Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor

[2022] HCATrans 221

[2022] HCATrans 221

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No. S79 of 2022
  No. S80 of 2022

B e t w e e n -

SELF CARE IP HOLDINGS PTY LTD (ACN 134 308 151)

First Appellant

SELF CARE CORPORATION PTY LTD (ACN 132 213 113)

Second Appellant

and

ALLERGAN AUSTRALIA PTY LTD (ACN 000 612 831)

First Respondent

ALLERGAN, INC.

Second Respondent

KIEFEL CJ
GAGELER J
GORDON J
EDELMAN J
GLEESON J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA AND BY VIDEO CONNECTION

ON WEDNESDAY, 14 DECEMBER 2022, AT 9.45 AM

(continued from 13/10/22)

Copyright in the High Court of Australia

____________________

MR A.J.L. BANNON, SC:   May it please the Court, I appear for the appellant in that matter with my learned friend, MR A.R. LANG, SC.  (instructed by Gilbert + Tobin)

MR J.T. GLEESON, SC:   May it please the Court, I appear again with MR H.P.T. BEVAN, SC and MS K.I.H. LINDEMAN, for the respondents.  (instructed by Griffith Hack Lawyers)

MS J.M. BEAUMONT, SC:   May it please the Court, I appear with my learned friend MS G.R. RUBAGOTTI as amicus curiae.

KIEFEL CJ:   Thank you.  Are we hearing from you first, Ms Beaumont?

MS BEAUMONT:   Yes, I think so, your Honour.

KIEFEL CJ:   Yes, thank you.

MS BEAUMONT: Your Honours, I propose to follow the outline provided. Contrary to the parties’ submissions, there are circumstances when it is appropriate, in our submission, to take into account the reputation of a registered trade mark in assessing deceptive similarity between that mark and an allegedly infringing mark for the purposes of section 120(1) of the Trade Marks Act 1995.

The meaning of reputation in this context is what the mark has come to mean to consumers or how it is perceived by the consumer because of the registered owner’s use of it.  Consumers may have, in this context, a particular perception or impression of a mark by reason of its use.  This limitation is plain from the text of section 120.  Do your Honours have to hand the Trade Marks Act and section 120?  Subsection (1) provides relevantly that:

A person infringes a registered trade mark if the person uses as a trade mark a sign that is . . . deceptively similar to, the trade mark –

the trade mark here, of course, being the registered trade mark.  Then one goes, as your Honours know, to section 10, which defines deceptive similarity as occurring where, in the 120 context, the allegedly infringing mark so nearly resembles the registered mark such that “it is likely to deceive or cause confusion”.  The rest of the assessment is left to the authorities, especially the seminal decisions of this Court in Jafferjee, Woollen Mills, Southern Cross and Shell, all referred to in our submissions.

The assessment involves the doctrine of imperfect recollection, which includes not only recollection of the visual and aural aspects of the mark, but also the idea of the mark.  The approach involves judicial estimation of the effect or impression of potential consumers based on recollection of the mark which may be imperfect.  It is uncontroversial that the statutory scheme allows owners of the registered trade marks to sue on the marks themselves without proof of reputation, by contrast, for example, with an action in passing off.

In our submission, consideration of reputation in appropriate circumstances in assessing deceptive similarity is not inconsistent with that statutory scheme.  It simply reflects the reality of how trade marks, or some trade marks, operate in the market and the impression that those marks may make on consumers.  The alternative ‑ ‑ ‑

GLEESON J:   Ms Beaumont, when you speak of what the mark has come to mean to consumers, does that also comprehend associations between the mark and some product?  So, for example, could it be said that Coca‑Cola has an association with a dark coloured fizzy drink?  Is that part of reputation?

MS BEAUMONT:   Yes, your Honour, in my submission it is.

GLEESON J:   Thank you.

GORDON J: Are we past the text yet? Because I would like to come back to the text. What I do not quite understand, and it would be very helpful if you could explain it to me, is that section 120(3), which deals with reputation in a form, was added to section 120 in response to the TRIPS, as I understand, the historical drafting of it. There has been no decided case on section 120(3) that I could find. Why would we incorporate into section 120(1) ideas about reputation when the legislation itself has addressed separately in subsection (3)?

MS BEAUMONT:   For this reason, your Honours, subsection (3) deals with use by the infringer in respect of unrelated goods.  So, if, as in this case, there is a registered trade mark within the class of goods in question, then it comes within subsection (1) because that deals with the same goods.

GORDON J:   I accept that that it is in that category, but what do we learn from section 120(3) about reputation for the purposes of (1), anything, if at all?  I raise it for this reason.  If one goes back to Woollen Mills and tracks through the cases and we accept, as I think you just put it, that the test is an ordinary consumer, if one looks at Woollen Mills itself recognising that there may be instances, and the language is something like, I think, where the mark is in fact the source of some name or verbal use which itself identifies the mark itself, that is a form of reputation.

It is not the label given to it, but it recognises, for example, if someone walks into a shop and says I want VapoRub, that is the example given, that is an ordinary consumer is buying the thing by reference to the mark.  That is one form of reputation which has long been established.  Then we have got the notorious category at the other end which is the Woolworths analysis, because that is the ordinary consumer – it is not really about reputation, but it might be seen to be a form of reputation.  The products in this case, or the marks in this case, are in neither of those categories, are they?

MS BEAUMONT:   Your Honour ‑ ‑ ‑

GORDON J:   Or they are not put in either of those categories, so the question is why would we expand the circumstances in which we might consider reputation beyond those two categories?

MS BEAUMONT:   Only in this way, your Honour, in that BOTOX, to take the simpler mark, means, to the ordinary consumer – it has no meaning by virtue it is not a word in the English language; it is an invented word.  So, when a consumer sees the word “BOTOX” or goods marked with “BOTOX” or a deceptively similar mark, the consumer naturally imports, in my submission, into his or her understanding of the mark what the mark has been used for in the past, which is a form of reputation.

GORDON J:   Can I just test that.  I thought that when we were looking at “deceptively similar” in this context, we are looking at the class of goods.  We are looking at it in the context of creams, are we not?

MS BEAUMONT:   Yes, subsection (1) deals with the use of BOTOX and the other mark in relation to class 3 creams.  But my submission is that when a consumer, confronted with the mark BOTOX or a deceptively similar mark on creams, does not put out of the consumer’s mind entirely what the consumer’s understanding of BOTOX is by reason, for example, that the consumer may have an understanding, because of the use of the mark, that BOTOX has been used in relation to anti – or for anti‑wrinkle purposes generally.

So, in the way I have just described to your Honour Justice Gordon now, taking into account this narrow form of reputation, simply reflects the practical reality of how, particularly in the case of a well‑known trade mark, may operate in the market, and the impression that consumers have.

As I submitted, the alternative propounded by the parties is highly artificial.  Their alternative is that when the court considers a mark such as BOTOX in class 3, the court assumes that the notional consumer has never heard of BOTOX; has no concept that products bearing it might be used to treat wrinkles.  Of course, the notional consumer does not have to be aware of the registered mark because the comparative exercise under the statute allows this awareness to be assumed, even for a newly‑registered and unused trade mark.  But nothing in the Act, in my submission, requires the converse.  That is, nothing in statutory text suggests that every registered mark is somehow deemed to be unused or unknown.

The parties submit, in various ways, that the cases give no support for infringing reputation as a factor to counter or favour a finding of deceptive similarity.  But in our submission, they gloss over some cases that do this very thing; many of them we have described in our written outline, in our written submissions, especially from paragraphs 57, but it is useful, in my submission, to go to a few of them and not many, in chronological order.  I will start with the decision of Justice Gummow, which appears in the supplementary joint book of authorities at part D, at tab 22, page 326.  The reason I go to this decision is partly because it is a 1993 decision, so it is prior to the Full Court’s decision in Woolworths.  The relevant question was whether the mark “BAND»IT” in the form appearing at page –

KIEFEL CJ:   This is the decision in Johnson & Johnson v Kalnin.

MS BEAUMONT:   Yes, thank you, your Honour.  And if your Honours go to page 328 of the Court book, around line 15, your Honours will see ‑ ‑ ‑

KIEFEL CJ:   I am sorry, page 3?

MS BEAUMONT:   Page 328 ‑ ‑ ‑ 

KIEFEL CJ:   Page 328, thank you.

MS BEAUMONT:   ‑ ‑ ‑ of the book, it is 217 of the report.  Around line 15 is set out the relevant mark, and this was a registration case, I should say, so BAND»IT was the mark that was the application for registration, and the question was whether it was deceptively similar to the word mark “BAND‑AID” spelt in a manner set out at the bottom of the previous page, at 327 of the book.

At the bottom of page 328, about line 45, his Honour Justice Gummow sets out the grounds of opposition to registration under consideration.  This is under the 1955 Act, so the predecessor to the 1995 Act.  They were first section 28(a).  I will not take your Honours to it.  It does appear in the supplementary joint bundle of authorities at page 328.  But it has no direct analogue in the 1995 Act, although it is reflected in a combination of sections 43 and section 60.  It prohibited registration of a mark:

the use of which “would be likely to deceive or cause confusion” –

In the context of this case, that involved a consideration of the reputation of the BAND‑AID mark.  The second ground of opposition was under section 33 of the 1955 Act which is the equivalent to section 44 of the present Act.  Relevantly, registration was prohibited if the mark was deceptively similar to a registered mark.  “Deceptively similar” was defined in section 6(3) in the same terms as our current section 10.

If your Honours turn to court book page 331, in the penultimate paragraph his Honour states his conclusion that the BAND»IT mark so nearly resembles the BAND‑AID mark “as to be likely to deceive or cause confusion.”

GORDON J:   Sorry, where are you reading from?

MS BEAUMONT:   I am reading from the bottom of page 331 of the book.

GORDON J:   Thank you.

MS BEAUMONT:   I am reading from the bottom of page 331 of the book, or page 220 of the report.  That is plainly a reference to the section 33 ground which imported the section 6 definition, so nearly resembling to be likely to deceive or cause confusion.  Then his Honour follows with his reasoning.  First, his Honour considers “visual appearance”, and this is in the last paragraph at the bottom of court book page 331, and on page 332 at about line 8 his Honour observes that:

weight has to be given to the . . . so‑called doctrine of imperfect recollection.

In that context, in the next paragraph, his Honour addresses a submission that the BAND‑AID mark:

is so famous in Australia that the likelihood of any imperfect recollection should be discounted.

His Honour does not accept that submission in this case but he addresses it, and his Honour does not say it would be impermissible to take reputation into account in the section 33 context.  To the contrary, his Honour refers to:

the process of perception and recognition of a word –

And he turns then, at about line 20 on that page, to an “aural comparison”.  Then from about line 25 his Honour states his conclusions on both the sections 28 and 33 grounds, that the marks deceptively similar.

I should add here, as we have put in writing, her Honour Justice Branson dissenting in the Woolworths case said that, in her view, this analysis appeared ‑ that the fame of the trade mark submission appeared to be being addressed in the context of section 28, not section 33, but for the reasons that I have just been through, his Honour’s reasoning follows exactly the reasoning that one follows in assessing deceptive similarity either for an infringement or a registration purpose.  There is also a reference to imperfect recollection, which in my submission relates to the section 33 ground.

I will take your Honours now to another decision that your Honours have already seen.  It is in the original joint bundle, the Coca-Cola v All‑Fect decision.  In the original bundle at part D, tab 18.  And if your Honours go to page 406 of the court book your Honours will see that the relevant comparison was between the Coca‑Cola’s contour bottle mark and the respondent’s cola flavour confectionary made in a similar contour bottle shape.

It has been said against us that this case dealt with an infringement decision under subsections (2) and (3) of section 120 rather than (1), but the Full Court’s consideration here did not involve subsection (3) at all and your Honours will see that at the bottom of page 420 of the court book, paragraph 44.  I certainly accept that it was a section 120(2) case, but the chapeau of both subsection (1) and subsection (2), where deceptive similarity comes in, is relevantly identical.

If your Honours go to page 418 of the court book, at paragraph 39 at the bottom of the page, your Honours will see that their Honours, the Full Court, were considering the issue of deceptive similarity at this point.  And then moving back to page 420, having set up the well‑established principles, their Honours refer to the imperfect recollection doctrine about halfway down the paragraph and then set out their reasons for concluding that consumers are likely to be confused or caused to wonder whether the products come from the same source, because of each of the matters set out in the subsequent bullet points.  Most of the bullet point reasons related to visual similarities, but the first reason plainly refers to reputation that:

the contour bottle is extremely well‑known –

Then, their Honours go on and consider under a new heading, the next aspect of subsection (2) of section 120, which does not appear in subsection (1), which is that the person is not taken to have infringed the trade mark if the person establishes, using, as they actually did, that it is not likely to deceive or cause confusion.  So, a bit like a passing off action in that one is looking at all the circumstances of the defendant’s use.

That, of course, does not come into subsection (1) but my point in raising it is that the relevant part where their Honours considered reputation would apply equally to a subsection (1) analysis.  Of course, there are other decisions going the other way in applying the Woolworths proposition.  There is the Mars Australia v Sweet Rewards case – I will not take your Honours to it now – but it was, of course, the Maltesers Case, and in that case, reputation counted against the owner of the well‑known senior mark – or registered mark – Maltesers – in assessing deceptive similarity in the infringement context.

A few years later, reputation was taken into account in another infringement case.  Do your Honours have – this was provided to the Court late yesterday – the decision of Adidas v Pacific Brands Footwear (No 3) (2013) 308 ALR 74 – the decision of Justice Robertson.

EDELMAN J:   Which tab is that?

MS BEAUMONT:   It is not in the bundle, your Honour, it is a separate decision.  Does your Honour have a copy – we can hand up the further copy.

EDELMAN J:   Yes, I do.

MS BEAUMONT:   Thank you.  This was a trade mark infringement case under subsection (1) of section 120.  Notably, there was no passing off case or ACL claim – so purely 120(1).  The marks that Adidas – the applicant – sued on are set out at paragraph [5], on pages 76 and 77 of the report.

Your Honours will see they consisted of three stripes applied to shoes in the manner there depicted.  A number of the respondent’s four stripes devices on shoes were found to infringe – there were a number of four‑stripes devices on shoes that were considered, not all were found to be infringing – some were, such as those shown on pages 121 and 122 but from paragraph [69], his Honour considered in detail deceptive similarity and at page 110, paragraph [218], his Honour agreed with the submission of Adidas that in assessing a consumer’s imperfect recollection, the fame or notoriety of the mark tended:

in favour of a finding of deceptive similarity.

GORDON J:   What paragraph is that, sorry?

MS BEAUMONT:   Paragraph [218], your Honour, on page 110.

GORDON J:   So, I come back to the question I asked you at the outset.  The three cases you have taken to us – this one is about notoriety – so it is at what I might call one end of the spectrum.  Coca‑Cola was in a similar category.

MS BEAUMONT:   Yes.

GORDON J:   And as was the Johnson & Johnson case.  Have we got anything where we have actually used it in a what I will call the middle ground?

MS BEAUMONT:   Not that I am aware of, your Honour, no.

GORDON J:   Thank you.

MS BEAUMONT:   At paragraph [219], his Honour distinguished the Maltesers Case – so, taking into account fame but, in this case, on the facts, his Honour determined that the fame did not work in that way.

GORDON J:   Do you think that is because it can work both ways in those cases?

MS BEAUMONT:   Yes, your Honour, I do.  I think there is no logical reason why reputation should only be taken into account one way, and I will come to that in a moment, but yes.  I will turn now, briefly, to the decision of the Full Court in the Henschke case; that is in the original bundle, part D at tab 16, page 365 of the court book.  The passage, if your Honours go particularly to the passage at paragraph [44], their Honours start their analysis at paragraph [36] on court book, page 363.

Paragraph [44] on page 365 is a passage that is quoted and relied on in the subsequent Full Court decisions – Australian Meat Group and Swancom, in support of the proposition that reputation is irrelevant, apart from in the narrow Woolworths way.  The respondents submit that these authorities referred to in paragraph [34] – in fact both parties submit that these authorities do not help us, but our point was that they do not assist the proposition that reputation is irrelevant.  We dealt with them ‑ ‑ ‑ 

KIEFEL CJ:   But Henschke and following Full Court cases in the Federal Court seek to narrow the proposition for which Woolworths could stand.

MS BEAUMONT:   Yes, yes, your Honour, and in doing so, there is an analysis of early authority, including English authority, to support, the Full Court says, the narrower proposition.  But in our submission, those cases in fact are talking about a different thing.  Generally, they are talking about the fact that it is not a passing off inquiry, and one cannot take into account how the defendant might use the allegedly infringing mark, for example, with particular disclaimers, or with particular additions, or together with other marks, which may discount the confusion.

The other proposition – but that is plain, in my submission, if your Honours have a look at the passage from New South Wales Dairy v Murray Goulburn, the passage quoting Justice Gummow in that case in paragraph 44.  The last part of that paragraph refers to the proposition that:

the essential comparison . . . remains one between the marks involved, and that the court is not looking to the totality of the conduct of the defendant in the same way in a passing off suit.

Now, we are not suggesting anything contrary to that.

GORDON J:   Can I just test that?

MS BEAUMONT:   Yes.

GORDON J:   That proposition you accept, if I was to practically adopt your submissions, would not you have to adduce evidence that would, in effect, be the evidence in a passing off suit?  Maybe the question to ask is what will be the difference in the evidence between the two, because you want to – the Court to take into account as part of the deceptive similarity, reputation more generally, rather than just the notorious cases and the acquisition of a mark being itself the thing you buy it by.  Would not the evidence be the same?

MS BEAUMONT:   No, your Honour, with respect, we do not propound that.  What we say is that reputation in the mark itself in the form registered.  The other elements of an applicant, in a passing off suit – in infringement suits – reputation such as other elements that might go with the mark; a combination of the mark – none of those things are relevant.  They would be relevant in a passing off suit but the only way we suggest that evidence – we do not suggest it is necessary, nor does it succeed on the infringement suit – but the only way we suggest that the reputation is relevant is in the mark itself – and there is certainly no need and no relevance of introducing evidence of the wider defendant’s conduct in the sense that is needed in a passing off suit.

We deal with this, your Honours, at page 9 of our written submissions – our longer form submissions – at page 9.  We have analysed there the authorities which are referred to by the Full Court in Henschke – and also by incorporation of the references to Kerly.  While your Honours are at page 9, I would be grateful if your Honours would strike out one word that we have realised should not be there.  Paragraph 44, fourth line, which commences with the word “however”, if your Honours would please strike out the word “however”.

EDELMAN J:   In paragraph 44?

MS BEAUMONT:   In paragraph 44.  Thank you, your Honour.  On the following page, page 10, we set out the part of Kerly, 12th edition that is referred to in Henschke at paragraph [44].  As your Honours will see, there is nothing in that extract that says that the reputation of the registered mark should be disregarded in its entirety.  The same can be said of each of the cases referred to in Kerly.  I am only going to take your Honours to one of those and it is simply to draw your Honours’ attention to what appears to be a relevant error in the judgment.  If your Honours are tracing through the earlier English judgments, that is in the judgment of Coca‑Cola v Struthers that appears in the supplementary joint bundle at part D, tab 17.

That was a case about whether the mark “KOALA KOLA” infringed COCA‑COLA under section 4(1) of the UK Trade Marks Act 1938 and at page 225 of the court book, about line 35, there is a quote from Kerly’s 9th edition, which quotes paragraph 556 of Kerly, which starts with the words:

In actions for infringement comparisons to be made –

Do your Honours see that? 

GORDON J:   What page again was it, please?

MS BEAUMONT:   Page 225, about line 35.  Now, as set out there, that proposition seems to be contrary to everything that anyone has ever said.  But if one goes to the 9th edition of Kerly, which is to be found at part E of the supplementary bundle, tab 39, page 568, the actual quote says something quite different.  At page 556, third paragraph down which starts:

In actions for infringement the comparison is to be made between the mark as registered, taking into account any disclaimer –

in the registration:

and the defendant’s mark as it appears in actual use.

I just draw that to your Honour’s attention because it confused us for some time, and that seems to be the answer.  And it is clear from that paragraph in Kerly’s 9th edition, in answer to your Honour Justice Gordon’s earlier question, that the limitation on consideration of the plaintiff’s mark is that one must not consider any variations in the use of the mark, only in the form registered.

In our submission, the approach taken by Justice Robertson in Adidas and Justice Perram in Mars or the Full Court in Coca-Cola does not involve the wider inquiry that is referred to in paragraph 44 of the Full Court’s reasons in Henschke which is undertaken in a passing off suit, and that is because, as I have submitted, the consideration of the reputation of the plaintiff does not involve looking at the general circumstances of the defendant’s use, as I have said, for example, elements of get‑up.

Further, in our submission, the party’s purest position to the effect that the comparative assessment may not extend in any way beyond the marks themselves fails to grapple meaningfully with other matters extrinsic to the marks that are permitted by longstanding authority to be taken into account on the issue of deceptive similarity.

As your Honours will have seen from our written submissions, those include particular pronunciations of the marks in issue.  That was taken into account by the Full Court, their Honours Justices Sheppard, Wilcox and Gummow in the Wingate v Levi’s Case where their Honours took into account evidence of how consumers in the market pronounced the particular marks in issue, that particular marks that were the subject of the comparison for infringement purposes, which were REVISE and LEVI’S.

Secondly, the alleged infringer’s actual intention in adopting the mark, which is of course extrinsic to the strict visual and aural elements of the mark in addition to evidence of actual confusion.  The position – I will just touch on this briefly, we have dealt with it in writing – the position in the United Kingdom on a similar or ‑ ‑ ‑

GORDON J:   So, have we finished the Australian cases before we get to the United Kingdom?

MS BEAUMONT:   Yes, your Honour.

GORDON J:   Do you propose to take us to Swancom, which is really the last word by the Full Federal Court?

MS BEAUMONT:   Your Honour, I can do so.  In our submission, Swancom follows Henschke in its reasoning.

GORDON J: Could I just ask you about that. At paragraphs [82] and [81], which is 168 IPR 42, which is think is your supplementary tab 29 ‑ ‑ ‑

MS BEAUMONT:   Yes, I am sorry, your Honour, I will just turn that up.  Yes.

GORDON J:   It is at page 508 of the book, I think.  At paragraph [80] they express the view that:

There is no scope . . . to consider the reputation . . . save (perhaps contentiously) where reputation is a matter of notoriety.

Which is what I was discussing with you before.  Then they explain how the read Henschke dealing with reputation.  Now, you do not dispute the extent of that breach.  You just have us go one step further.  Is that how I understand your submission?

MS BEAUMONT:   Your Honour, as I have accepted, we have no authority for a mark that is less than – well, perhaps Coca‑Cola – it was not the Coca‑Cola mark.  It was the Coca‑Cola bottle.  Yes, that was held to be well‑known.  Whether it was “notorious”, it might be a fine distinction.  I would certainly accept that the reputation will impact on a consumer’s impression or understanding of the mark if it is well‑known.  It is less easy to see it having such an impression if it is less well‑known.  But if there is a difference between “notorious” and “well‑known”, I would say that “well‑known” is sufficient and Coca‑Cola stands for that.

EDELMAN J:   Ultimately your submission is really one about how the brain works, is it not?  It is a submission that when one is comparing two visual or aural marks the brain works, at least in cases of notoriety or well‑known marks, by association.  But the question I think that has been put to you is whether that association really should be taken into account only in cases where the association is something that is extremely well‑known, whether it be in a positive or a negative way in which it has been taken into account, or whether any degree of association can be taken into account.

MS BEAUMONT:   I agree with your Honour respectfully in respect of the way the brain works, that it is artificial to expect or to assume that a consumer does not have something in the consumer’s mind that a consumer will have – there may be degrees of – a mark, for example, may be famous or well‑known or known – well‑known in a particular area, but not broadly for all members of the public.  There is certainly a decision of Justice Heerey in a case, Cordon Bleu cooking case, which talks about – not in this context, but talks about how one looks at the particular class of goods and whether consumers in that class may perceive things in a particular way, but consumers generally may not.  But where you have a product, that if the so‑called infringing product is a product which is for general use, then yes, I accept that it would be – that “well‑known” is the most likely way that it would affect a consumer’s understanding or perception of the mark.

EDELMAN J:   But do you go beyond that?  Do you say that any association that might be triggered in relation to marks that are less well‑known can be taken into account?

MS BEAUMONT:   I am trying to understand what your Honour is referring to by “any association”.

EDELMAN J:   Well, if the shape of the bottle is something that is not notorious or extremely well‑known, but it has a degree of recognition, does that get taken into account or not, in your submission?

MS BEAUMONT:   Well, yes, that is correct, but I do accept that there is a point at which the mark will not mean a particular thing to a consumer unless a consumer has some familiarity with how it is being used.  So, if a mark is hardly being used, or is hardly known, this analysis will not come into play, in my submission.

I am sorry, your Honour, I was addressing Swancom and I have now forgotten the question.

GORDON J:   That is all right.  I was putting to you that paragraphs 80 to 81 reflects, as I understand, the last word of the Full Federal Court about the way in which one looks at reputation ‑ ‑ ‑

MS BEAUMONT:   Yes.

GORDON J:   ‑ ‑ ‑ which you do not disagree with, I think.  You just have us extend it beyond to a further category, which is what you have been discussing with Justice Edelman.

MS BEAUMONT:   Yes.

KIEFEL CJ:   Well, you equate notoriety with something being well‑known.

MS BEAUMONT:   Yes, if well‑known is a bit less than notoriety, then, in my submission, notoriety is not needed.

KIEFEL CJ:   You think that is sufficient.

MS BEAUMONT:   It is a question of how the Court perceives that consumers will perceive the mark due to its use.

GORDON J:   The link between notoriety and ordinary consumer we have discussed.  Is a consequence of your submissions that if you were looking at a simple action for infringement up until now it has been the hallmark of infringement actions, it has been said to be the hallmark of the way in which they would be dealt with, that that would change if we were to have substantive evidence about these things that you are now talking about.  For example, someone would have to give evidence about the mark being well‑known in this class of goods and that the ordinary consumer would be called to give evidence about it.

MS BEAUMONT:   I do not know that that was necessarily the case, for example, in cases such as the contour bottle case.  It may be.  The distinction we draw is that it does not throw the whole registration system into disarray because registered owners are then required to lead evidence of reputation.

I accept that if an applicant or a plaintiff seeking in an infringement suit wishes to rely on its reputation, then it would lead some evidence of that.  There may be, as in the Woolworths Case, a mark of such notoriety that judicial notice is taken – I think they were the words of Justice French in that case.  But, yes, it will, for a plaintiff who wishes to rely on its reputation generally, add some evidence in that respect, but certainly not across the whole spectrum of passing off.

EDELMAN J:   Where we are at the moment is really almost exclusively in the area of judicial notice, is not it, to the extent that your submissions accepted when one is dealing with Band‑Aid or Coca‑Cola or Woolworths, they are essentially all matters of which judicial notice of notoriety can be taken.  But if one moves further away from that, then there is substantial evidence and questions of contested fact that need to be dealt with, are not there?

MS BEAUMONT:   Yes, I accept that, your Honour.

I will just touch briefly on the position in the United Kingdom and then the provision there, which we have referred to in writing, is a similar but certainly not identical infringement in the Trade Marks Act 1994.  The position there is that reputation of the registered mark is to be taken into account and in the opposite way to the Woolworths proposition, i.e., a highly‑distinctive registered mark, which is either distinctive per se, or distinctive by reason or reputation applied by use, is likely to increase the risk of confusion.

So, in our submission, while it will not arise in every case, reputation can be taken into account in both directions.  We endorse the conclusions of Professors Burrell and Handler in their text Australian Trade Mark Law, especially at pages 405 and 406; it accords with logic, in our submission.  The appellants submit that no regard can be had to a trade mark owner’s use of the mark outside of the class of goods the subject of the registration sued on.  Nothing in the statutory text precludes consideration of reputation or the consumer’s perception of the mark deriving from use other than in relation to the registered goods in question.

Often, that will be the case, and that is why the cases tend to be this way.  As in Henschke, a mark’s use and reputation will be in respect of the goods within the class of relevant registered mark, but it is not necessarily so in a case such as this where there is a defensive trade mark.  There will never be reputation in relation to use in relation to the specific goods covered by the registration.  Another instance may be where use and reputation span more than one class of goods; reputation in the sense of how the mark’s use affects consumers’ perception or impression of the mark does not, in reality, conveniently limit itself to classifications on the Trade Marks Register.

In our submission, once it is accepted that in appropriate cases reputation can be taken into account, there is no reason to limit it to reputation in the goods in the class covered by the registered mark that is infringed.  In our submission, the facts of each case will determine whether and to the extent to which reputation should be taken into account, and matters such as the natures of the marks – for example, whether they are otherwise meaningless words or abstract devices, or whether the particular marks lend themselves to be likely to be perceived by consumers as the subject of brand extension or families of marks is another area.

Unless your Honours have further questions, those are my submissions.

KIEFEL CJ:   Thank you, Ms Beaumont.  Yes, Mr Bannon.

MR BANNON:   Your Honours, our first proposition in our outline is to indicate that the relevant reputation – one is perhaps grappling with – we are addressing a reputation in relation to a use of a particular mark which indicates a connection with a particular type of goods.  It is conceivable that some words may become so notorious that they almost become part of the language.  Google is an example.  Perhaps that is the notoriety case, although we would seek to hold a firm ground on even the notoriety in terms of purism and applying the Act.  But one may accept that that level of notoriety that the question becomes – perhaps it is almost more whether this forms part of the English language, but I will come back to that.  The matter which is at key is a reputation in relation to particular goods.

If one turns to section 120 – and to try and address how these concepts fit with the Act, section 120(1), the first reference to a registered mark is defined, in section 6, as:

a trademark whose particulars are entered in the Register –

which is section 69(1), which says that if all opposition to an application registration fails then the registrar must enter the particulars into the Register.  It is just simply confirmatory that one is dealing with, in terms of a mark, something which consists only of the mark which is registered and nothing more.  Then the next part of the section is this:

If the person uses as a trade mark –

So, therefore immediately one notes that the comparator is the use by somebody, so that is what they actually do:

a sign that is substantially identical with –

That is the sign as in fact used, on the one hand by the putative infringer, compared with two‑dimensional form on a register:

or deceptively similar –

And a comparison here, again, to the trade mark, which is the registered mark:

in relation to goods or services in respect of which the trade mark is registered.

The registration by the dint of that section gives a right of the nature of monopoly qualified by the fact that the putative user of the registered mark – or something deceptively similar – must use it as a trade mark, but the right extends necessarily across each element of the goods. So, it is an aggregate registration, but the right is a right which is to be considered disaggregated, so that the only reason section 120(1) will come in play is if the respondent is using a sign as mark in respect of a particular good.

At the level of substantial identity, one does not need to be too concerned in relation to the disaggregated notion of the registration, because, if it is substantially identical, it is substantially identical – it is the end of the section, end of the inquiry.  But if it is deceptive similarity, it is important to focus on this aggregation of the rights so far as the proprietors are concerned, because if it is, in our case, cream – which Allergan has registration for – the relevant and appropriate disaggregated inquiry is the actual use by my client on a cream of a sign with the registered mark insofar as its rights extend to a cream.  As a matter of statutory construction, that is the approach one would apply, because that is the reasonable comparison.  And, as it turns out, that is the method of comparison which numerous authorities have adopted, namely the ‑ ‑ ‑

GORDON J:   Started in Woollen Mills.

MR BANNON:   Yes, and “notional”.  Woollen Mills picks up the imperfect and putative person and they use the language of – the Court says we have to assume that somebody is familiar with the registered mark – and it is correct, it is an assumption – it is a notional assumption.  And they are not familiar with any specific use, they are familiar with what may be regarded as reasonable – any reasonable use by the registered proprietor.  So that if the registered proprietor has a registration for a word mark, that captures that mark in any colour or in any script.

So that if a respondent was to use something similar – but not exact – but use fancy script, it would not pray in aid that respondent to say, yes, you take into account our fancy script because the registered owner does not use a fancy script.  That would be constricting what are the rights of the registered owner.  One then looks as well, of course, at section 10 in terms of deceptive similarity.  Again, where it says:

a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark –

Again, the comparison is directed to the signs – not as to the signs as used or to the use of a sign.  The rights, as we say, given by registration are not dependent on use once registered because it is the mark as registered which affords the rights.  We say that, obviously, is part of a statutory benefit that one gets, but there are all sorts of issues which arise when one starts talking about reputation and what it consists of, which are dealt with in a passing off sphere; so that a car manufacturer such as Toyota may have a significant reputation, but its reputation, yes, will be in the name Toyota, but it will have a reputation, one might think in many cases, which is informed and enhanced by a slogan – which I have just forgotten now – “Oh, what a feeling”.  Good, yes, I was going to get there.  So, “Oh, what a feeling” fits in the minds of everybody but not me.  But that is part of it.

So, when one tries to discern it – and it can be difficult in a number of cases – in passing off cases – so what is their real reputation?  Is it in the actual word or is it a combination of things?  And what would their reputation be if you stripped away the other material?  Another example is association of goods with famous people.

EDELMAN J:   Mr Bannon, what reputation really, in this sense, seeks to do is product differentiation.

MR BANNON:   Yes.

EDELMAN J: The marketing is designed to create in the consumer’s mind a sub‑market for the goods by differentiating the product. Section 120(1) is not just concerned with deceptive similarity with the trade mark as registered; it is the trade mark as registered in relation to the goods or services.

MR BANNON:   Yes.

EDELMAN J: So, if reputation is being used to define or differentiate the goods or services, that comes in directly, does it not, to section 120(1) by defining the relation of goods and services to which it relates.

MR BANNON:   The difficulty with that, your Honour, is that once you get registered and once one engages in a notional comparison – take this case as an example.  We know that Allergan never used BOTOX or the cream.  But they are entitled to have their rights tested, notionally, as if they have used it on a cream – indeed, you must make that assumption – and that was the one of the fundamental errors that the Full Court made and nothing, on this particular issue, was going to affect that error.

But if one considers that – if that is right – and, we say, it must be right – then how does one overlay that exercise with a reputation in Allergan of BOTOX on injections?  You cannot.  The deceptive similarity exercised becomes distorted as per the statute and, indeed – although, in this case, the Full Court suggested it helped – not deliberately, it had the effect of helping Allergan – one can imagine many cases where a respondent would say, yes, all right, Allergan is registered for creams but we know they never use it on creams, and everybody knows that, and that is part of their reputation, and we are going to prove that and, therefore, it is less likely when we use “Gotox”, or something else, in relation to a cream, that anyone would think that that is deceptively similar to BOTOX as registration for creams. 

GLEESON J:   Mr Bannon, I am just picking up on Justice Edelman’s question.  You accept this test of deceptive similarity requires a consideration of the position of the consumer, do you not?

MR BANNON:   Yes.  The notional consumer, your Honour, yes.

GLEESON J:   The notional consumer.  But does that not, of itself, indicate that we are talking about an exercise that has to be conducted in the real world, it is not a comparison that is being done by a government officer in an office?

MR BANNON:   My answer to that, your Honour, is yes, but.  Yes in the sense that one may take account of the nature of the market and the nature of the goods, so that one can – and one can take account, for example, of the fact that people will order goods over a counter and therefore name the goods as opposed to ordering online, so that is a real‑world matter and, therefore, you can have evidence that that is how people order goods, and the significance of that can be the sound of a mark will be relevant.

You can actually have evidence that in fact people use, for example, the registered owner’s mark and pronounce it in a particular way, but that is not going to reputation, that is part of the real‑world analysis that this is a mark which is likely to be used aurally and pronounced in a particular way as informing what is a judicial decision as to the likelihood of deceptive similarity.

Similarly, like in evidence of actual deception, but again that is not proving the fact of deceptiveness, but it is a tool – it is like a litmus test which a court might use to assess its own assessment, which is a matter for the court as to the likelihood of deceptive similarity.  But where we draw the line and say appropriately on the statute is one cannot import and affect the statutory protection – and I say import – distort the statutory protection in a way which is unpredictable, it could go one way, it could go the other way, and the example I am putting where the respondent actually goes out of their way to prove reputation, to distort the notional use test, which is a time‑honoured test.

GORDON J: You have two complaints as well, do you not, as I understand the way you put it? That is, that one is therefore not looking in relation to a deceptive similarity assessment under section 120(1) consistent with the statutory scheme limited to the course of business and the way in which the particular class of goods is sold. What is now being put against you is that the inquiry is broader, so that in a sense the statutory test in section 120 is, in effect – well, you used the word “distorted” but let us use a more neutral term – changed ‑ ‑ ‑

MR BANNON:   Yes.

GORDON J:   ‑ ‑ ‑ because the focus has changed away from the text of section 10.

MR BANNON:   Yes, we do say that.

GORDON J:   So then, if you pick up Justice Gleeson’s question about the ordinary consumer – and I put this to the amicus – is that, is it not the position that where you have the notoriety type cases, the ordinary consumer is someone who – you cannot assess ordinary consumer artificially without recognising that they are notorious.

MR BANNON:   Yes.  Notoriety is difficult, but in one sense it should not be.  One of the discordant notes that Woolworths presents is that that was a case whereby you had some trader – I do not know if they are noble or noteworthy, but anyway, they have a registration for Metro in relation to the very goods – you have this behemoth come in and say, well, we have Woolworths Metro now and we are so big and so dominant that your Metro mark will not be deceptively similar.

Now, I said on the last occasion that that case could be explained by a judicial determination that the two words, “Woolworths” and “Metro” are not deceptively similar because “Woolworths” is a big word.  It is a part of the mark and one would not necessarily say that they were deceptively similar.  But to use the swamping reputation to again, I would say, distort what should be the rights of the owner of Metro, is a discordant note.  It may be right.  We would suggest as a purist approach, it should not be right.  But there is something discordant, in almost a sense that something like Woolworths could grab just about any mark they want in the market when they choose, at will, because they are so big, and there will no doubt the other examples one can choose, and there is something odd about that outcome.

As I started, there may be words which effectively form part of the lexicology, almost part of the broader language, which may be hard to put to one side when one is dealing with these things.  But in all of these cases one then has to ask how it would work in a particular case, because ultimately, let us assume that there are notorious words that one cannot put out of one’s mind.  One still has to ask in a particular case what impact does it have and in what way does it have an impact, and I will try and address that as I go through.

But if I could then come to section 120(2), what we see there is that there is an expansion of the statutory right in circumstances where in respect of the same registration of goods for which the mark is registered, nevertheless ,if the substantially identical or deceptively similar mark has been used in relation to “goods of the same description”, in other words, the protection can be wider based on an analysis of the goods’ level, but it is not based on the fact, to use this case, that Allergan was using the mark in relation to other goods – so, in other words, this was a way the statutory protection extends beyond your registration, but only if the “goods of the same description” element is satisfied.  But you cannot extend it.

Effectively, what the Full Court was doing here is extending the protection by means of their reputation in relation to other goods, and we say that is not to be found in the section and indeed it is antithetical to what section 120(2) says.  Even then, if you do get into that situation, there is a rider which says that the respondent can prove by the way it uses the mark such as, for example, disclaimers or whatever, to say that there is no risk of confusion.  So there is a specific statutory break if you do go into that area, and that is a specific indication where actual use and the likelihood of deception or confusion as a factual matter is introduced but in a very specific circumstance.

And then we come down to subsection (3), and it has obviously a couple of elements.  Firstly, (a) “well known”, which is informed by subsection (4), obviously that introduces a factual question; (b) still has the deceptive similarity test, which we say would still be applied in the same mark to mark approach.  In other words, the test for (1), (2) and (3)(b) ought not change, it is still the same mark to mark approach, although with the benefit of (3)(a) and (c), factual questions – wider questions – the protection may expand.  But, again, it is a particular statutory regime, reflective of the flak, we submit is the starting point that prima facie reputation has no role to play.

If I could then come to the second part of our outline, section 4, which is at paragraph 12, there is the imperfect recollection test.  And, again, that is a time‑honoured test; it is not suggested that it is wrong, or it should not be applied.  And one of the cases referred to there is an Optus decision where Optus was found seeking to restrain or prevent registration of Optum, the neuter of Optus, perhaps.

But what was said there, that one could take account of the fact that Optus was well known as a factor in working out whether it was deceptive similarity, now, we submit that is wrong, because it produces this perversity that – what we would just say is a perversity.  So, Optus gets registered – let us say it is not very well known, and certainly it was not when it was first founded in this country – the statutory protection it has includes the test, we say, of imperfect recollection.  And that involves the question of:  we have a word of two syllables, Optus, is that likely to be remembered, is there a chance that it will not be remembered, or so badly remembered as becoming captured in Optum – maybe yes, maybe no, who knows.

But to then say – so, that is their statutory protection, then if they start to use the mark a lot – and they have to use the mark, otherwise they would lose it under section 92 – so, there is a statutory encouragement to use the mark.  If you use the mark consistently with that imperative, does your statutory protection scope narrow because you have used it so well and then the defendant comes along and says, well actually, you are so well known, nobody is going to mistake you, there is no case for imperfect recollection, there is now perfect recollection.  Again, we respectfully submit, that is – and let us complete the picture, let us say, because of government reasons or whatever, its reputation declines and we come down the other end of a sine curve, and then they are not so well known.  Does their statutory protection increase, now that there is no longer perfect recollection?

These are questions which invite – if it is right – it invites to people to put on evidence – which is comprised by passing off evidence – to constrain the statutory protection.  But the statutory protection ought not change in a system based on registration.  Yes, to get registered, you have to prove sometimes that you have a distinctive reputation by fact, but once you get over the line, that should be the end of it.  It should be, everybody has the same rights – including defensive marks – their statutory protection should not waver over time.

Then one comes to the next point in our submissions, which is the imputed – it was the point I was making before, I sidewinded into – but just to – we have given the reference there to MID – which I know I took your Honours to on the last occasion, but it is perhaps worth going back to – which is in the first set of the authorities at page 460, between F and G, which was the artificial exercise.  It is the notional use across the range of goods – it is aggregated, is the term I would use.  The same point has been picked‑up by Wingate – the Wingate decision – which is in the same set of books – this is Wingate v Levi Strauss – which is at page 755 of the books.  That is at about B to C:

the risk of deception or confusion is assessed by regard to the notional use in a normal and fair manner for all of the goods or services covered –

There is no suggestion from the amicus that that should not be the case.  That picks up a case of Coldstream Refrigerators – which I regret to say we only looked at very early this morning.  A copy has been provided to the Court, but I have hard copies as well – the hard copies have been provided.  I hope that Justice Gleeson, by electronic means, may have got this as well.  But the particular passage – it is a decision, starting at page 1494 of the “Official Journal of Patents, Trade Marks & Designs” – and it is a decision where the Court was comprised of Chief Justice Latham, Justice Dixon and Justice Williams – and the question as to whether or not a registration – as it was said, it was about to be registered – of “Coldstream”, could stop and prevent the registration of “Airstream”.

If one looks at Justice Dixon’s, as he then was, reasoned study at page 1495 and both the marks sought to be registered and the registered mark related to refrigerators, there is a paragraph towards the end of the page:

The appellant’s refrigerator was sold in various parts of the Commonwealth.  It was widely advertised under the name “Coldstream”; but nearly all the advertisements and publications put in evidence make use of the connexion of the name with the Guards Regiment.

Then over the page, at page 1496, around the middle of the page:

The question for our decision is whether we should be satisfied that there is no real probability or tangible risk of deception or confusion by any fair and normal use which may be made of the mark “Airstream” if it is registered.  We should, I think, for the purposes of section 25, treat the mark “Coldstream” as well as the mark “Coldstream Guards” as on the register –

And there is a complicated reason, so it is, in other words, that is treated as the registered mark.  And then his Honour says:

I do not think that for the purposes of section 25 it matters that in actual use and in advertisements by the appellant the word “Coldstream” has been associated in idea with the Guards Regiment of that name.

So, section 25 is a forerunner to section 44:

It does not matter under section 25 because that provision is designed to keep the register free from resembling marks even if owing to the use made for the time being of one of them the risk of confusion from the resemblance may be reduced or excluded.  That method of use may be abandoned.

I am sorry we have come so late to this case, but it is this . . . . . to this Court which precisely captures our point, with respect.

GAGELER J:   And it is not otherwise reported?

MR BANNON:   No.  So, it is picked up, as we saw, in Wingate, it is also picked up in SAP which we have also handed up.  But more on the notional use part rather than this particular point, to say what can you take into account?  If one continues on in that same section:

It is however, clear enough that by the connexion in idea with Guardsmen which the appellant has habitually given the word “Coldstream” it is less likely that people will think of the word as suggesting a stream of low temperature –

et cetera:

That is a consideration which must be taken into account in deciding for the purpose of section 114 –

which was the equivalent of section 60, which is a reputation in a – it picks up a reputation in fact in a mark or a use.

GORDON J:   At registration.

MR BANNON:   At the registration, yes.  And at the very bottom of the page, there is a sentence, when his Honour is doing the comparison:

Coldstream is familiar as a geographical name.  It is more familiar perhaps than most names of places because the Coldstream Guards have made it famous.  That may be taken into account, even where the appellant’s particular use of the association of the ideas it summons up may not.

And so perhaps that is an identification of a dichotomy between what may be regarded as notoriety and reputation.  That dividing line may be a hard one to draw, but the fact that people generally may be expected to know something about Coldstreams can be taken into account, but you cannot take into account, to effectively – in that case it was designed to diminish the extent of the section - - -

KIEFEL CJ:  Confusion.  Well, that was the use made in Woolworths, was it not?

MR BANNON:   Yes.  And then Justice Williams agreed, and Chief Justice Dixon I do not think said ‑ ‑ ‑

GORDON J:   As a matter of statutory framework, why is it that section 60 registration reputation is taken into account at that stage in the way it is, but it does not come back in on infringement?  Is it because of the registration system itself?

MR BANNON:   My answer would be the registration system; namely, that you should not have on the Register marks which may be confused by the general public with something which may not be a registered mark at all but is particularly well‑known.  So there are plenty of businesses which survive without registering marks – perhaps not so much these days, but in days gone by.

GORDON J:   Is that because the system is structured in a way that you would take that point at registration and oppose registration rather than infringement?

MR BANNON:   Yes.

EDELMAN J:   And it is the deeming effect of the registration in that market that does all the work?

MR BANNON:   Yes.  The second case which picks up the same – not precisely the same point, but it emphasises – this is SAP v Sapient Australia 169 ALR 1, which again has been separately provided. It is paragraph [46], a Full Court decision. So you have MID and this, plus the High Court, obviously – this Court – emphasising this importance of notional use.  It is at paragraph [46].

Then, at paragraph 7 of our outline, we submit the defensive mark is not treated differently from any other mark.  Section 186 of the Act makes it clear.  I am not sure if your Honours have that, but 186 provides specifically that:

Subject to this Part, the provisions of the Act (other than –

specified sections, none of which are relevant here:

apply to defensive trade marks and so apply as if a reference to a trade mark included a reference to a defensive trade mark.

So, in other words, that specifically tells you they get treated as a section 120 mark, like any other mark, and a fortiori if you achieved registration because you were an invented word and was particularly distinctive without having to think about it anymore, you do not get any more or less protection than a mark which achieves registration after battling through the office and presenting a whole lot of evidence of actual uses and developing that sufficient representation to be factually distinctive. 

But once you get on the Register, you have the rights as per the registration.  You do not have to keep repeating that factual distinctiveness to succeed and nor do your rights wax or wane, we would submit, and ought not do so depending on how well in the market you proceed or, indeed, how many other, look, I want to be lookalikes come along and perhaps erode what was otherwise a very distinctive reputation.  If it gets too bad, if you become undistinctive, then you may fall off for other reasons.

I have, looking at proposition 8, referred to the fact that there are evidentiary tools which a court may use but ultimately – and this is a way to understand a number of the cases, and I do not stand here to pretend that I can rationalise all the cases and say everyone got it right in accordance with what we submit the appropriate approach.  But, to take one example, Saville Perfumery – if I can just go to that.  The June Perfect case, as it is often called – which is in the supplementary authorities at page 490.  Page 487 is the House of Lords’ reasons – Viscount Maugham.  At page 490, about line 35 – this is after a whole lot of evidence about how people – perhaps I will just rephrase.  If one reads Lord Justice Clauson’s judgment, the effect of Lord Justice Clauson’s reasons is that the registered mark was the word “June” plus a floral arrangement – so it was a combined mark; a whole lot of different things.

The whole lot of evidence was led to say everyone knew the registered owner’s product as simply “June”.  Lord Justice Clauson effectively says, well, that was the mark which effectively was to be protected – he does not quite say, that but that is the effect of his reasons.  Now, with a great respect, that is plainly wrong because, yes, you may become known as “June” but you have moved away from what you got registered for.  We submit that Viscount Maugham brings it back to the correct approach at line 35:

The Appellants, however, relied on the contention that the conflicting marks were different; and that the word “June” used by them if compared with the Respondents’ registered mark was not calculated to deceive.

because the appellant had used just “June” on its own:

My Lords, I confess that on this part of the case I have been unable to entertain any doubt.  It is as I think manifest that the distinguishing feature of the Respondents’ mark is the word “June” in a special script.

Again, that is the absolute appropriate way to deal with it.  One can look at features of the mark and ask what is the essential feature or the distinguishing feature – and please not cognitive cue – but maybe that might be a personal fixation I have – but:

I doubt very much whether any evidence was necessary to enable the Court in this case to come to that conclusion.  Evidence has no doubt generally been admitted as to what is the distinguishing feature of a registered trade mark –

that is a rather generous assessment but that is okay because, again, as a tool of saying – so, one of the functions of the Court is to look at it a multi‑piece mark and what is the distinguishing feature or essential feature.  You could lead evidence to say, well, people look at the mark and they see “June”.  That does not determine the question, but it might be a useful tool of analysis.  It does not distract – it should not distract, but it might be effectively a sounding board for a court to say, well, this is my impression, it accords with some evidence, it does not determine the question similarly to the question of “deceptive similarity”.

EDELMAN J:   But, on your submission, it would have to be evidence that people look at the mark and see “June” without any other association of reputation going on in their brain.

MR BANNON:   Exactly.  It is dangerous evidence.  These days, nobody would lead such evidence because it would just be a question of looking at mark:

Evidence has no doubt generally been admitted . . . but the question of its admissibility does not now arise for decision –

rather suggesting if he had his way, it would not have been admitted since the court in such a case is, I think, justified on inspection and coming to conclusion – it is a distinguishing feature, et cetera.

GORDON J:   It may reflect the opening paragraph of his speech where he expresses grave concerns about the evidence.

MR BANNON:   Yes, exactly.  Then, looking at page 175, about line 20 – this is on a slightly different question as to whether it was trade mark use.  It says:

I am not satisfied that, looking at the matter purely from the trade mark angle and therefore ruling out a good deal of the evidence of trade witnesses, the Respondents have made out that the setting lotion has been put upon the market in such a manner as to amount to an infringement.

There is a whole lot of evidence to say that, in relation to the setting lotion, the respondent’s mark they regarded the mark used as “June”, and again his Honour put that aside correctly.

As I say, the decision of Justice Gummow in – this is relied upon by the amicus – Johnson & Johnson – if we can go back to that for a moment, at 332.  At 332 of the book – your Honours have been taken to the paragraphs about the fame, and then at line 20 as to aural comparison.  Then, at line 24:

Taking into account the overall effect of aural and visual similarities . . . and the whole of the evidence . . . I conclude that the opposition based upon s 28(a) –

which you can take into evidence:

should succeed.  I reach the conclusion also that the ground under s 33 is made out.  I do so on the footing that the respondents’ mark so nearly resembles –

In other words, his Honour does not use – correctly, does not use evidence, the evidence referred to about fame, et cetera, for that purpose.  The other part of evidence in that case, which is at the top of page 331, which is included, was evidence from an expert as to how people think.  There is an assumption in that, but in fact what he says, most people do not.  But when his Honour Justice Gummow at page 332, about line 10, is talking about “cognitive processes”, it is open to the view that is the part of the evidence to which his Honour was referring.  And, yes, conceptually, at least one could have evidence about how people think to assist the court, but only assisting the court in answering what is the real question.

Then we have referred to the article of Davison in the – and also the supplementary material, in which is a useful discussion of the matter.  I know there are different views of different authors of things.  But at page 8 – sorry, it is the first bundle – page 827.  It is the section on 827 after referring to, at the top of the page, the Coca‑Cola Case, “a few points to be made”.  The next paragraph:

So how does a registered owner know when it is in its interests to point out that its trade mark is well known and in its interest to argue that it is not so well known?

It is just an example that it is a useful discussion to say, well, if one allows this reputation into the exercise it just creates uncertainty in a statutory scheme which was designed to and ought to be treated as trying to minimise that very uncertainty.

As we say in paragraph 10 of our submissions, the Register of Marks forms an important tool for traders and potential traders to look at and examine what are available courses of action.  Armed with the test of deceptive similarity and substantial identity, and knowing registration of goods, tolerably informed decisions could be made.  If one has to add a layer on that decision‑making process of fluctuating reputation, we submit that, again, is adverse to one of the fundamental purposes of the legislation. 

Then, lastly, our learned friends’ admirable potential opportunism possibly seek to restore some of the reasoning of Full Court, but we say the fundamental problem with the Full Court’s reasons, apart from these wider issues, is the failure to adopt the appropriate notional use test, which confounds their reasons once one reverts that error.

EDELMAN J: Mr Bannon, just before you finish, can I just ask – I appreciate how your submissions get to the point of saying, well, even notoriety on a purist approach to section 120(1) needs to be discounted, and one looks at the registered mark. If one looks at the registered mark in light of the category for which it is registered, one still has to know what are the goods and services within that category. That is what section 121 requires you to know.

In asking what are the goods and services within that category, how can you do that without engaging in some form of analysis in the real world of what the market is and what the sub‑markets are that concern those goods and services?  And the next question that then follows from that is, does that exercise of engaging in what the described category is not inevitably require a consideration of factors like product differentiation, at least to the extent that product differentiation might have created a sub‑market?

MR BANNON:   I am not sure this is a satisfactory answer to your Honour, but to the extent that the exercise involves considering the reputation of the trade mark owner in a particular good, we would say no.  I appreciate that there is, at one level, a perception that there is an artificiality about it, but the – as acknowledged, and I accept that artificiality about the process, which takes into account notional use – that the day get registered before you have ever used it, if you otherwise get to use it, then – so my answer is, no, you do not if it includes what we would describe as an infection of rights – or the scope of protection, perhaps, is the better way of putting it.  The scope of protection varies depending on the extent of use.

EDELMAN J:   What if reputation has risen to such an extent that it has, in effect, created a different category or type of goods and services?

MR BANNON:   Well, can I answer this in a slightly longer way.  There is a decision which I think Justice Gordon and the amicus referred to as “the VapoRub” and that goods are known in core by VapoRub.  It is not entirely clear whether that is an example of evidence being used to indicate that is the way goods are ordered or whether it is being used to say that there is actually a new product called VapoRub.

Just switching a moment.  One reads the reasons that decisions – just all passing off reasons.  I know they find some trade mark infringement, but it is not hard to get much out of that case on trade mark.  Coming back to your Honour’s question ‑ ‑ ‑

GORDON J:   That kind of reasoning finds reflection in Australian Woollen Mills.

MR BANNON:   Yes.

GORDON J:   They recognise that there may be a category of mark where the mark itself is the thing that is used to order the good, because that is what it is called by.

MR BANNON:   There is one sentence in there – one word in there.  There may be another part your Honour has in mind.  If I can perhaps just go to that.  Perhaps to answer Justice Edelman, we do say, of course, that it is the register which states what the goods are, and which will define the exercise.  So, it is not entirely apparent what the example would be where that is not sufficient, that you have to go into evidence to deal with it.  As your Honour may recall, the particular registration in this case was of a whole list of goods.  They were described as a class 3 registration, but the whole list of goods were listed.  Can I just respond to the Woollen Mills – if I can find it.

GORDON J:   It is tab 8, and the passage I was looking at was page 82 of the joint book of authorities.

MR BANNON:   Yes, that is the part I had in mind, your Honour.  The effect of ‑ ‑ ‑

GORDON J:   The sentence I was having regard to, after Justices Dixon and McTiernan list the analysis or the task that is to be undertaken, say at about point 6:

The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting –

et cetera.

MR BANNON:   Yes, there is a sense that:

If a mark is 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 –

Is that the part, your Honour?

GORDON J:   Yes, it is.

MR BANNON:   Yes.  We would submit that is evidence, or referring to evidence, that people order goods aurally, and therefore that is to be taken into account in considering deception or confusion.

GORDON J:   I think it said – I had read it more broadly than that, Mr Bannon.

MR BANNON:   And if one looks at – I think it is the VapoRub Case, they seem to acknowledge some recognised exception.

KIEFEL CJ:   It is talking about marketing, is it not?

MR BANNON:   I am sorry, your Honour?

KIEFEL CJ:   It is talking more widely about marketing.

MR BANNON:   Yes, I accept that could be read that way.  I say it, perhaps in the purest way, would be read as evidence as to the fact that marks are – goods are described by ‑ ‑ ‑

GORDON J:   The mark.

MR BANNON:   By the mark.  That is the way they are ordered, so therefore an aural description must be taken into account.  But even if – it is not entirely clear how that would otherwise feed into the analysis of deceptive similarity or how it would make it different.

GORDON J:   The way it is put, I think, in VapoRub and I may – I will put this to you:  is it not saying, if I walk into a shop and I order VapoRub ‑ ‑ ‑

MR BANNON:   Yes.

GORDON J:   ‑ ‑ ‑ and I then have a mark which is said to be deceptively similar to that mark, then the fact that it is called “VapoRub” as the product, that is the way you order it, itself has – it might be bad reputation, but it has a significance attached to it which is greater than me walking in and asking for a gel – whatever it is that you used to rub on the chest as a child.

MR BANNON:   We would submit that if the registration – in that case, I think, there might have been a registration for VapoRub.

GORDON J:   There was.

MR BANNON:   It is hard to see – and I think the conflicting registration was something, something VapoRub – or “VapoRub”, I think.  It is hard to see how that evidence affects the outcome of the deceptive similarity case because it was still a significant part of it.  The fact that – maybe if it is a case of notoriety – that is a name of a product, it is still difficult to see how it actually should logically affect the deceptive similarity equation one way or another.  And if it does not logically affect it, then it should be excluded, because it is not part of the statute.

GORDON J:   The other way to look at it – the prism which I put to the amicus – is to say, the test is the hypothetical ordinary consumer, and it would be artificial to approach the task in relation to an ordinary consumer and ignore cases of notoriety.

MR BANNON:   Yes.  When one looks at Shell – the languages – I have to assume a familiarity with the mark in the ordinary consumer of reasonable intelligence.  That is correct and you would not make that assumption if it was relevant to take into account factual representation – in that case, it was a Shell Oil Drop man, which had been on TV and had a lot of evidence.

May it please the Court.

KIEFEL CJ:   Thank you, Mr Bannon.  Yes, Mr Gleeson.

MR GLEESON:   Your Honour, was the Court proposing to take morning tea?

KIEFEL CJ:   No, we were going to sit through.  Would you like us to have a break?

MR BANNON:   Would you like a cup of tea, Mr Gleeson?

MR GLEESON:   One should never ask for mercy, your Honours, so I will submit.

We have provided an outline, but before I start that, could I give our answer to some of the questions from the Court this morning and then come to our outline.  Could I say first we – I am in the rare position of, in general, agreeing with everything Mr Bannon has put as our primary position.

GORDON J:   Would you mind repeating that submission?

MR GLEESON:   Yes, thank you.  It hurts me to say it, your Honour.

MR BANNON:   Go on, repeat it.  It is a Court order.

MR GLEESON:   Our primary position agrees with everything Mr Bannon has put this morning.

KIEFEL CJ:   You will be very short then.

MR BANNON:   It could not have been put better.

MR GLEESON:   The alternative position, I will explain at the end of my submissions.  Your Honour Justice Edelman asked a question about whether one needs reputation in order to make section 120 work, particularly in the case of product differentiation.  Our answer to that, in agreement with Mr Bannon, is, no, but there is a technical reason under the statute.  I will give the Court the provisions – you have most, but not all of them, in the materials.  The starting point is that when you apply for registration under section 27 – if your Honours have that – in general, you have to not only claim to be the owner of the mark, but you have to say you use, or intend to use, the mark in relation to goods or services and under subsection (3)(b), you have to specify the goods or services in respect of which you seek to register the mark.

So, you do not apply and simply say, I want class 3.  You have to identify the goods and services for which you intend to register the mark.  That is taken further in the regulation – I will just give the reference, the Court may not have it.  It is regulation 4.4 which, for the purpose of section 27(3)(b), requires you to identify, specifically, the goods or services for which the registration is sought.  If you pass the test, under section 69, your registration will be for the goods and services in the application, not simply for class 3.

EDELMAN J:   That is what I meant when I referred Mr Bannon to the category, or the label, that the registration includes.  But that does not define the market, does it?

MR GLEESON:   I am just first defining what – I am first seeking to identify what you get as the monopoly.  In the present case, it is in the core appeal book at paragraph 19, that the class 3 registration for the defensive mark was for those goods and services which are not simply a repetition of the definition of class 3 which is in schedule 1 to the regulations.  They have to be things within class 3, but that is what the defensive registration is for. 

So, we would, therefore, agree with Mr Bannon that that tells you what your monopoly is and you then apply the test of notional fair use which is:  if Allergan used BOTOX on anything in that long list and the consumer, then seeing the self‑care product, had an imperfect recollection of that notional viewing, would there be a likelihood of deception, in the sense of being caused to wonder?  That is the beginning and the end of it.

As Mr Bannon said, if one starts to inquire into the actual use, as it may vary over time within that long list of products – including the extent and even the notoriety of it – one will be expanding, or contracting, the scope of the protection by reference to matters not on the Register, undermining the central purpose of the Register.  So, that is our answer to your Honour Justice Edelman’s question.

Your Honour Justice Gordon asked a question about whether perhaps the notorious marks can be saved for another day and not addressed by your Honours in this question.  That is not quite how your Honour put it, but we understood that to be a possible view of your question.  We agree with Mr Bannon that reputation is either in or out for all purposes, both ways, wherever the marks stand on the spectrum from notorious down to well‑known down to association down to bare recognition.  Any other distinction would be unprincipled and unworkable.

Just as one example of it being unworkable, your Honour’s question, with respect, assumed that in the present case BOTOX is in the middle category; it is not in the true notorious category, but it is in the middle category.  In fact, that is not how the primary judge viewed it which is why, dare I say, we got into this situation in the first place.  What happened with the primary judge, if I could just recall that for your Honours, is that at page 59 of the core book in paragraph 181 he cited the Henschke proposition at paragraph 52, which was in terms of:

notoriously so ubiquitous and of such long‑standing that consumers generally must be taken to be familiar with it –

Then, in paragraph 182, he cited the Australian Meat Group proposition, which I would observe is in fact a narrowing of the Henschke proposition, because the Henschke proposition was with notorious marks – to use it shortly – the notoriety is a relevant consideration, whereas by the time of Australian Meat Group it has become as one‑way consideration.  It can only operate to reduce deceptive similarity.  His Honour says that is the approach he is bound to follow.  His Honour’s findings on the BOTOX reputation were back at paragraphs 151 to 152 and he found it had a very strong reputation, but specific to injectables.

GORDON J:   My point was more directed to the fact that your client did not run its case as a notorious case.

MR GLEESON:   Well, it did for the reason I sought to explain last time which is what happened in this case – where it all went wrong in our primary position – is, his Honour, having said this is the statement of principle at 181, 182 and 151 to 152 were the findings of fact, then at paragraph 209, which was the paragraph we said was in error, made a finding that BOTOX had ubiquitous reputation.  Indeed, he went so far in that next sentence to say something which was incorrect.  The Full Court rejected it at paragraph 37.  But he then applied Henschke, Australian Meat Group and Mars to say the fame was such that deceptive similarity was reduced.  That is what was the source of the error.

When it came to the Full Court, at paragraph 34(3) on page 234, Mr Bannon put their case defending this proposition on the ground it was notorious and that that reduced deceptive similarity and what the Full Court did in the controversial paragraph 43 was to effectively reverse that finding, to rely upon the same ubiquitous reputation that BOTOX has in the injectables, to say that is something which people could not have put out of their mind when they notionally see BOTOX on creams.

So, this was the very type of reasoning which had been let loose by Woolworths, Henschke and Australian Meat Group but used to strengthen deceptive similarity.  That is where we got to – the position last time where Mr Bannon and I agreed reputation is out for all purposes.  The Court asked for the amicus.  The amicus today, as your Honour the Chief Justice exposed, has not stopped at defending the Henschke limited proposition but has basically said reputation is always in, or potentially in; it is then a question of fact in every case as to what its role is.  So, we submit that the Court would reject the amicus’ view, but it also would reject Woolworths and Henschke because reputation should be out for all purposes.

GAGELER J:   The amicus seems to use a different definition of reputation.

MR GLEESON:   There are some different definitions floating around.  Your Honours, that definition is one which says that the meaning of the mark is elucidated by how it is perceived by consumers through use.  That, we submit, is inconsistent with the Register and the section 120, that your registration is a monopoly in respect to the defined goods and services in the class that I have shown from the application and that does not expand or contract by reference to how you use it or what people might think about your mark because of your use.

GAGELER J:   This is not the case we are concerned with, but one example is given as to the way in which the word is pronounced, if it is a word.  Would you accept that as being something that is capable of being elucidated in evidence?

MR GLEESON:   Well, we have to be clear whether we are looking at the registered mark or the infringing mark.  If it is the infringing mark, one is looking at the actual use, and so that is why the evidence has been received of how pronunciations might occur, et cetera, but we would oppose any idea that the scope of the monopoly expands or contracts with variations in pronunciation over time.

GORDON J:   Can I just test that.  Could you just then explain to me what you say is the meaning in Australian Woollen Mills of the passage that Mr Bannon and I were just talking about?

MR GLEESON:   Well, that in carrying out the imperfect recollection exercise the Court does, and can, receive evidence – not simply judicial notice, but evidence of the trade, the market, the way people come to buy the goods, so that puts the Court in the situation by which one is carrying out imperfect recollection.  But you are not doing is saying, we will conduct an inquiry which cannot fall far short of passing off into the use and therefore the reputation of either mark – either the reputation or the infringing mark.

GORDON J:   So when the Court explains that the mark is actually the source of some name or verbal description by which they buy or desire to buy the goods ‑ ‑ ‑

MR GLEESON:   That is not trespassing on any of the issues of reputation that the amicus has raised here.

GORDON J:   I am asking a more direct question in response to – which is raised by your response to Justice Edelman and Justice Gageler.

MR GLEESON:   Your Honours, in that passage, which is on page 658 of Australian Woollen Mills, the Court is going no further than saying:

If the mark is in fact or from its nature likely to be the source of some name or verbal description by which the buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.

So, what the Court is doing is saying, we can look at both sound and meaning to place ourselves in the position of the notional consumer, if we be in such a case.  So, we have no difficulty with that; that is the law.  But that is not the inquiry which the amicus urges in paragraph 2 of the outline.

GORDON J:   But it is a narrower form of giving some scope to reputation, is not it?

MR GLEESON:   Potentially, your Honour, but it is not – so, we do not ‑ ‑ ‑ 

GORDON J:   It is not labelled reputation, but that is a way in which it might be seen to be taken into account, consistent with your answer you gave to Justice Edelman.

MR GLEESON:   Yes.  We do not see that as inconsistent with the statute.  So, I think I had attempted to give our answer on the notorious marks.  If there are such, the Court should really deal with reputation generally and not carve out a separate category of notorious marks because, if anything, that would make things worse, because as Mr Bannon says, that would be an encouragement not to trade so vigorously that you fall into the notorious category where you are then exposed to complete uncertainty as to whether, when your reputation is proved in the trade mark action, it helps you or hurts you.  That would undermine every principle of the Act.

EDELMAN J:   And if one gets rid of the notorious category, then it is either the strict approach that you urge, maybe with the modification that Justice Gordon mentions, or collapsing the Act into basically a passing off inquiry.

MR GLEESON:   Well, Ms Beaumont is correct that it is not a complete passing off inquiry because there is still some material you cannot look at, but a large part of it will be a passing off inquiry.  And in every case, if one thinks of the classic evidence that you use in passing off to try and prove reputation, it usually includes evidence of sales, evidence of advertising, possibly market discussion on your material.  All of that is going to be potentially in, but as Mr Bannon says, you will be trying to work out which part of it bears on the reputation in the mark, and which part of it bears on other aspects of your trading, so the uncertainty is enormous.  And so, we urge the Court to keep trade marks neat and simple.

Your Honour Justice Gleeson asked a question early on about could reputation comprehend associations with the mark such as Coca‑Cola being associated with a dark‑coloured beverage.  Our answer to that would be, in principle, that would not be part of the inquiry, assuming the colour is not part of the registration, for the reason that the test must be by reference to the notional fair use across the full range of the registration, and the trade mark owner would be free to change the colour over time, and that should not alter the scope of the registration.

Your Honours, in terms of our outline, I have now covered paragraphs 2 through to 6.  What is in paragraphs 7 to 9 is consistent with what Mr Bannon has put, at least orally.

GORDON J:   On your approach, we would have to decide as incorrect Woolworths, Henschke, Australian Meat Group.

MR GLEESON:   They are the Full Court authorities.  When I say, “incorrect”, we do wish to clarify.  Last time we used some loose language about “overrule”, we simply mean “disapprove” the relevant statement of principle in those cases.  None of the decisions in the cases need to be overturned because in most of them it was, in fact, obiter or the reference to reputation was but one of many factors, and we are not asking the Court to re‑engage in an exercise of whether the cases were correct if one had carved out the reputation.  In particular, in the case of Woolworths, Woolworths was a registration case; it got a registration.  We are not asking the Court to interfere with those in rem rights.  We are simply saying the statement of principle in those cases should be firmly disapproved.

As to those cases, could I ask your Honours, in supplement of what Mr Bannon has put, just to go back to, firstly, Woolworths – which was in volume 4 of the original materials at tab 23.  It was paragraph 61, on page 504 to 505, which set the hare running.  It was a registration case and it was the notoriety of the “Woolworths” as part of the composite mark of the second mark in time – that is, the equivalent of the alleged infringing mark – which was said to be something you could not carve out from the analysis.

So, where this whole line of authority started was never with reputation in the registered mark.  It was in a view that expressed very briefly, without full debate of the different arguments, that it would be artificial when you are looking at the infringing mark to ignore its familiarity to all Australians.  But, we submit, even within that context, the statement is in error for the reasons Mr Bannon gave.

If the Court then goes to Henschke in the Full Court – which is at tab 16, at paragraph [52] – the Court, having said, in general, reputation is no relevant – paragraphs [44], [45], [46] – have said there may be a carve‑out arising from Woolworths and the earlier cases cited – which is:

in assessing the nature of the consumer’s imperfect recollection . . . the fact that the mark –

or a part of it – and here are these words:

notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it . . . is a relevant consideration.

As there expressed, we say it is wrong, it should be disapproved.  But note, it is simply saying it is relevant, not saying it, necessarily, counters or reduces deceptive similarity.  The Full Court could not be read to have so limited it because of the four cases which it referred to – VapoRub, paragraph [46], Colgate, [47], and Coca‑Cola, [49] – they were all cases where the notorious reputation strengthened deceptive similarity.  It was only Woolworths, which was dealing with the infringing mark, where notoriety reduced deceptive similarity.

So, while [52] is wrong, to the extent it creates this carve‑out, at least it is a carve‑out simply on a ground of relevance with everything then left to a factual inquiry.  Your Honours might note one of the reasons Henschke as a decision does not need to be overturned is in paragraph [53] the Full Court said “Hill of Grace” did not become a grade one notorious mark.

GORDON J:   That comes back to my question about ordinary consumer.  There the ordinary consumer was not someone who was taken to be a wine connoisseur.

MR GLEESON:   Yes, although if one asks the market:  what are the goods?  Who is buying them?  The people buying them are people who like wine and one have thought that Hill of Grace would be very well‑known to many people in that market, even those who cannot afford it; they could at least dream of it.  So, my only point is it shows that if the court were to say, well, notorious marks, they have their own rules, reputation is relevant, could be good, could be bad, that is simply creating a dividing line between notorious and non‑notorious for which there is no text in the statute and which will simply create factual disputation and uncertainty.

Now, Australian Meat Group, the third, which is at tab 14, then at paragraph 41 on page 247 of the book, we would submit, erroneously narrowed Henschke further because now if it is notorious, deceptive similarity may be reduced.  It becomes a one‑way exercise.  Paragraph 41 of Australian Meat Group is where the primary judge in this case thought he had to start.  So, it has gone from relevant, which it is not, to relevant one way, which it certainly is not.

Finally, the Court asked about Swancom.  We commend Swancom for what it says.  And it is fairly clear from Swancom, referring to this exception as controversial, that Swancom would have disfavoured it if it was open for it to do so.

Your Honours, that is what I wanted to say about the matters in paragraphs 7 to 9 of our outline.  Paragraph 10 is a different point to what Mr Bannon has raised, although it may well point in the same direction.  If your Honours have the Act and just go back to what a defensive mark is about.  Under section 185 – and this is a purely textual submission – you can only get a defensive mark if you have used a registered mark in another class to such an extent that when the mark is used in relation to other goods or services, people are likely to think there is a connection with the registered owner of the first mark.  So, it is now an inquiry into the use of the mark – let us say here in relation to class 5 – used to such an extent that people are likely to think when they see the mark on class 3 goods that these are likely to be coming from the same people.  That is how you get your defensive registration. 

So, use and reputation and association are essential to the existence of a defensive mark, necessarily reputation and use in the trade mark in respect to other goods. Now, in the present case at trial, there was a large dispute as to whether the defensive mark should be expunged. We won that, and it was not appealed. The findings are at – I will just give the reference – 334 to 339 of the primary judge. So, we get a registration for class 3 because of the use of the mark in class 5. Having got the registration under section 186, in general, it is to be treated the same as every other mark, save for the provisions which are carved out. Your Honours will see from the carve‑outs, for example, that section 20(1) is not applied, but section 20(2) is applied. So, the theory is that having got the defensive mark, you can get relief for infringement as if you were an ordinary mark, so you can use section 120(1), (2) but you do not have exclusive right to use or authorise others to use the mark.

The next carve‑out is section 27(1)(b), which comes back to where I started.  When you apply for your registration, you have to satisfy, (a), you have to be the owner of the mark, but you do not have to be a person using or intending to use the mark.  But you are still caught by 27(3), so you have to specify the goods and, coming back to 186, you are not subject to the non‑use provisions.  The reason for that is section 185(2), which is you are not required to use the mark in relation to class 3.  So, you get your class 3 defensive registration because of your behaviour in the class 5 goods, and the statute assumes you may never use the mark on class 3.

Where that analysis goes – and this is the minimal proposition we are making – is that the Henschke/Woolworths limitation, whatever else one says about it, cannot be right for defensive marks, because it undermines the very basis upon which you got the defensive mark, which was the reputation and the class 5 goods.  So, if the class 5 reputation could be used against you, it would tend to render the marks nugatory and would be a construction contrary to Australia’s international obligations because the TRIPS convention, which we have supplied to the Court, would not be advanced.

At that point of our outline, your Honours, which is paragraph 10, a proper understanding of defensive marks provides an additional reason why the Woolworths/Henschke proposition should not be used to weaken the protection of defensive marks, and it is why the primary judge was wrong to use it against us.  Now, your Honours, paragraph 11 is a point which emerged from Mr Bannon’s written submissions but has been dealt with more lightly orally.  If your Honours have the appellants’ written submissions for today, there are a number of places, commencing with paragraph 3 and then, particularly, paragraph 27(c) and then the analysis in paragraphs 28 to 36 of the cases which are open to a reading that the appellants are saying the short way home on reputation is a narrow proposition, that it is impermissible to have regard to reputation in goods which are not the subject of the registration. 

We agree with Mr Bannon at paragraph 28 that the Amicus has not identified any authority contrary to that proposition and there is a short reason for that:  the classic case where reputation, in respect to goods not the subject of the registration is likely to be an issue, is our case – defensive registrations – and there are no cases on defensive registration.  So, to the extent this submission is urging you to deal with reputation solely on the ground of 27(c) and that analysis of the cases, we would ask you not to take that approach.  It really should be reputation for all purposes or none.

GORDON J:   Is that any more than just a consequence of your earlier submission on construction?

MR GLEESON:   It is probably no more than that, but we would be urging the Court not to ignore, for example, Mr Bannon’s 27(a) and (b) which we thoroughly agree with.  And what 27(c) is doing, perhaps, is it is the bridge to try to get to paragraph 41 of his submissions, which is that when you are in defensive mark territory, you cannot have regard to the reputation in the senior mark which produced the defensive registration because of its use on different goods.

We would approach that a little differently, if reputation is out for all purposes then we accept you cannot have regard to it for defensive registrations.  But if there was any prospect of reputation being in, in any part of this scheme, then the classic case where it would be appropriate is a defensive registration, because the reputation in the senior mark is the very thing when is being protected through the defensive registration.

Your Honours, perhaps just almost finally, in the supplementary materials – this would be volume 5 – at tab 38, the 1983 edition of Kerly – that is the 11th edition – at page 565 explained how defensive marks came into the 1938 UK Act.  The classic example given was the Eastman v Griffiths Cycle where the Kodak people had succeeded in stopping the use of Kodak in respect of cycles, but they had to use passing off.  The theory was that if you had built a reputation as a well‑known mark, there ought to be, as described here, a simple method of an action for infringement, and that was achieved through the defensive registration.

When the 1995 Act was introduced, the decision made by the working party – this is tab 34, at page 554 – was to maintain defensive registrations, even though at this time section 120(2) and (3) are being introduced to directly implement TRIPS.  The view that was taken, as set out on page 554, was:

possession of a . . . defensive registration will materially facilitate the enforcement of rights in well‑known marks.

So the whole purpose of the defensive was that if you had a well‑known mark like Kodak for cameras or BOTOX for injectables, instead of having to go through a passing off action when your mark is used on a different good, if you can prove your reputation through the defensive registration process, you have the simplicity of the trade mark action.  So the result is that under the 1995 Act you have both defensive registrations, which are facilitating the enforcement of rights in well‑known marks, and you also have section 120(3) allowing you to do something similar but through a different route where you have to prove some additional factual matters. 

Now, all of that, we would submit, supported by the explanatory memorandum, which is tab 31, pages 543 to 544, which explained why the defensive marks were being maintained, would lead one to the conclusion that if there is any scope for reputation in section 120, the primary area where there would be scope for it is defensive marks.  And, if that were the approach taken, then the paragraphs of the Full Court judgment, which start with 43 – and we have otherwise listed them in our submissions – are defensible.

Your Honours, my final submission was just the European and UK law has obviously departed, given the different statutory test which is applied there.  So, there is some scope for reputation, but as Ms Beaumont pointed out, normally it is used to strengthen deceptive similarity.  We would emphasise, though, that even under that approach, as you can see

from tab 33 – which is the sixth edition of Tritton, particularly at page 551, paragraphs 3‑471 and 3‑472 – there is considerable concern expressed by the learned commentators that the UK/EU approach has in fact created mission creep and considerable uncertainty because it is encouraging the introduction into the trade mark infringement action of the passing off case.  And there is almost a plea there to return to the purity of the traditional English and the current Australian approach.

May it please the Court.

KIEFEL CJ:   Thank you, Mr Gleeson.  Yes, Ms Beaumont. 

MS BEAUMONT:   Yes, your Honour, just two very short points, the first arising from the decision that Mr Bannon took your Honours to in the Coldstream and Airstream decision I only received as I was standing up.  So, I just wish to point out that in the judgment of Justice Dixon, to which Mr Bannon took the Court, on page 1496, which refers to the actual use of the mark not mattering in the infringement context, in my submission, that should be read together with what is said the page before at 1495, the penultimate paragraph where the use is described as:

widely advertised on to the name “Coldstream” –

the mark:

but nearly all the advertisements in publications put in evidence made use of the connexion of the name with the Guards Regiment.

And pictures.  So, that, in my submission, should be taken into account, and that accords with the way that we have put our proposition, which is that only the mark as registered is relevant. 

The second, very brief point relates to the question of evidence, and whether the introduction of evidence of reputation is somehow going to destroy the scheme of the Act.  I point out it is probably obvious that under subsection (3) of section 20, of course, evidence of reputation is a necessary part of the subsection, and there is no suggestion from our friends that that somehow destroys the structural purpose of the Act.

May it please the Court.

KIEFEL CJ:   Yes, thank you.  The Court reserves its decision in this matter and adjourns to 9.00 am tomorrow for pronouncement of orders, and otherwise to 9.30 am.

AT 12.13 PM THE MATTERS WERE ADJOURNED