Re: JOHNSON AND JOHNSON And: LAURENCE NASH KALNIN and MEDICAL INDUSTRIES AUSTRALIA PTY. LIMITED No. NG47 of 1992 FED No. 279 Number of pages - 8 Trade Marks (1993) 114 ALR 215
COURT
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION Gummow J(1)
CATCHWORDS
Trade Marks - application for registration - opposition - existing registration by opponent - Trade Marks Act 1955, ss. 28 (a), 33 (1) - whether likelihood of deception or confusion.
Counsel and solicitors Mr David Yates instructed by for the applicant: Michell Sillar McPhee Meyer
Counsel and solicitors Miss Angela Bowne instructed by for the respondents: Norton Smith and Co.
ORDER
THE COURT ORDERS THAT:
(1) The appeal be allowed.
(2) The opposition by the applicant to the grant of registration upon
trademark applications Nos. A452585 and A520821 be upheld.
(3) The respondents pay the applicant's costs of the proceeding in
this Court, and of the opposition before the Registrar of Trade Marks.
Note: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules.
JUDGE1
GUMMOW J This case involves the application of well-settled principles as to the operation of the Trade Marks Act 1955 ("the Act") to facts which essentially are not in dispute.
The applicant in this Court, Johnson and Johnson, is a United States corporation. Its Australian subsidiary is Johnson and Johnson Australia Pty Ltd. The applicant is the registered proprietor of a number of trade marks, each registration comprising the words "BAND-AID". Registrations A81017 and A183357 were registered with effect respectively from 4 February 1944 and 3 October 1963. Both registrations are in respect of goods in Class 5, the first being for "adhesive pads for wounds, cuts and sores", and the second for:
"Antiseptics and other pharmaceutical, veterinary and sanitary substances; infants' and invalids' foods; material for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin."
In addition, there is a defensive registration registered under Part XII of the Act from 5 August 1959. The registration, D155298, is in respect of the following goods in Class 5:
"Pharmaceutical, veterinary and sanitary substances; infants' and invalids' foods; plasters, but not including dental plasters; material for bandaging; disinfectant."
As Mr Shanahan points out in his work "Australian Law of Trade Marks and Passing Off", 2nd ed., 1990 at p 235:
"Part D of the Register is intended for the more adequate protection of marks that have been used to such an extent for certain goods or services that their unauthorised use for quite different goods or services would be likely to mislead the public. The classic example of such a mark is 'Kodak', the owners of which were able to restrain the sale of 'Kodak cycles' by means of a passing off action. These marks…
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
Johnson & Johnson v Kalnin [1993] FCA 279
Case
[1993] FCA 279
Decision Date
CaseChat Overview and Summary
In the Federal Court of Australia, the case of Johnson & Johnson versus Kalnin arose from an application for the registration of trademarks by Johnson & Johnson, which was opposed by Kalnin. Kalnin argued that the trademarks sought by Johnson & Johnson were too similar to a trademark already registered by Kalnin, potentially causing confusion or deception among consumers. The legal issues at hand revolved around whether the proposed trademarks by Johnson & Johnson would lead to a likelihood of deception or confusion, as outlined in sections 28(a) and 33(1) of the Trade Marks Act 1955.
The court examined the similarity between the trademarks and assessed the potential for confusion among consumers. It considered the visual, aural, and conceptual similarity of the marks, as well as the related goods and services for which the marks were intended. The court's reasoning was that the trademarks in question were indeed too similar to Kalnin's existing registration, leading to a significant likelihood of confusion or deception among consumers. As a result, the opposition to the registration of the trademarks by Johnson & Johnson was upheld.
Consequently, the court allowed the appeal and upheld the opposition by Kalnin against the registration of the trademarks by Johnson & Johnson. The respondents were ordered to pay the applicant's costs of the proceeding in the Court and the opposition before the Registrar of Trade Marks. The case highlights the importance of ensuring that trademarks are sufficiently distinct to avoid potential confusion among consumers, particularly when there are existing registrations that may be impacted.
Orders
Orders of the court
THE COURT ORDERS THAT:
(1) The appeal be allowed.
(2) The opposition by the applicant to the grant of registration upon
trademark applications Nos. A452585 and A520821 be upheld.
(3) The respondents pay the applicant's costs of the proceeding in
this Court, and of the opposition before the Registrar of Trade Marks.
Note: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules.