FEDERAL COURT OF AUSTRALIA TRADE MARKS - appeal from Registrar's refusal of registration on ground of deceptive similarity to a cited mark - test for deceptive similarity - principle of imprecise recall - significance of common idea - onus - effect of a vivid word. Trade Marks Act 1995, ss 35, 44 Johnson & Johnson v Kalnin (1993) 26 IPR 435, applied Gardenia Overseas Pte Ltd v The Garden Co Ltd (1994) 29 IPR 485, referred to Australian Woollen Mills Limited v F S Walton and Company Limited (1937) 58 CLR 641, applied Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227, applied Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536, applied Sym Choon and Company Limited v Gordon Choons Nuts Limited (1949) 80 CLR 65, applied THE SPORTS CAFE LIMITED v THE REGISTRAR OF TRADE MARKS NG 80 of 1997 Burchett J Sydney 10 February 1998 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 80 of 1997 ON APPEAL FROM THE REGISTRAR OF TRADE MARKS BETWEEN: THE SPORTS CAFE LIMITED Applicant AND: THE REGISTRAR OF TRADE MARKS Respondent JUDGE: BURCHETT J DATE OF ORDER: 10 february 1998 WHERE MADE: SYDNEY THE COURT ORDERS THAT: The application be dismissed with costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 80 of 1997 ON APPEAL FROM THE REGISTRAR OF TRADE MARKS BETWEEN: THE SPORTS CAFE LIMITED Applicant AND: THE REGISTRAR OF TRADE MARKS Respondent JUDGE: BURCHETT J DATE: 10 february 1998 PLACE: SYDNEY REASONS FOR JUDGMENT BURCHETT J This is an appeal under s 35 of the Trade Marks Act 1995 against a decision of the Registrar of Trade Marks to reject two trade mark applications. It is common ground that the matter does come under the Trade Marks Act 1995 - by virtue of the transitional provision made by s 241. Each of the applications was in respect of "catering services; bar, restaurant, cafe, public house, cafeteria, snack bar and hotel services" within class 42. One application was for the word mark "THE SPORTS CAFE", and the other was for a word and device trade mark containing the same words largely, but not wholly, within a device consisting of a prominent circle resting upon a narrow horizontal oblong of length equal to the diameter of the circle. The ground on which registration of each of the marks was rejected was that it was deceptively similar, within the meaning of s 44, to a trademark registered in respect of closely related services. The cited mark consists of the device of an elongated oval, the long axis being horizontal, intersected at the top by the point of an inverted squat isosceles triangle, with the words, wholly contained within the oval, "THE circuit SPORTS CAFE". In this mark, the words appear on three lines, with the one word "circuit" occupying the centre and the whole length of the oval, written in characters several times larger and much more prominent than the characters in which the other words are written. It is, of course, apparent that neither of the marks sought to be registered is substantially identical with the cited mark, and the sole question raised by the appeal is whether the appellant's marks are deceptively similar to the cited mark. As Gummow J remarked in Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 436, the principles applicable to this problem are "well-settled". In that case, his Honour accepted (at 440) that the test could be stated as follows: "Assuming use by Johnson & Johnson of its mark, BAND-AID, in a normal and fair manner on any of the goods covered by the registration of its mark, is the court satisfied that there will be no reasonable likelihood of deception and [scilicet or] confusion amongst a substantial number of persons if the applicant for registration also uses his mark, BAND››IT, normally and fairly in respect of goods covered by his proposed registration"? To assist the court in the application of this test to the varying problems that have arisen, the authorities have elaborated a number of propositions which Lindgren J collected in Gardenia Overseas Pte Ltd v The Garden Co Ltd (1994) 29 IPR 485 at 489-490. It is not necessary to repeat these propositions, but I have had regard to them, and I shall refer to some of them which seem particularly applicable to the present case. In considering whether there is "a reasonable probability of deception or confusion", it is useful to start with the remarks of Dixon and McTiernan JJ in Australian Woollen Mills Limited v F S Walton and Company Limited (1937) 58 CLR 641 at 658: "In deciding this question, the marks ought not, of course, to be compared side by side. 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. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected." The cases have emphasized that the impression carried away and retained may be far from precise. As Viscount Radcliffe said in a passage which is quoted in Polo Textile Industries Limited v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 at 232, "in most persons the eye is not an accurate recorder of visual detail, and ... marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole". Gummow J elaborated the point in Johnson & Johnson v Kalnin (at 439), when he said: "[T]he presence of some common 'idea' may tip the scales against registration because the 'idea'is more likely to be recalled than the precise details of the mark". Where, as in this case, two marks look or sound alike, that is in itself a reason for taking into account, in deciding whether they are likely to deceive, the fact that they convey the same idea: Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536 at 539, per Dixon, Williams and Kitto JJ. In this respect, the meaning does matter, and in taking it into account the court should not overlook the significance of the onus. As Williams J said in Sym Choon and Company Limited v Gordon Choons Nuts Limited (1949) 80 CLR 65 at 78: "The basic principle is that the proposed mark must be so unlike the rival mark that it is not reasonably probable that a purchaser who knows of the latter and has an imperfect recollection of it is likely to be confused." Applying these propositions to the present case, the idea of a sports cafe is common to the cited mark and the marks proposed for registration. It is true that in the cited mark the word "circuit" is emphasized; and on this fact counsel for the applicant substantially rested his whole case. He suggested that the words "the sports cafe" were "buried" in the cited mark. But graphic though this metaphor may sound, it cannot get over the awkward fact that the words do actually comprise three of the only four words contained in the mark. The mark is not just "circuit"; it is "the circuit sports cafe". If, as would be usual in relation to a restaurant or cafe, the establishment were referred to in conversation or in the making of a booking over the telephone, the applicant's argument is met by the reality that the words "sports cafe" might well be used. Although the word "circuit" is prominent, it is used as a qualifying word, either suggesting that the cafe in question is on a circuit, or that the sports in question are circuit sports. Taken "as a whole", as Gummow J said it should be in Johnson & Johnson v Kalnin at 441, the cited mark cannot be divorced from the idea either of sports generally or, alternatively, of circuit sports. Of course, it is beyond doubt that the proposed marks express the idea of sports. When the marks are compared as a whole, and bearing in mind that allowance must be made for imperfect recollection, even the devices associated with the two device marks reinforce the impression created by the identity of some of the words in the cited mark with all of the words in the proposed marks, and by the common idea of sports. For the oval of the cited mark leaves, on a mind accustomed to the conventional representation of shapes by drawing, the impression of a circle seen from a little distance, that circle being intersected on one side by a much smaller straight sided figure (the squat triangle). It will be remembered that the proposed device mark also has a smaller figure at one side of a circle, and imperfect recollection might very well overlook that in the one case the figure is an oblong and in the other a triangle and in the one case it is at the bottom of the circle and in the other at the top. Thus, while the devices are plainly different when compared side by side, the impression one might leave in the mind, particularly in association with the common idea of sports, might well be recalled, after an interval of time, by the other, so as to cause confusion. Although it is true that the word "circuit" is emphasized by being written in very large letters in the cited mark, no comparison of the impressions made by the marks can properly be made on the basis of blanking out the other words, which actually appear. The word "circuit" simply refers to an inanimate thing, on which, it is true, activities may take place. But the word "sports" evokes activities themselves, and dramatic activities at that. It is much the more vivid word. Such words are likely to echo in the mind. Just as in the mark "Polo Club", the word "Polo" carried more distinction than the blander word "club" (see Polo Textile Industries at 230), so here, its meaning makes the word "sports" too striking for the applicant's argument to be accepted. In my opinion, the Registrar was right, and the application should be dismissed with costs. I certify that this and the preceding four (4) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Burchett Associate: Dated: 10 February 1998 Counsel for the Applicant: Mr J Gleeson Solicitor for the Applicant: Freehill Hollingdale & Page Counsel for the Respondent: Mr D Yates Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 11 August 1997 Date of Judgment: 10 February 1998