Trade mark infringement
To what extent are surrounding circumstances relevant in assessing deceptively similar trade marks in Australia?
In Australia, you will infringe a trade mark if your trade mark is substantially identical or deceptively similar to a registered trade mark (s120 of the Trade Marks Act 1995 (Cth)). The same terms of substantially identical and deceptively similar are also applied in examination and opposition procedures before IP Australia to decide whether your trade mark application is too close to a prior trade mark (s44 of the Trade Marks Act 1995(Cth)).
The test for determining substantially identical and deceptively similar trade marks is set out by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.....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.
These tests are applied in a 2-step process: if a trade mark is not substantially identical, then you must ask if it is deceptively similar.
Substantially identical
Up until E&J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15 (the Gallo case), the test of substantially identical was strictly applied such that the marks had to be identical but for small changes such as the adding of a definite article, a space or a plural form or the use of uppercase letters as opposed to lower case letters. However, following the High Court decision in the Gallo case, Australian courts have taken a progressively broader approach to the test of “substantially identical” and the following marks have been considered by the Australian courts to be substantially identical:
Table of marks found to be substantially identical.
In these cases, the court has emphasized the importance of having regard to the “essential features” of the marks; descriptive words, small embellishments and devices are not sufficient to avoid a conclusion that the marks are not substantially identical.
Deceptively similar
Section 10 of the Trade Marks Act 1995 (Cth) defines deceptively similar as so nearly resembling the registered trade mark that it is likely to deceive or cause confusion.
Unlike the test of substantially identical, the test for deceptively similar does not compare the trade marks side-by-side but asks instead to consider whether there is a reasonable probability of deception or confusion (Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd [1937] HCA 51). In determining whether there is a reasonably probability of deception or confusion, the impression of the marks on the mind of the consumer must be considered. The relevant factors in assessing the impression of the marks will include the “imperfect recollection” of consumers and what may be the consumers first impression and whether the “idea” or concept conveyed by the trade marks is similar.
However, it is clear from the High Court decision in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (the Protox v Botox case) that the reputation of either the registered mark or the infringing mark should not be a consideration in determining deceptive similarity. This is a departure from previous Australian case law and also from the U.S, UK and European approach. Prior to the Protox v Botox case, whether the trade mark had a degree of notoriety would be relevant to considering a consumer’s imperfect recollection and thus to determining whether a mark was deceptively similar with another trade mark. However, this approach was expressly rejected in the Protox v Botox case and reputation is no longer a factor in assessing deceptive similarity in Australia in trade mark infringement cases. It is equally no longer relevant to consider reputation in assessing similar marks in trade mark prosecution. The Protox v Botox case has been endorsed by IP Australia and the Australian Trade Marks Manual of Practice and Procedure, Part 26.6.5 states that an enquiry under s44 should not consider the reputation of either trade mark under comparison.
While the Protox v Botox case makes it clear that reputation is not a factor in assessing deceptive similarity, it has been noted that the High Court’s reasoning for rejecting reputation is at odds with the approach the court ultimately took in finding deceptive similarity[1]. The High Court (rightly) argued that it in respect of s120(1) trade mark infringement, it was the registration which confers the rights to the trade mark and defines the scope of protection; a consideration of reputation should not vary the level of protection that is set out in Trade Mark Register.
Although the High Court endorsed cases that supported the position that the analysis of deceptive similarity should not consider the presence of other trade marks or disclaimers, the court did in fact consider the surrounding circumstances in which the alleged infringing PROTOX mark was used to determine the question of deceptive similarity. The court examined both the packaging of the PROTOX product including the use of a disclaimer and the additional term FREEZEFREAME on the packaging and the website for PROTOX to reach a finding that there was no deceptive similarity between the marks BOTOX and PROTOX. This contradiction was recently noted by J Jackman who found that it was difficult to reconcile the High Court’s approval of authorities in the Protox v Botox case which state that additional material is irrelevant to the issue of trade mark infringement with the court’s approach to considering the infringer’s packaging and website (The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482 at 60).
Understanding the role of “surrounding circumstances”
Following the Protox v Botox decision from Australia’s highest court, we must now ask to what extent should we consider the surrounding circumstances in assessing deceptively similar trade marks and what weight should be given to surrounding circumstances in this assessment. In the Protox v Botox case, the High Court stated that the consideration of surrounding circumstances does not open the door for examination of actual use of the mark or for consideration of the reputation associated with the mark. While the High Court has made it clear that it is not relevant to look at the totality of the conduct of the infringer in the same way as in a passing-off suit, it is appropriate to consider the packaging and marketing of the infringing mark. Similarly, while evidence concerning reputation of the registered owner’s mark is not relevant (at least in respect of a s120(1) infringement claim), it is relevant to consider evidence that shows how the infringing mark is used in both packaging and marketing. It is also relevant to consider the usual elements of context that go towards the factors of assessing the imperfect recollection of consumers and the idea of the marks. This would include consideration of the type of consumers, the way the product or service is purchased by such consumers as well as whether elements of the trade mark are common in the context in which the trade mark is used or whether they can be considered an essential feature.
Please reach out to the team if you have any questions regarding the tests for determining if you or your competitor’s trade mark is too close!
[1] Smith C (2023) Intellectual Property Law Update – Some wrinkles in the High Court’s treatment of ‘deceptive similarity’ for trade marks, 29 March 2023 < https://www.listgbarristers.com.au/publications/intellectual-property-law-update-some-wrinkles-in-the-high-courts-treatment-of-deceptive-similarity-for-trade-marks; and Rothnie W (2023) Did the High Court change the law of trade mark infringement to a kind of registered passing off?, 22 March 2023 < https://ipwars.com/did-the-high-court-change-the-law-of-trade-mark-infringement-to-a-kind-of-registered-passing-off/>.