FEDERAL CIRCUIT COURT OF AUSTRALIA
| SOCIÉTÉ DES PRODUITS NESTLÉ SA & ANOR v CHRISTIAN & ANOR (No.4) | [2014] FCCA 2025 |
| Catchwords: TRADEMARKS – Infringement – whether word and logos used by first respondent are deceptively similar to applicants’ registered trade marks – whether the markets in which the claimed infringing marks and registered trade marks are used is relevant to whether the claimed infringing marks are deceptively similar to a registered trade mark. |
| Legislation: Trade Marks Act 1995 (Cth), ss.6(1), 10, 17, 20(1), 20(2), 43, 120, 120(1), 120(2), 126 |
| Adidas AG v Pacific Brands Footwear Pty Ltd (No.3) (2013) 103 IPR 521 Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54 CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63 Coca-Cola Co v All-Fect Distributors Ltd (1998) 43 IPR 47 Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243 Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 Jafferjee v Scarlett (1937) 57 CLR 115 Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Textron Inc and Textron Ltd v Henry C Stevens Ltd and Blick Office Equipment Ltd [1977] RPC 283 The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661 Wingate Marketing Pty Limited v Levi Strauss & Co (1994) 49 FCR 89 Woolworths Limited v BP plc (No.2) (2006) 154 FCR 97 |
| First Applicant: | SociÉtÉ Des Produits NEstlÉ Sa |
| Second Applicant: | NESTLÉ australia ltd (acn 000 011 316) |
| First Respondent: | James William Christian |
| Second Respondent: | mark charles Christian |
| File Number: | SYG 3214 of 2013 |
| Judgment of: | Judge Manousaridis |
| Hearing date: | 6 June 2014 |
| Delivered at: | Sydney |
| Delivered on: | 3 September 2014 |
REPRESENTATION
| Counsel for the Applicants: | Mr Flynn |
| Solicitors for the Applicants: | Banki Haddock Fiora |
The First Respondent appeared by videolink from Melbourne.
ORDERS
By importing into, and selling and offering for sale supplements and therapeutic products in Australia under or by reference to the mark “A-SASHI” (A-SASHI Word Mark) and the devices appearing in annexure “A” to the reasons for judgment (First A-SASHI Device Mark and Second A-SASHI Device Mark), the first respondent has, within the meaning of s.120 of the Trade Marks Act 1995 (Cth), infringed Australian Registered Trade Marks:
(a)563325 MUSASHI in class 5;
(b)563326 MUSASHI in class 41; and
(c)1172510 MUSASHI and device in classes 5 and 32.
Subject to order 3, the first respondent, by himself, or by his employees or agents, is restrained from:
(a)importing into, and selling, offering for sale or promoting supplements and therapeutic products in Australia, under or by reference to the A-SASHI Word Mark or the First A-SASHI Device Mark or the Second A-SASHI Device Mark; and
(b)authorising, causing, procuring or inducing any other person to do so.
By 10 September 2014 the first respondent take down from the websites to which the domain name and the domain name resolve, and take down from the Facebook account at any content which displays the sign “A-SASHI” and either of the First A-SASHI Device Mark and the Second A-SASHI Device Mark.
By 17 September 2014 the first respondent inform the second applicant in writing that the steps required by order 3 have been taken.
The matter be listed for directions on a date to be fixed in relation to an inquiry for damages or an account of profits.
By 17 September 2014 the applicants file and serve submissions in relation to any other orders the applicants claim should be made.
By 24 September 2014 the first respondent file and serve submissions in response to the applicants’ submissions and in relation to the orders referred to in paragraphs 1-6.
By 1 October 2014 the applicants file and serve any submissions in reply.
The matter stand over to a date to be fixed for hearing of the issues raised on the submissions unless the applicants and the first respondent inform the Court by no later than 1 October 2014 that they agree to the Court deciding those issues without further hearing.
Costs are reserved.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT Sydney |
SYG 3214 of 2013
| SociÉtÉ Des Produits NEstlÉ Sa |
First Applicant
NESTLÉ AUSTRALIA LTD (acn 000 011 316)
Second Applicant
And
| James William Christian |
First Respondent
MARK CHARLES CHRISTIAN
Second Respondent
REASONS FOR JUDGMENT
Introduction
The second applicant (Nestlé Australia) conducts a number of businesses. One of these is the marketing and sale in Australia and elsewhere of a range of dietary supplements and sports nutrition products. Nestlé Australia markets and sells these products under the name of “MUSASHI”.
“MUSASHI” is a word mark registered under the Trade Marks Act 1995 (Cth) (Act). It is registered in relation to three classes of goods and one class of services.[1] The word “MUSASHI” also forms part of a device mark. The device mark, which is registered in relation to four classes of goods, consists of a black rectangle in the middle of which there is a red disc over which the word “MUSASHI” appears in white font. This is what it looks like:
[1] As prescribed by reg.3.1 of the Trade Marks Regulations 1995 (Cth).
The first applicant (Nestlé) is the registered owner of the MUSASHI trade marks; and it has authorised Nestlé Australia to use those trade marks in connection with the marketing and supply of dietary supplements and sports nutrition goods.
In around December 2012 the first respondent, Mr Christian, commenced a business for the online marketing and sale of special purpose vitamins and dietary supplements. He did so using the name “A-SASHI” and a logo that includes the name “A-SASHI”. The A-SASHI logo is applied to the vitamins and dietary supplements the A-SASHI business supplies. This is what the A-SASHI logo looked like on 18 December 2012 (first A-SASHI logo):
And this is what it has looked like since 23 October 2013 (second A-SASHI logo):
Nestlé and Nestlé Australia claim the name “A-SASHI” and the first and second A-SASHI logos are marks or signs that are deceptively similar to the MUSASHI trade marks; and that Mr Christian has used, and will continue to use, the A-SASHI name and logo in Australia in relation to the class or classes of goods or services, or in relation to goods and services of the same description for which, the MUSASHI trade marks are registered. In other words, Nestlé and Nestlé Australia claim Mr Christian has infringed and will continue to infringe the MUSASHI trade marks within the meaning of s.120 of the Act.
Mr Christian, who is representing himself, denies the A-SASHI logos and the MUSASHI marks are deceptively similar. He contends that he and others who were involved in the A-SASHI business conceived the name “A-SASHI” without reference to “MUSASHI”. In any event, Mr Christian contends the products to which the A-SASHI name and logos have been applied have been supplied to a market, and through supply channels, and for prices, that are different from the market in which, and the supply channels through which, and the prices at which, Nestlé Australia supplies products under the MUSASHI marks. For these reasons, Mr Christian submits, there is no likelihood or prospect of consumers being deceived by the use of the A-SASHI name or logos. Mr Christian also contends that Nestlé and Nestlé Australia have brought these proceedings for the purpose of damaging the A-SASHI business.
From this short statement of the applicants’ claims, and Mr Christian’s responses, it will be seen that the principal issue the Court is required to determine is whether the A-SASHI name and logos are deceptively similar to the MUSASHI trade marks. I will approach that task as follows:
a)First, I describe the MUSASHI trade marks, and the classes of goods and services in relation to which they are registered.
b)Second, I describe the goods Nestlé Australia markets and offers for sale under the MUSASHI trade marks, and the means by which that is done.
c)Third, I describe the goods Mr Christian has marketed and offered for sale using the A-SASHI name and logos, and the methods by which that has been done.
d)Fourth, I identify the basic legal principles I must apply to determine the applicants’ claims for infringement.
e)Fifth, I consider whether it is relevant to determining whether a claimed infringing mark is deceptively similar to a registered trade mark that the claimed infringing mark is used in relation to goods that are supplied in a market, or through sales channels, or for a price that are different from the market in which, or the sales channels through which, or for the price at which goods in relation to which the registered trade mark is used are supplied.
f)Sixth, although I do not understand there to be an issue about it, I will nevertheless consider whether Mr Christian has used the A-SASHI name and logos as a trade mark and, if so, whether he has used them in relation to goods or services in respect of which the MUSASHI trade marks are registered.
After I undertake these tasks, I will consider whether the A-SASHI name and logos are deceptively similar to the MUSASHI trade marks.
The MUSASHI trade marks
There are four registered MUSASHI word marks and one registered MUSASHI device mark. Word mark 563325 is registered for all goods in class 5 (class 5 MUSASHI word mark). These include pharmaceutical preparations and dietetic food and substances adapted for medical use, and dietary supplements for humans. Word mark 563326 is registered for services in class 41, these being instruction, education and information services in relation to human health, nutrition and physical culture, diet, food and dietary supplements and pharmaceutical, medical and veterinary substances (class 41 MUSASHI word mark). Word mark 563327 is registered for all goods in class 25, these being clothing, footwear and headgear (class 25 MUSASHI word mark). And word mark 835451 is registered for goods in class 32, namely, non-alcoholic drinks, health drinks, sports drinks and dietary drinks (class 32 MUSASHI word mark).
The MUSASHI device mark is composite mark 1172510 and registered in classes 5, 29, 30 and 32. These classes include concentrated food supplements made with carbohydrates, dietetic drinks and food for medical use; nutritional and dietetic supplements; vitamin preparations; mineral food supplements; food supplements and protein preparation for human consumption; carbohydrate preparations for food; preparations for enhancing sporting performance, physical endurance, conditioning and recovery; energy bars; cereal preparations and snacks; isotonic beverages and sports drinks; beverages for quenching thirst in liquid, powder or concentrate form (preparations for making beverages).
Use of the MUSASHI trade marks
Nestlé Australia markets and sells the MUSASHI range of products in Australia, New Zealand, Japan, Thailand, Malaysia, South Korea, India, and Chile.[2] It markets and sells some of the MUSASHI range of products - the amino acid products, amino blend products, protein powders, and bulk protein powders - under the name “MUSASHI”, and applies the MUSASHI word mark or device mark to those products. For other products, however, Nestlé Australia markets and sells them under the sub-brands “Musashi Growling Dog”, “Musashi P-Range”, and “Musashi SLM”.
[2] Affidavit of O. P. Nelson, 19.12.2013, [19]
The products Nestlé Australia markets under the “MUSASHI” name are as follows:[3]
a)Amino acid products (in capsule and powder forms), including L-carnitine, L-arginine, L-methionine, choline bitartrate, inositol and glycine.
b)Amino blend products, which combine single amino acids together in capsules and powders. These include “ZMA+” capsules (the ingredients of which include zinc, magnesium, and manganese), “Fat Mobiliser + Carnitine” capsules (the ingredients of which include choline bitartrate, inositol, L-methionine and levocarnitine), “Mega Fat Mobiliser” capsules (the ingredients of which include choline bitartrate, inositol, and L-methionine), “Fat Metabolising Formula” powder (the ingredients of which include methionine, inositol, and choline bitartrate), and “RE-ACTIVATE Hardcore” powder (the ingredients of which include L-methionine and vitamin B6).
c)Protein powders which contain whey protein concentrate (WPC) or whey protein isolate (WPI), plus added amino acids. These products include “RECOVER Whey Protein” powder, and “LEAN WPI Protein” powder.
d)“BULK” protein powders that combine WPC and WPI, protein bars such as “BULK Mass Gain Protein Bar” and “BULK Mass Gain Deluxe Protein Bar”.
[3] Affidavit of O. P. Nelson, 19.12.2013, [15]
The products Nestlé Australia markets under the MUSASHI sub-brands are as follows:[4]
a)“Musashi Growling Dog” which is a range of products targeted at higher intensity activity. One of the products is “Energy Protein” powder, the ingredients of which include L-arginine and L-methionine.
b)The “Musashi P-Range” of products that includes protein shakes, protein powders, and protein bars.
c)The “Musashi SLM” range of products which includes “Protein with Fat Metaboliser” powder, “Daily Fat Metaboliser” powder, “Pre-Workout Fat Metaboliser”, “Toning Protein Bar” and “Petite Mini Protein Bar”.
[4] Affidavit of O.P. Nelson, 19.12.13, [16]
In Australia, Nestlé Australia distributes the MUSASHI products to Coles’ and Woolworths’ distribution centres, and to over 2,300 outlets nationally, including all major grocery outlets, fitness centre franchises, health and supplement food stores and to pharmacies through third party distribution companies. A number of these outlets sell the MUSASHI products online as well as in-store.[5]
[5] Affidavit of O.P. Nelson, 19.12.13, [19]
Since at least 2006 Nestlé has been the registrant of the domain name That domain name resolves to the MUSASHI website which is operated and maintained by Nestlé Australia on behalf of Nestlé.[6] Since at least 17 May 2010 Nestlé Australia has been the registrant of the domain name which resolves to the website at Nestlé Australia also operates and maintains a Facebook page at and, since about 10 December 2012 at Nestlé itself makes no online sales of any MUSASHI products, although it did so at various times, most recently in about 2008.[7]
[6] Affidavit of O.P. Nelson, 19.12.13, [23]
[7] Affidavit of O.P. Nelson, 19.12.13, [19]
Nestlé Australia has implemented marketing campaigns for the MUSASHI brand through all media – television (free-to-air networks and several subscription channels), print advertisements in health and fitness magazines, digital (Facebook pages for the MUSASHI brand and the MUSASHI-SLM sub-brand), radio, and point of sale. Nestlé Australia has also established affiliations with sporting clubs, athletes and experts as part of its overall marketing campaign to align the MUSASHI brand with high performance individuals and teams. The MUSASHI brand and MUSASHI sub-brand maintain an active online presence through their respective websites.
The A-SASHI business
According to Mr Christian, in early 2012 he began to develop a new range of special purpose vitamins and dietary supplements that he proposed to market and sell online. To that end, Mr Christian created an online store.[8]
[8] Affidavit of J.W. Christian, 12.3.14, [3]
At some time before 10 July 2012 Mr Christian resolved to market and sell the products under the name of “A-SASHI”. On 10 July 2012 Mr Christian registered the business name “A-SASHI Vitamins” with the Australian Securities and Investment Commission. Mr Christian arranged to incorporate entities in Asia and the United States of America, and to register the domain names and The domain name resolves to the A-SASHI website.
[9] Affidavit of J.W. Christian, 12.3.14, [4]
Mr Christian has given evidence about how and why “A-SASHI” was chosen to be the name under which Mr Christian proposed to market and sell his new range of special purpose vitamins and dietary supplements. His evidence is as follows:[10]
The A-Sashi Vitamins name was created as a result of wanting a brand name which would be appealing to Asians, Australians & Americans. I wanted it to convey quality & longevity and have global appeal. I aimed to create a name & imagery incorporating a mix of Japanese & American style/tone. I had long been attracted to the imagery of the Japanese alcoholic beverage brand Asahi and so while not wanting to copy Asahi or to ever enter the beer space, I worked with a design team to capture & re-interpret design & tonal aspects of Asahi. We first came up with Asashi Vitamins and then added the (-) to create A-Sashi Vitamins largely because of the cracker brand Sakata. When Sakata launched years ago it introduced spaces between letters in it’s [sic] advertising in order to achieve easier pronunciation of the brand name (Sa..Ka..Ta.). That’s why I decided to separate A from Sashi using (-). Like Asahi and Sakata both incorporate a Japanese Nippon style red rising sun graphic, we also adopted the device. We rotated the A-Sashi word inside the red graphic circular device (like the Mattel logo) and then cropped it to exclude the top & bottom. We deliberately cropped & rotated the A-Sashi Vitamins logo so that it could always be very compact & easily positioned in a top left justified position on labels, website and all printed material.
[10] Affidavit of J.W. Christian, 12.3.14, [4]
Mr Christian supports this evidence by annexing to his affidavit what he describes as “SAKATA, ASAHI, MATTEL and A-SASHI VITAMINS . . . design elements”. What Mr Christian annexes are two pages which contain, among other things, a copy of a “SAKATA” logo, a copy of an image that appears to have been used in the advertising of SAKATA crackers, being an image containing a packet of the rice crackers and the words “SA…KA…TA”, an image featuring a bottle of Asahi beer, three images each showing a bottle of Asahi beer together with some words, and a “MATTEL” logo.[11]
[11] Affidavit of J.W. Christian, 12.3.14, [4], annexures C(1)-(9)
According to Mr Christian, in August 2012 he had discussions with Arnet Pharmaceuticals, a contract manufacturer based in Florida in the United States of America, about that company manufacturing the special purpose vitamins and dietary supplements that Mr Christian intended to sell under the A-SASHI name. Within a few months of that initial meeting, Mr Christian provided to Arnet artwork for labels to be used in the packaging of the products.[12] Each of the labels had the second A-SASHI logo.
[12] Affidavit of J.W. Christian, 12.3.14, [8]
Beginning in December 2012, Mr Christian commenced selling the A-SASHI vitamins through its online store in the United States of America. Mr Christian initially sold using digital media, and weekly print media. Customers who ordered the A-SASHI products were supplied from the Shipwire east coast fulfilment facility in Lancaster Philadelphia, being the place where the bulk-finished goods manufactured by Arnet were stored.[13]
[13] Affidavit of J.W. Christian, 12.3.14, [10]
Use of the A-SASHI logo and name
The A-SASHI business has used the A-SASHI name and the first and second logos in a number of ways. First, the name and logos have appeared on the A-SASHI website. As at 18 December 2012,[14] 13 March 2013,[15] and 23 October 2013,[16] the A-SASHI website had a page with the words “CONTACT US” which provided two addresses, one in New York, and one in Melbourne. Each of the pages also contained a contact telephone number for each address.
[14] Affidavit of M.C. Shearer, 13.12.13, [3]; exhibit MCS-1, tab 1
[15] Affidavit of M.C. Shearer, 13.12.13, [18]; exhibit MCS-1, tab 20
[16] Affidavit of M.C. Shearer, 13.12.13, [3]; exhibit MCS-1, tab 2
A second way in which the A-SASHI business has used the A-SASHI name and logos is on a Facebook page it maintains at (A-SASHI Facebook page). There is evidence that at various times there was posted on the A-SASHI Facebook page a photograph of an Australian Rugby League team,[17] an AFL team,[18] and the Melbourne Cup.[19] On 6 June 2013 the A-SASHI Facebook page recorded “AUSTRALIA & NEW ZEALAND – Next Day Shipping”.[20]
[17] Exhibit BAP-1, tab 14; exhibit OPN-1, tab 25
[18] Exhibit OPN-1, tab 25
[19] Exhibit OPN-1, tab 25
[20] Exhibit MCS-1, tab 9
A third way in which the A-SASHI business has used the A-SASHI name and logos is by selling products which bear the A-SASHI mark. On 5 June 2013 a solicitor for Nestlé Australia and Nestlé visited the A-SASHI website and placed an online order for one container of A-SASHI “Women’s Multi-Vitamins”. On 11 June 2013, the solicitor received in the mail the product she ordered.[21] On 21 November 2013, an employee of a private investigation firm placed an order via the A-SASHI website for nine items within the A-SASHI products range.[22] On 22 November 2013, Mr Christian sent an email to the person who ordered the items confirming that “your order has been dispatched today”, but noting that one of the items ordered was out of stock.[23]
[21] Affidavit of M.C. Shearer, 13.12.13, [12]-[15]
[22] Affidavit of A.S. Barnett, 19.12.13, [4]
[23] Affidavit of A.S. Barnett, 19.12.13, [4], annexure “E”
Further, Mr Christian has deposed as follows: [24]
In early 2013 we shipped bulk-finished goods to a fulfilment facility PikPak (China Fox Group Pty Ltd) in Melbourne Australia and then began advertising in Australia using a mix of digital media. Orders to Australian customers were initially packed and supplied from the PikPak facility in Melbourne. PikPak was a temporary fulfilment solution while we were waiting for Shipwire to open their Australian warehouse, as Shipwire were only operational in US, Canada, UK and Hong Kong.
[24] Affidavit of J.W. Christian,12.03.14, [11]
The products that were stated to be available for sale on the A-SASHI webpage as at 17 December 2013 were as follows:[25]
[25] Affidavit of O.P. Nelson, 19.12.13, [33]; exhibit OPN-1, tab 26
Name
Stock Keeping Units
Men’s Multi-Vitamins
60 tablets
Women’s Multi-Vitamins
60 tablets
Fat Burner
60 tablets
Liver Detox
60 tablets
Omega 3 Fish Oil
60 softgels
Magnesium + Calcium + Zinc
60 tablets
Mood
60 tablets
Sleep
60 tablets
Hair + Skin + Nails
60 tablets
Memory
60 tablets
Children’s Multi-Vitamins
60 chewable tablets Orange flavour
Calcium + Vitamin D
60 tablets
High Strength Vitamin C +
60 tablets
Co-Enzyme Q10
30 capsules
Glucosamine +
60 capsules
Whey Protein Isolate Choc
2.3kg powder; chocolate flavour
Whey Protein Isolate Vanilla
2.3kg powder; vanilla flavour
Peanut Butter & Caramel Protein Bar
52g protein bar; 18 bars per pack; peanut butter and caramel flavour
Double Choc & Caramel Protein Bar
72g protein bar; 18 bars per pack; double choc and caramel flavour
I now turn to identify the basic legal principles that should guide my determination of the claims made in these proceedings.
Legal principles
Subject to the terms of the Act, a registered owner of a trade mark has the exclusive rights to use the trade mark, and to authorise other persons to use the trade mark “in relation to the goods and/or services in respect of which the trade mark is registered”.[26] The registered owner also has the right to obtain relief under the Act if the trade mark has been infringed.[27] The relief provided under the Act consists of the granting of injunctions, and damages or an account of profits.[28]
[26] Subsection 20(1) of the Act.
[27] Subsection 20(2) of the Act.
[28] Section 126 of the Act.
The circumstances in which a person infringes a trade mark are defined in s.120 of the Act; and that section identifies three circumstances, two of which are relevant to these proceedings. The first are those specified in s.120(1) of the Act:
A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
The second set of circumstances are those specified in s.120(2):[29]
[29] Subsection 120(2) of the Act.
A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
a)goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
b)services that are closely related to registered goods; or
c)services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
d)goods that are closely related to registered services.
A person who uses as a trade mark a sign in the second of these sets of circumstances, however, will not be taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
There are a number of points that should be noted. First, to infringe a trade mark a person must use a “sign”, and he or she must use the sign “as a trade mark”. “Sign” is defined to include any combination of “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”.[30] And “trade mark” is defined to mean a “sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.[31]
[30] Section 6(1) of the Act.
[31] Section 17 of the Act.
Second, to use “a sign” “as a trade mark” means to use the sign “as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods”.[32] Thus, to use the language of s.17 of the Act, the claimed infringer must use the claimed infringing mark to distinguish goods or services dealt with or provided in the course of trade by the claimed infringer from goods and services so dealt with or provided by any other person.
[32] Coca-Cola Co v All-Fect Distributors Ltd (1999) 47 IPR 481 at page 489-490 (Black CJ, Sundberg and Finkelstein JJ)
Third:[33]
Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons; that is to say, it must distinguish them in the sense of indicating origin. . . .
[33] Woolworths Limited v BP plc (No 2) (2006) 154 FCR 97 at [77]
Fourth, s.120 of the Act identifies the use of two kinds of marks that may constitute infringement. These are marks that are substantially identical with the registered trade mark; and marks that are deceptively similar to the registered trade mark. A claim that a mark infringes a registered trade mark because it is substantially identical with the registered trade mark and a claim that a mark infringes a registered trade mark because it is deceptively similar “are to be judged in different ways”.[34]
[34] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at page 414 (Windeyer J)
Fifth, s.10 of the Act defines when a trade mark is to be taken to be “deceptively similar to another trade mark”; and that is where “it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. This definition, however, is silent about a number of matters. The words “deceive” and “confusion” refer to states of mind, yet s.10 does not identify the person or classes of persons who are required or are assumed to have those states of mind. And to the extent s.10 requires or permits the state of mind to be that of hypothetical persons, it does not specify the characteristics such persons are assumed to have, or the information that is assumed to be available to such persons by reference to which their states of mind are to be assessed. Further, s.10 does not state the matters about which a person or class of persons is required to be deceived or what is meant by “confused”. These omitted details are supplied by the cases.
Sixth, the matter about which persons are required to be deceived or confused for the purposes of s.10 of the Act is whether the goods or services in relation to which the claimed infringer uses the claimed infringing mark (infringer’s goods or services) come from the same source as the goods or services in relation to which the registered trade mark has been used (non-infringer’s goods or services). That is, a person will be deceived within the meaning of s.10 of the Act if he or she believes the infringer’s and the non-infringer’s goods or services share a common source; and a person will be confused if he or she is confused about whether or not the infringer’s goods or services have the same source as the non-infringer’s goods or services.
That this is the matter about which persons are required to be deceived or confused is apparent from the cases. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[35] for example, Kitto J, in the course of determining whether a trade mark that was sought to be registered was likely to deceive,[36] stated a number of propositions, one of which was:[37]
While a mere possibility of confusion is not enough . . . it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.
[35] (1954) 91 CLR 592
[36] Within the meaning of s.114 of the Trade Marks Act 1905-1948 (Cth).
[37] (1954) 91 CLR 592 at page 595
In Registrar of Trade Marks v Woolworths Ltd, after referring to Kitto J’s propositions in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, French J (as his Honour then was) said:[38]
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
[38] (1999) 93 FCR 365 at page 382 ([50])
And in Vivo International Corporation Pty Ltd v Tivo Inc, Keane CJ (as his Honour then was) said:[39]
It must be emphasised that the issue is not whether the marks were substantially identical, but whether they were apt to cause confusion. In this regard, as has been repeatedly said in the authorities the issue is not whether consumers might think that the trade marks are the same, but whether a number of persons will be caused to “wonder whether it might not be the case that the two products or closely related products and services come from the same source . . . [or to] wonder or be left in doubt about whether the two sets of products . . . come from the same source.”
[39] (2012) 294 ALR 661 at page 674 ([77])
Seventh, as these passages indicate, the state of mind denoted by the word “confusion” is that of “wonder” or “doubt”; there must be a doubt or wonder about whether the claimed infringer’s goods or services and the non-infringer’s goods or services come from the same source.
Eighth, the persons who must be deceived or confused are the actual and prospective purchasers of the goods or services in relation to which the claimed infringer has or proposes to use the claimed infringing mark. The substance of this principle has been stated in cases arising out of the refusal to register, or challenges to the registration of a trade mark on the ground that the use of the trade mark in relation to the goods or services for which it is intended to be used would be likely to deceive or cause confusion, as well as in cases of claimed infringement of a trade mark.[40] In Australian Woollen Mills Ltd v F S Walton & Co Ltd, Dixon J (as his Honour then was) and McTiernan J said:[41]
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.
[40] See s.43 of the Act.
[41] (1937) 58 CLR 641 at page 658
And in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J said:[42]
Of course, it is in relation to commercial dealings with goods that the question of confusion has to be considered, and the persons whose state of mind is material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark.
[42] (1954) 91 CLR 592 at page 595
Ninth, the effect or impression produced on the mind of the actual or potential customers by the mark or device for which the protection of an injunction is sought, must be assessed on the assumption that the customers are “persons of ordinary intelligence and memory”.[43] The “usual manner in which ordinary people behave must be the test of what confusion or deception may be expected”.[44] Potential consumers “are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.”[45]
[43] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at page 415 (Windeyer J)
[44] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 658 (Dixon and McTiernan JJ)
[45] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 658 (Dixon and McTiernan JJ)
Tenth, s.10 of the Act implies that the deception or confusion produced by the claimed infringing mark in the mind of actual or potential customers of the claimed infringer’s goods or services must arise from the resemblance the claimed infringing mark bears to the registered trade mark. In the words of Windeyer J, the “deceptiveness that is contemplated must result from similarity”.[46] What resemblance the claimed infringing mark bears to the registered trade mark, however, is not to be assessed by comparing the two marks side-by-side; the extent and significance of the resemblance are to be assessed by comparing the actual or potential customers’ impressions of the claimed infringing mark with the customers’ impressions of the registered trade mark based on their memory of the features of the registered trade mark.
[46] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at page 416
This principle was stated by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd:[47]
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.
[47] (1963) 109 CLR 407 at page 415
The reason for this approach has been expressed in a number of authorities. For example, in Jafferjee v Scarlett, Latham CJ said:[48]
. . . it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived.
[48] Jafferjee v Scarlett (1937) 57 CLR 115 at page 122
Eleventh, the resemblance the claimed infringing mark bears to the registered trade mark must be such as to give rise to more than a mere possibility of confusion; there must be a “real, tangible danger” of confusion occurring.[49] It will be “sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source”. It will be “enough if the ordinary person entertains a reasonable doubt”.[50]
[49] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at page 595 (Kitto J)
[50] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at page 595 (Kitto J).
Twelfth, although the extent of the resemblance or similarity between the registered trade mark and the claimed infringing mark are to be assessed by comparing the impressions of customers, it is the court that determines what those perceptions are or are likely to be. This was emphatically stated by Lord Evershed MR in Electrolux Ltd v Electrix Ltd:[51]
The question of infringement, the question whether one mark is likely to cause confusion with another, is a matter upon which the judge must make up his mind and which he, and he alone, must decide. He cannot, as it is said, abdicate the decision in that matter to witnesses before him.
[51] (1953) 71 RPC 23 at page 31. This passage was quoted with approval by the Full Federal Court in Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 at page 377.
And in Australian Woollen Mills Ltd v F S Walton & Co Ltd, [52] Dixon J (as his Honour then was) and McTiernan J said whether one mark is deceptively similar to another:
is a question never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.
[52] (1937) 58 CLR 641 at page 659
Finally, when determining what those impressions are, or are likely to be, the Court takes into account a number of matters. First, and most importantly, it takes into account the extent to which the registered trade mark and the claimed infringing mark share similar features, and the nature of the features that are similar. And here, the cases have identified a number of “signposts”[53] or “rules of comparison”[54] that are available to be applied to assist in that task. Three of these signposts were referred to by Finn J in CA Henschke & Co & Anor v Rosemount Estates Pty Ltd:[55]
(i) when comparing names one must judge them by look and sound . . . and by the idea they convey . . . (ii) one must take account of the way in which the mark is likely to be referred to or heard . . . (iii) particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks . . . save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.
[53] That is the expression of Finn J in CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63 at page 74 ([35])
[54] Shanahan’s Australian Law of Trade Marks and Passing Off 5th ed., Lawbook Co, 2012, page 266.
[55] (1999) 47 IPR 63 at page 74 ([35]) (cases omitted)
Other signposts or rules of comparison have been identified in the cases. One is whether the feature that is shared by the two marks is “prominent or distinctive”[56] or “distinguishing”[57] or an “essential”[58] feature of the registered trade mark. Such features are relevant because they are likely to strike the eye and fix themselves in the recollection;[59] and it is the prominence of such features in a person’s otherwise imperfect memory of the registered trade mark that may lead him or her to be deceived or confused by the presence of the same feature in the claimed infringing mark about whether the claimed infringing goods or services come from the same source as the non-infringer’s goods or services.
[56] Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243 at page 251 ([36]) (FCA, Moore J)
[57] Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147 at page 174 (Viscount Maugham)
[58] Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147 at page 162 (Greene MR); De Cordova and Others v Vick Chemical Company (1951) 1B IPR 496 (Privy Council) at page 498 (Lord Radcliffe).
[59] This is a paraphrase of what Greene MR said in Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147 at page 162 where his Lordship, speaking of a particular type of trade marks said that “the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection.”
A second matter the court may take into account when considering the impressions the claimed infringing mark is likely to create is “the background of the usages in the particular trade”.[60] This includes such things as the characteristics of the consumers of the relevant goods or services, and the manner in which the goods or services are marketed.[61] There are significant limits, however, to what a court may consider as background. This was explained by Gummow J in Wingate Marketing Pty Limited v Levi Strauss & Co.[62] After quoting a passage from the judgment of Graham J in Textron Inc and Textron Ltd v Henry C Stevens Ltd and Blick Office Equipment Ltd[63] which included the statement that “in infringement proceedings one is concerned for practical purposes only with the two marks themselves”, Gummow J said:
The statement that in infringement proceedings the concern “for practical purposes” is only with the marks themselves requires some elaboration . . . . In particular – (i) The comparison is between any normal use of the plaintiff’s mark comprised within the registration and that which the defendant actually does in the advertisements or on the goods in respect of which there is the alleged infringement, but ignoring any matter added to the allegedly infringing trade mark; for this reason disclaimers are to be disregarded, price differential was considered irrelevant by Kearney J[[64]] and Cross J,[[65]] his Lordship also disregarded the differences in use by the parties of colour and display panels, and his Honour discounted the differences in the respective sections of the public to whom the goods were sold. (ii) However, evidence of trade usage, in the sense discussed above, is admissible but not so as to cut across the central importance of proposition (i). (iii) In particular, in making an aural comparison of the marks, whilst ordinarily one is concerned with what appears to be the natural and ordinary pronunciation, evidence in my view is admissible that those in the trade pronounce the defendant’s mark in a manner which otherwise might be thought to vary from the normal fashion. (iv) Evidence of cases of deception or confusion may be taken into account . . . . (v) Although . . . it is not decisive, evidence is admissible that the defendant’s mark was adopted with a view to “sailing close to the wind”, in the sense of the adverse finding made by the primary judge in this case.
[60] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at page 410 (Windeyer J)
[61] CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63 at page 61 ([42]) (Finn J)
[62] (1994) 49 FCR 89 at page 128
[63] [1977] RPC 283 at page 286
[64] In Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491 at 497 to which Gummow J referred to at page 126, noting that “Kearney J held that in assessing whether “Solaroid” was deceptively similar to “Polaroid” . . . so that there was an infringement, it was no answer in determining deceptive similarity that the products the plaintiffs were more expensive and provided to a different class of customer.”
[65] In British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54 at 64 to which Gummow J referred to at page 126.
The last proposition stated by Gummow J in this passage leads me to a third matter a court may have regard to in assessing whether a claimed infringing mark is deceptively similar to a registered mark; and that is the intention of the claimed infringer. The principle is that if the court finds that the claimed infringer has adopted a mark “for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse”.[66] The rationale for accepting this type of reasoning was stated by Dixon J (as his Honour then was) and McTiernan J to be as follows:[67]
In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.
[66] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 657 (Dixon and McTiernan JJ)
[67] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 657
A finding of an intention to deceive, however, is not conclusive of the question whether the claimed infringing mark is likely to deceive; whether or not a claimed infringing mark is deceptively similar to a registered trade mark is a matter for the court to determine.[68]
[68] Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) (2013) 103 IPR 521 at page 541 ([102] and [103]) (FCA, Robertson J)
Factors in determining similarity of marks giving rise to deception
The authorities to which I have referred state that whether or not similarities between two marks lead to deceit or confusion is to be assessed by assuming consumers, on becoming aware of the claimed infringing mark, compare what they observe of the claimed infringing mark with their imperfect memory of the registered mark. What are the factors that determine or influence whether or not the consumer will be deceived or confused?
The starting point is to identify the source of the potential for deception or confusion; and that is the assumption that consumers do not compare side by side the registered trade mark with the claimed infringing mark. It is assumed that they compare the claimed infringing mark that is before their very senses with their memory of the registered trade mark. The potential for confusion in those circumstances arises from at least two potential causes. The first is the inherent vulnerability of memory. We each have in our minds fewer details of what we remember we have observed of an object than what we have in our minds when we directly observe the object. And the details that are impressed in our minds lose their vividness with time. The second cause is the potential of a consumer’s actual memory of the registered trade mark to be unsettled or undermined by the features of the claimed infringing mark to which the consumer is exposed.
From this, it can be seen that the likelihood of deception or confusion will depend on the presence or absence of a number of features of the registered and claimed infringing marks. The first is whether they share distinctive features. All other things being equal, the greater the extent to which the marks share the same distinctive feature, the greater is the likelihood of deception or confusion. The distinctive feature of the registered trade mark is more likely to remain in the memory of the consumer; and it is the distinctive feature of the claimed infringing mark to which the consumer is likely to direct his attention when he or she perceives it. The consumer is more likely, therefore, to compare the distinctive feature of the claimed infringing mark with his or her memory of the distinctive feature of the registered trade mark, and from that conclude the claimed infringing mark and the registered mark are the same, or wonder whether they are the same.
A second feature of the marks that is relevant to deception or confusion is the extent to which they each have distinctive features they do not share. All other things being equal, the greater the extent to which each mark has a distinctive feature the other mark does not have, the lesser is the likelihood of deception or confusion. That is so because the consumer’s attention will be drawn to the distinctive elements of the claimed infringing mark; and to the extent those elements differ from the distinctive elements of the registered mark, the less likely it will be the consumer will have cause to recall his or her memory of the registered trade mark and hence believe or wonder whether the claimed infringing mark has been used in relation to the supply of goods that have the same source as the goods in relation to which the registered mark is used.
And the third feature of marks that is relevant to deception or confusion is a corollary of the first two features: and that is the extent to which the registered and claimed infringing marks have non-distinctive features. This is relevant in two ways. First, the consumer is less likely to have in his memory the non-distinctive features of the registered mark; and, second, when exposed to the claimed infringing mark, the consumer is less likely to direct his or her attention to the non-distinctive features. Thus, all other things being equal, the greater the extent to which the differences between the registered and claimed infringing marks reside in their non-distinctive features, the greater the likelihood of deception.
Relevance of market, sales channels, and pricing
Mr Christian submits the MUSASHI products and the A-SASHI products are offered for sale to consumers in different market segments and, for that reason, consumers of the A-SASHI products are not likely to be deceived when exposed to the A-SASHI name or logo. He also submits that the A-SASHI products are supplied through a supply channel, for prices that are different from the channels through which and the prices for which the MUSASHI products are supplied and, for those reasons, consumers of the A-SASHI products are not likely to be deceived.
Relevance of the market in which claimed infringer’s goods are supplied
The word “market”, when qualified by words that describe particular goods or services, denotes a set of suppliers that compete, or are in a position to readily compete, for the sale of those goods or services to consumers in a particular territory. The only goods or services that are included in a market are those for which there are no reasonable substitutes in the eyes of the actual or potential consumers of the goods or services.
That a claimed infringer’s goods are supplied in a market that is separate from the market in which the non-infringer’s goods are supplied could be said to be probative of whether a purchaser of the claimed infringing mark will be deceived or confused. The purchaser may believe that goods that are not reasonably substitutable for each other are produced by different persons. And because the claimed infringer’s and non-infringer’s goods are not reasonably substitutable for each other, a purchaser, when exposed to the claimed infringing mark, would have less reason to recall his or her memory of a registered trade mark than he or she otherwise would if the claimed infringer’s goods were supplied in the same market as the non-infringer’s goods.
In my opinion, however, whether or not the claimed infringer’s goods are supplied in a different market from the market in which the non-infringer’s goods are supplied is not relevant to the question of deception or confusion. First, the Act itself recognises that the same or substantially the same marks may be used in different lines of trade or commerce. The lines of trade or commerce the Act draws, however, are not based on the notion of “market”; the lines are based on goods and services, and more particularly, the classes of goods and services prescribed under reg.3.1 of the Trade Marks Regulations 1995 (Cth) (Regulations). And, as discussed by Gummow J in Wingate Marketing Pty Limited v Levi Strauss & Co,[69] the comparison called for by s.120 of the Act is between any normal use of the registered trade mark comprised within the registration and that which the claimed infringer actually does in the advertisements or on the goods in respect of which there is the alleged infringement.
[69] (1994) 40 FCR 89 at page 128
Thus, if the claimed infringer’s goods are supplied in a separate market from that in which the non-infringer’s goods are supplied, s.120 will require the making of a comparison between the two marks if it falls within the normal use of the registered trade mark to apply it to goods that could be supplied in the market in which the claimed infringer supplies the goods. This point was made by Kearney J in Polaroid Corporation v Sole N Pty Ltd:[70]
[I]t is not a question of the manner in which the plaintiffs [the owners of the registered trade marks] use their marks, but rather a question of which market, and the extent of the market which the plaintiffs are to be treated as free to use. The only question posed under s 62 [now s.120 of the Act] is whether the defendants have trespassed into any part of that area reserved to the plaintiffs by virtue of their proprietorship of the registered marks.
[70] [1981] 1 NSWLR 491 at 497
Second, and in the sense discussed by Gummow J in Wingate Marketing Pty Limited v Levi Strauss & Co,[71] “in infringement proceedings one is concerned for practical purposes only with the two marks themselves”.[72] To take into account the question of whether the claimed infringer’s goods and the non-infringer’s goods are supplied in different markets is to introduce to a significant degree matters and considerations outside the features of the marks themselves.
[71] (1994) 40 FCR 89 at page 128
[72] Textron Inc and Textron Ltd v Henry C Stevens Ltd and Blick Office Equipment Ltd [1977] RPC 283 at page 286
Third, to permit issues of deception to be judged, if only in part, by reference to whether the claimed infringer’s goods are supplied in a different market from that in which the non-infringer’s goods are supplied would render potentially relevant, not only in claims for infringements, but also in applications for the registration of trade marks, all the complexities and expense that are involved in defining markets.
Relevance of supply channels in which, and the price at which claimed infringer’s goods are sold
That the claimed infringer’s goods are sold through sales channels that are entirely distinct from the sales channels through which the non-infringer’s goods are sold could also be said to be probative of whether a purchaser of the claimed infringer’s goods will be deceived or confused. Actual or potential purchasers of the claimed infringer’s goods may not be confused because they may believe that goods that are supplied through distinct supply channels are supplied by different persons. In my opinion, however, the sales channel through which the claimed infringer’s goods are supplied is not relevant to determining whether the claimed infringing mark is deceptively similar to the registered trade mark if it is otherwise open to the owner of the registered trade mark to use the trade mark to sell goods through the same sales channel.
Similarly, although the fact a claimed infringer’s goods is priced differently from that of the non-infringer’s goods may be probative of whether a purchaser of the claimed infringer’s goods will be deceived or confused, it will not be relevant to determining whether the claimed infringing mark is deceptively similar to the registered trade mark. Kearney J so held in Polaroid Corporation v Sole N Pty Ltd:[73]
The defendants further submitted that it was proper to look at the market, and in this regard suggested that the products of the plaintiffs are in a more expensive range, and also that they are provided to a different class of customer from that applicable in the case of the defendants’ goods. For the same reasons as outlined above, I do not consider that matter of this kind is appropriate to be considered under the tests stated in s 62.
[73] [1981] 1 NSWLR 491 at 497
I now turn to consider the following matters:
a)Has Mr Christian used the A-SASHI logos, and has he used them as trade marks?
b)If so, has he used the A-SASHI name and logos as trade marks in relation to the goods or services for which the MUSASHI trademarks are registered, or in relation to goods that are closely related to the services for which the MUSASHI trademark is registered?
c)If so, do the A-SASHI marks and MUSASHI marks so resemble each other that they are likely to deceive or cause confusion?
Were and are the A-SASHI name and logos used as trade marks?
The evidence establishes that Mr Christian has offered and, I infer, continues to offer for sale in Australia products within the A-SASHI product range under the business name “A-SASHI”. The evidence also establishes that Mr Christian has offered to sell products under or by reference to the first A-SASHI and the second A-SASHI logos, and has offered and will continue to offer for sale products under or by reference to the second A-SASHI logo. Mr Christian did this by applying to the A-SASHI goods the first and then the second A-SASHI logos. I have summarised the evidence in paragraphs 23-28 of these reasons.
I also find that Mr Christian has used the A-SASHI name and the first and second A-SASHI logos to distinguish his goods from others; that is, as a trade mark. That is clear from the evidence I summarised in paragraphs 23-28 of these reasons.
Goods and services in relation to which the A-SASHI name and logos have been used
Mr Christian has described the products the A-SASHI business was created to sell as “a new range of specific purpose “SP” vitamins & dietary supplements “VDS” to sell online”.[74] Mr Christian’s description of the products as being vitamins and dietary supplements is confirmed by what the evidence reveals are the descriptions of the goods themselves. Thus, all of the tablets and capsules in the A-SASHI range are marked as “Dietary Supplement”;[75] and, as at 13 November 2013, the A-SASHI website offered for sale a product named “Recover Whey Protein” in chocolate and vanilla flavours whose packaging contained the words “sports nutrition”.[76]
[74] Affidavit of J.W. Christian, 12.3.14, [3]
[75] Exhibit OPN-1, tab 26
[76] Exhibit OPN-1, tab 25A
In my opinion, the products within the A-SASHI line of products are “dietary supplements for humans”, within the meaning of class 5 of Schedule 2 to the Regulations. The MUSASHI word mark has been registered in relation to class 5, and the MUSASHI device mark has been registered for classes of goods that include class 5. Accordingly, Mr Christian has used the A-SASHI name and logo “in relation to goods or services in respect of which” the class 5 MUSASHI word mark and the MUSASHI device mark are registered.
In addition, A-SASHI’s Recover Whey Protein product is at least one of the non-alcoholic drinks, health drinks, sports drinks and dietary drinks that fall within the meaning of class 32 of Schedule 2 to the Regulations. To the extent, therefore, Mr Christian has used the A-SASHI name or the first or second A-SASHI logo in relation to the supply of the Recover Whey Protein product, he has used these marks “in relation to goods or services in respect of which” the class 32 MUSASHI word mark and the MUSASHI device mark are registered.
The applicants also submit the A-SASHI range of products are “goods that are closely related to” the services in respect of which the MUSASHI class 41 mark is registered. They submit that, being dietary and nutritional supplements, the A-SASHI range of products are goods that are closely related to instruction, education and information services in relation to human health, nutrition, and dietary supplement. What renders them closely related, the applicants submit, is that the recommended type of A-SASHI supplements to be taken, their ingredients and their properties, is a direct subject of services for the instruction, education and information in relation to human health.
The expression of “closely related goods” was considered by French J (as his Honour then was) in Registrar of Trade Marks v Woolworths Ltd, where his Honour said:[77]
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”.
[77] (1999) 93 FCR 365 at page 378 ([38])
His Honour further noted that, perhaps in most cases, the relationship between goods and services that will render them “closely related” will be “defined by the function of the service with respect to the goods”.
In my opinion, the A-SASHI products are goods that are closely related to the provision of services in respect of which the MUSASHI class 41 mark is registered. The A-SASHI products relate to human health and nutrition. And their consumption is intended to be guided by a variety of information about how they relate to health and nutrition, and how they may be used to enhance health and nutrition.
Services in relation to which A-SASHI logos have been used
Nestlé and Nestlé Australia submit that the blog section of the A-SASHI website and the A-SASHI Facebook page constitute a service, within the meaning of class 41 of the Regulations, for the provision of information, and that such service is provided under the use of the A-SASHI name and the A-SASHI logos. I agree.
Given that the MUSASHI mark has been registered in relation to class 41, Mr Christian’s use of the A-SASHI name and logos in the blog section of the A-SASHI website and the A-SASHI Facebook page constitutes use of the A-SASHI name and logo “in relation to goods or services in respect of which” the class 41 MUSASHI word mark is registered.
Are the A-SASHI marks deceptively similar to the MUSASHI marks?
I now turn to consider whether the A-SASHI name and logos (A-SASHI marks) so resemble the class 5, class 32, and class 41 MUSASHI word marks and the MUSASHI device mark (MUSASHI marks) that it is likely to deceive or cause confusion.
That question is to be answered by assessing the impression persons (consumers) of ordinary intelligence and memory, who have an imperfect memory of the MUSASHI marks, are likely to gain on their being exposed to the A-SASHI marks in the actual circumstances in which the A-SASHI marks are used. If, for a number of consumers, there is a real, tangible danger that the resulting impression is likely to be deception or confusion about whether the A-SASHI products come from the same source as MUSASHI products, the A-SASHI name and logos will be held to be deceptively similar to the MUSASHI word and device marks; and Mr Christian’s use of the A-SASHI marks will have constituted infringement by him of the MUSASHI marks.
In assessing what impressions are likely to be gained, I ignore Mr Christian’s contentions that the A-SASHI products are supplied to a market, or through a sales channel, or at prices that are different from the market in which, the sales channel through which, and the prices at which the MUSASHI products are supplied. Instead, I must take into account the “signposts” or “rules of comparison” to which I refer in paragraphs 52 and 53 of these reasons.
I first consider the A-SASHI and MUSASHI names. There is no question they are similar. The names share a substantial and significant component – the two syllables “SASHI”. These syllables, when pronounced as one word, are aurally indistinct; they each constitute the second and third syllables of what are each three-syllable words. Further, the two syllables look the same; they are composed of the same letters.
It is not only the similarities, however, that must be considered. The differences need to be identified and assessed. And here, the difference lies in the first syllable of each name. The first syllable of “A-SASHI” is “A-”. When pronounced alone, it is a short vowel, or at least a vowel that is shorter than the sound of “A” in “SASHI”. On the other hand, the first syllable of MUSASHI is “MU”. It consists of the consonant “m” and the vowel “u”. When “MU” is pronounced, the “u”, too, is a short vowel, or is, at any rate, shorter than the sound of “A” in “SASHI”. The first syllable of each word, therefore, when pronounced alone, gives a different sound.
There are also visual differences between the first syllables of each word. The first syllable in “A-SASHI” is “A-”, a capital letter followed by a hyphen. The first syllable of “MUSASHI” is two letters, “MU”. The appearance of “A-”, being a letter and a hyphen, is very different from the appearance of “MU”.
Although visual and aural differences exist in relation to the first syllable of each word, these differences must be assessed in the context of each word as a whole. The sounds of “A-” and “MU” in “A-SASHI” and “MUSASHI” respectively are dominated by the sound of “SASHI”. And, although visually the letters “A-” and “MU” are distinct from the other letters of each name, they too are dominated by the other letters of each word. If anything, the presence of a hyphen in “A-” positively draws attention to “SASHI”.
Having regard to these features of the sounds and appearances of the words “A-SASHI” and “MUSASHI”, is there a real tangible danger that a number of consumers, upon being exposed to the A-SASHI word mark, will be confused about whether the A-SASHI products have the same source as the MUSASHI products? In my opinion, there is. That which is common to both names – “SASHI” – is a distinctive feature of both names; and the features that are not common to both names – the “A-” in “A-SASHI” and the “MU” in “MUSASHI” – are relatively minor features, whether considered aurally or visually. That means there is a real, tangible danger that a number of consumers, when exposed to the A-SASHI word mark in the context in which it is currently used, will direct their attention to the distinctive aspect of the A-SASHI mark, “SASHI”; that would cause them to recall the distinctive aspect of the MUSASHI word mark, also “SASHI”; they are unlikely to have their attention specifically drawn to the subsidiary feature of “A-SASHI”, namely the “A-” or, if their attention were to be drawn to that feature, they are unlikely to have any memory or any sufficient memory of the MUSASHI mark as would enable them with confidence to remember the different first syllable of MUSASHI, namely “MU”. It is likely, therefore, that a number of consumers would either be left with the impression that the A-SASHI word mark is the same as their memory of the MUSASHI marks or, to the extent they may notice the “A-” in A-SASHI, they would be uncertain whether their memory of “MUSASHI” also contained the “A-” in “A-SASHI”. The end result would be that a number of consumers would either be deceived or confused about whether the marketing and sale of goods in relation to which the A-SASHI marks are used have the same source as goods in relation to which the MUSASHI marks is used.
I next consider the MUSASHI device mark and the A-SASHI logos. Here, both the first and second A-SASHI logos contain two features. The first, and dominant feature, is the name “A-SASHI”; and the second is the device itself. The MUSASHI device mark also contains two features: the name “MUSASHI” and the device itself. And, as with the A-SASHI logos, the dominant feature of the MUSASHI device mark is the name “MUSASHI”. The devices, however, are substantially different: for example, they are different shapes; the MUSASHI device has additional features, such as a circle inside the rectangle; the MUSASHI mark has three colours, whereas the A-SASHI logos have two colours; and in the MUSASHI mark, the font is straight whereas the font is diagonal in the second A-SASHI device.
In my opinion, however, there is a real, tangible danger that a number of consumers, when exposed to the A-SASHI logos, would direct their attention to the “SASHI” part of the name “A-SASHI”. For the reasons I have discussed above, that would lead a number of consumers to recall the MUSASHI word mark. It would also lead a number of them to remember that the MUSASHI word mark was used or also used in connection with a device. But, because the MUSASHI device is dominated by the word “MUSASHI”, and that name is dominated by “SASHI”, the consumers would not be sufficiently confident to determine whether the device they recall in which the word “MUSASHI” was used is the same as the A-SASHI logos to which they are exposed. The likely result for some consumers is that they would either be deceived or confused about whether the marketing and sale of goods in relation to which the A-SASHI logos have been or are used have the same source as goods in relation to which the MUSASHI device mark is used.
Accordingly, by using the A-SASHI name and logos in connection with the marketing and sale of A-SASHI products, Mr Christian has infringed the MUSASHI marks. Unless restrained, Mr Christian will continue to use the A-SASHI name and second A-SASHI logo in connection with the marketing and sale of A-SASHI products.
Are the A-SASHI and MUSASHI products supplied in different markets?
I have concluded that whether or not a claimed infringer’s goods is supplied in a market that is different from that in which the non-infringer’s goods are supplied is not relevant to assessing whether the claimed infringing mark is deceptively similar to the registered trade mark. And for that reason, I ignored the question of whether or not the A-SASHI products are sold in a market different from that in which the MUSASHI products are sold. Out of deference to the submissions Mr Christian made in relation to this issue, however, and the evidence the applicants filed in response, I propose to consider whether or not the evidence shows the A-SASHI products are supplied in a market different from that in which the MUSASHI products are supplied.
The market segment in which Mr Christian submits the A-SASHI products, but not the MUSASHI products, are supplied is the “VDS [vitamins and dietary supplements] category” which “is dominated by a small group of large suppliers including Blackmore’s, Sanofi Aventis, Herron Pharmaceuticals, Pharmacare (Nature’s Way), Wyeth Australia, Swisse and Bayer (Penta-vite)”.[78] The MUSASHI products are not in that market because the MUSASHI products are not “specific purpose” products:[79]
The Nestlé Musashi brand & sub-brands (viz. Growling Dog, SLM & the P-range) don’t offer VDS SP (specific purpose) products such as Mood, Liver Detox, Sleep, Memory, Hair + Skin + Nails, Fat Burner, Men’s Multi-Vitamins with Herbs, Minerals & Anti-Oxidants, Women’s Multi-Vitamins with Herbs Minerals & Anti-Oxidants, Children’s Multi-Vitamins with Minerals & Anti-Oxidants and Omega 3 Fish Oil.
[78] Affidavit of J.W. Christian, 12.3.14, [9]
[79] Affidavit of J.W. Christian, 12.3.14, [8]
Mr Christian relies on a number of matters for his contention that MUSASHI and A-SASHI products are supplied in different markets: retailers sell the MUSASHI products in a sports nutrition section which is distinct from a vitamins or nutritional section; Nestlé Australia does not market in tablet form any product under the MUSASHI name, and it does not sell any multi vitamins under the MUSASHI name; and when a Google search is conducted of the MUSASHI words, the Google result shows “trusted performance nutrition” and not “vitamins”.
Mr Christian also submits that the MUSASHI products and the A-SASHI products are offered for sale to consumers through different distribution channels. MUSASHI products are sold through retail channels, whereas consumers can only purchase the A-SASHI products online. Mr Christian also submits that the MUSASHI products and the A-SASHI products are offered for sale to consumers according to different pricing models. Mr Christian submits that retailers offer MUSASHI sports nutrition products to consumers according to a recommended retail-pricing model set by MUSASHI based on costs of goods, which allows for the cost of distribution and for a mark-up for the retailer. On the other hand, consumers can only purchase A-SASHI products directly online at price points that do not incorporate a mark-up for resellers. That results in savings to consumers.
In response, the applicants rely on the following matters to submit there is no vitamin and dietary supplements (VDS) market or market segment. First, Mr Nelson says he had not heard the abbreviation “VDS” used in the industry.[80] Second, he appears to accept there are two related markets – the “dietary supplement” and the “performance nutrition” (or “sports nutrition”) markets.[81] Third, dietary supplements comprise a large proportion of the MUSASHI range of products; these include the BULK protein powders that contain a blend of vitamins and minerals, and the ZMA+ capsules that include a blend of minerals and a vitamin.[82] Fourth, Nestlé considers as its competitors at least two of the companies Mr Christian includes in what he says is the VDS market, these two companies being Pharm-A-Care Labs Pty Limited and Swisse Vitamins Pty Limited.[83] Fifth, the MUSASHI and A-SASHI product ranges both include bars and, at one point, the A-SASHI product range included powders.[84]
[80] Affidavit of O.P. Nelson, 07.04.14, [21]
[81] Affidavit of O.P. Nelson, 07.04.14, [29]
[82] Affidavit of O.P. Nelson, 07.04.14, [23]
[83] Affidavit of O.P. Nelson, 07.04.14, [27]
[84] Affidavit of O.P. Nelson, 07.04.14, [28]
Sixth, there is a chain of emails between Mr Christian’s father, Mr Mark Christian, and Mr Guise on behalf of the Brisbane Roar Football Club concerning the possible sponsorship of the club by A-SASHI. On 14 November 2013 Mr Mark Christian stated that he was interested in a “partnership program”, and requested information about member numbers, match crowd numbers, television coverage numbers, costs and availability of other items, and costs of digital advertising on Facebook and Twitter.[85] By further email sent, Mr Guise provides the information requested by Mr Mark Christian. Later in the email, Mr Guise stated that the “current brand partners include well known performance brands such as Puma, 2XU and Musashi”.[86] Also on the same day, Mr Mark Christian responded by email asking, among other things, whether A-SASHI could “supply free vitamins & dietary supplements for players (viz. any issues with Musashi sponsorship)”.[87] Mr Guise responded that he “would seek pre-approval from Musashi but don’t foresee any issues here”.[88] In his response, Mr Mark Christian said:[89]
We would be pleased to supply vitamins to BRFC at the same time Musashi are supplying powders. We don’t require an exclusive agreement as we don’t believe any brand has ownership of the performance nutrition space . . .
[85] Affidavit of J.W. Christian, 12.3.14, annexure “J(4)”
[86] Affidavit of J.W. Christian, 12.3.14, annexure “J(4)”
[87] Affidavit of J.W. Christian, 12.3.14, annexure “J(3)”
[88] Affidavit of J.W. Christian, 12.3.14, annexure “J(3)”
[89] Affidavit of J.W. Christian, 12.3.14, annexure “J(2)”
Two other matters are relevant. The first is the theme of the A-SASHI webpage and Facebook page. It is overwhelmingly one of fitness. The A-SASHI webpage and Facebook page contain images of a fit young woman in sporting gear and a fit young man. In a number of images the woman and man are lifting weights.[90] The blog posts on the A-SASHI webpages that are in evidence have entries referring to the “A-SASHI promo bike fleet”, Daniel Ricardo being signed up by Red Bull, and Andy Murray’s success at Wimbledon in 2013. The A-SASHI Facebook page in evidence contains many posts relating to sport.
[90] Exhibit OPN-1, tabs 22 and 25
The second relevant matter is the evidence of Mr Pritchard, a brand manager employed by Nestlé, about comments posted by Mr Christian and by “A-SASHI”. On 1 October 2013 the name “A-SASHI” was “tagged”. That served to link the A-SASHI Facebook page to the MUSASHI Facebook page.[91] On 7 October 2013 Mr Christian had posted three comments in relation to the “Musashi BULK EXTREME MASS GAINER”. Two were questions about the product, but one was a claim that the product breached a regulation.[92] On 26 and 28 November 2013, and after “A-SASHI Vitamins” was banned as a “fan” of the MUSASHI Facebook page, Mr Christian “liked” posts on the MUSASHI Facebook page.[93]
[91] Affidavit of B.A. Pritchard, 19.12.13, [29]; exhibit BAP-1, tab 15
[92] Affidavit of B.A. Pritchard, 19.12.13, [32]
[93] Affidavit of B.A. Pritchard, 19.12.13, [34]-[35]; exhibit BAP-1, tab 17
In my opinion, this evidence shows, and I find, that Mr Christian and his father regarded, and continue to regard the actual or potential customers of the A-SASHI range of products to be the same, or substantially the same persons who are the actual or potential customers of the MUSASHI range of products. That is made clear by Mr Mark Christian in his email to Mr Guise that I have set out above. By saying that he did not “believe any brand has ownership of the performance nutrition space” Mr Christian’s father implicitly considered that A-SASHI was a brand that belonged in the “performance nutrition space”. It is also made clear by Mr Christian’s posts on the MUSASHI Facebook page. Of particular significance is tagging the A-SASHI Facebook page on the MUSASHI Facebook page. That indicates that Mr Christian must have regarded persons who viewed the MUSASHI Facebook page as persons who were potential purchasers of the A-SASHI products.
I find, therefore, that the A-SASHI range of products are supplied, and are intended to be supplied into a market in which at least a substantial proportion of the MUSASHI range of products is and has been supplied.
Mr Christian’s intention
The applicants submitted I should find that Mr Christian intentionally fashioned the A-SASHI name and logos for it to be deceptively similar to the MUSASHI word and device marks. Given the findings I have made, it is not necessary for me to consider this submission. My deciding not to consider that submission, however, should not be taken to imply that I have accepted the evidence Mr Christian has given about the origins of the name “A-SASHI” and the A-SASHI logos.
Other matters
Mr Christian cross-examined deponents of affidavits filed by the applicants in which he imputed that the applicants had made a vexatious complaint to the Therapeutic Goods Administration concerning A-SASHI, that the applicant had attempted to use intellectual property rights belonging to Mr Christian, that the applicants instituted these proceedings to take Mr Christian’s “virtual property”, and that the applicants had harassed Mr Christian. These imputations were denied by the deponents. Mr Christian also made submissions along these lines, each of which are disputed by the applicants.
These matters are not relevant to any issue that was before the Court. The only issue before the Court is whether, by using the A-SASHI name and logos in connection with a business he conducted for the sale of the A-SASHI range of products, Mr Christian infringed the registered trade marks of Nestlé.
Disposition
The applicants have provided draft short minutes of the orders they submit the Court should make if the applicants succeed (draft short minutes).
I propose to:
a)Grant a declaration that Mr Christian, by importing, selling and offering for sale in Australia supplements and therapeutic products under or by reference to the mark “A-SASHI” or the A-SASHI logos, Mr Christian has infringed the 563325 MUSASHI in class 5, the 563326 MUSASHI in class 41, and the 1172510 MUSASHI and device in class 5.. This differs from the declaration proposed in paragraph 1 of the draft short minutes. It does not include reference to infringement of the MUSASHI class 25 word mark or the MUSASHI device mark in relation to classes 29 and 30 because there is no evidence that the A-SASHI products fall within those classes of goods.
b)Order that Mr Christian be restrained from importing into Australia, or selling, offering for sale or promoting supplements and therapeutic products in Australia under or by reference to the sign “A-SASHI” or any of the A-SASHI logos. This order differs from the order in paragraph 4(a) of the draft short minutes in that the injunction is limited to restraining conduct in Australia.
c)Order that Mr Christian remove from the A-SASHI websites and Facebook account any content that displays the A-SASHI name or logos.
d)Order that the matter be listed for directions on a date to be fixed in relation to an inquiry for damages or an account of profits.
I do not propose to grant an order in terms of paragraph 3(a) of the draft short minutes without receiving further submissions on whether the maintenance of the business name and the domain names (assuming they are prevented from resolving onto webpages that display the A-SASH word or A-SASHI logos) constitutes a use of the A-SASHI name or logos as trade marks. I also do not propose to make an order in terms of paragraph 4(b) without hearing further submissions from the applicants. The particular issue that should be addressed is why such an order should be made, given it is not alleged the first respondent used the MUSASHI marks or any marks that are substantially similar to the MUSASHI marks. And I do not propose to make an order in terms of paragraph 6 of the draft orders without receiving further submissions. The particular issue that should be addressed is whether such order should be restricted to the delivery-up of goods that are located in Australia.
I will direct the parties file submissions in relation to the making of any further orders.
I will deal with the question of costs at the time I decide all outstanding issues, other than an inquiry as to damages or an account of profits.
I certify that the preceding one hundred and eleven (111) paragraphs are a true copy of the reasons for judgment of Judge Manousaridis
Associate:
Date: 3 September 2014
Annexure “A”
- AGLC
- SOCIÉTÉ Des Produits NestlÉ SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025
- Case
- [2014] FCCA 2025
- Decision Date
CaseChat Overview and Summary
The primary legal issues before the court were whether the respondents' use of their marks constituted infringement of the applicants' registered trademarks, and specifically, whether the markets in which the claimed infringing marks and registered trademarks were used were relevant to the determination of deceptive similarity.
His Honour considered the principles of deceptive similarity under the *Trade Marks Act 1995* (Cth), focusing on the overall impression of the marks and the likelihood of confusion among consumers. The court analysed the visual, aural, and conceptual similarities between the respective marks. The relevance of the respective markets was considered in the context of whether such market differences would negate the likelihood of deception or confusion.
The court found that the respondents' marks were deceptively similar to the applicants' registered trademarks and that infringement had occurred. Orders were made accordingly.
Orders
Orders of the court
Full text does not contain this section.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
Full text does not contain this section.