Tansing, R.W. (Trading as Apple House Music) v Musidor BV
[1993] FCA 966
•22 DECEMBER 1993
ROBERT WILLIAM TANSING (TRADING AS APPLE HOUSE MUSIC) and MUSIDOR BV v.
MUSIDOR BV and ROBERT WILLIAM TANSING (TRADING AS APPLE HOUSE MUSIC)
No. VG468 of 1993
FED No. 966/93
Number of pages - 12
Trade Marks
(1994) AIPC 91-075
COURT
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
BEAUMONT J
CATCHWORDS
Trade Marks - alleged infringement - whether use as trade mark.
The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407.
Mark Foys Ltd. v Davies Coop and Company Ltd. (1956) 95 CLR 190.
Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton (1930) 1 Ch 330.
Johnson and Johnson Australia Pty. Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326.
Levi Strauss and Co. and Levi Strauss (Australia) Pty Limited v Wingate Marketing Pty Limited (1993) 116 ALR 298.
Kolotex Glo Australia Pty. Ltd. v Sara Lee Personal Products (Australia) Pty. Ltd. (1993) 26 IPR 1.
Irving's Yeast-Vite Ltd. v Horsenail (1934) 51 RPC 110.
Trade Marks Act 1955, s.6(1), s.6(2), s.58(1), s.59, s.62(1), s.64(1), s.66
HEARING
SYDNEY, 10 December 1993
#DATE 22:12:1993
Counsel and Solicitors Dr. J. McL. Emmerson QC with
for Applicant and Ms. A.H. Bowne instructed by
Cross-respondent: Freehill Hollingdale and Page
Counsel and Solicitors Mr. R. Macaw QC with
for Respondent and Mr. R. Cobden instructed by
Cross-claimant: Gilbert and Tobin
ORDER
THE COURT ORDERS THAT:
1. The separate question be answered as follows: The applicant is entitled to a declaration in the terms claimed in para. 1(a) of his amended application.
2. The respondent pay the applicant's costs of the separate question.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
JUDGE1
BEAUMONT J By his amended statement of claim, the applicant makes the following claims: (1) The applicant carries on the business of selling, by wholesale and by retail, pre-recorded compact discs embodying recordings of live music performances by a number of artists and bands. (2) The respondent, a Netherlands corporation, is the registered proprietor of trade marks A569165 "Rolling Stones" in respect of, inter alia, compact discs, and A293526 "Rolling Stones" in respect of, inter alia, sound recording media. (3) The applicant offers for sale, under certain labels, compact discs embodying recordings of live musical performances given by the musical group "the Rolling Stones". (4) The use by the applicant of the words the "Rolling Stones" is, inter alia, a use in good faith by him of a description of character or quality of the recordings of live musical performances given by the musical group "the Rolling Stones" within the meaning of s.64(1)(b) of the Trade Marks Act 1955. (5) The respondent has requested the applicant to cease using material incorporating the words "Rolling Stones".
By his amended application, the applicant seeks, inter alia, a declaration that his use of the words "Rolling Stones" in connection with the sale and promotion of his compact discs did not constitute an infringement of the respondent's trade marks.
By its defence and cross-claim, the respondent alleges that the applicant has infringed its trade marks and seeks, inter alia, a declaration to that effect.
THE SEPARATE QUESTION
4. By consent of the parties, it was ordered that there now be determined, as a separate question, whether any of the relief sought by the parties in the amended application and cross-claim respectively, which is described above, should be granted.
THE AGREED FACTS
5. The parties have agreed the facts as follows:
1. The applicant is a sole trader, trading under the business name
Apple House Music in Adelaide, who carries on the business of arranging for the manufacture of and selling, by wholesale and by retail, pre-recorded compact discs embodying sound recordings of live musical performances by a wide range of different performing artists and musical groups. His compact discs are sold throughout Australia.
2. The respondent is, and at all material times has been, a
corporation organised pursuant to the laws of the Netherlands.
3. The respondent is, and at all material times has been, registered
as the proprietor of the Australian registered trade marks:
(a) A569165 "Rolling Stones" registered in respect of goods being, inter alia, "compact discs";
(b) A293526 "Rolling Stones" registered in respect of goods being, inter alia, "sound recording media", (collectively referred to as "Rolling Stones Trade Marks").
4. "The Rolling Stones" is the name of a musical group formed in or
about the early 1960s which has recorded and performed music for more than two decades under its said name. The musical group "The Rolling Stones", despite changes in personnel from time to time, has always been known and referred to as "The Rolling Stones".
5. "The Rolling Stones" are a very well known rock group and records
of the group's performances have been amongst the highest selling popular music records in the world. Those records have been released bearing the words "Rolling Stones" in the way on which those words appear in the examples referred to in paragraph 8.
6. Since 1976, the respondent has, with the consent of the members of
The Rolling Stones, been the proprietor of the trade mark "Rolling Stones" and has entered into trade mark licence agreements (the "Licence Agreements") with a succession of record companies which have the right to manufacture and sell records embodying recordings of performances by The "Rolling Stones" (the "Rolling Stones Records").
7. The Licence Agreements all contain terms requiring:
(a) the record company to apply the trade mark "Rolling Stones" to all Rolling Stones Records manufactured; and
(b) the quality of all goods bearing the trade mark to be subject to the respondent's approval.
8. Examples of compact disc packaging used under licence from the
respondent from 1976 to the present date are as set out in Appendix A to these reasons.
9. The applicant has, as a part of his business, released in
Australia for sale two compact discs embodying sound recordings of live musical performances given at various times and places by the musical group "The Rolling Stones" (the "Banana Label Compact Discs"). The sale of the Banana Label Compact Discs has not been approved by the respondent, any of the members of "The Rolling Stones", the Rolling Stones' record company or any other party on behalf of the Rolling Stones (collectively referred to as "the interested parties").
10. Several steps are taken to produce the applicant's Banana Label
Compact Discs, including the following:
(a) a recording of songs performed by "The Rolling Stones" has been transferred from a master tape to a glass master, which has been cut with a series of pits using a laser beam;
(b) a reverse impression of the glass master has been made in nickel which is known as a "stamper";
(c) the stamper, which is the shape and size of a compact disc, was affixed to a mould into which liquefied polycarbonated was injected, making a polycarbonated disc which is a reverse impression of the stamper;
(d) the polycarbonate disc was then coated with aluminium, to enable the pits impressed into it to be read by a laser beam;
(e) the disc was then finished, printed and sold;
(f) steps (c)-(e) inclusive are undertaken for each Banana Label Compact Disc produced.
11. The interested parties have not consented to the words "Rolling
Stones" being applied to the master tape, the glass master, the stamper or the polycarbonate disc.
12. The applicant has sold his Banana Label Compact Discs in one form
(the "first label"). An example of the first label is shown in Appendix B to these reasons.
13. The applicant also intends to release both of the Banana Label
Compact Discs in a second form (the "second label"). An example of the second label is shown in Appendix C to these reasons.
14. The applicant has marketed the Banana Label Compact Discs to the
public by way of mail order advertisements and catalogues and also directly to retailers using other promotional material (the "first advertising"). Samples of the first advertising are shown in Appendix D to these reasons.
15. The applicant also intends to use, in the future, advertising and
promotional material which refers to, and promotes, the Banana Label Compact Discs (the "second advertising"). Samples of the second advertising are shown in Appendix E to these reasons.
THE RELEVANT LEGISLATIVE FRAMEWORK
6. Registration, and the effect of registration, are dealt with by Part VII of the Trade Marks Act 1955 ("the Act").
By s.58(1) of the Act, subject to the provisions of the Act, the registration of a trade mark in Part A of the Register (as here), if valid, gives to the registered proprietor of the trade mark the right to the exclusive use of the trade mark in relation to the goods or services (and, in the present case, as has been seen, it is goods) in respect of which the trade mark is registered and to obtain relief in respect of infringement in the manner provided by the Act.
By s.6(1), a "trade mark" is defined, relevantly, to mean a mark used, or proposed to be used, in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person.
By s.6(2), references in the Act to the use of a mark in relation to goods shall be construed as references to the use of the mark upon, or in physical or other relation to, goods.
By s.59, in legal proceedings relating to a registered trade mark, the registration shall be deemed to be valid unless the contrary is shown. (No attempt to dispute the validity of the registration has been made in the present case.)
By s.62(1), a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user, uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade, in relation to goods or services in respect of which the trade mark is registered.
By s.64(1), notwithstanding anything contained in the Act, the following, inter alia, does not constitute an infringement:
"(b) the use in good faith by a person of a description of the character or quality of his goods or services."
By s.66, in any action or proceeding relating to a trade mark, evidence is admissible of the usages of the trade concerned and of any relevant trade mark, trade name or set-up legitimately used by other persons.
THE AUTHORITIES EXPLAINING THE MEANING OF S.58 AND S.62
14. The meaning of s.58 and s.62 for present purposes is now settled by the course of authority. In short, not every use of the mark will constitute an infringement. There will be an infringement only if the context, having regard to the nature and purpose of the impugned use, indicates use as a trade mark, that is to say, so as to indicate the commercial origin of the goods or services in question.
In Irving's Yeast-Vite Ltd. v Horsenail (1934) 51 RPC 110, in an action for infringement under the English legislation, the plaintiffs were the registered proprietors of a trade mark consisting of the invented word "Yeast-Vite". The labels on the defendant's bottles bore the following inscription: "Yeast Tablets, a substitute for 'Yeast-Vite'". It was held that there was no infringement. Lord Tomlin, speaking for the House of Lords, said (at 115):
"This (i.e. the use by the defendant of the phrase 'Yeast Tablets, a substitute for Yeast-Vite') is clearly a use of the word 'Yeast-Vite' on the (defendant's) preparation to indicate the (plaintiff's) preparation and to distinguish the (defendant's) preparation from it. It is not a use of the word as a trade mark, that is, to indicate the origin of the goods in the (defendant) by virtue of manufacture, selection, certification, dealing with or offering for sale." (Emphasis added)
Lord Tomlin went on to say (at 116)
...the language of Section 39 (of the Trade Marks Act 1905
(U.K.)) must carry with it some implied limitation, unless it is to be given a meaning extending its operation altogether outside the scope of the Trade marks Acts. The phrase 'the exclusive right to the use of such trade mark' carries ... the implication of use of the mark for the purpose of indicating in relation to the goods upon or in connection with which the use takes place, the origin of such goods in the user of the mark by virtue of the matters indicated in the definition of 'trade mark' contained in Section 3."
In the "Tub Happy" case (Mark Foys Ltd. v Davies Coop and Company Ltd.) (1956) 95 CLR 190, Williams J (with the concurrence of Dixon C.J), made reference to Lord Tomlin's speech in Yeast-Vite, and to suggested differences between the English legislation on the one hand and the Commonwealth Trade Marks Act 1905-1948 on the other. Williams J said (at 204):
"But the reasoning of his Lordship appears to be equally applicable to the Commonwealth Act despite these differences. If the defendants in the present case had advertised that their Exacto cotton frocks washed as well as the plaintiff's Tub Happy frocks it could not be said that the words 'Tub Happy' were used by the defendants in relation to goods to indicate a connection in the course of trade between the goods and themselves. They would only be used in support of a claim that their cotton goods washed as well as the plaintiff's Tub Happy goods. In such a case the words 'Tub Happy' would not be used as a trade mark within the meaning of the present definition." (Emphasis added)
Williams J went on to say (at 204-5):
"But the Yeast-Vite Case ... does not assist the defendants. They are not using the words 'Tub Happy' in the same way as the defendant was using the words 'Yeast-Vite' in that case. They are advertising the words 'Tub Happy' and emphasizing them in relation to their own cotton garments for the purpose of indicating a connection in the course of trade between the goods and themselves. The public are not being invited to compare the 'Exacto' goods of the defendants with the 'Tub Happy' goods of the plaintiff. They are being invited to purchase goods of the defendants which are to be distinguished from the goods of other traders partly because they are described as 'Tub Happy' goods. In Aristoc Ltd. v Rysta Ltd. ... Viscount Maugham cites the following appropriate passage from the judgment of Lord Greene MR in Saville Perfumery Ltd. v June Perfect Ltd. ... : 'In an infringement action, once it is found that the defendant's mark is used as a trade mark, the fact that he makes it clear that the commercial origin of the goods indicated by the trade mark is some business other than that of the plaintiff avails him nothing, since infringement consists in using the mark as a trade mark, that is, as indicating origin' ... (Emphasis added)
Needless to say, if the defendant uses the words of the plaintiff's trade mark as indicating origin it is still an infringement notwithstanding that the defendant always adds his own name."
In The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, Kitto J, with the agreement of the other members of the Court, referred to ss.58(1) and 62(1) of the Act, and said (at 422):
"A use of a mark in an advertisement of goods is a use in the course of trade, and is of course a use in relation to the goods advertised ... But in my opinion it is implied both in s.58(1) and in s.62(1) that the use which is there referred to is limited to use of a mark as a trade mark." (Emphasis added)
Kitto J later said (at 425):
"But the connexion in the films between the oil drop man and the petrol he symbolizes is a connexion limited by the purpose of the occasion. At every point of the exhibition, whether the resemblance to the respondent's trade marks be at the moment close or remote, the purpose and the only purpose that can be seen in the appearance of the little man on the screen is that which unites the quickly moving series of pictures as a whole, namely the purpose of conveying by a combination of pictures and words a particular message about the qualities of Shell petrol. This fact makes it, I think, quite certain that no viewer would ever pick out any of the individual scenes in which the man resembles the respondent's trade marks, whether those scenes be few or many, and say to himself: 'There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs.' And one may fairly affirm with even greater confidence that the viewer would never infer from the films that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen to serve the specific purpose of branding petrol in reference to its origin." (Emphasis added)
Mark Foys and Shell were recently applied in this Court in Johnson and Johnson Australia Pty. Limited v Sterling Pharmaceuticals Pty. Limited (1991) 30 FCR 326. Burchett J said (at 342):
"The claim for infringement turns upon the nature of the use made by the appellant of the word 'Caplets'. But before attempting a measure of that use, I must state the standard against which it is to be measured. What is use as a trade mark? In Beckwith ... the Supreme Court of the United States described 'the function of a trade mark' as being 'to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied'. An acceptance of this view is the foundation of the well-known judgment of Kitto J in Shell ... Kitto J (at 425) considered whether a mark had been used 'as a trade mark' by asking whether it was used 'for the purpose of indicating, or so as to indicate, a connection in the course of trade between the petrol (the product there in question) and the appellant' and whether representations of it had been used 'as being marks for distinguishing Shell petrol from other petrol in the course of trade'. More colourfully, Whitford J in Mars GB Ltd v Cadbury Ltd ...pictured the use of a trade mark ... as the planting of a flag 'to identify the fact that you are in a particular trader's territory'. ...
In the Shell case, Kitto J (at 424) denied that the right protected by trade mark law is 'something akin to a limited form of copyright'. He was prepared to assume the mark had been used, and that, in another context, that use could have been an infringement. However, he said (at 422): 'But the context is all-important, because not every use of a mark which is identical with or deceptively similar to a registered trade mark infringes the right of property which the proprietor of the mark possesses in virtue of the registration.' (Emphasis added) Although the mark was used with reference to Shell petrol, in context, the message conveyed related to the qualities of that petrol and not to its brand or origin. Accordingly, there was no infringement."
(Emphasis added)
Gummow J said (at 347-8):
"When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the 'purpose and nature' of the impugned use: see Shell ... at 426 per Kitto J. As his Honour there points out, with reference to Edward Young and Co Ltd v Grierson Oldham and Co Ltd ... and as s.66 of the present Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: ... (Emphasis added)
Where the trade mark allegedly used by the defendant comprises ordinary English words (such as 'Page Three', considered by Slade J in News Group Newspapers Ltd v The Rocket Record Co. Ltd ... then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foys Ltd v Davies Coop and Co Ltd (the Tub Happy case) ... that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case ... (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders 'partly because' (emphasis supplied) they are described by the words in question. (Emphasis added) Upon the present appeal, counsel for the respondent submitted that there is a trade mark use if the defendant applies the mark to packaging of goods 'so as to refer to those goods'. Counsel for the appellant submitted that this was to put the matter too widely and was an illegitimate attempt to expand the exclusive rights given by the Trade Mark legislation to something akin to a literary copyright. I agree."
In Kolotex Glo Australia Pty. Ltd. v Sara Lee Personal Products (Australia) Pty. Ltd. (1993) 26 IPR 1, it was held that the words "Sheer Relief" did not constitute a description of the goods but were used to indicate a connection with the applicant's products. Wilcox J said (at 6):
"Having regard to the principles indicated in the authorities I have mentioned, I have reached the conclusion that the words 'Sheer Relief' contravene s.62. It seems to me that the words are being used by the present respondent in such a manner as to indicate that they are connected in some way with the goods produced by the applicant. That this is the nature of the use is most clear in relation to the pantyhose, where the phrase 'Sheer Relief for Active Legs' is used three times. The first two uses are in the form of a subheading or caption immediately following two other titles, KAYSER and SHEER SUPPORT, each of which is obviously intended as an identification of the goods. The phrase 'Sheer Relief for Active Legs' acts as a third title or caption. It does so by using two catchy and memorable words, which contain a clever double meaning and are already well-known in the trade. Having regard to the evidence that the respondent set out to copy the applicant's product exactly, there can be little doubt that its intention was to appropriate, if it could, the reputation attaching to that subtitle. It appears to have achieved some success in that endeavour. There is evidence of two incidents, in different stores, where customers picked the respondent's product from the display shelves in the belief that it was that of the applicant. (Emphasis added)
The use of the additional words 'for active legs' is important in considering whether the words 'Sheer Relief' are used by the respondent for product identification; but, once it is concluded that they are so used, the existence of the other words cannot derogate from the conclusion that there is an infringement.
If the words 'Sheer Relief' had been used on the pantyhose packet only in the sentence above the size table, I would not have concluded that the use constituted an infringement of the applicant's trade mark. But it seems to me that the captions seek to use the words as identifiers, thus infringing the applicant's rights." (Emphasis added)
In Levi Strauss and Co. and Levi Strauss (Australia) Pty. Limited v Wingate Marketing Pty. Limited (1993) 116 ALR 298, a case of the importation and sale, without licence, of altered second-hand goods, Lockhart J said (at 316-7):
"It is well established that a trade mark is a badge of origin, not of control. In (the) Champagne (case) ... Clauson J (at 338) rejected the proposition that a trade mark was:
'...a badge of control, carrying with it the right in the owner of a registered trade mark to full control over his goods, into whosesoever hands they might come, except in so far as he might expressly or by implication have released this right of control. It has long been recognised that registration of a mark does not give the proprietor the right to prevent the use of the mark in connection with 'the genuine goods'. ... Sections 58 and 62 of the Trade Marks Act, literally construed, prevent a person, not being the registered proprietor or registered user of the mark, selling new and genuinely marked goods (ie those made and marked by the registered proprietor). However, such a seller of goods is not liable to be restrained because he does no more than simply tell the truth; all he says by his use of the trade mark is that the goods are connected with the registered proprietor, which in fact they are. Such use could not cause deception which is the essential test of infringement. The new genuine goods are sold by the seller albeit that he is not the registered proprietor of the mark; and the only relevant connection in trade that is indicated is with the registered proprietor."
Lockhart J went on to say (at 321):
"But when the original goods have been so changed or altered that there is no longer a basis for the guarantee resulting from the trade mark that the origin of the goods is from the business of the registered proprietor of the mark, this is a new use of the mark without the permission of the registered proprietor and therefore contrary to law." (Emphasis added)
CONCLUSIONS
(a) The respondent's arguments
26. On behalf of the respondent, it is submitted that an infringement is made out for the following reasons: (a) The connection in the course of trade indicated by the respondent's use is shown in paras. 5, 6, 7 and 8 of the agreed statement of facts above. The trade connections consist in use of the mark with the imprimatur of the well-known musical group whose music is embodied on the records, and the exercise of quality control; (b) Those connections are proper trade mark connections (see Pioneer Kabushiki Kaishi v Registrar of Trade Marks (1977) 137 CLR 670 per Aickin J at 683); (c) The use of the registered mark involves prominent use on the face and rear of the disc and packaging and on the spine of the packaging; (d) The coined or fancy name, "The Rolling Stones", has required a valuable secondary meaning in respect of sound recordings (para.5 of the agreed statement of facts); (e) There is no attack on the validity of the marks, for lack of distinctiveness (s.24) or otherwise; (f) The marks consist of the words "Rolling Stones". The applicant has used or proposes to use the words "The Rolling Stones" on each of the first label and the second label; (g) "The Rolling Stones" is the same trade mark as "Rolling Stones", so that infringement arises under s.58(1). In any event, it is substantially identical with "Rolling Stones", so that infringement arises under s.62(1); (h) The use is in the course of trade and the applicant's goods are goods in respect of which the trade marks are registered; (i) The applicant's use is use in physical or other relation to the goods within the meaning of s.6(2) (see Pioneer at 684); (j) The use is as a trade mark; (k) The fact that the name is a coined or fancy one (which is not descriptive of the goods) and the prominence and placement of the mark (in the same positions as the respondent's mark) show that it is used to indicate trade origin and to distinguish the applicant's goods from goods of other traders. (l) As with the "Sheer relief" mark in Kolotex, the mark is, accordingly, used as an identifier. The position would be different if the mark had referred to the form or quality of the product. (m) The indication that the applicant's goods are "unauthorised" does not alter the fact that its use is trade mark use: it merely signifies that the trade origin is the applicant. (n) Nor does the addition of other matters in the second label ("Songs performed live by the Rolling Stones Group") prevent the use being trade mark use.
(b) Has an infringement been made out?
27. I have difficulty in giving effect to the respondent's arguments in the circumstances of the present case. In my opinion, neither the actual use, nor the use proposed, of the words "Rolling Stones" by the applicant is, or would be, an infringement of the respondent's trade mark. Although the applicant makes use of those words, he does not, in my view, make use of them as a trade mark, that is to say, so as to indicate the source or commercial origin of the goods. On the contrary, in my opinion, the applicant makes it plain in his advertising and in his get-up, even if the wording on the spine of the disc's container is also taken into account, that the source or origin of the goods is not an "authorised" source. That "official" or "authorised" source is clearly distinguished from the origins of the applicant's goods: It is specifically, and conspicuously, stated that the recording "has not been authorised by the Rolling Stones group or their record company". It is further stated that its quality may not be the same "as an authorised release". It must follow, I think, and the overall context only serves to reinforce this, that the applicant's use of the words "Rolling Stones" is not for trade mark purposes, but is for the different, and legitimate (in trade mark terms) purpose of describing his product. This explains the true nature and purpose of the applicant's statement: "Songs performed live by the Rolling Stones Group". In my view, the making of this, and other similar statements, did not involve the use, by the applicant of the respondent's trade mark. Indeed, when viewed in context, it is plain that any such use was, and was intended to be, disclaimed.
In short, in my opinion, taken in its proper context, the purpose and nature of the impugned use does not indicate the trade origin of the goods in any trade mark sense.
(c) The application, if any, of s.64(1)(b)
29. In the circumstances, it is not necessary that I consider this question.
ORDERS PROPOSED
30. It follows, in my view, that the applicant is entitled to a declaration that he has not infringed the respondent's trade mark. I propose to make the following orders:
1. That the separate question be answered as follows: That the
applicant is entitled to a declaration in the terms claimed in para.1(a) of his amended application. (For ease of reference, para.1(a) is annexure F to these reasons.)
2. That the respondent pay the applicant's costs of the separate
question.
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