Dial-an-Angel Pty Ltd v Saggitaur Services Systems Pty Ltd
[1990] FCA 312
•29 JUNE 1990
Re: DIAL AN ANGEL PTY LIMITED
And: SAGITAUR SERVICES SYSTEMS PTY LIMITED
No. G.196 of 1989
FED No. 312
Trade Marks - Trade Practices
96 ALR 181
19 IPR 171
COURT
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Wilcox J.(1)
CATCHWORDS
Trade Marks - Action for infringement of two registered trade marks: the name "Dial-An'Angel" and a logo showing an outline of an angel with children silhouetted against a house - Respondent carrying on business in same area of registration under the name "Guardian Angel" and using a logo of an angel with two children - Whether the name and logo are deceptively similar to the applicant's trade marks - Cross-claim in respect of applicant's alleged failure to commence and prosecute its claim with due diligence.
Trade Practices - Claim that use by respondent of name "Guardian Angel" and logo constitutes misleading conduct and suggests an association with business of applicant.
Trade Marks Act 1955, ss.62,124.
Trade Practices Act 1974, ss 52,53
HEARING
SYDNEY
#DATE 29:6:1990
Counsel for the Applicant: Mr N.R. Burns
Solicitors for the Applicant: Garland Seaborn
Counsel for the Respondent: Mr C.J. Stevens
Solicitors for the Respondent: Williams Palmer Noss
ORDER
The respondents, its servants and agents be restrained:
(a) During the period of the registration of trade mark number A328084 from using or continuing to use the logo which is shown in the Schedule to annexure M to the affidavit of Dena Naomi Blackman dated 16 January 1990 in connection with any business involving the provision of employment agency services; and
(b) from using or continuing to use the said logo in connection with any business involving the provision of childcare services or childcare training.
The operation of order 1 be suspended for a period of one month from this day.
The Cross-claim be dismissed.
The respondent pay to the applicant its costs of the proceedings.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. (See also Order 37 rule 2(3)).
JUDGE1
According to legend, a favourite pastime of medieval philosophers was to debate how many angels could stand on the point of a needle. This proceeding is the modern counterpart of that activity, but with a commercial twist. The parties dispute whether there is room for more than one of them to stand in the marketplace under a name which includes the word "angel". This more mundane disputation is based upon the Trade Marks Act 1955 and ss.52 and 53 of the Trade Practices Act 1974.
The applicant's business
The applicant, Dial An Angel Pty Limited, conducts a business which was founded in March 1967. It was commenced by Dena Naomi Blackman, who traded as the sole proprietor of a business registered under the name "Dial An Angel". At the time of commencement, the business was operated by Mrs Blackman and one other lady out of premises in the Sydney suburb of Lindfield. Its operations were confined to the Sydney metropolitan area. The business prospered and, in 1982, the present applicant was formed. The company acquired Mrs Blackman's business. She, however, continued to manage its affairs as managing director of the applicant. Since the formation of the applicant, the business has expanded to Newcastle and Brisbane. Franchises have been given to operators in Perth, Adelaide and Melbourne.
Since 1967, the business has operated as an agency to provide emergency and general domestic assistance. Dial An Angel would supply people to go into clients' homes to assist with housework and the general running of the home as well as to care for children, and elderly and sick people. The services might be supplied on a "live-out" basis - chiefly where domestic help and childcare is being provided - or on a "live-in" basis - chiefly for "mother substitute" care. In more recent times, the range of services offered by Dial An Angel has increased. The applicant now also provides temporary helpers to commercial clients and hospitals. But the provision of emergency and temporary domestic assistance appears to remain the applicants' main activity.
In an affidavit read in this proceeding, Mrs Blackman explained that she deliberately chose the word "angel" to describe the persons provided to clients,
"so as to evoke the notion of a heavenly being to care for the clients' homes and children and also to evoke the notion that the carers provided by the business would themselves have in the performance of their duties, the extra qualities expected of an angel. This was my primary idea when choosing the name for the business and I added the words 'DIAL AN' so that it would be clear that the services offered by my business were available to customers by using the telephone."
The business operated by Mrs Blackman as sole proprietor, and more recently the applicant, has received extensive publicity; both in paid advertisements and by way of newspaper and magazine articles. I need not set out the details of the publicity - these are contained in Mrs Blackman's evidence. It is sufficient to say that I am satisfied that the business is widely known, under the name Dial An Angel, in the Sydney metropolitan area, and, although perhaps to a lesser extent, in most of the other major Australian metropoles. In her affidavit, Mrs Blackman made what she described as a conservative estimate that, since its commencement, the business had offered to "angels" between 240,000 and 300,000 jobs. This does not mean that the business has served 240,000 to 300,000 different clients. A particular client might be serviced a number of times; but, plainly, many individual clients have dealt with the business over its 23 years of operation.
On 2 February 1979, Mrs Blackman obtained registration, in her own name, of a trade mark, pursuant to s.14 of the Trade Marks Act. The registration was effected in Part A of the register under class 35 ("Advertising and Business") and in respect of services described on the Certificate of Registration as being -
"Employment agency services including personnel services, temporary help services, temporary and permanent personnel placement and temporary help in the home services including nannies, housekeepers, companions, mother's help, baby-sitters, party-aides and stewards."
The registered trade mark was numbered A328084. It consists of a logo representing the silhouette of a cottage with a superimposed angel holding a baby in one arm and operating a vacuum cleaner with the other. Behind her stand two children. The angel is shown in profile. The children face the viewer. But all the figures are shown in outline, or cartoon, form rather than as finely detailed drawings. Underneath the logo are the words: "Dial An Angel". Mrs Blackman explained in evidence that the logo had been designed by her, with the assistance of a friend skilled in graphic art, "specifically to further evoke and show the angel as a heavenly being watching over homes and children and performing household tasks generally". She went on to say that all advertising for the company and the business is conducted under this trade mark and logo unless the advertisement is at the expense of a client whose budget does not extend to the additional costs involved in using the logo. The evidence bears out this claim. The applicant uses its logo even in its advertisements in the Yellow Pages of the telephone book, where entries appear in several business categories.
On 27 March 1982, the applicant obtained registration of a further trade mark, number A424482. This mark consists only of the words "Dial An Angel". The registration was also in Part A of the register, for services included in class 35 but described in slightly different terms:
"Employment agency available by telephone including personnel services, temporary help services, temporary and permanent personnel placement and temporary help in the home services including nannies, housekeepers, companions, mother's help, baby-sitters, party-aides and stewards, being services included in Class No.35, for a period of seven years from 27 MARCH 1985."
The respondent's business
Sagitaur Services Systems Pty Limited, the respondent, is a company controlled by Victoria Kay Rydstrand, its managing director. It commenced business in the Sydney suburb of Peakhurst on 18 August 1987 and opened a second office at Mosman, another Sydney suburb, on 10 March 1988. The business is conducted under the name Guardian Angel School of Childcare, and the running of childcare training courses appears to be its primary activity. Mrs Rydstrand said in her affidavit that the respondent has conducted part-time childcare courses since it commenced business and that some 582 students had attended the courses up until the date of the affidavit, 19 April 1990. In addition, full-time courses have been conducted in four suburbs: Mosman, Parramatta, Miranda and Merrylands. There were 86 full-time graduates by 19 April 1990.
However, the respondent also carries on other activities. In the years 1987 and 1988 it registered six business names, four of which include the word "angel". They are: "AA Guardian Angel Sittings Services"; "Guardian Angel Sitting Service"; "Guardian Angel School of Childcare"; and "Guardian Angel Childcare Services". Under some of these names, the respondent competes directly with the applicant. For example, the Yellow Pages for 1988, 1989 and 1990 contain entries, in each of the categories "Baby Sitters" and "Domestic Help Services", for both parties. In those categories the respondent uses the names, "AA Guardian Angel Sitting Service", "AA Guardian Angel" and "AA Guardian Angel Services". In some, but not all, of its Yellow Pages entries the respondent uses its logo: an angel with outstretched wings standing side-on to the viewer, blessing with raised hands two children who stand before her.
Mrs Rydstrand gave evidence of the provenance of the logo. She explained that, when she was a child, there was hung in her bedroom a picture of an angel watching the progress of two children across a rickety bridge above a turbulent river. This picture gave her a feeling of security and comfort in times of stress. She saw the angel as the biblical guardian angel who looked over and protected her from harm. According to Mrs Rydstrand, when she commenced the respondent's business, she remembered this angel. That is why she chose the name "guardian angel" and how she came to devise the company's logo.
A photograph of the picture was tendered in evidence. It is obvious that the logo was taken from the picture. The logo reproduces almost exactly the figures of the angel and two children, omitting the bridge and the dark background vegetation. I accept that this picture was the source of both the name "Guardian Angel" and the logo. Although Mrs Rydstrand was aware of Dial An Angel, and its logo, before she commenced the respondent's business, I do not think that she consciously copied either the name or the logo. I accept her statement that, when she selected the name and logo, she did not think that either would be confused with the name or logo of the applicant and that she had no intention of misleading, cheating or ensnaring anyone. But, of course, Mrs Rydstrand's state of mind is not determinative of her company's liability in respect of the applicant's claims under the Trade Marks Act and ss.52 and 53 of the Trade Practices Act.
Since it began operating, the respondent has extensively used the name "Guardian Angel" and its logo; in printed advertisements (including the Sydney Yellow Pages); in brochures; in a book written by Mrs Rydstrand entitled "The Responsible Approach to Childcare 'In the Home'"; and even in the form of a three-dimensional montage outside its Mosman office. There is evidence of some confusion to members of the public, although the evidence does not suggest extensive confusion. The respondent has made two relevant trade mark applications, neither of which has yet been granted. Both were lodged on 21 February 1989, in respect of services within class 42 ("Miscellaneous Services, being services other than those included in another item of this Part") which were identified as follows:
"child and family care services including the education and training of parents, childcare workers and others in all aspects of child and family care (including health and fitness); provision of mothercraft services, housekeeping services, emergency services, mother's help services, child minding services, nurseries, hospitals, nursing homes and all other services in this class."
One application is for a trade mark consisting only of the words, "Guardian Angel". The other is for the guardian angel logo already described.
The competing claimsMrs Blackman became aware of the existence and name of the respondent's business during the period June-August 1988. She heard about the Mosman montage and, whilst in the area, inspected it. She consulted Miss Catherine Chant of Arthur S Cave and Company, the applicant's patent attorneys. In evidence, Mrs Blackman said that she believed she spoke to Miss Chant within a day or so of her inspection. But she also said that after that consultation Miss Chant promptly sent a letter of demand to the respondent. The letter of demand, which is in evidence, is dated 23 January 1989. Obviously, there was a much greater delay than Mrs Blackman now recalls.
The letter from Arthur S Cave and Company of 23 January 1989 accurately sets out details of the two registered trade marks. It refers to the use of those trade marks by the applicant and asserts that the respondent:
"is offering various services including nanny, baby-sitting, companion and house keeping services under the Trade Mark Guardian Angel and that your company has registered the names Guardian Angel Sitting Services and Guardian Angel Childcare Services in New South Wales as business names in respect of an agency to provide childcare and an employment agency and referral service respectively".
The letter goes on to allege that these actions constitute an infringement of the applicant's trade marks. It concludes with demands for the following action:
"1. Immediate cancellation of the New South Wales Business names GUARDIAN ANGEL SITTING SERVICES and GUARDIAN ANGEL CHILDCARE SERVICES;
2. Immediate withdrawal of all promotional material bearing the Trade Mark GUARDIAN ANGEL or any similar word or words;
3. An undertaking binding yourselves, servants, agents, successors and associates that you will refrain in the future from promoting your services under the trade mark GUARDIAN ANGEL or any other word or words deceptively similar thereto; and
4. Publication in relevant local and/or state newspapers of an advertisement in terms approved by our client and their legal advices (sic) acknowledging our clients rights in the trade mark DIAL-AN-ANGEL and informing the public of the discontinuance of the use of the trade mark GUARDIAN ANGEL by you."
The solicitors for the respondent, Williams Niblett, replied to this letter on 6 February 1989. The reply included the following passages:
"As your client is well aware, our client has, for in excess of 18 months, carried on business under names including the words 'GUARDIAN ANGEL'. Notwithstanding the allegations contained in your letter to the effect that our client's activities 'cannot fail to have the effect that confusion will arise ...', no actual confusion has come to our client's attention.
We note the distinctive visual and phonetic differences between 'GUARDIAN ANGEL' and 'DIAL-AN-ANGEL' and have advised our client that there is no reasonable likelihood of deception as has been alleged by you. In light of the above, we have advised our client that the allegations and threats contained within your letter are without foundation and, more specifically, that the allegation of infringement of your client's trade mark registrations for the mark 'DIAL-AN-ANGEL' may constitute a groundless threat within the meaning of Section 124 of the Trade Marks Act 1955 and is therefore actionable by our client. We have further advised our client that the claims contained with your letter may constitute misleading and deceptive conduct in breach of Section 52 of the Trade Practices Act.
We also refer you to Section 75B of the Trade Practices Act concerning the liabilities of persons who have, inter alia, aided and abetted a contravention of Part V of that Act or have otherwise induced by threats such contravention or have been in any way, directly or indirectly, knowingly concerned in that contravention.
In the circumstances, our client requires your client immediately to retract the allegations and threats contained within your letter and has further instructed us to inform you that, in the event that any further threats or allegations are made, our client will commence proceedings immediately."
The present proceeding was instituted on 19 April 1989 when an Application and a Statement of Claim were filed. The Statement of Claim was subsequently amended. In its amended form it alleges infringements by the respondent of both of the applicant's trade marks, together with breaches of s.52 and s.53(aa), (c) and (d) of the Trade Practices Act and the tort of passing off. The respondent denies these claims.
Additionally, the respondent brings a Cross-claim in which it refers to the letter of 23 January 1989 it received from Arthur S Cave and Company. It alleges that the applicant "failed and neglected to commence and prosecute its asserted action and alleged entitlements". This allegation is made both in absolute terms and with the additional words, "diligently and in disregard to orders made at Directions Hearings". The claim is based on s.124 of the Trade Marks Act, to which I will return. The respondent alleges that it suffered damage by reason of the applicant's failure to pursue its claim. But the parties agreed that it would be preferable to defer evidence as to the quantum of any damage until after the other issues had been determined; and I so directed.
The trade marks claimsThe respondent raises no issue as to the validity of the registration of the applicant's two trade marks. But it denies that it has infringed either trade mark. Section 62(1) of the Trade Marks Act says that,
"a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or the registered user of the trade mark using by way of permitted use, uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade, in relation to goods or services in respect of which the trade mark is registered".
The concluding words of this subsection are important to the present case. The respondent uses its name and logo in connection with the supply of some services lying outside the fields specified in the applicant's certificates of registration; notably, the provision of childcare training courses. The applicant's registration, it will be recalled, extended only to employment agency services; with specified inclusions that did not, however, go beyond what would ordinarily be conveyed by that phrase and which did not include the provision of childcare training courses. Consequently, its trade marks claim must be limited to that portion of the respondent's business which consists of the supply of employment agency services. In relation to that matter, the critical question is whether the respondent's logo, or any of its trading names, are "substantially identical with, or deceptively similar to" either of the applicants registered trade marks.
In The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, Windeyer J made some observations about the criteria contained in s.62(1). After pointing out that "substantial identicality" and "deceptive similarity" are independent criteria, his Honour went on at pp 414-415:
"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 p 106. Whether there is substantial identity is a question of fact: ... On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: 'The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him ... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole': de Cordova at p 106. And in Australian Woollen Mills Ltd v F.S. Walton and Co Ltd (1937) 58 CLR 641, Dixon and McTiernan JJ said at p 658: 'In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same'."
The decision of Windeyer J in this case was reversed on appeal to the Full Court: see 109 CLR 420-427. But the Full Court decision did not affect the authority of his Honour's statement of principle.
Reference should also be made to the decision of the Full High Court in Jafferjee v Scarlett (1937) 57 CLR 115. That was a contest over registration of a mark. But the issue that arises in such a case is not dissimilar from that arising under s.62(1) in connection with the criterion "deceptively similar to". Under s.25 of the then Act - the Trade Marks Act 1905 - the question was whether the respondent's mark so resembled the appellant's registered trade mark as to be "likely to deceive". (Compare s.33 of the present Act which uses the same criteria - "substantially identical with, or deceptively similar to" - as appear in s.62(1).) The Court held that it did, notwithstanding significant differences between the two marks. The two marks were described in this way by Latham CJ, with whom McTiernan J agreed, at pp 119-120:
"The applicant's mark consists of a drawing of two figures with the words 'Best Australian Roller Flour.' The figures are those of runners in athletic costume, one of whom has reached the finishing tape in the race. The line of the tape is shown as bent where it is in contact with the body of the leading runner. The arms and legs of the runners may be described as being in a state of activity. The words 'Best Australian Roller Flour' are plainly descriptive, and any person would be at liberty (so far as trade mark law is concerned) to use them in relation to flour. The opponent's trade mark is registered in respect of flour. It consists of two men in athletic costume with javelins in their hands. The javelins are crossed in the air and the arms and legs of the figures are in a state of activity. The trade mark also bears the words 'Double Javan' which, according to the evidence, means 'two warriors' or 'two strong men.' Thus both marks show two men in athletic costume in a state of activity with a bent line across the figures. Any direct comparison of the marks shows clear differences between them. Runners are different from men throwing javelins, and the relation of the figures and the position of the limbs varies in the two pictures. There are, however, the similarities mentioned, which may perhaps be fairly summed up by saying that both designs show men in athletic costume engaged in a contest."
At pp 121-122 his Honour said:
"It is important to consider what has been described as the 'idea of the mark.' That is, the idea which the mark will naturally suggest to the mind of one who sees it. Lord Herschell's committee (quoted in Kerly on Trade Marks, 6th ed. (1927), at p 270), put the point very clearly in the following passage:- 'Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Take, for example, a mark representing a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing.'
When a matter such as this comes before the court, the court has before it the two marks themselves, clearly shown, and available for direct and immediate comparison. Cases in which the marks are identical do not ordinarily come before a court. The question which arises is always whether there is a probability of deception because there is a resemblance, though there are also differences, between two marks. The court naturally and readily appreciates the distinctions between the marks which are seen side by side. When, however, the court has to determine the probability of deception arising from simultaneous user of the same marks in the same market, it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived. The court must endeavour to put itself in the position of ordinary purchasers of goods who have noticed a trade mark as being distinctive of particular goods, but who have not compared that mark with any other mark, and who are quite probably not aware of the fact that another more or less similar mark exists. Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks. They will be guided, so far as they are influenced by trade marks at all, by a general recollection or impression of the mark which they have seen. It should not be assumed by the court that the probable purchaser is a specially stupid man, or, on the other hand, that he is a man who sets trade marks side by side and examines them with particularity. Taking, as well as I can, the point of view which I have indicated, I think that there is a real and substantial similarity between the two marks now before the court."
Dixon J, at p 126, came to a similar conclusion.
In the present case there are two registered trade marks. The dual exercise described by Windeyer J must be separately performed in relation to each of them. First, I take the mark "Dial-An-Angel" and compare it with the various names used by the respondent to describe that part of its business which involves the provision of employment agency services, the description contained in the applicant's registration certificate. The relevant names are: "AA Guardian Angel Sittings Services", "Guardian Angel Sitting Service" and "AA Guardian Angel Services". They, of course, all share with the applicant's registered trade mark the use of the word "angel". But that word is only part of the applicant's trade mark. Unlike the situation in one case cited to me, Baume and Company Limited v A H Moore Limited (1958) RPC 226, the respondent has not purloined the whole of the applicant's mark. The additional words used, by each of the parties, are important, for a number of reasons. The additional words - "Dial-An-", and "AA Guardian" and "Guardian" - are prominent. They come first in each name. They differ in both sound and appearance. Moreover, they convey ideas, additional to that conveyed by the word "angel", which are themselves different. The words "Dial-An-" indicate that the angels offered by the applicant are readily available; they may be summoned by telephone. The word "Guardian" says nothing about availability. Its message is the caring nature of the angel.
Comparing these two marks, I cannot conclude that they are substantially identical. "Angel" is an ordinary English word. It is true that each of the parties seeks to use the word figuratively rather than descriptively; compare Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Limited (1978) 140 CLR 216, especially per Stephen J at p 229. But the word "angel", standing alone, would not be registrable as a trade mark: see s.24 of the Trade Marks Act. And I cannot see that the mere inclusion of "angel" in a registered trade mark can give the registered proprietor any monopoly in its use. The question must always be whether - considering them as a whole and having regard to their appearances, sounds, and the ideas they evoke - it can fairly be said that the similarities so outweigh the differences that the two marks are substantially identical. In my judgment, that cannot be said in the present case.
When one turns to the issue of deceptive similarity, it is important to bear in mind the comment by Lord Radcliffe in de Cordova "that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole." Nonetheless, I am not persuaded that the marks "Dial-An-Angel" and "Guardian Angel" are deceptively similar. It is true that the words "Dial-An-Angel" conjure up the image of an angel and that this image may be the dominant recollection of many who have read or heard them. It is possible that some of those people, later coming across "Guardian Angel", will be caused by that recollection to confuse the respondent's business or services with Dial-An-Angel. But I think that this is unlikely. It is commonplace for the names of competitive businesses to share a particular word. I believe that consumers of products and services well understand the need to look at, or listen to, and remember the whole of a short business name.
Support for this conclusion is furnished by the decision of the High Court in Cooper Engineering Company Pty Ltd, v Sigmund Pumps Limited (1952) 86 CLR 536. That case involved an objection to registration under the 1905 Act but, as already indicated, the test to be applied in such a case was close to that of deceptive similarity in s.62(1). The appellant was the owner of the trade mark "Rain King", registered in respect of horticultural and agricultural water spraying installations. The respondent sought to register "Rainmaster" in the same class. The Court unanimously dismissed an appeal against the Registrar's dismissal of its opposition, saying at pp 538-539:
"In the present case the prefix of the two words is the same word 'Rain', but the suffix 'master' differs from the suffix 'King' in appearance and in sound. This makes the two marks as a whole quite distinct and the marks must be judged as a whole. 'Rainmaster' does not look like 'Rain King' and it does not sound like it. There is not a single common letter in master and in King. The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited (in Application by Pianotist Company Ltd (1906) 23 RPC 774 at p 777), you must consider the nature and kind of customer who would be likely to buy the goods. A purchaser of spray nozzles and sprinklers would not be likely to be lacking in discernment. He would not be in a hurry to buy. He would not be likely to pay any attention to the presence of a common word like rain in the combination. That prefix already appears in other trademarks for goods of the same description sold on the Australian market such as Rainwell, Rainmaker, Rain Queen, and Rainbow. The learned registrar was right in holding that the only similarity between the two marks is the common prefix 'Rain' and that this similarity is not sufficient to create a reasonable likelihood of deception when the remaining portions of the marks are so different."
Very much the same comments may be made about Dial-An-Angel and Guardian Angel.
In reaching my conclusion that the two names are not deceptively similar, I do not overlook the evidence which suggests that there has already been some confusion, amongst members of the public, between the businesses of the respective parties. But that evidence does not establish that this confusion stemmed solely from the similarity of the two names. It may have resulted from the logos, or a combination of the names and the logos.
I turn to the applicant's other trade mark, the one which includes the logo. Here I think that the applicant is on firmer ground. The two logos are not substantially identical. A side-by-side comparision quickly demonstrates major differences. But I think that the respondent's logo is deceptively similar to the applicant's registered trade mark. The importance of what Latham CJ described in Jafferjee as "the idea of the mark" - more commonly called "the essential feature" of the mark - has often been emphasised. In Cluett Peabody and Company Inc. v McIntyre Hogg Marsh and Company Ltd (1958) RPC 335 at p 351, Upjohn J went so far as to say that "a man infringes the mark of another if he seizes upon some essential feature of the plaintiff's mark." Perhaps that statement should be read subject to a qualification that the similarity of an essential feature may be negated by another feature which tellingly distinguishes the two marks. But this will ordinarily be difficult, for the reasons spelled out in Jafferjee.
In the present case the relevant marks share a common essential feature: an angel. It is true that the two angels are portrayed differently. One angel is engaged in doing nothing more taxing than serenely blessing two children; her celestial sister is extremely busy, simultaneously coping with a baby and a vacuum cleaner. The respondent's angel signifies loving care and security; she is the "guardian angel". Perhaps the applicant's angel would be more immediately seen as a "helpful angel" (as in "be an angel and do this for me"). But the distinction is not really so clear cut. The applicant's angel also has two children in her care. She is depicted in the home, a symbol of security. It may not be difficult for those who - like the participants in this case - have closely studied the appearances of these ethereal beings to distinguish between them. But I think that the casual viewer would be more likely, in each case, simply to notice, and remember, an angel caring for children. Probably the detail of the children does not matter; but it happens that each mark contains outlines of two walking children. In each case the elder is certainly a girl. In one case the younger is certainly a boy, and may also be so in the other.
In Murray Goulburn Co-operative Co Limited v New South Wales Dairy Corporation (1990) 92 ALR 239 at p 247, the Full Court agreed with an observation of the trial judge that "one must be cautious against too much refinement of thought when considering the different connotations alleged" in relation to two similar marks. This warning applies to the present case. In my judgment it is likely that viewers would take from each of these marks a similar impression. Someone who had seen the applicant's registered mark and remembered that idea, although not the detail of the mark, could easily mistake the respondent's mark for it. Accordingly, in my judgment, the applicant is entitled to succeed on so much of its trade marks case as complains of the use of the respondent's logo in connection with the provision of employment agency services.
The Trade Practices Act claimThe applicant's case under ss.52 and 53 of the Trade Practices Act is put more widely than its trade marks case. The applicant seeks to restrain the respondent from using the words "Guardian Angel", or any derivative of them, and its logo for any purpose. In relation to the words, the contention is that "angel", as an ingredient in the name of a business offering childcare and similar services, has become so associated in the public mind with the applicant's business that its use by the respondent in connection with a business whose activities relate to childcare (even childcare training courses) is likely to mislead members of the public into believing that there is a connection between the business of the respondent and that of the applicant. The applicant says that the use by the respondent of the word "angel" and its logo contravenes s.52 of the Trade Practices Act, which proscribes misleading conduct by a corporation in trade or commerce, and provisions in s.53 which provide that a corporation shall not, in trade or commerce, "falsely represent that services are of a particular standard, quality, value or grade" (para.(aa)); "represent that goods or services have sponsorship, approval, performance, characteristics, accessories, uses or benefits they do not have" (para. (a); and "represent that the corporation has a sponsorship, approval or affiliation it does not have" (para. (d)).
For the reasons I have already expressed in relation to the trade mark "Dial-An-Angel", I do not think it possible to uphold that part of the applicant's trade practices claim which depends upon the respondent's mere use of the name "Guardian Angel". It cannot be said that the word "angel" indicates an association with the applicant regardless of the differences in the opening words of the respective names. The same comment may be made about the applicant's passing off case, which was not separately argued.
However, once again, the applicant's case is stronger in regard to the logo. In considering whether the use of a particular logo is likely to mislead viewers, or to cause them to believe that there is some association between the corporation exhibiting the logo and some other person, it is appropriate to adopt an approach similar to that favoured by Windeyer J in relation to claims of deceptively similar trade marks. One must remember that viewers will rarely see the marks side by side and that they are likely to rely upon a general recollection of an applicant's mark, that recollection having been shaped by any dominant characteristic or essential feature which it might have. The essential feature of each of the logos is the motif of the angel with young children. Just as I think that people who have seen, but do not precisely remember, the applicant's logo (trade mark number A328084), may confuse it with the respondent's logo, I also think that such people, seeing the respondent's logo used in a childcare context, may wrongly connect it with the applicant. I emphasise the words "childcare context" because the connection would be less likely if the respective fields of activity were quite dissimilar. However, Dial-An-Angel has had a lengthy, intensive and well-publicised connection with the provision of childcare services. It is true that the company does not run childcare classes. But ordinary members of the public would not know that. I think it probable, given Dial-An-Angel's association with childcare, that many people who imperfectly remember its logo, but see the respondent's logo used in connection with childcare education, would assume a connection. In my opinion, the respondent's use of its logo in connection with any business involving the provision of childcare services or childcare education is a contravention of ss.52 and 53 of the Trade Practices Act.
The Cross-claimThe respondent's cross-claim is brought pursuant to s.124 of the Trade Marks Act, which relevantly provides:
"124.(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring an action against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened constitute, or, if done, would constitute, an infringement of the trade mark.
(2) The last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of section 78, with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.
(3) ...
(4) ..."
It will be noted that an action under s.124 is defeated if the person against whom it is brought "satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened constitute, or, if done, would constitute, an infringement of the trade mark". I have so held in respect of trade mark A328084. So the respondent cannot succeed in its cross-claim, insofar as it relates to the threat made by Arthur S Cave and Company concerning that mark. But, in relation to trade mark A424482, I have decided in favour of the respondent. The applicant concedes that, by the letter written on its behalf by Arthur S Cave and Company, it threatened the respondent, within the meaning of s.124(1) in connection with that mark. So the requirements of s.124(1) are satisfied as respects trade mark A424482.
However, the applicant relies on s.124(2), by virtue of which an action under s.124(1) will be defeated if the registered proprietor has "with due diligence" commenced and prosecuted an infringement action. The respondent asserts that the applicant neither commenced nor prosecuted this action with due diligence.
I am not aware of any authority on the meaning of the words "with due diligence". I think that the words must be given their ordinary English meaning. It is necessary to ask whether the person making the threats has commenced the action within a reasonable period thereafter, having regard to the whole of the relevant circumstances, and whether the action has been prosecuted in a reasonable manner.
As to the first matter, the letter from Arthur S Cave and Company was written on 23 January 1989. The delay which occurred between the time when Mrs Blackman learned of the respondent's activities and the sending of the letter is not presently relevant. It may be relevant in connection with other defences, such as laches or the exercise of the Court's discretion. But s.124(2) refers to delay in commencing an action after the making of the threat. Section 124(1) is concerned with the damage which may be suffered by a person who has been threatened but against whom no action has yet been brought: see the discussion in Ricketson "The Law of Intellectual Property", at para.2.33. The respondent's solicitors replied to that letter on 6 February 1989. It was reasonable for the applicant to wait, at least for a couple of weeks, for a response to its patent attorney's letter before embarking on litigation. In assessing whether the proceeding was commenced with "due diligence", time should be regarded as running from the date of receipt of that letter. The proceeding was commenced on 17 April 1989, some ten weeks later. Although this delay is, perhaps, near the outer limit of what might be regarded as a reasonable time within which to commence an infringement action, I think that it falls within that limit. The claim eventually made was an ordinary one, but it did require the assembly of a considerable volume of material, some of which went back many years. I do not know how much information was actually assembled by the time the proceeding was commenced but the Statement of Claim, filed on 17 April, was fairly comprehensive.
From time to time during directions hearings I was critical of the time taken by the applicant to carry out the necessary pre-trial procedures. On several occasions the applicant failed to take steps within the required time. But, in considering whether those delays should lead to the conclusion that the applicant failed to prosecute the action with due diligence, it is appropriate to note the respondent's reaction to those delays. The respondent also defaulted, although less often, in complying with directions. More importantly, once the proceeding was commenced, the respondent had avenues for bringing the matter to speedy finality. It could have sought more stringent directions than it did. It could have applied to the Court for summary dismissal of the claim, for want of prosecution. Such an application may well have been successful, unless the applicant improved the speed of its preparation. A threat of legal proceedings for infringement of a trade mark may have a serious effect upon the business of the threatened person. It is incumbent upon the threatener to progress the infringement action as quickly as possible. In a case where it appears that an applicant is not doing so, especially where the applicant has failed to comply with the Court's directions, there is a strong case for summary dismissal. But no such application was made. It seems to me reasonable to judge the issue of due diligence in prosecuting the action by reference to the standard of diligence which the respondent itself was prepared to accept. Accordingly, I think that the defence conferred by s.124(2) is made out. The Cross-claim must be dismissed.
OrdersI propose to make orders restraining the respondent from using its logo in connection with any business involving the provision of employment agency services or childcare services or childcare training. In order to give the respondent an opportunity to reorganise its publicity material I will suspend the operation of those injunctions for one month from today. The Cross-claim will be dismissed. The respondent must pay the applicant's costs.
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