RESPONDENT. APPLICANT, Trade Mark-Registration-Opposition proceedings-Appeal to High Court-Function H. C.
of court-To determine appeal as upon an original application-Similarity of trade marks-Likelihood of deception-Onus of proof on applicant-Foreign trade-Likelihood of deception in place of user-Trade Marks Act 1905-1934 MELBOURNE, (No. 20 of 1905-No. 45 of 1934), secs. 25, 43, 44, 45, 114.
Upon an appeal to the High Court from a decision of the Registrar of Trade Marks on an application to register a trade mark, the question for the High Court to decide is whether on the merits the mark ought to be registered and not merely whether the decision of the registrar can or cannot be supported.
On such an appeal the applicant is in the same position in the High Court as he was before the registrar, and the onus is on him to show that, if his mark is registered, there will be no reasonable danger of the public being deceived.
Eno v. Dunn, (1890) 15 App. Cas. 252, applied. Per Dixon J. In a case where there are features in two marks which might tend to confuse, the question whether there is a real and substantial probability of deception must be decided by reference to the actual course of dealing and, if that takes place abroad, the conditions there prevailing must be considered.
APPEAL from the Registrar of Trade Marks.
Victor Alexander Scarlett applied for the registration of a trade mark
in respect of flour. The mark consisted of a drawing of
two figures with the words "Best Australian Roller Flour." The
figures were those of runners in athletic costumes one of whom had reached the finishing tape in the race. The line of the tape was shown as bent where it was in contact with the body of the leading runner. The arms and legs of the runners displayed a state of activity. Abdulhusein Jafferjee gave notice of opposition, contending that the trade mark which the applicant sought to register SO nearly resembled the opponent's trade mark, which was already on the register, as to be likely to deceive, and that, therefore, under sec. 25 of the Trade Marks Act 1905-1934, the registrar should not register the applicant's mark. The opponent also relied on sec. 114 of the Act, which provides: "No mark the use of which would by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a court of justice
shall be used or registered as a trade mark." The opponent's trade mark, which was registered in respect of flour, consisted of two men in athletic costumes with javelins in their hands. The javelins were crossed in the air and the arms and legs of the figures displayed a state of activity. The figures were within a circle which was not carried under their feet. The trade mark also bore the words "Double Javan," which according to the evidence meant "two warriors" or "two strong men.' The…
Grounds of appeal
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
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AGLC
Jafferjee v Scarlett [1937] HCA 36
Case
[1937] HCA 36
Decision Date
CaseChat Overview and Summary
This case involved an appeal to the High Court of Australia concerning an application to register a trade mark for flour. The applicant, Victor Alexander Scarlett, sought to register a mark depicting two runners at a finishing line, accompanied by the words "Best Australian Roller Flour." The opponent, Abdulhusein Jafferjee, who already had a registered trade mark for flour, opposed the application. Jafferjee contended that Scarlett's proposed mark was SO similar to his own registered mark, which featured two men with javelins in athletic poses and the words "Double Javan," as to be likely to deceive purchasers, thereby infringing sections 25 and 114 of the *Trade Marks Act 1905-1934*.
The High Court was required to determine whether the applicant's proposed trade mark SO closely resembled the opponent's existing registered trade mark as to be likely to cause deception or confusion among consumers. A key aspect of the dispute was the potential for deception not only within Australia but also in eastern countries where the goods were likely to be sold and where many purchasers might not be literate in English. The court also had to consider its own function on appeal from the Registrar of Trade Marks, specifically whether it was to review the Registrar's decision or to determine the application on its merits as if it were an original application.
The court held that on an appeal from the Registrar, its function was to determine the matter on its merits, as if it were an original application, and that the onus remained on the applicant to demonstrate that there was no reasonable danger of the public being deceived. The court noted that while the two marks had distinct visual differences, the general idea conveyed by both – men in athletic costume engaged in a contest – was similar. Furthermore, considering that the marks would be applied to flour bags, potentially subject to wear and tear, and that purchasers often rely on imperfect recollection, the court found a real and substantial probability of deception. This was particularly relevant given that the goods were likely to be sold in eastern countries where the visual representation would be more significant than the English text.
Consequently, the High Court allowed the appeal, setting aside the Registrar's decision. The court ordered that the application for registration of Victor Alexander Scarlett's trade mark be dismissed, finding that the applicant had not discharged the onus of proving that the use of his mark would not be likely to deceive.