Case Notes, Deceptively similar?, s 44 TMA

“Zombie” marks cannot be cited in s 44 trade mark oppositions

1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12 (21 February 2017)

Registration was sought for the mark HAVANA CLUB ESSENCE OF CUBA in various classes including alcoholic beverages (except beer), entertainment and consultancy services relating to cooking.

Registration was opposed pursuant to ss 42, 44, 61 (TM not an indication of geographic origin) and 62A. No grounds were made out and the application proceeded to registration.

The Hearing Officer found that the s 44 ground was not made out because although the cited mark MATUSALEM EL ESPIRITU DE CUBA was “pending” at the time of the opposed application, by the time of the hearing it had been refused registration (following a hearing).

The HO noted:

In short, what the Opponent wishes me to do is to treat the Refused Application as being a ‘zombie’ application: dead, but still capable of doing damage to a later comer filed during its pendency

Subsections 44(1) and 44(2), he said, are “to be read in the present tense“.  The Opponent did not have a current registration to rely upon and therefore the s 44 ground failed.

Cited marks that are still pending at the time of the hearing will still stand as a barrier to registration, however.   See, for example MHFC Holdings Pty Ltd [2016] ATMO 96.


In relation to s 61, (note that the opponent had had its own mark rejected on this ground – see that decision here) the HO said:

  1. The Opponent’s position here is that because the word ‘Cuba’ appears in its trade marks which were refused registration as a geographical indication that it must follow that, because the word ‘Cuba’ also appears in the Trade Mark, the word ‘Cuba’ must also there be taken to be a geographical indication. I consider that is not necessarily so.
  2. I consider that the correct approach is to consider the Trade Mark as a whole and ask what it is likely to denote to Australians. Here the Trade Mark is comprised of two expressions, firstly the words ‘Havana Club’ and secondly the expression ‘Essence of Cuba’. While it is likely that an Australian seeing the words ‘Matusalem Spirit of Cuba’ on a bottle of rum would understand the expression ‘Spirit of Cuba’ to refer to the spirituous liquors within the bottle as deriving from Cuba, I am not satisfied that an Australian seeing the expressions ‘Havana Club Essence of Cuba’ would be likely to reach the same conclusion….
  1. Here, in the context of goods which are rum, it is obvious that the words ‘Spirit of Cuba’ (and their Spanish equivalent) identify the goods as being spirituous liquors having their origin in Cuba which has a reputation for ‘rum’. In the same context (and in the light of the various definitions of the word ‘essence’ within the Macquarie Dictionary) the expression ‘Essence of Cuba’ does not appear to be amenable to the same understanding.
  2. The expression ‘Essence of Cuba’ thus appears to me to be somewhat indefinite in its denotation. In terms of the definition of ‘geographical origin’, I am not satisfied that the Trade Mark identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
  3. I further note that the Holder has stated that the goods of interest to it contain Cuban rum. The evidence shows that the goods are various ‘bitters’ that are used to make alcoholic drinks and these various bitters contain Cuban rum. The Holder, had it been necessary, has established a defence under subsection 61(2) of the Act.


Case Notes, s 41 TMA - adapted to distinguish?

Name of one of Burkina Faso’s 45 provinces rejected under s 41 TMA because it is a geographic location

Mantra IP Pty Ltd [2017] ATMO 10 (7 February 2017)

Registration sought for the mark BALÉ in respect of various services in classes 39 and 43 relating to holiday reservations, travel and accommodation services.

Opposed pursuant to s 41 TMA on the grounds that the mark is a geographic indicator.

Bale is the name of geographic locations in Croatia and Ethiopia.   Balé is the name of one of the 45 provinces of Burkina Faso which, according to the hearing officer (who appears to have relied on his own Wikipedia searches) is “known for its Deux Balé Forest which is populated by savannah elephant herds“.

Here are some Deux Balé Forest elephants:



The Applicant submitted that “the Registrar can reasonably infer, by virtue of the relative obscurity of this province to an Australian audience, that the number of travellers who would be interested in a holiday would be an extraordinarily small subset of the relevant consumer base.”

It continued “that the number of Australians visiting Balé, Burkina Faso, and therefore the number of consumers who would understand the ordinary signification of the mark to mean ‘Balé, Burkina Faso’, would be very low. The Applicant, a large and sophisticated hotel operator, was not aware of the place until the Hearing Officer brought it to our attention. We were not aware either, and neither was the original examiner. It is submitted it is not a well-known destination for Australians.”

While acknowledging that the applicant’s submissions “have their appeal“, the HO was unpersuaded.  He accepted “that it would be absurd for every geographical location to be held to lack inherent adaptation to distinguish tourism services is persuasive” and that “at this time, Balé is seemingly unknown as a destination for tourists.”

But concluded:

“However, to paraphrase the words of Kitto J from Clark Equipment … if it is reasonable to suppose that tourism services may be provided in connection with Balé in the future, the Trade Mark cannot be considered to distinguish the Amended Services from the services of other traders. I am satisfied that such an assumption is reasonable, and on that basis the Trade Mark is not to any extent adapted to distinguish the Amended Services and, therefore, a ground for rejecting the application exists under s 41.”

The basis for this conclusion seems to be the HO’s reasoning that:

“Africa is a well-known destination for wildlife tourism. Of especial interest to some tourists are ‘the Big Five’ which is a set of five different African animals, one of which is elephants. It is reasonable to suppose that, if it is not already, in the future Balé may well become a recognised destination for those people hoping to catch a glimpse of the elephants that live there. Should this occur, the ordinary signification of Balé, to persons wishing to travel to Africa to see elephants, is that Balé is a geographical location where elephants can be seen.”

The Applicant’s contentions that the mark had acquired distinctiveness were also unsuccessful.

The application was rejected.

Case Notes, Deceptively similar?, s 44 TMA


AEG Ogden Pty Ltd [2017] ATMO 9 (6 February 2017)

Applicant sought registration of the mark ICC Sydney in classes 35, 41 and 43.

Ground of rejection were raised under ss 39, 42 and 44 of the TMA.  By the time of the hearing only the s 44 ground remained in contention.

The cited registrations were the mark ICC INTERNATIONAL COURT OF ARBITRATION and the mark depicted below, both registered for a wide range of goods and services.


Section 44

The HO considered that the compared marks all contained a common element – the letters “ICC” – which is inherently adapted to distinguish and, in each case, the additional elements did not provide any source of distinguishing value.  He concluded therefore that “a member of the public knowing none of the trade marks is likely to be confused by the trade marks simply because of the commonality of the letters “ICC”” and the applied-for mark was deceptively similar to the cited marks.

Evidence of use insufficient to support registration under s 44(3) (honest concurrent use).

Case Notes, Deceptively similar?, s 60, Uncategorized


ATMO case note: Monster Energy Company v Disney Enterprises, Inc [2017] ATMO 2


Relevant classes: 25 (clothing, footwear, headgear etc), 29 (fresh & dried foods), 30 (various processed foods).

Opponent’s marks: MONSTER and MONSTER ENERGY – registered and used in various classes including in relation to carbonated soft drinks.

Grounds of opposition: ss 42(b) and 60 – grounds not established – mark to proceed to registration.

Section 60

Hearing Officer McDonagh set out the following lengthy passage from Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87:

A finding of deceptive similarity in wholly contained trade marks is not automatic and may depend on a number of factors. These include:

(a) The extent to which the shared element has retained its identity as an essential feature of the trade marks (See: Bulova Accutron Trade Mark [1969] RPC 102 (Ch D).

(b) The distinctiveness of the common element/s and the distinctiveness of additional element/s. If the additional element changes the idea of the trade mark, this may point towards a finding that the marks are not deceptively similar.

(c) The nature of the additional element(s) – if the additional element(s) is/are particularly distinctive then the marks will most likely not be deceptively similar, even though they share a common element. And vice versa – if the additional element has a low level of distinctiveness then the marks are more likely to be deceptively similar (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: BONZA BRATS)

(d) The meaning behind the trade marks – where an additional element changes the meaning of the trade mark or the concept behind it then the trade marks are less likely to be deceptively similar.

(e) The placement, within the trade mark, of the common and non-distinctive elements, including size of text and any other elements may provide a different context and consequently alter the overall impression of the trade mark.

(f) When both the common element and additional element are distinctive – each case will turn on its own facts. See BAREFOOT: BAREFOOT RADLER. E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at 63 per Flick J.

(g) Consideration must be given to the surrounding context of the goods and services, such as methods of sale and common trade techniques. Are customers purchasing goods by name? How are the goods presented? Who are the consumers? (General or specialist?).

The hearing officer considered that in the application of these principles in this case led to the conclusion that the marks were unlikely to be confused.  This was particularly so due to the close association of the Opponent’s marks with sporting teams: “if consumers are involved with a sporting team, event or individual to the extent that they associate and purchase the Opponent’s Goods sold under the Opponent’s Trade Marks because of that association and further seek out goods in Classes 25, 29 or 30 to purchase on the basis of those trade marks, it is less likely that they will confuse the Trade Mark with the Opponent’s Trade Marks.

Section 42(b)

The section 42 ground failed for the same reason as the s 60 ground: “In the present matter the Opponent has failed to establish a ground of opposition under section 60 of the Act. As the test for misleading or deceptive conduct under section 18 of the Australian Consumer Law (‘ACL’) is a more stringent test (at the standard ‘mislead or deceive’) than that for ‘deception or confusion’ under section 60, I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to section 18 of the ACL.”

Case Notes, Deceptively similar?, s 44 TMA


ATMO case note: Screen Technics Pty Limited v S-TECH Holdings Pty Ltd [2017] ATMO 1

Applicant’s mark: SCREENTECH

Relevant class(es):

Goods: Class 9: Electronic displays and signs, illuminated displays and signs; mobile display screens; displays for advertising, traffic control, sporting events and signalling;

Class 11: Lighting apparatus and accessories; LED lights

Opponent’s mark: SCREEN TECHNICS

Registered and used in relation to AV projection screens.

Grounds of opposition: ss 42, 58, 58A, 44, 60.

No grounds established – mark to proceed to registration.

Section 44

Hearing Officer McDonagh held that SCREENTECH and SCREEN TECHNICS are deceptively similar but, given the applicant’s long use of its mark, which pre-dates the priority date of the opponent’s mark and the opponent’s first use of its mark, the mark was registrable under ss 44(3) and 44(4).

Sections 58

This ground was not made out because the parties’ marks were held to be not substantially identical.

Section 58A

This section only applies in relation to marks accepted under s 44(4),  not s 44(3).  In any event, the opponent had not established first use.

Section 60

HO McDonagh considered that the opponent’s reputation was confined to “the audio/visual screen projector market for home theatres, boardroom presentations, and educational and training facilities” whereas the applicant “produces and markets electronic signage that is typically used outdoors or in public places”.  Therefore, the concluded, the opponent had not established the requisite likelihood of confusion.

Section 42(b)

This ground failed for the same reason as s 60.



Case Notes

Hells Angels ordered to give security for costs

The Hells Angels Motorcycle Corporation (HAMC), an Australian company, is the exclusive licensee in this country of a series of trade mark registrations and copyrights owned by the Hells Angels Motorcycle Corporation of the United States.

The trade mark registrations date back as far as 1990 and include the following:

HA death head

Redbubble describes itself as “quite simply the finest and most creative community and marketplace on the interlink“: Redbubble website.  I’m not sure what the “interlink” is but the Australian Financial Review has described the company as providing “an online marketplace where artists and designers can sell their wares” (AFR, 10 November 2015).

It seems that among these wares were some t-shirts and posters bearing HAMC’s registered marks (in which copyright also vested).

HAMC brought proceedings for TM infringement and breach of copyright.  Redbubble sought security for its costs in the amount of $270,000.

In considering the matter, Greenwood J noted that the discretion to order security for costs is, like all good discretions, “broadly based and unfettered“.  Factors to be taken into account include:

  1. the strength of the applicant’s claims and the bona fides of those claims.  (His Honour rejected a line of authority which was said to stand for the proposition that the merits of an applicant’s case ought to be regarded as “neutral” in the analysis);
  2. in circumstances where “a group of individuals … stand behind the special purpose vehicle [ entity incorporated for the purpose of enforcing IP rights], it is a proper exercise of the discretion to require security to be provided because “stakeholders” with a commercial and true beneficial interest in the outcome of the exercise of the rights, ought to bear the burden of ensuring that if their special purpose vehicle is unsuccessful in the assertion of particular rights, the party put to legal costs in defending the claims is, in part at least, secured for those costs.

Greenwood J considered that security should be ordered because the persons standing behind HAMC “ought to be exposed to some proportion of the burden that might arise in the form of a costs order that might be made against HAMC...”

He considered, however, that the amount of security ought to be discounted on the basis of the prima facie strength of the applicant’s case and, in particular, because he considered that a defence that Redbubble indicated an intention to rely upon – that it’s conduct was not infringing because it was analagous to that of iiNet in Roadshow Films Pty Ltd v iiNet Ltd [No 2] (2012) 248 CLR 42 – was unlikely to succeed.

His Honour ordered security in the amount of $50,000.

He noted that this amount “is designed to provide some degree of entirely forwardlooking security to give Redbubble a measure of protection, discounted having regard to the apparent strength of HAMC (Aust)’s contended causes of action in the context of Redbubble’s transactional business model.”

The full reasons can be found here.




Own name defence

Abbreviations and the “own name” defence

In Australia, hardly anyone gets called by their own name.  Not their full name anyway.  Michael is Mick.  Deborah is Deb.  Corporate names are abbreviated too.  McDonalds is Maccas.  The St Vincent de Paul Society is Vinnies.

If you’re just using your own name, in good faith, the Trade Marks Act provides a defence if, by doing so you would otherwise be infringing someone else’s registered mark: s 122(1)(a)(i).  But what if you’re using an abbreviation of your full name?  It has been established for some time that merely dropping “Pty Ltd” from a corporate name won’t affect the application of the defence.  That makes sense – but what about more substantial abbreviations or contractions?

In the last couple of years, the defence has been used successfully by:

(a) Optical 88 Pty Ltd which used the mark OPTICAL 88 in various forms: Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457; upheld on appeal (2011) 197 FCR 67;

(b) Digital Post Australia Pty Ltd which used the mark DIGITAL POST AUSTRALIA: Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) (2012) 293 ALR 369; upheld on appeal (2013) 308 ALR 1; and

(c) Anchorage Capital Group LLC which used ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP: Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2015] FCA 882.

In both Digital Post and Anchorage, the finding that the defence applied was obiter as the judge in each case (Marshall and Perram JJ, respectively) had already decided there was no infringement for other reasons.

Importantly, in Anchorage, Perram J said:

I accept that, depending on the context, a contraction of a full name may be use of a name under  s 122(1)(a)(i) , just as leaving off expressions such as ‘Ltd’ does not make the defence unavailable…

In contrast to Anchorage, however, two 2016 decisions seem to restrict the defence to a narrower scope.

Last month, in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4) [2016] FCA 138, McKerracher J considered it “doubtful” that Roy Weston Nominees Pty Ltd could rely on the defence in relation to its use of the marks ROY WESTON or ROY WESTON REAL ESTATE.  His Honour accepted that good faith use of ROY WESTON NOMINEES (without the corporate indicia Pty Ltd) would fall within the defence.

Last week, in Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, Beach J considered that the use by the respondent Flexopack Australia Pty Ltd of the marks FLEXOPACK and the domain name did not enliven the defence.  In setting out some of the principles to be applied when considering the defence, his Honour said:

…where the respondent is a corporation its use to bring it within the defence may be without the corporate signifiers “Pty Ltd”: Wellness at [43] per Bennett J. It may be that even further truncation may not jeopardise the availability of the defence (see Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2015) 115 IPR 67; [2015] FCA 882 at [17] per Perram J). But that depends on the circumstances. In Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285, the defence did not prevail for uses of “Sweetheart” where the company name was “Sweetheart Plastics Inc” and “Sweetheart cup division of Maryland Cup Corp” (at 290 and 291) (see also Optical 88 (FC) at [65] and [66]). Sweetheart followed the UK position that an abbreviation of a name could not be protected if it increased the likelihood of deception or confusion. In the present case, in my view, the use of the truncation “FLEXOPACK” and the domain name could not take the benefit of the defence. It is not enough for the defence if the First Respondent has used only part of its corporate name. To drop “AUSTRALIA” cannot be said not to increase the likelihood of confusion.

In the end, this was obiter because Beach J concluded that the respondent’s use was not in good faith – and that appears to have been the primary reason for his conclusion that the defence did not apply.

Nevertheless, there seems to be a difference between the approach taken by Justice Perram in accepting the use of ANCHORAGE by Anchorage Capital Group LLC as falling within the defence, and the approaches taken by Justices McKerracher and Beach in the more recent cases.

But perhaps this difference is illusory.  Justice Perram noted that whether a contraction of a name falls within the defence provided by s 122(1)(a)(i) will depend on the context.  Applying Justice Beach’s approach, that seems to involve (at least) consideration of whether the use of the abbreviation increases the likelihood of deception or confusion.  That’s good for lawyers.  Not good for certainty.



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.



Authorised Use, Case Notes

Close but no cigar: s 123 provides parallel-importer with defence to trade mark infringement despite repackaging

A Danish cigar manufacturer (STG) brought proceedings against an Australian parallel-importer (Trojan) for infringement of its registered Australian trade marks HENRI WINTERMANS, CAFE CREME and LA PAZ.  It also alleged misleading or deceptive conduct and passing off.

The essence of the alleged TM infringement was that, after purchasing and importing STG’s cigars, Trojan had repackaged them in order to comply with Australia’s plain packaging legislation.  As part of that repackaging process, STG’s registered marks were placed on the new packaging.  This was done without STG’s consent.  The cigars were then sold to retailers in the new packaging.

It was accepted by STG that the cigars imported into Australia by Trojan were genuine in the sense that they were manufactured by STG.  There was no contention that the Trojan cigars were in any material way different from the “authorised products” that were brought into Australia and sold by STG’s Australian subsidiary.

Is this a prima facie infringement?

Trojan accepted that the use of the STG trade marks on the new packaging was use of those marks “as a trade mark” for the purposes of s 120 of the Trade Marks Act 1995 (Cth) but contended that this was STG’s use, not Trojan’s, because “the connection in trade was between the goods and the manufacturer, not between the goods and Trojan.”

While it may be slightly counter-intuitive (and Allsop CJ considered it was) to conclude that there is prima facie infringement in circumstances where a third party sells goods emanating from the registered owner and bearing that registered owner’s mark, that is the plain wording of s 120 of the TMA.  Allsop CJ pointed out that this conclusion had been reached by at least four Full Courts and was supported by several obiter comments from the High Court.

His Honour therefore concluded that Trojan’s use of STG’s marks on its repackaging was a prima facie infringement.

Does s 123 apply?

Section 123 of the TMA provides:

Goods etc. to which registered trade mark has been applied by or with consent of registered owner

(1)  In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

Note:          For similar goods see subsection 14(1).

             (2)  In spite of section 120, a person who uses a registered trade mark in relation to services that are similar to services in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied in relation to the services by, or with the consent of, the registered owner of the trade mark.

Note:          For similar services see subsection 14(2).

Allsop CJ considered that this provision “applies naturally to parallel importing and second hand goods.”

This case differed from the usual parallel importing cases because of the repackaging: the STG marks had not been applied to Trojan’s repackaging with STG’s consent.

This opened s 123 to alternative readings.

STG contended that since Trojan’s application of the STG marks to the repackaging was without STG’s consent, it’s use of those marks fell outside the protection of s 123.

Trojan argued however that the STG marks had been applied to the the relevant goods with STG’s consent.  They were then removed from the goods and reapplied in the form of the new packaging – but the statutory test was whether the marks had been applied with the owner’s consent.

Allsop CJ considered that Trojan’s construction “more naturally conforms with a purpose in s 123 of protecting as non-infringing use that which does no more than draw a connection between the goods and the registered owner...”  His Honour therefore concluded that s 123 was engaged and Trojan’s use of STG’s marks was non-infringing.

As STG argued in its submissions, this does seem to muddy the waters on the issue of authorised use under s 8 of the TMA – as to which we will learn much more when the Full Court gives its decision in the appeal from Skyy Spirits LLC v Lodestar Anstalt [2015] FCA 509 which is listed for hearing on 10 November 2015 before a bench of five judges.

The passing off and misrepresentation claims were also dismissed.

The decision can be found here.

Case Notes, Deceptively similar?

MALTITOS not deceptively similar to MALTESERS

After a six year hiatus, the Chocolate Malt Balls War resumed last year, with Mars (maker of Maltesers) seeking to prevent Delfi (a competitor) from registering the word MALTITOS as a trade mark: Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065.  Back in 2009, Delfi successfully defended a passing off/trade marks infringement claim (first instance, Full Court) brought by Mars in relation to its Delfi Malt Balls product (depicted below).

In this new matter, Mars was successful in blocking Delfi’s registration of MALTITOS in the Trade Marks Office on s 60 but not on s 44 of the Trade Marks Act 1995 (Cth) (TMA).  Delfi appealed to the Federal Court.  Mars cross-appealed on the s 44 issue.

Jessup J held that MALTITOS is not deceptively similar to MALTESERS.  Further, his Honour held that the Delfi’s use of MALTITOS was unlikely to cause confusion in the market as a result of the reputation vesting in the mark MALTESERS.  He therefore concluded that neither s 44 nor s 60 of TMA presented an obstacle to the registration of Delfi’s mark and set aside the decision of the Trade Marks Office that had found otherwise (on s 60 only).

Delfi had sought registration of MALTITOS in respect of confectionery, biscuits, chocolate, cocoa, and products made from or including chocolate and/or cocoa.  Mars, however, limited its attack to confectionery alone.  To succeed under s 44(1)(a) of the TMA, it had to show that “there is a real likelihood that some people will wonder or be left in doubt about whether confectionery sold or offered for sale under the applicant’s mark comes from the same source as confectionery sold or offered for sale under the respondent’s mark”: at [7].

His Honour considered the environment in which confectionery is typically sold and the nature of the “commercial landscape” which attends such sales – including the facts that confectionery is relatively inexpensive and often bought on impulse.

Consideration was given to both the appearance of the two marks and to their sound as spoken.  His Honour noted that some caution should be exercised when converting word marks to sounds for the purpose of comparison and set out at some length the expert evidence which supported the conclusion that the sounds of the two marks were sufficiently different as to pose little risk of confusion.

His Honour did not accept Mars’s submission that he might take into account the possibility of an error being made by a sales assistant who had misheard a customers request for MALTESERS.

Taking these things into account, his Honour was not persuaded that the relevant marks are deceptively similar.

In relation to s 60 TMA, Delfi accepted that the mark MALTESERS had acquired a relevant reputation in Australia.  Indeed, his Honour accepted that the mark as “a very widespread, solid, reputation in the area of packaged confectionery.” The question, therefore, was whether, as a result of that reputation, Delfi’s use of its mark MALTITOS would be likely to cause confusion.

Delfi contended that the purpose of s 60 “must have been the protection of unregistered marks which had acquired a reputation in Australia, including marks which were not actually used in Australia, and marks which might be registered in relation to good or services other than those in respect of which a particular claim for protection in made.”  His Honour did not accept that the section is so limited.  He held that the “only respect in which s 60 requires an exercise different from that arising under so much of s 44 as relates to deceptive similarity is that the reputation in Australia of the “other” mark must be the reason why the use of the mark proposed to be registered is likely to deceive or cause confusion.  What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.”

So that clears up the relationship between s 44 and s 60.

In any event, while his Honour accepted that MALTESERS was very well known in Australia, the strength of this reputation was not such that Delfi’s use of MALTITOS in respect of confectionery was likely to cause confusion.  Indeed, his Honour considered that the strength of Mars’s reputation vesting in MALTESERS would reduce the likelihood of confusion: at [29].

The ground of opposition based on s 60 TMA was also rejected.  His Honour ordered that the applicant’s mark proceed to registration.