Full Court reviews test for substantial identity

In the latest instalment of the Aristocrat trade marks litigation, the Full Court has held that in order to conduct the side-by-side test prescribed by Justice Windeyer in Shell v Esso  for the purposes of determining whether marks are substantially identical, it is not necessary for actual examples of the respondent’s use to be in evidence.  (For a short refresher on Shell v Esso, see here.)  Rather, the Court might be satisfied by other evidence as to the nature of the respondent’s mark and its use.

The Aristocrat parties were the registered owners of several trade marks incorporating the word ARISTOCRAT including three word marks for that word alone registered in relation to, amongst other things, gaming machines.

Justice Jacobson, at first instance, found that the respondents entered into 11 transactions with their South American customers for the supply of 56 gaming machines.  These machines carried “fake Aristocrat compliance plates” and “counterfeit gaming software“.

The Aristocrat parties, however, were unable “to produce a single machine containing a counterfeit compliance plate or a counterfeit game“.  Justice Jacobson considered that this failure made it “impossible to conduct the tests stated by Windeyer J in Shell.  I cannot conduct a side by side comparison.

His Honour therefore dismissed the trade mark infringement claim.

The Full Court considered, however, that the inference that the fake compliance plates bore the word ARISTOCRAT was “irresistible“.   It said:

Once it is concluded, as it must be, that each of the fake Aristocrat compliance plates bore the word “Aristocrat” the test of substantial identity was plainly satisfied.”

The appeal was allowed.

This conclusion sits uncomfortably, however, with some other decisions on substantial identity.  It is well established that the inclusion of the whole of a registered mark within another mark does not inevitably lead to a finding of substantial identity.  WOOLWORTHS METRO, for example, was not considered to be deceptively similar to the prior mark METRO: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365.

Without the ability to consider the use of the mark in its context, it seems difficult to reach a conclusion as to whether the mark used was substantially identical with the registered mark. The use (even “as a trade mark“) of a particular word will not always infringe a registered mark consisting of that word.

It is uncommon for examples of a respondent’s impugned use not to be in evidence.  It seems likely that the Full Court’s decision in this case will be confined to its unusual circumstances.  In particular, to circumstances where (a) the allegedly infringing use cannot be inspected; and (b) where there is an “irresistible” inference that the respondent’s use was of a mark which is substantially identical to the applicant’s registered mark.

Full Court’s decision is here.



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