Trade Marks Information

s7, Use of trade mark

Powers of authorised user of registered trade mark

s80F Failure to renew

s92, Application for removal of trade mark from Register

s101 Determination of opposed application--general

s120, When is a registered trade mark infringed?

Respondent sought removal of appellant's registered trade mark from Register for non-use during prescribed statutory period

Previous foreign registered owner of trade mark authorised by licence attachment of trade mark to goods offered for sale and sold overseas

Goods offered for sale and sold in Australia during statutory period without knowledge of appellant, previous registered owner and licensee of trade mark

Whether trade mark used in Australia by registered owner or authorised user

Whether registered owner or authorised user must knowingly project goods bearing trade mark into course of trade in Australia

Whether use in good faith.

The principal issue raised on the appeal is whether, within the terms of s100(3)(a), there was use by Gallo or its predecessor in title, Mr Houlihan, of the registered trade mark in respect of wines, in good faith during the alleged statutory period. In our opinion, for the reasons which follow, there was such use.

On a literal reading of s52 of the Act, the deliberate creation by the breweries of an association by use of the name “Duff” between the breweries' beer can with “The Simpsons'” program, in circumstances where there is no association and indeed, where such an association is contrary to the express policy of the producers, amounts to misleading and deceptive conduct.

There is no necessity to demonstrate that the viewer or consumer must think in specific terms of permission or allowance in order to constitute deceptive conduct.

The intentional use of the name “Duff Beer” which produces the false association is sufficient.

.. I am satisfied on the balance of probabilities that consumers are in fact likely to assume sanction, permission or allowance on the part of the producers.

This is not caused by any erroneous assumption on their part, but by the deceptive conduct of the breweries.

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.

whether there is substantial identity is a question of fact:

… 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.