LES EDITIONS ALBERT RENE
[2024] ATMO 98
•22 May 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia number 2307501 (International Registration number 1689749) (classes 9, 16, 25, 28, 35 and 41) – ASTERIX & Device- in the name of LES EDITIONS ALBERT RENE
Delegate:
Anne Makrigiorgos
Representation:
Holder: Barry Newman of Armour IP Pty Ltd
Decision:
2024 ATMO 98
Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 44 – satisfied that use of trade mark is likely to give rise to deception or confusion – extension of protection to Australia refused for some goods in Class 9
Background
1. On 4 July 2022, LES EDITIONS ALBERT RENE (‘Holder’) applied to extend protection to Australia of International Registration number 1689749 designating Australia under number 2307501 (‘IRDA’) pursuant to the provisions of the Trade Marks Act1995 (Cth) and Trade Marks Regulations1995 (Cth).[1] The current details of the IRDA appear below:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations1995 (Cth).
Filing Date: 4 July 2022
Priority Date: 7 February 2022
Trade Mark: (‘Trade Mark’)
Specification: See Annexure A (‘Holder’s Goods and Services’)
2. The IRDA was examined as required under reg 17A.12. On 8 November 2022, IP Australia issued a Notification of Provisional Refusal of the IRDA identifying grounds for rejection pursuant to s 44. Four prior registrations were cited as objections to registration of the Trade Mark.
3. The Holder and this office engaged in further rounds of correspondence whereby none of the citation objections were overcome. The citation of the following registration in the name of Asterisk.Asterisk, LLC and the following three registrations in the name of Digium, Inc. were maintained (together ‘Cited Marks’):
Asterisk.Asterisk, LLC
Registration
Filing Date
Trade Mark
Specification
902211
4 February 2022
(‘221 Mark’)
Class 10: Braces, including, knee, wrist and ankle athletic braces for use in sports, being orthopaedic braces
Class 25: Wearing apparel, including, shirts, T-shirts, hats, caps, visors, shorts, pants, belts, shoes, swim shirts and socks
Digium, Inc
Trade Mark Number
Filing Date/Priority Date
Trade Mark
Specification
1076510
17 May 2005
(‘510 Mark’)
Class 9: Open source computer software that creates a public branch exchange telephone network that may be downloaded from a global computer network
1082525
19 April 2005
ASTERISK
(‘525 Mark’)
Class 9: Open source computer software that creates a public exchange telephone network branch, downloadable from a global computer network
(‘525 Goods)
1270916
17 June 2008
ASTERISK
(‘916 Mark’)
Class 9: Computer telephony software; computer telephony hardware
Class 42: Computer hardware and software development; technical support services, namely, troubleshooting of computer hardware and software problems
(‘916 Goods and Services.)
(‘Digium Marks’)
4. The Examiner considered the Cited Marks and the Trade Mark to be deceptively similar raising the Cited Marks in respect of the following subset of the Holder’s Goods and Services, considered to be the same or similar to the goods and services of the Cited Marks:
Digium Marks - Class 9 Apparatus for sound or image recording, transmission, storage, reproduction; data processing equipment and computers and peripherals therefor; interactive multimedia software; software for provision of access to a computer or data transmission network, particularly to a global communication network (such as the Internet) or to a private or restricted network (such as an intranet); telephony devices (‘Conflicting Class 9 Goods’)
221 Mark– Class 25 Clothing, footwear, headwear (‘Conflicting Class 25 Goods’)
There was no objection to the extension of protection of the IRDA for the remainder of the Holder’s Goods and Services.
5. The Examiner surmised that while there were some visual differences between the images in the Trade Mark and the 221 and 510 Marks, the appearance of the Trade Mark is similar to the Cited Marks as the words ASTERISK and ASTERIX are phonetically similar. The Examiner considered that the overall impression of the Trade Mark is therefore similar and it is reasonable to conclude that consumers are likely to be confused when coming into contact with the Trade Mark in light of an imperfect recollection of any of the Cited Marks on similar goods in the marketplace.
6. The Holder argued, inter alia, that the Asterix character was one of the most well known figures in children’s literature and entertainment and had an extraordinary reputation which constituted circumstances making it proper for the application to be accepted under s44(3)(b). The examiner disagreed stating that reputation is not a relevant factor in considering deceptive similarity of trade marks.[2]
[2] Relying on Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 ((Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’)
7. The Examiner referred the Holder to its prior Australian trade mark registration number 401046 for the trade mark ASTERIX in Class 9 registered for ‘all goods in the class’ and invited the Holder to consider filing evidence or use or other circumstances under the provisions of s 44. The Holder did not accept this invitation.
8. Following the 5th Notice of Provisional Refusal, the Holder asked to be heard under reg 17A.17. I heard this matter as a delegate of the Registrar of Trade Marks on 1 May 2024. Barry Newman of Armour IP Pty Ltd appeared on behalf of the Holder and filed written submissions prior to the hearing.
9. I have formed my decision based on the correspondence on file and the written and oral submissions.
10. The IRDA is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the IRDA. I must also consider afresh the grounds for rejection under s 44 maintained by the examiner, and I am not bound by the examiner’s findings. While I may consider reasoning provided by the examiner in support of the objections, ultimately I must make a decision based on my interpretation of the facts and law.
Legislative Framework
11. Regulation 17A.24 states:
Final decision on examination
(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it.
(2) The Registrar may accept the IRDA subject to conditions or limitations.
(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it, in whole or in part.
12. The only unresolved ground for rejection to the IRDA is under s 44 which relevantly provides:
Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note:For limitations see section 6.
Discussion
13. For the Cited Marks to constitute valid objections to the extension of protection of the IRDA, they must be a trade mark registered or sought to be registered by a person other than the Holder and:
·have a priority date which is earlier than that of the IRDA (‘the first requirement’);
·be in respect of goods and/or services that are similar or closely related to the Holder’s Goods and Services (‘the second requirement’); and.
·be substantially identical with or deceptively similar to the Trade Mark (‘the third requirement’).
14. The Cited Marks are in the name of someone other than the Holder and each have an earlier priority date than the IRDA. The first requirement is therefore satisfied. I now turn to the question of whether the goods and services of the Cited Marks are goods and/or services that are similar or closely related to the Holder’s Goods and Services.
15. Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[3] The factors relevant to the consideration of whether goods are similar include the nature, purpose, use, source of manufacture and respective trade channels of the goods and whether the ordinary consumer of the goods would regard the goods as being from a single source.[4] No single consideration is conclusive in itself.[5]
[3] s 14(1).
[4] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) (‘Southern Cross’).
16. In considering the Holder’s goods and the goods of the Cited Marks, I should look to the ordinary meaning of the words and the notional normal and fair use. I should consider the context in deciding whether ordinary consumers of the goods would see the goods as having the same trade origin.[6]
[6] Ibid. See also E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).
17. In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J in considering ‘goods of the same description’ in the context of a s 92 removal action said:
Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[7]
[7] (2020) 158 IPR 9, [286].
18. The test for whether goods and services are closely related is not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’):
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[8]
[8] [1999] FCA 1020, [37].
19. His Honour went on to observe that “the relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” citing Lockhart J in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co:[9]
[9] [1983] FCA 143, 150.
Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.
20. As a preliminary point, upon review of the Holder’s Goods and Services and the goods and services of the Cited Marks, I do not consider the Holder’s goods and services in classes 16, 28, 35 or 41 to be similar or closely related to the goods and services of the Cited Marks. The natures, purpose, uses, sources of manufacture and respective trade channels of these goods and services differ from those of the Cited Marks such that any ordinary consumer of the goods and services would not regard these goods and services as being from a single source.
21. I am also of the opinion, on the same bases as stated above, that other than those goods in class 25, the Holder’s goods do not conflict with the goods of the 211 Mark and other than those goods in class 9, the Holder’s goods do not conflict with the goods or services of the 510, 525 and 916 Marks. This leaves a comparison of the Holder’s goods in classes 9 and 25 with the goods and services of the Cited Marks.
22. I propose to discuss the 211 Mark separately to the Digium Marks, which will be considered together.
23. In respect of each of the Cited Marks, the Holder has not provided any submissions as to whether the Holder’s Goods and Services are similar or closely related to the goods and services of the Cited Marks.
211 Mark
24. Below is a table of the Conflicting Class 25 Goods of the 211 Mark and the Holder’s class 25 goods.
211 Mark
Holder’s goods
Class 25: Wearing apparel, including, shirts, T-shirts, hats, caps, visors, shorts, pants, belts, shoes, swim shirts and socks
Class 25: Clothing, footwear, headwear.
25. Clearly the goods of the 211 Mark falls squarely within the Holder’s broad claim to ‘clothing, footwear and headwear’. Therefore, the second requirement is satisfied for the 211 Mark.
510, 525 and 916 Marks
26. Below is a table of the goods of the 510, 525 and 916 Marks and the Holder’s class 9 goods.
Goods of the 510, 525 and 916 Marks
Holder’s class 9 goods
510 Mark
Class 9: Open source computer software that creates a public branch exchange telephone network that may be downloaded from a global computer network
525 Mark
Class 9: Open source computer software that creates a public exchange telephone network branch, downloadable from a global computer network
916 Mark
Class 9: Computer telephony software; computer telephony hardware
Class 9: Apparatus for sound or image recording, transmission, storage, reproduction; interactive and non-interactive magnetic recording media; computer applications in the field of comics, information and education; downloadable mobile applications in the field of comics, information and education; holograms; animated films and cartoons; cinematographic films; data processing equipment and computers and peripherals therefor; pre-recorded game programs; interactive multimedia software; video game software; software for provision of access to a computer or data transmission network, particularly to a global communication network (such as the Internet) or to a private or restricted network (such as an intranet); downloadable electronic publications; software for downloading, accessing, publishing, displaying, tagging, blogging, broadcasting, linking, sharing or otherwise providing electronic content or information via computer and communications networks in the field of comics, information and education; eyewear; telephony devices; fire extinguishers.
27. In my opinion, the natures, uses and trade channels of the Conflicting Class 9 Goods are of the same description as the goods of the 510, 525 and 916 Marks for the following reasons:
·the claim to ‘Apparatus for sound or image recording, transmission, storage, reproduction’ is not limited and would therefore include computers and telephones which can record sounds and images and transmit, store and reproduce the same.
·the claim to computers and data processing equipment without any limitation would include computers containing telephony hardware and data processing equipment such as phones.
·the claim to software for provision of access to a computer or data transmission network would include computer telephony software as computer telephony software allows internet-enabled devices such as mobile phones, laptops, and desktops to make and receive phone calls and therefore is software which allows access to, inter alia, computers.
·telephony is defined as ‘the use or a system of telephones’.[10] Therefore, the claim to telephony devices would include the telephone systems and devices of old as well as any communications technology devices such as routers, switches, computers and telephone handsets, amongst others. I do not believe that software is a device and therefore computer telephony software does not fall under the embrace of telephony devices. However, I believe that telephony devices are a good of the same description as computer telephony software. Their natures may differ but the purpose, use, source of manufacture and respective trade channels of the goods are similar as they are all for telephony and in my opinion, the ordinary consumer of the goods would regard the goods as being from a single source.
[10] Australian Oxford Dictionary 2nd edition online. The definition in the Macquarie Dictionary Online is less helpful being ‘the practice of constructing or operating telephones’.
28. I do not believe that the balance of the Holder’s class 9 goods are similar to the goods of the 510, 525 and 916 Marks. The natures, purpose, uses, sources of manufacture and respective trade channels of the balance of the Holder’s class 9 goods (‘Holder’s remaining Class 9 Goods’) differ from those of the goods of the 510, 525 and 916 Marks such that any ordinary consumer of the respective goods would not regard these goods as being from a single source.
29. Below is a table of the Class 42 services of the 916 Mark and the Holder’s remaining Class 9 Goods:
Services of 916 Mark
Holder’s remaining Class 9 Goods
Class 42: Computer hardware and software development; technical support services, namely, troubleshooting of computer hardware and software problems
Class 9: downloadable mobile applications in the field of comics, information and education; holograms; animated films and cartoons; cinematographic films;; pre-recorded game programs; video game software; downloadable electronic publications; software for downloading, accessing, publishing, displaying, tagging, blogging, broadcasting, linking, sharing or otherwise providing electronic content or information via computer and communications networks in the field of comics, information and education; eyewear; fire extinguishers.
30. In my opinion, for the reasons that follow, the Holder’s remaining Class 9 Goods other than ‘holograms, animated films and cartoons, cinematographic films, eyewear and fire extinguishers’ and the software development and trouble shooting services covered by the 911 Mark are closely related. There is a clear relationship between computer software and the development and troubleshooting of computer software. Without the development of computer software, there would be no software. Further, consumers expect that the manufacturers and developers of computer software also provide troubleshooting services. The services in the 916 Mark are not limited as to the development or troubleshooting of any particular type of computer software. Additionally, computer software and the development and troubleshooting of the same would cease to exist without each other, thus creating an expectation of a common source.[11]
31. The goods ‘holograms, animated films and cartoons, cinematographic films, eyewear and fire extinguishers’ on the other hand have different natures, uses and trade channels and are not closely related to the services of the 916 Mark.
[11] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).
Therefore, the second requirement has been satisfied in respect of the following Holder’s goods:
computer applications in the field of comics, information and education; downloadable mobile applications in the field of comics, information and education; pre-recorded game programs; interactive multimedia software; video game software; software for provision of access to a computer or data transmission network, particularly to a global communication network (such as the Internet) or to a private or restricted network (such as an intranet); software for downloading, accessing, publishing, displaying, tagging, blogging, broadcasting, linking, sharing or otherwise providing electronic content or information via computer and communications networks in the field of comics, information and education;
(‘Subset Goods’)
33. I now turn to the question of whether the Trade Mark is substantially identical or deceptively similar to one or more of the Cited Marks.
Substantial Identity
34. The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[12] where his Honour stated at 414:
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.
35. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.
36. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[13] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:
The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.
37. Whether there is substantial identity is a question of fact.[14]
38. The table below shows the comparison of the marks in issue:
[12] (1963) 109 CLR 407 (‘Shell’).
[13] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).
[14] Ibid [53].
Holder’s Mark
Cited Marks
ASTERISK
39. The Holder submits that the Trade Mark is clearly not substantially identical to the Cited Marks and I agree. In my opinion, compared side by side as a whole, the Trade Mark has visual and aural differences in the different device elements of the marks and the different spelling of the word elements of the marks and as a consequence, there is a total impression of dissimilarity and the Trade Mark is not substantially identical with the any of the Cited Marks.
Deceptive Similarity
Section 10 provides a definition of deceptively similar being that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.
Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:
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 [mark].[15]
[15] Shell (n 12), 416.
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Self Care’)[16] conveniently stated the relevant principles, which may be summarised as follows:
[16] Self Care (n 2).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[17]
[17] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[18]
[18] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[19]
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[20]
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[21]
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[22]
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[23]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [24]
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[25]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[26]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[27] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[28]
[19] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[20] Ibid.
[21] Ibid.
[22] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[23] Shell (n 12), 415.
[24] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[25] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[26] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross (n 5), 594 - 595.
[27] Australian Woollen Mills Ltd (n 19).
[28] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 19), 657.
Justice French expressed the view in Woolworths[29] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[30]
[29] Woolworths (n 26), [39].
[30] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
In relation to the comparison of marks, the Full Court said in Starr Partners Pty Ltd v Dev Prem Pty Ltd:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[31]
[31] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).
Consideration of the question of deceptive similarity proceeds from a premise that is hypothetical rather than actual.[32] But, importantly, the hypothesis is knowledge of the mark as registered, even though in undertaking the analysis of deceptive similarity allowance must be made for the imperfect recollection of that mark.[33]
[32] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [97] (Yates J).
[33] The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203 [60 - 61] (Yates, Markovic and Kennett JJ) (‘Agency Group’).
In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of, on the one hand, the Trade Mark, and on the other, the Cited Marks. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Cited Marks are used and the circumstances in which the goods are and will be sold.
Prior to doing so, I note that the Holder has submitted that reputation is a relevant factor in considering deceptive similarity and therefore Self Care should not apply to a consideration of deceptive similarity under s 44. I do not agree. The reasoning in Self Care is applicable to s 44. Even prior to Self Care, the Full Federal Court in Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd observed:
The notional consumer’s imperfect recollection of the registered mark is central to the test for deceptive similarity. The authorities make clear it is the imperfect recollection of the mark as registered, not any knowledge about the actual use of the mark, or any reputation associated with the mark.[34]
[34] [2022] FCAFC 157, [77] (Yates, Abraham and Rofe JJ) (emphasis added).
Post Self Care, the Courts have followed the reasoning in Self Care.[35]
[35] See McD Asia Pacific LLC v Hungry Jack's Pty Ltd [2023] FCA 1412 (Burley J); Ragopika Pty Ltd v Padmasingh Isaac t/as Aachi Spices and Foods [2023] FCA 487 (Kennett J) and Agency Group (n 33).
Deceptive similarity should be treated the same under both ss 44 and 120, particularly given the term has a common definition under s 10.
It is convenient to discuss the 211 Mark and the 510 Mark separately and to discuss the 525 Mark and the 916 Mark together, as they are both for the word ASTERISK.
211 Mark
The Holder argues that:
·the impression of the Trade Mark is a cartoon person above an invented word ASTERIX and the impression of the 221 Mark is a punctuation symbol with the word ASTERISK describing the punctuation symbol.
·in both marks, the device element is significantly larger and more dominant that the word element.
·the only common element is the aural similarity of the words in the marks.
·there is no possibility of confusion.
Here, the hypothesis is that potential customers of the Conflicting Class 25 Goods know, but may have an imperfect recollection of, the particular stylised form of the 211 Mark, not just knowledge of, and an imperfect recollection of, the word ASTERISK.
Visually, as a whole, the marks do not look alike. The 211 Mark consists of a highly stylised and very prominent representation of an asterisk punctuation mark together with the much smaller word ASTERISK. Each part of the mark reinforces the other as the word ASTERISK, it is the name of the punctuation mark. In contrast, the Trade Mark consists of a very prominent and visually striking cartoon character of a man which occupies a central position within the Trade Mark with the significantly smaller invented word ASTERIX beneath. There is no asterisk or any hint of an asterisk in the Trade Mark. Given the placement of the word ASTERIX in the Trade Mark and the fact that it has no meaning, the word ASTERIX is likely to be perceived as the name of the cartoon character.
54. While the word elements ASTERISK and ASTERIX are in my view nearly phonetically identical, the respective marks are both composite marks. As such, as a whole, the device elements of the marks connote different ideas and connotations. The suggestion of different ideas, here the idea of an asterisk compared to the idea of the name of a character, may serve to reduce the risk of confusion.[36]
[36] Jafferjee v Scarlett (1937) 57 CLR 115, 121-122 (Latham CJ, Dixon and McTiernan JJ).
The commonality of idea is part of the process of determining if the marks look or sound alike. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, the High Court observed:
[t]he 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.[37]
[37] (1952) 86 CLR 536, 539 (Dixon CJ, Williams, McTiernan, Webb and Kitto JJ).
In my opinion, the impression (allowing for imperfect recollection) that the notional buyer would have of the 211 Mark would not be the word ASTERISK alone as the representation of the asterisk is such a striking and distinctive part of this mark. Further, the different ideas behind the marks and the different connotations would lessen the likelihood of consumer confusion as to the origin of goods bearing the Trade Mark.
In addition, it is less likely that the Conflicting Class 25 Goods will be requested by oral reference to the trade marks rather than by visual inspection. In my experience, trade marks for clothing are generally displayed on a label or even on the clothing itself e.g. emblazoned on the front of the clothing or the side or the underneath of a shoe. Clothing is also selected by customers from racks and shelves or from photographs online with little or no intervention from sales staff other than to request a size or to try on the product. Therefore, for clothing, visual differences carry the greater weight.
As Burchett J said in Conde Nast Publications Pty Ltd v Taylor:
This aspect of the matter seems to me to have greater importance in a case, such as the present, where the goods sold under a trade mark are goods likely to be subjected to a careful visual examination by any intending purchaser, or even by any person whose interest in them is at all aroused. The appearance of ladies’ clothing and men’s casual wear is very important. Consumers will not purchase these items over the telephone, or otherwise by a spoken reference to the mark, but will examine them and very often try them on in boutiques or shops. Recognition of the mark will be visual.[38]
[38] (1998) 41 IPR 505, 510.
Having assessed the visual, aural, and conceptual similarities and differences between the respective marks, and after giving weight to the possibility of imperfect recollection and therefore the possibility that consumers may not remember specific details of the respective marks, but instead may recall their general idea or appearance, I find there is no real tangible risk of deception or confusion. Therefore, the Trade Mark is not deceptively similar to the 211 Mark.
510 Mark
The Holder argues that:
·the appearance and impression of the respective marks differ.
·the consumers of goods of the 510 Mark are highly sophisticated users of communication technology and would not be confused between the marks.
·given that the goods of the 510 Mark are limited to those downloadable from a global computer network i.e. the internet, any engagement with the 510 Mark is visual and not aural.
·the goods of the 510 Mark are not of the same description as the Conflicting Class 9 Goods other than telephony devices, as the goods of the 510 Mark are highly specialised software.
Before discussing deceptive similarity, I make the following comments regarding the Holder’s submission that the goods of the 510 Mark are limited to those downloadable from a global computer network. I disagree with the Holder. The goods of the 510 Mark are not limited to those which are downloaded from a global computer network as the claim includes the word ‘may’. Therefore, the claim covers ‘Open source computer software that creates a public branch exchange telephone network’ per se.
Turning to deceptive similarity, here, the hypothesis is that potential customers of the Holder’s class 9 goods know, but may have an imperfect recollection of, the particular stylised form of the 510 Mark, not just knowledge of, and an imperfect recollection of, the word Asterisk.
For similar reasons stated above for the 211 Mark, visually, as a whole, the marks do not look alike. As with the 211 Mark, the 510 Mark consists of the well known asterisk punctuation mark and the word Asterisk. Further the asterisk punctuation mark is enclosed in a speech bubble which further highlights the punctuation mark. Again, each part of the mark reinforces the other as the word Asterisk, is the name of the punctuation mark. In contrast, the there is no asterisk or any hint of an asterisk in the Trade Mark.
While the word elements ASTERISK and ASTERIX are nearly phonetically identical, the respective marks are both composite marks. As such, as a whole, the device elements of the marks suggest different ideas and connotations. For similar reasons stated above for the 211 Mark, the different ideas behind the marks and the different connotations would lessen the likelihood of consumer confusion as to the origin of goods bearing the Trade Mark.
I agree with the Holder that the goods of the 511 Mark are highly specific types of software for sophisticated users of communications technology. The goods have a specific purpose to enable a telephone exchange network. The average consumer is not the target customer for this software. The goods are only relevant to those with a specific need of a telephone exchange network.
In contrast, while much of the Holder’s class 9 goods may be bought by the average consumer, these goods are not of the kind that are purchased at a whim. Consumers are more likely to take time to assess and research a product before purchase. While some of the goods arguably fall into the category of fast moving consumer goods e.g. telephony devices such as mobile phones, these goods are not in the same category as, for example, food and beverage products which can be impulse buys. Therefore, it is less likely that consumers would be deceived or confused.[39]
[39] Hypertec Pty Ltd v Kabushiki Kaisha Tec [1996] ATMO 20 (Hearing Officer Zars).
In the end, compared as a whole, even allowing for imperfect recollection, I am not satisfied that there is a real tangible danger of confusion between the Trade Mark and the 510 Mark. Therefore the Trade Mark is not deceptively similar to the 510 Mark.
525 and 916 Marks
The Holder argues that:
·the appearance and impression of the respective marks differ
·the consumers of goods of the 525 and 916 Marks are highly sophisticated users of communication technology and telephony software and would not be confused between the marks
Here, the hypothesis differs in that the comparison is now between the word ASTERISK and the Trade Mark.
Visually, as a whole, the marks contain obvious differences. In contrast to the Trade Mark which consists of a visually striking. centrally positioned, cartoon character of a man with the invented word ASTERIX beneath, the 525 and 916 Marks consist solely of the well known word ASTERISK. Even allowing for imperfect recollection, the prominent device element of the Trade Mark cannot be disregarded. It is well established that the trade marks must be considered in their entirety.[40]
[40] Clark v Sharp (1898) 15 RPC 141, 146.
71. Aurally however, the words ASTERISK and ASTERIX are nearly phonetically identical. Given that ASTERIX is the only word in the Trade Mark, it is obvious that this element has greater relevance in an aural comparison of the marks. Further, as consumers will more naturally refer to a word when ordering a product where a trade mark combines a device with a word,[41] similarities between the verbal features of the marks may give rise to confusion notwithstanding that one of the marks has an accompanying device and the other does not.[42]
[41] Golden Crumpet Co Australasia v Hardings Manufacturers Pty Ltd (1987) 8 IPR 147, 154 (Hearing Officer Nancarrow).
[42] Plantmark Pty Ltd v Wal-Mart Stores, Inc [2003] ATMO 9 (Hearing Officer Skivington).
72. Given the word elements in the trade marks are nearly phonetically identical, even though the Trade Mark has a visual difference namely the cartoon character device, in my opinion, this device element does not serve to sufficiently differentiate the marks and thus remove the likelihood of confusion or cause to wonder. The device element in the Trade Mark does not overwhelm the identity of the virtually phonetically equivalent word ASTERIX and thus the word elements of the marks will inform the basis for any recollection (imperfect or otherwise) of the trade marks by a potential purchaser.
73. The context of the comparison is of course relevant and here that is purchasers of the 525 Goods, the 916 Goods and Services and the Holder’s class 9 goods. The Holder states that the consumers of goods of the 525 and 916 Marks are highly sophisticated users of communication technology and telephony software and would not be confused between the marks. While I agree with respect to the 525 Goods the 916 Goods and Services are in a different category. The 916 Goods and Services cover telephony computer software and hardware, computer hardware and computer software development services and troubleshooting of computer hardware and software problems. While consumers of these goods and services may include highly sophisticated users, I consider the broad markets for these goods and services are the average consumer. Based on my experience alone, I often require the services of a third party to troubleshoot computer hardware and software problems, including on my mobile phone.
74. Thus, the consumers of the respective goods and services can be the same and cannot be described solely as either sophisticated or those that are more likely to take time to assess and research a product or service before purchase. Further, there is nothing to suggest that the Holder’s class 9 goods and the 916 Goods and Services are not requested verbally either instore or over the telephone.
75. I am satisfied that a number of customers would be caused to wonder whether it might not be the case that the respective goods and services come from the same source.
76. In light of the above, it is most likely that the respective marks will be notionally used both orally and visually in the normal course of the trade. When the respective marks are used orally they will be virtually indistinguishable from each other. Thus, when the Trade Mark is compared to the 525 and 916 Marks, the Trade Mark does not have sufficient aural differences to render confusion unlikely.
77. Having assessed the visual, aural, and conceptual similarities and differences between the 525 and 926 Marks and the Trade Mark and the context described in the preceding paragraphs of this decision, and after giving weight to the possibility of imperfect recollection and therefore the possibility that consumers may not remember specific details of the respective marks, but instead may recall their general idea or appearance, I find there is a real, tangible danger of confusion. Therefore the Trade Mark is deceptively similar to the 525 Mark and the 916 Mark.
78. The Holder did not submit that the application could proceed under the provisions of ss 44(3) and/or 44(4) of the Act which make provision for the Holder to overcome a s 44 ground of opposition on the basis of prior continuous use, honest concurrent use or other circumstances which would make registration proper. The Holder did however submit a declaration made by Barry Newman on 22 March 2024 with Exhibits BSN-1 to BSN 4, BSN-6 to BSN-7 and Confidential Exhibit BSN-5. The declaration sought to provide evidence of the reputation of the trade mark ASTERIX throughout Australia and the world. I note that there is no evidence in the declaration of use of the ASTERIX mark or the Trade Mark in respect of any of the Subset Goods. Any evidence of reputation in the declaration is limited to children’s literature and entertainment, books, films, board games, video games and a theme park. The evidence is insufficient to support a claim to prior continuous use or honest concurrent use.
79. As previously noted, the Holder is the owner of Australian trade mark registration number 401046 for the trade mark ASTERIX in Class 9. The filing date of this trade mark was 12 December 1983. I have given consideration as to whether this fact alone is an ‘other circumstance’ under s 44(3)(b). allowing me to exercise my discretion to protect the IRDA notwithstanding a real risk of deception or confusion.
80. I have nothing before me other than a registration filed over 40 years ago from which to consider the commercial realities which will make the protection of the IRDA proper. While it is clear the Holder has the earliest rights by a number of years, it may be that the Holder has, in these 40 years, never used the ASTERIX trade mark on any of the Subset Goods.
81. I am not satisfied that I should exercise my discretion under s 44(3)(b) when the degree of similarity between the trade marks and the goods and services is high and there is no evidence from the Holder of use of the ASTERIX mark in respect of any of the Subset Goods showing continuous use in Australia. As such, I cannot be satisfied that there are other circumstances which would make the application of s 44(3)(b) appropriate.
Decision
82. Regulation 17.24 states:
Final decision on examination
(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a)it is not in accordance with this Division; or
(b)there are grounds for rejecting it.
(2)The Registrar may accept the IRDA subject to conditions or limitations.
(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a)it is not in accordance with this Division; or
(b)there are grounds for rejecting it, in whole or in part.
83. Pursuant to this regulation, I must accept the IRDA unless there are grounds for rejecting it under the Act.
84. As the Trade Mark is not substantially identical or deceptively similar to trade mark registration number 902211, I am satisfied that no ground for rejection under s 44 applies to the Holder’s class 25 goods and therefore I accept the IRDA for possible extension of protection in Australia in respect of the Holder’s goods in class 25.
85. As the Trade Mark is deceptively similar to trade mark registration numbers 1082525 and 1270916, the Subset Goods conflict with the goods and services of these registrations and s 44(3)(a) and (b) do not apply, I am satisfied that a ground for rejection under s 44 applies to the Subset Goods, which as a consequence are rejected. For clarity, the rejected goods are:
Class 9: Apparatus for sound or image recording, transmission, storage, reproduction; computer applications in the field of comics, information and education; downloadable mobile applications in the field of comics, information and education; data processing equipment and computers and peripherals therefor; pre-recorded game programs; interactive multimedia software; video game software; software for provision of access to a computer or data transmission network, particularly to a global communication network (such as the Internet) or to a private or restricted network (such as an intranet); downloadable electronic publications; software for downloading, accessing, publishing, displaying, tagging, blogging, broadcasting, linking, sharing or otherwise providing electronic content or information via computer and communications networks in the field of comics, information and education; telephony devices
86. If, however, the Registrar has been served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
22 May 2024
Annexure A
Class 9: Apparatus for sound or image recording, transmission, storage, reproduction; interactive and non-interactive magnetic recording media; computer applications in the field of comics, information and education; downloadable mobile applications in the field of comics, information and education; holograms; animated films and cartoons; cinematographic films; data processing equipment and computers and peripherals therefor; pre-recorded game programs; interactive multimedia software; video game software; software for provision of access to a computer or data transmission network, particularly to a global communication network (such as the Internet) or to a private or restricted network (such as an intranet); downloadable electronic publications; software for downloading, accessing, publishing, displaying, tagging, blogging, broadcasting, linking, sharing or otherwise providing electronic content or information via computer and communications networks in the field of comics, information and education; eyewear; telephony devices; fire extinguishers.
Class 16: Printing products (printed matter); posters, postcards, books and particularly children's books and books for young people, newspapers, periodicals, magazines; comic strips; calendars and agendas; photographs; lithographs; stationery; writing paper, envelopes [stationery], printed invitations; adhesives for stationery or household purposes; artists' materials; paintbrushes; instructional or teaching material (except apparatus); writing instruments; rubber erasers; stickers; transfers (decalcomanias); plastic materials for packaging (not included in other classes); stamps; paper napkins and tablecloths; printing type; printing blocks; coloring books.
Class 25: Clothing, footwear, headwear.
Class 28: Games; toys; stuffed toys, puppets and figurines (toys); playing cards; parlor games; jigsaw puzzles; game apparatus other than those adapted for use with an external display screen or monitor; play balloons; novelties for parties; gymnastic and sports articles not included in other classes; theme park attractions and rides; ornaments for Christmas trees (except illumination articles).
Class 35: Advertising and publicity promotion; marketing services; commercial business management, particularly via the Internet (e-commerce); administrative services in the context of drawing up and concluding franchising contracts and operating contracts for theme parks [arranging contracts for provision of services for third parties]; merchandising activities; sales promotion for others; public relations services; newspaper, magazine and periodical subscription services; dissemination of advertising material (leaflets, prospectuses, printed matter, samples); assistance and consulting relating to advertising and promotional advertising, marketing and company communication; organization of events and exhibitions for commercial, promotional and advertising purposes.
Class 41: Education; training; entertainment services in the form of amusement parks and theme parks; providing amusement parks and theme parks; production of shows for amusement parks and theme parks; publication and editing of books, comic strips, newspapers and periodicals; on-line publishing services; services provided by clubs dedicated to comic strip characters [entertainment]; games and competitions organization and services (education or entertainment); organization of exhibitions for cultural or educational purposes; organization and conducting of training workshops; design, direction, production, post-production, editing, mixing, distribution and performance of audiovisual programs, films for the cinema and television, animated cartoons, radio programs and shows; entertainment, including audiovisual, multimedia, radio entertainment and entertainment via global communication networks (the Internet) or private or reserved access networks (Intranet); sports training and fitness services; animal training.
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