Jafferjee v Scarlett

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.