively similar to " the trade mark of Gallo Winery . The term " sign " is itself broadly defined by s 6 as including: ... the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. 25 The trade mark of Gallo Winery is the word " BAREFOOT ". 26 In the present proceedings there is a dispute at the outset as to the ability of Lion Nathan to rely upon any sign other than the word " BAREFOOT " or the combination of words " BAREFOOT RADLER ". The dispute centres upon whether the Amended Defence so confines Lion Nathan or whether Lion Nathan is otherwise free to contend that its sign also incorporates the image of a bare foot. 31 Lion Nathan contends that as a matter of fact, the " sign " which it is using for the purposes of s 120 is a combination of the words and the image -- and further contends that such a finding of fact is not to be denied by the pleadings. Its position is that: (i) its Amended Defence is simply a response to the allegations being made against it and there was no obligation or requirement placed upon it to positively set forth what was the " sign " in fact being used by it for the purposes of s 120; and (ii) any unfairness to the Applicant is removed by reason of its written Outline of Opening Submissions , available at the outset of the hearing, which stated that: [46] The Court should find that the trade mark used by the Respondent to distinguish the Respondent's beer from other beers on the market comprises the words BAREFOOT RADLER and an image of a bare foot. ... 32 Notwithstanding paragraph [46] of its Outline of Opening Submissions , it is considered that the Amended Defence confines Lion Nathan to the position that the " sign " upon which it places reliance for the purposes of defending the current proceedings is the combination alone of the words " BAREFOOT RADLER ". Albeit in response to the allegation in the Further Amended Statement of Claim that it has infringed Gallo Winery's BAREFOOT trade mark, the Amended Defence states in part that it " denies that the sign to be used by the Respondent, BAREFOOT RADLER, is substantially identical or deceptively similar to the Applicant's BAREFOOT Trade Mark ". This can only be construed as conveying to the Applicant at least two things: (i) the position that the Respondent denies that the sign to be used is substantially identical with or deceptively similar to the Applicant's sign; and (ii) the sign " to be used " by the Respondent, and to be relied upon in resisting the Applicant's claim, is the sign it then identifies, namely " BAREFOOT RADLER ". 33 Had the Amended Defence simply denied the infringement being alleged, Lion Nathan may well have been able to advance submissions that the sign to be used was a combination of the words and the image. But the fact is that the Amended Defence goes on to expressly identify the sign which it says is not substantially identical with or deceptively similar to that being relied upon by Gallo Winery , and it identifies that sign as being " BAREFOOT RADLER ". At the very least, that express statement in the Amended Defence is productive of such uncertainty that it was thereafter incumbent upon Lion Nathan to identify in its Amended Defence the sign upon which reliance was to be placed -- if that sign was to be anything other than the combination of words. Without that further express clarification, a contention that the " sign " is the words and the image would be a contention that would " take the other party by surprise " within the meaning of O 11, r 10. 36 But for its pleadings, there was otherwise no reason not to conclude that the " sign " Lion Nathan was in fact the following, incorporating both a combination of the words and the image: Such is what appears on the cardboard packaging for its " six pack "; such is what appears on the individual bottles of beer and in its advertisements for its beer. And each of the elements of that " sign " has a degree of prominence. Prominence is attracted to the image of the bare foot and the word " BAREFOOT " by reason of their being printed in white; prominence is also equally attracted to the word " RADLER " by reason of it being printed in green. The words and the image of the bare foot are given additional prominence by all being set against a blue background encircled by a roughly drawn white circumference. The word " BAREFOOT " is also given additional prominence by that word dissecting the image of the bare foot. 37 Given the constraint imposed by the pleadings, however, there is similarly no reason not to conclude that the " sign " being used by Lion Nathan is the combination of the words " BAREFOOT RADLER " alone. This was the sign identified in the Amended Defence. Even without the image of the bare foot, the prominence and distinctiveness of those words remains sufficiently discrete as to be the " sign " used. 38 What is the " sign " being used by Lion Nathan , it is accepted by both parties, is a question of fact. 39 The second of the questions posed requires resolution of whether the " sign " being used by Lion Nathan is " substantially identical with " the trade mark of Gallo Winery. 40 There is no dispute between the parties as to the meaning of the phrase " substantially identical " as used in s 120(1) -- the dispute is as to the manner in which that phrase is to be applied to the facts. 41 There is no definition in the 1995 Act of the phrase " substantially identical ". 44 A " side by side " comparison of the trade mark of Gallo Winery and the " sign " as used by Lion Nathan -- as confined by its pleadings -- discloses, it is considered, no substantial identity . The two marks are certainly not " identical ". The two marks have in common the word " BAREFOOT ". But the " sign " as used by Lion Nathan also employs the additional word " RADLER ". The question is thus whether there is a substantial identity. Section 120(2), it will be noted, does not require that the two marks be " identical "; s 120(2) is infringed if the mark of Lion Nathan is " substantially identical with " that of Gallo Winery . 45 In reaching the conclusion that the marks are not substantially identical, it has been recognised that the word " BAREFOOT " is both an ordinary English word and a word which has been used in a variety of contexts advertising many different types of goods. An internet search undertaken by a law graduate employed by the solicitors for Lion Nathan (Mr Campbell) disclosed the word " BAREFOOT " being used in the promotion of a beach-side resort; a water-skiing club; a sailing cruise; a coffee roaster; weddings; horse saddles; furniture; and vacations. Other instances were also exposed. Not surprisingly, many of these products had some association with the beach or water. 46 It is a word, however, common to both marks and a word which is strongly associated with a carefree lifestyle. 47 But it is the addition of the word " RADLER " which denies any substantial identity as between the trade mark of Gallo Winery and the " sign " as used by Lion Nathan . Rejected is a submission advanced by Gallo Winery that the word " RADLER " is but a description of a particular type of beer and that it is the word " BAREFOOT " alone which distinguishes its beer from that of others. It is the combination of the words which distinguishes the Lion Nathan beer -- an essential and prominent feature of the sign as used by Lion Nathan is thus not only the word " BAREFOOT" but also the word " RADLER ". Lion Nathan's use of the word " RADLER " is an important and integral part of the sign it uses and is an obvious source of distinction. 48 Of limited assistance in confirming such a conclusion is the following exchange between the Deputy Chairman of McWilliams Wines (Mr Kevin McLintock) and his cross-examiner: But your reaction at the time when you saw the product was that the name of the product was Barefoot Radler capital B, capital R, wasn't it? --- Correct. ... ... because you think that the name of this product is Barefoot Radler don't you? --- Yes. 49 Had Lion Nathan not been confined by its pleadings and had it been free to also include as part of its sign the image of the bare foot, any finding of fact that there was substantial identity would have been more easily denied. The differences would be such that -- and the total impression would be such that -- any similarity as would have been occasioned by the word " BAREFOOT " alone would be of little significance. The similarity, of course, would remain the single word " BAREFOOT ". But the differences would be even more significant if the prominent image of the bare foot were able to be included. 50 Section 120(1) is expressed in the alternative and requires a consideration of whether the " sign " being used by Lion Nathan is " substantially identical with, or deceptively similar to " the trade mark of Gallo Winery . 51 Again, there is no dispute between the parties as to the meaning to be given to the phrase " deceptively similar " -- the dispute is as to the manner in which that phrase is to be applied to the facts. 52 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: s 10. 57 The impression based on a recollection of the " sign " as used by Lion Nathan and a recollection of Gallo Winery's trade mark, it is considered, would lead to a likelihood of deception or confusion. 197 In applying the terms of the discretion previously conferred by s 23(1) of the Trade Marks Act 1955 (Cth), Foster J observed that it was a discretion only to be exercised in " exceptional circumstances ": Jonathan Ross Sceats v Jonathan Sceats Design Pty Ltd (1990) 17 IPR 28. Foster J there observed at 29 30: The section to which I have just made reference has been the subject of consideration by courts of high authority. It is quite clear that the word "may", used in the section, requires that a court, in determining whether relief should be granted, exercise a discretion. Accordingly, a court in considering the matters raised by s 23 may, even though it be satisfied that the desiderata of the section have been made out, nevertheless refrain from ordering the removal of the trade mark in the manner contemplated by the section. The question of the operation of this discretion is considered in Shanahan's Australian Trade Mark Law and Practice, 1982 ed, p 212, under the heading, "Discretion under s 23(1)". The learned author refers to the decision of Kitto J in Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , which clearly establishes the existence of the residual discretion in the court, to which I have made reference. It is also clear, as the learned author points out, that the discretion is one of general application and not restricted specifically to sections of the Act. However, he also goes on to say: "It has been said that the discretion should be exercised only in 'exceptional circumstances'; however, there may well be cases where the public interest requires that the registration be retained." Reference is made to the case of J Lyons & Co Ltd's Application [1959] RPC 120 at 130. I consider that the law is quite clear in this regard: although the discretion not to make an order of removal exists even though the enabling circumstances required by the section are proved, the discretion to refuse such an order is only to be exercised in the exceptional circumstances referred to.


case_text: The discretion presently conferred by s 101(3) of the 1995 Act, it has been said, confers a " broad discretion ": C A Henschke & 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. 210 Although the " guiding principle behind the discretion is public interest, particularly in the integrity of the register " ( Kowa Co Ltd v Organon [2005] FCA 1282 at [92] , [2005] FCA 1282 ; 223 ALR 27 at 41 2 per Lander J), the private commercial interests of both Gallo Winery and Lion Nathan remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme -- or, at least -- a predominant interest is the maintenance of the integrity of the Register: Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12 at [40] , [2000] HCA 12 ; 202 CLR 45 at 65. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised. Their Honours observed that: [42] ... the Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public's interests. There is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. There is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment. The provisions of the 1955 Act with respect to defensive registrations and certification marks were recognitions that the interests of the owners of registered trade marks may go beyond that of indicating trade origin. In Yale Electric Corporation v Robertson [(1928) 26 F 2d 972 at 973], Judge Learned Hand said of this interest: "that one merchant shall not divert customers from another by representing what he sells as emanating from the second. This has been, and perhaps even more now is, the whole Law and the Prophets on the subject, though it assumes many guises." In this decade, legislation in the United States, the United Kingdom, and now in Australia to varying degrees has extended the infringement action to restrain activities which are likely adversely to affect the interests of the owner of a "famous" or "well-known" trade mark by the "dilution" of its distinctive qualities or of its value to the owner.


case_text: In McCormick & Co Inc v McCormick [2000] FCA 1335 , 51 IPR 102 , Kenny J also identified some of the factors to be taken into account when determining whether goods were of the same description. Her Honour there observed: [18] The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.


case_text: The reference to Moorgate is a reference to Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414. Gummow J referred to that decision as setting forth the " applicable principles " and set forth (at IPR 518 19) the following passages from the judgment of Deane J (at CLR 433 4): To establish prior use of the mark in Australia, Moorgate relies upon evidence that, during or in connexion with discussions between Loew's and Philip Morris about the introduction of the low tar and nicotine cigarette in Australia, packets of cigarettes and associated advertising material displaying the name "KENT GOLDEN LIGHTS" were handed personally, or in one instance sent by mail, to representatives of Philip Morris in Australia. That evidence indicates that there were at least three occasions on which such cigarette packets and advertising material were so delivered. At the times when those items were so delivered, there was no intention on the part of Loew's that it would itself trade in the goods in Australia. Nor, for that matter, had it been decided what name would be used if Philip Morris were, under licence from Loew's, to commence to manufacture and market the goods in Australia at some indefinite future time. ... In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used. The cigarette packets and associated advertising material were delivered to Philip Morris to demonstrate what Loew's was marketing in other countries and what Philip Morris might market, under licence from Loew's, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time. There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark "KENT GOLDEN LIGHTS" for the purpose of indicating or so as to indicate a connexion in the course of trade between the new cigarettes and Loew's. 169 Moorgate Tobacco is not authority for the proposition that an intention alone to use a trade mark constitutes a use sufficient to defeat an application for removal for non-use. 170 Gallo Winery further contends that, in the event that there was a non-use of the trade mark, there was an " obstacle " to its use. This obstacle was the fact that Logan Wines Pty Ltd ( Logan Wines ) had a registered trade mark which it considered was remarkably similar to the BAREFOOT design which Gallo Winery had acquired from Barefoot Cellars . 171 The trade mark of Logan Wines had been registered in April 2004 and was as follows: The trade mark of Gallo Winery was of course the word BAREFOOT , but not the image of the bare foot as depicted in the mark of Logan Wines .


case_text: Whether a mark is likely to deceive or cause confusion is, in the end, a question of impression and common sense: Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370 at 377 per Lockhart, Pincus and von Doussa JJ. (On appeal, see: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 ; (1990) 171 CLR 363).


case_text: Notwithstanding the commercial steps undertaken by Gallo Winery to first acquire Barefoot Cellars and thereafter develop the market for the sale of that wine, it is considered that there is little reason to exercise the discretion in the manner being urged by Gallo Winery . That company acquired Barefoot Cellars in January 2005 and thereafter implemented a staged plan to market the wine world-wide. In its commercial judgment, the development of the Australian market was deliberately left until the end of 2007. It could have used its mark during the non-use period. It could have secured suitable wine and commenced selling at an earlier point of time. It did not do so. The consequences of its commercial judgment, it is considered, must now fall upon it -- including an adverse exercise of the discretion conferred by s 101(3). Compare: Nordstrom Inc v Starite Distributors Inc (2008) 75 IPR 418 at 426 7.


case_text: Whether a mark is likely to deceive or cause confusion is, in the end, a question of impression and common sense: Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370 at 377 per Lockhart, Pincus and von Doussa JJ. (On appeal, see: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 ; (1990) 171 CLR 363). 190 And " good faith " means a real as opposed to a token use in a commercial sense. It requires a " substantial and genuine " use: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 at 45. Gummow J concluded: In these circumstances, it is clear that in the three year period ending 6 June 1988 (being the period specified in s 23(1)(b)) the moo mark had been used by the registered proprietor not only in relation to cheese, but also in relation to flavoured milk in the sense required to preserve the registration, subject only to the further requirement that the use answered the description of having been bona fide. In "Concord" Trade Mark [1987] FSR 209 ; Falconer J held that to be bona fide within the meaning of the equivalent provision in the British legislation (s 26 of the 1938 Act) use should be substantial and genuine judged by ordinary commercial standards considered in relation to the trade concerned. ... I should add that use by the first respondent would not cease to be bona fide even if the evidence had been that it used the trade mark only after it appreciated that the registration was vulnerable to an attack on the ground of non-use by reason of the lack of activity of the second respondent; nor would it cease to be bona fide, even though, as is the case on the evidence, neither the officers of the first respondent nor its patent attorney, who dealt with the second respondent at the time the assignment was taken in 1987, had enquired closely of the second respondent as to the extent of its previous user of the trade mark... Aff'd: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 ; (1990) 171 CLR 363. This approach was endorsed by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at [16] , [2001] FCA 261 ; 107 FCR 166 at 171.


case_text: The fact that consumers may drink both BAREFOOT RADLER beer and wine, and the fact that deliberate steps were undertaken to entice some wine drinkers into drinking beer, does not lead to a conclusion -- either by itself or in conjunction with other considerations -- that the beer and wine are " goods of the same description ". As was the case in NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 it was not suggested that BAREFOOT RADLER beer and wines are " commonly used as substitutes or alternatives ": 14 IPR 26 at 43. And, as was the like assessment of Gummow J in that decision, some reliance may also be placed upon the initial reaction of the Consumer Insight Manager for Lion Nathan (Mr Simpson) when he first learned of the trade mark registration of the word " BAREFOOT " for wines -- he " was not overly concerned about the wine mark as beer was the main category that the project team was initially focusing on ". 88 It is thus considered that the Lion Nathan BAREFOOT RADLER beers are not " goods of the same description " as wine. 89 The concluding words of s 120(2) of the 1995 Act further provide a " defence " as follows: However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion. To fall within this provision, Lion Nathan must establish that its use of the sign is " not likely to deceive or cause confusion ". Lion Nathan bears the onus by reason of the phrase " if the person establishes ". 101 Section 92(1) and (4)(b) of the 1995 Act provide as follows: Application for removal of trade mark from Register etc. (1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register. ... (4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: ... (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non use application is filed, and, at no time during that period, the person who was then the registered owner: (i) used the trade mark in Australia; or (ii) used the trade mark in good faith in Australia; in relation to the goods and/or services to which the application relates. Section 7 further defines that which constitutes the " use " of a trade mark. An " authorised use " of a trade mark is taken to be a use of the trade mark by the owner: s 7(3). Section 8 defines that which constitutes an " authorised use ". See: Yau's Entertainment Pty Ltd v Asia Television Ltd [2002] FCA 338 at [75] [81], [2002] FCAFC 78 ; 54 IPR 1 at 16 per Hely J (Sundberg and Finkelstein JJ agreeing). The term " during " does not mean " throughout " so as to require a regular and continuous course of conduct for the whole period: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 at 44 per Gummow J. See: Luck J, Case Note (1990) 1 IPJ 63. 166 Buying Systems , it is considered, provides no support to the case now sought to be advanced by Gallo Winery. Reference may also be made to NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26. Gummow J there concluded that there had been a use of the mark in issue by reason of such facts during the statutory period as the provision of art work to enable the manufacture of packaging and the production of promotional videos. 190 And " good faith " means a real as opposed to a token use in a commercial sense. It requires a " substantial and genuine " use: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 at 45. Gummow J concluded: In these circumstances, it is clear that in the three year period ending 6 June 1988 (being the period specified in s 23(1)(b)) the moo mark had been used by the registered proprietor not only in relation to cheese, but also in relation to flavoured milk in the sense required to preserve the registration, subject only to the further requirement that the use answered the description of having been bona fide. In "Concord" Trade Mark [1987] FSR 209 ; Falconer J held that to be bona fide within the meaning of the equivalent provision in the British legislation (s 26 of the 1938 Act) use should be substantial and genuine judged by ordinary commercial standards considered in relation to the trade concerned. ... I should add that use by the first respondent would not cease to be bona fide even if the evidence had been that it used the trade mark only after it appreciated that the registration was vulnerable to an attack on the ground of non-use by reason of the lack of activity of the second respondent; nor would it cease to be bona fide, even though, as is the case on the evidence, neither the officers of the first respondent nor its patent attorney, who dealt with the second respondent at the time the assignment was taken in 1987, had enquired closely of the second respondent as to the extent of its previous user of the trade mark... Aff'd: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 ; (1990) 171 CLR 363. This approach was endorsed by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at [16] , [2001] FCA 261 ; 107 FCR 166 at 171.


case_text: If the condition of exercise of the Court's power has been established, the trade mark should be removed " unless sufficient reason appears for leaving it there ": Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 481 2 per McLelland J. In Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , Kitto J similarly concluded (at 11): It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung's omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. ... One fundamental consideration to be taken into account is the public interest: Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323. Woodward J there considered that the existence of the discretion was " clear " and continued at 345: There are several points which emerge from this line of authority. The first is the importance of the public interest -- whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked. One aspect of the " public interest " is thus the public interest in the integrity of the Register: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 75 at 79 per Gummow J. 209 Justice Woodward in Paragon Shoes was by no means attempting to set forth an exhaustive statement as to the content of the " public interest " when considering the discretion to permit a mark to remain registered. Centrally relevant to that discretion must remain a consideration of whether the public would be deceived or confused. Considerations such as those deposed to by Mr Simpson, and in particular the costs incurred in promoting a product, however, assume some limited relevance and assist the conclusion -- otherwise reached -- that the discretion should be exercised adversely to Gallo Winery . The objection to this portion of his evidence is thus rejected.


case_text: The use of a trade mark is an authorised use only to the extent that the user uses the trade mark " under the control of the owner of the trade mark ": s 8(2). The essential requirement is that there must be a connection in the course of trade with the registered proprietor: Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670. Aickin J there observed (at 683): These cases demonstrate that the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connexion of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely registration of a registered user will not save the mark if there ceases to be the relevant connexion in the course of trade with the proprietor or the mark otherwise becomes deceptive. 148 This conclusion is consistent with the interpretation of Estex Clothing provided by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670. His Honour there referred to Estex Clothing and continued (at 688): It was argued that Estex Clothing Manufacturers Pty. Ltd. v. Ellis and Goldstein Ltd. decided that a retailer who sold imported goods bearing an Australian registered trade mark did not use the mark, and that therefore a "distributor" did not use a mark which was already on the goods. In my opinion the Estex Case is not authority for that proposition. It is authority for the proposition that the foreign owner of an Australian mark uses it in Australia when he sells goods for delivery abroad to Australian retailers and those retailers import them into Australia for sale and there sell them. It demonstrates that such a situation does not differ from that where he sells the goods for delivery in Australia to the retailer or where he advertises the goods in Australia. ...


case_text: In reaching this conclusion considerable assistance has been gained from the decision of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227. Polo Textile was there the registered proprietor of the mark " Polo " in respect of manchester, including sheets and towels. It was concluded that Domestic Textile did not avoid infringing that mark by selling bed linen products using the mark " Polo Club ". Burchett J concluded that it was of importance that the distinctive impact of the word " Polo " was likely to affect the mind while the presence or absence of the blander word " Club " may escape notice. See also: de Cordova v Vick Chemical Co (1951) 68 RPC 103. 61 A distinction may be drawn as between the present case and that in Polo Textile -- but that distinction does not lead to any different conclusion. Unlike the use of a bland word such as " Club " -- as in the Polo Textile decision -- the word " RADLER " adds an additional and important distinguishing feature to the product. The word " RADLER " is not an ordinary English word and its use, it is considered, adds an element of both distinction and curiosity, such that persons will query what that particular word means.


case_text: If the condition of exercise of the Court's power has been established, the trade mark should be removed " unless sufficient reason appears for leaving it there ": Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 481 2 per McLelland J. In Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , Kitto J similarly concluded (at 11): It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung's omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. ... One fundamental consideration to be taken into account is the public interest: Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323. Woodward J there considered that the existence of the discretion was " clear " and continued at 345: There are several points which emerge from this line of authority. The first is the importance of the public interest -- whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked. One aspect of the " public interest " is thus the public interest in the integrity of the Register: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 75 at 79 per Gummow J. 197 In applying the terms of the discretion previously conferred by s 23(1) of the Trade Marks Act 1955 (Cth), Foster J observed that it was a discretion only to be exercised in " exceptional circumstances ": Jonathan Ross Sceats v Jonathan Sceats Design Pty Ltd (1990) 17 IPR 28. Foster J there observed at 29 30: The section to which I have just made reference has been the subject of consideration by courts of high authority. It is quite clear that the word "may", used in the section, requires that a court, in determining whether relief should be granted, exercise a discretion. Accordingly, a court in considering the matters raised by s 23 may, even though it be satisfied that the desiderata of the section have been made out, nevertheless refrain from ordering the removal of the trade mark in the manner contemplated by the section. The question of the operation of this discretion is considered in Shanahan's Australian Trade Mark Law and Practice, 1982 ed, p 212, under the heading, "Discretion under s 23(1)". The learned author refers to the decision of Kitto J in Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , which clearly establishes the existence of the residual discretion in the court, to which I have made reference. It is also clear, as the learned author points out, that the discretion is one of general application and not restricted specifically to sections of the Act. However, he also goes on to say: "It has been said that the discretion should be exercised only in 'exceptional circumstances'; however, there may well be cases where the public interest requires that the registration be retained." Reference is made to the case of J Lyons & Co Ltd's Application [1959] RPC 120 at 130. I consider that the law is quite clear in this regard: although the discretion not to make an order of removal exists even though the enabling circumstances required by the section are proved, the discretion to refuse such an order is only to be exercised in the exceptional circumstances referred to.


case_text: The fact that both types of goods may be consumed does not, of itself, make them goods of the same description: Re J Lyons & Co Ltd's Application [1959] RPC 120 at 127 8 per Lord Evershed MR (Romer and Ormerod LJJ agreeing). (Applied: San Remo Macaroni [2000] FCA 1842 at [35] [36], 50 IPR 321 at 330 per Goldberg J). 197 In applying the terms of the discretion previously conferred by s 23(1) of the Trade Marks Act 1955 (Cth), Foster J observed that it was a discretion only to be exercised in " exceptional circumstances ": Jonathan Ross Sceats v Jonathan Sceats Design Pty Ltd (1990) 17 IPR 28. Foster J there observed at 29 30: The section to which I have just made reference has been the subject of consideration by courts of high authority. It is quite clear that the word "may", used in the section, requires that a court, in determining whether relief should be granted, exercise a discretion. Accordingly, a court in considering the matters raised by s 23 may, even though it be satisfied that the desiderata of the section have been made out, nevertheless refrain from ordering the removal of the trade mark in the manner contemplated by the section. The question of the operation of this discretion is considered in Shanahan's Australian Trade Mark Law and Practice, 1982 ed, p 212, under the heading, "Discretion under s 23(1)". The learned author refers to the decision of Kitto J in Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , which clearly establishes the existence of the residual discretion in the court, to which I have made reference. It is also clear, as the learned author points out, that the discretion is one of general application and not restricted specifically to sections of the Act. However, he also goes on to say: "It has been said that the discretion should be exercised only in 'exceptional circumstances'; however, there may well be cases where the public interest requires that the registration be retained." Reference is made to the case of J Lyons & Co Ltd's Application [1959] RPC 120 at 130. I consider that the law is quite clear in this regard: although the discretion not to make an order of removal exists even though the enabling circumstances required by the section are proved, the discretion to refuse such an order is only to be exercised in the exceptional circumstances referred to.


case_text: The meaning of that phrase is to be determined by its ordinary or usual meaning, namely that which is in substance the same or essentially the same: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 at [70] , [1999] FCA 1020 ; 93 FCR 365 at 387 per Branson J. 92 In support of the submission that reliance may be placed upon not only the sign being used by Lion Nathan but also upon a wider ranger of considerations, including the manner in which that sign is being used and the differences between the competing products, reference was made to Woolworths Ltd v Registrar of Trade Marks (1998) 42 IPR 615. In allowing an appeal from a decision refusing to register a trade mark, Wilcox J concluded (at 624): The questions whether one mark is deceptively similar to another and whether the first mark is used in respect of services closely related to particular goods (or similar to other particular services) are conceptually distinct. However, the first question cannot be addressed in isolation from the second. The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive. The examples offered by Lockhart J in Caterpillar Loader Hire make the point. There are extremely close associations between the sale of data processing equipment and the provision of programs for its operation, the sale and sewing of curtains and the sale and tailoring of clothes. Because the relevant service is so specialised, and focused on the particular goods, it would be natural for any member of the public to treat a similarity of name as being an indication of a link between the origin of the goods and that of the service. At the other extreme, the use of even the same name, by traders in different industries, would not usually cause members of the public to assume a link between the traders. On appeal, the decision of Wilcox J was upheld: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 , 93 FCR 365.


case_text: If the condition of exercise of the Court's power has been established, the trade mark should be removed " unless sufficient reason appears for leaving it there ": Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 481 2 per McLelland J. In Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , Kitto J similarly concluded (at 11): It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung's omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. ... One fundamental consideration to be taken into account is the public interest: Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323. Woodward J there considered that the existence of the discretion was " clear " and continued at 345: There are several points which emerge from this line of authority. The first is the importance of the public interest -- whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked. One aspect of the " public interest " is thus the public interest in the integrity of the Register: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 75 at 79 per Gummow J.


case_text: It is again accepted that it is a question of fact and impression whether goods are " of the same description ": Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 545 per Needham J.


case_title: San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 , 50 IPR 321

case_text: Overall, the matter is to be determined from a business point of view: San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 at [35] , 50 IPR 321 at 330 per Goldberg J. 72 The fact that both types of goods may be consumed does not, of itself, make them goods of the same description: Re J Lyons & Co Ltd's Application [1959] RPC 120 at 127 8 per Lord Evershed MR (Romer and Ormerod LJJ agreeing). (Applied: San Remo Macaroni [2000] FCA 1842 at [35] [36], 50 IPR 321 at 330 per Goldberg J).


case_text: A " trade mark " is defined by s 17 of the Trade Marks Act 1995 (Cth) as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. The function of a trade mark, it has repeatedly been said, is "to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods -- to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market": In re Powell's Trade Mark [1893] 2 Ch 388 at 403 4 per Bowen LJ. Use "as a trade mark" in s 120(1) is use of the mark as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , [1999] FCA 1721 ; 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] per Sundberg J. See also: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407 at 424 5 per Kitto J; Rothnie W, Gray Goods Billow onto the Open Main: Section 123 of the Trade Marks Act 1995 (1996) 7 AIPJ 87 at 89 90. 43 And whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Windeyer J there observed: 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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. [(1951) 68 RPC 103 at] [2], at p. 106. Whether there is substantial identity is a question of fact... In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [38] , [1999] FCA 1721 ; 96 FCR 107 at 121. Black CJ, Sundberg and Finkelstein JJ there observed that the similarities and differences should be noted and the importance of these similarities and differences assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.


case_text: 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 & 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 & 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".


case_text: Reference may also be made to Tavener Rutledge Ltd v Specters Ltd [1959] RPC 355. Lord Evershed MR there referred to the prospect of a plaintiff being able to establish the mark of a defendant causing confusion. His Lordship continued at 359 60: ... If the plaintiffs establish that then, as I have said, the defendants may still have another line of defence and may say, "Though it may generally be as you say a mark likely to cause confusion, in fact the way I have used it and in the circumstances and environment in which I have used it, it is not likely to cause confusion." Cited: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [43] , [1999] FCA 1721 ; 96 FCR 107 at 123.


case_text: 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 & 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 & 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.