Don v Burley

This case concerned an appeal to the High Court of Australia from a decision of the Registrar of Trade Marks regarding the registration of a trade mark. The applicant, Joseph Leonard Burley, sought to register a trade mark for leather sporting goods featuring a black swan on a white ground shaped like the continent of Australia, with the name "Burley" on the swan. The opponent, Robert Somerville Don, who owned a registered trade mark for similar goods, opposed the registration on the grounds that the proposed mark was too similar to his own, which consisted of a black block print of the continent of Australia with the name "Don" printed across it.

The central legal issue before the High Court was whether the applicant's proposed trade mark was so similar to the opponent's registered trade mark as to be likely to deceive or cause confusion among purchasers of leather sporting goods. This involved an assessment of the visual and conceptual similarities between the two marks, considering the essential features of each and the likelihood of an ordinary consumer being misled. The court also considered the relevance and weight of evidence regarding the likelihood of deception, as well as an undertaking by the applicant to modify his mark.

Griffith C.J. and Barton J., forming the majority, held that the applicant's mark was not sufficiently similar to the opponent's to be likely to deceive. They reasoned that the prominent visual difference of a black swan on a map of Australia, compared to a block print of Australia with the name "Don," would be readily distinguishable by an ordinary consumer. Barton J. further commented on the limited evidentiary value of opinions on deception, emphasizing that the assessment should be based on the judge's own observation and intelligence, considering a person of ordinary intelligence and memory. The majority also noted that the applicant's willingness to use the words "J. L. Burley, Maker" prominently around his mark would further mitigate any potential for confusion. Rich J., dissenting, found the marks to be sufficiently similar, particularly given the shared feature of the Australian continent as a prominent element, and concluded that the applicant had not discharged the onus of proving that the mark was not calculated to deceive.

The appeal was dismissed with costs, subject to a variation of the condition imposed by the Registrar. The condition was modified to reflect the applicant's undertaking to use the words "J. L. Burley, Maker" prominently around his trade mark, ensuring that the mark would always be used in conjunction with these words.