- On 17 April 1998, the Registrar of Trade Marks refused to accept a trade mark application by Woolworths Limited for the registration of a trade mark in respect of retailing and wholesaling services.
- The trade mark comprised the words “WOOLWORTHS metro” on a background of wavy lines.
- The Registrar refused the application on the ground that the trade mark was deceptively similar to other registered marks consisting of the word “metro” and registered in respect of a variety of goods.
- The trade mark was also said to be deceptively similar to another trade mark for which application had been made. That trade mark had priority in respect of distribution services.
- Woolworths appealed to a Judge of the Federal Court, Wilcox J, and the appeal was allowed. The Registrar appealed the decision of Wilcox J.
- Was the trade mark WOOLWORTHS METRO deceptively similar?
- The Full Federal Court held that WOOLWORTHS METRO was not deceptively similar.
- In considering whether the trade mark was deceptively similar, it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
- A trade mark is likely to cause confusion if the result of its use will be that a number of persons are 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. It is enough if the ordinary person entertains a reasonable doubt.
- The Full Court (led by French J) held that WOOLWORTHS METRO was not deceptively similar, partly on the basis that the trade mark WOOLWORTHS was so well known to consumers, had such notoriety across Australia, it would he very unlikely that anyone would be caused to wonder or be confused as to the source of respective products and trade marks.
“[Determining deceptive similarity] requires assessment of the effect of the challenged mark upon the minds of potential customers. Impression or recollection taken away from the point at which the challenged mark is observed will be the basis of any belief about a connection between the new and the old marks. The effect of spoken description must be considered. What confusion or deception may be expected is to be based upon the behaviour of ordinary people.”
(French J at )
“A trade mark is likely to cause confusion if the result of its use will be that a number of persons are 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. It is enough if the ordinary person entertains a reasonable doubt.judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name “Woolworths” cannot be assessed without a recognition of its notorious familiarity to consumers.”
(French J at )
The full text can be found here: https://jade.io/j/?a=outline&id=117196
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