Question Q234 National Group: Australia Title: Relevant ... - AIPPI

Question Q234
National Group:
Australia
Title:
Relevant public for determining the degree of
recognition of famous marks, well-known
marks and marks with a reputation
Contributors:
Clare Cunliffe, Nicholas Butera
Reporter within
Working Committee:
Clare Cunliffe
Date: 10 May 2013
I. Analysis of current law and case law
1) How is the relevant public for purposes of determining the degree of recognition
of famous, well-known and reputed marks defined in your jurisdiction? Is it the
general public at large or a relevant sector of the public that is considered to be
the relevant public in determining the knowledge, recognition or fame of a mark?
The term “famous” is not used in Australian trade mark law.
The term “well-known” is used in the Trade Marks Act 1995 (Cth) (the TMA) and
in case law, as is the term “reputation”. As noted below, “notorious” is
sometimes used by courts to characterise certain trade marks.
The degree of recognition of a mark (including notorious marks, well-known
marks and marks with a reputation) arises at several stages — registration,
opposition, infringement and cancellation –as described below.
Registration
At the registration stage, reputation can be relevant to issues of whether use of
the trade mark would be contrary to law (section 42(b) of the Trade Marks Act
1995 (Cth) (TMA)); or whether the trade mark is substantially identical with or
deceptively similar to a trade mark or trade mark application in respect of similar
goods or closely related services (section 44 of TMA), although the term
“reputation” is not used in these sections.
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Reputation is also relevant in determining whether the trade mark is capable of
distinguishing the applicant’s goods or services (s 41 of TMA).
Section 41
The issue of reputation may be relevant to the issue of determining whether a
mark has acquired distinctiveness.
Section 42(b)
Although section 42(b) is rarely invoked by the Trade Marks Office in the
registration process, use of a trade mark will be contrary to law if it would
constitute misleading or deceptive conduct contrary to section 18 of the
Australian Consumer Law (ACL), or the making of false or misleading
statements contrary to s 29 of the ACL, or passing off.
Australian Consumer Law: In considering whether a case of
misleading or deceptive conduct or passing off would be made out, the
court will consider whether the applicant has established a reputation in
the marks which would be appropriated by the respondent. Recent case
law indicates that in determining whether use of a mark will breach the
ACL, the court will consider whether a significant proportion of the
general public will be confused by the use, not whether the target market
for the impugned product will be confused (although reputation and
confusion amongst the target market may suffice to establish sufficient
reputation and deception among the general public). 1
Section 44
Passing Off: In considering whether use of a mark would constitute
passing off, the party asserting its reputation must establish that it had
the requisite reputation in the name or goods in the jurisdiction and that
there is a likelihood of deception among consumers or potential
consumers resulting from the respondent’s actions. This test appears to
be directed at assessing the reputation amongst relevant consumers, not
the general public. 2
In determining substantial identity or deceptive similarity under s 44, it appears
from references to “judicial notice” and “consumers generally” in the case law
that the relevant reputation must be among the general public at large for a mark
to be considered “notoriously ubiquitous”. 3
1
Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 (Hansen).
2
This requires an applicant to prove that there are, within the relevant jurisdiction, a substantial number of persons
who were aware of the applicant’s name or product and are possible consumers. It is necessary to show in a
practical and business sense a sufficient reputation in the forum and this requires an evaluation of the size and
distribution of the population of prospective consumers likely to be affected. See ConAgra Inc v McCain Foods
(Aust) Pty Ltd [1992] FCA 159 and the discussion in Hansen (ibid).
3
“Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken ...
[the element of the applied for mark] cannot be assessed without a recognition of its notorious familiarity to
consumers.”: Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J) (Woolworths). In
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Opposition
Trade marks can be opposed on any of the grounds for which an application for
registration may be rejected, including sections 41, 42 and 44 (set out above).
Reputation is also central to the operation of the section 60 ground of opposition,
which allows a person to challenge the proposed registration of a trade mark on
the basis that, because another trade mark had “acquired a reputation in
Australia” before the priority date of the applied-for trade mark, use of the
applied-for trade mark would be likely to deceive or cause confusion.
The reputation required in relation to section 60 is a reputation in relation to the
goods or services the subject of the impugned mark application. It appears that
section 60 does not require a reputation amongst any particular proportion or
number of the Australian population, but that a “significant” or “substantial”
number of people or potential customers is required. 4 If the mark has a
reputation among a highly knowledgeable group of consumers, it may be more
difficult to demonstrate confusion. 5
If a mark is notoriously ubiquitous amongst the general public (sometimes
referred to in the opposition/infringement context as “very famous”), this
reputation can serve both as a help and a hindrance. For example, if a mark is
very famous, it may be easier to show that consumers would be confused by
use of a similar mark in relation to goods/services other than those for which the
mark has that reputation (brand extension). Examples in the Australian context
include Viagra/Herbagra (opposition) 6 , Huggies/”Huggie” Mummy (opposition) 7
and the use of a Coca-Cola bottle shape for confectionary (infringement). 8
However, as the reputation of a notoriously ubiquitous mark is a relevant
consideration in determining deceptive similarity, 9 the very fame of that mark
may mean that there is no imperfect recollection by the general public, and
therefore no confusion with a similar mark in relation to similar goods to those for
the famous mark has a reputation. This occurred in the infringement context in
Mars v Sweet Rewards, where the Federal Court held that people would not
Henschke, the Full Court of the Federal Court (in obiter) restricted the proposition expressed in Woolworths as
follows “[I]n assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or
perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers
generally must be taken to be familiar with it and with its use in relation to particular goods or services is a
relevant consideration.”C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539, [52]. (Henschke).
4
Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (Tivo).
5
Tivo ibid.
6
Pfizer Products Inc v Karam [2006] FCA 1663 (opposition to use of Herbagra in relation to “herbal medicines used
to aid health, vitality and sexuality” due to reputation of Viagra).
7
Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415 (opposition to use of “Huggie” Mummy for Direct
selling of baby-toddler’s toys, videos, CD’s, books, games and accessories“ in light of reputation of Huggies for
various baby products).
8
Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721.
9
Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2003] FCA 901, [90].
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confuse the famous mark “Maltesers” for confectionary products with the mark
“Malt Balls” for the same products. 10
Infringement
Reputation is specifically relevant in assessing infringement under section
120(3) of the TMA, but it is also relevant in relation to determining whether the
infringing mark is “deceptively similar” to the registered mark (as discussed
above in relation to opposition).
Section 120(3)
Section 120(3) provides that a person infringes a registered trade mark if:
the trade mark is well known in Australia;
the person uses as a trade mark a sign that is substantially identical
with, or deceptively similar to the trade mark in relation to:
goods that are not of the same description as that of the
goods in respect of which the trade mark is registered or are
not closely related to services in respect of which the trade
mark is registered; or
services that are not of the same description as that of the
registered services or are not closely related to registered
goods; and
because the trade mark is well known, the sign would be likely to be
taken as indicating a connection between the unrelated goods or
services and the registered owner of the trade mark; and
for that reason, the interests of the registered owner are likely to be
adversely affected.
Section 120(4) of the TMA provides that in deciding whether a trade mark is well
known in Australia, one must take account of the extent to which the trade mark
is known within the relevant sector of the public, whether as a result of the
promotion of the trade mark or for any other reason.
Other causes of action (including cancellation)
An owner of a mark with reputation or a well known mark may apply to cancel
other trade marks under s 88(2) (which provides inter alia that marks can be
cancelled on any ground on which they could be opposed, or because use of the
trade mark is likely to deceive or cause confusion because of the circumstances
applying at the time when the application for rectification is filed). 11
An owner of a well known mark or reputed mark may also bring an action under
the ACL or for passing off (including in relation to unregistered marks).
10
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606, [97].
11
We note that the ACL and passing off claims are the only protections available for the infringement of
unregistered marks with a reputation in Australia.
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2) Please clarify whether your jurisdiction uses several of the terms discussed in
sections 22–26. If so, is the “relevant public” construed differently when
determining the recognition of famous marks, well-known marks and marks with
reputation respectively (and, if applicable, marks subject to another term)? Is the
assessment made based on the same criteria?
Australian trade mark law makes use of the following terms in the following
contexts:
Registration: Case law provides that if a mark has achieved notorious
ubiquity or familiarity it may be registered even if there are earlier
similar marks on the register. 12 While there is no clear guidance on “a
degree of notoriety or familiarity”, the requirement that it be notorious
enough for judicial notice to be taken indicates that the mark needs to
have this degree of notoriety or familiarity amongst the general public.
Opposition: The statute and case law in relation to s 60 (whether
another trade mark has acquired a reputation in Australia before the
priority date which would mean that the use of the opposed mark would
be likely to deceive or cause confusion) refers to “a mark with a
reputation in Australia”.
In relation to s 60, the reputation must be proved “in respect of particular
goods or services” for which the opposed trade mark is to be registered.
The reputation needs to be amongst a “significant” or “substantial”
number of people or potential customers bur does not require a
reputation amongst any particular proportion or number of the Australian
population. A niche reputation may be taken into account in assessing
whether reputation exists.
Infringement: Section 120(3) of the Trade Marks allows a registered
trade mark owner to sue for trade mark infringement where the
registered trade mark “is well-known in Australia”. Section 120(4) states
that in assessing whether a mark is well known, it is necessary to have
regard to “the extent to which the trade mark is known within the relevant
sector of the public, whether as a result of the promotion of the trade
mark or for any other reason”. There is no authoritative case law on the
section so it is unclear how the relevant public will be defined.
Other causes of action Whether a mark has a reputation in Australia is
also relevant in actions brought under the ACL for misleading and
deceptive conduct and for actions brought under the common law for
passing off (and thereby to s 42(b) (by which marks must not be
registered if their use is contrary to law) and s 88(2) (by which marks
may be cancelled if their use is contrary to law)). Although reputation is
not strictly required to make out a case under the ACL, practically it is
impossible to prove that use of a mark will mislead or deceive unless
reputation is established. As set out above, it appears that for the
12
Woolworths; Henschke.
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purpose of the ACL, the relevant public is the general public and for
passing off, the relevant public is the target market.
3) If the relevant public can be a limited sector of the public please respond (if
applicable with reference to statutory provisions and/or case law) to the following
questions
(a) Please briefly describe the criteria for determining the relevant public. Is
consideration taken e.g. to age, gender, geography, culture, groups with
special interests, sophistication/skill of the consumer? Is consideration taken
to the way the goods or services with the trade mark in question are
marketed?
Opposition Proceedings – s 60 “reputation”
It appears from the case law that the likelihood of making out a case of
confusion will depend on the interaction between the nature of the goods in
relation to which the reputation is asserted and the nature of the goods or
services which are the subject of the impugned registration or application.
So for example, in relation to food products, case law has considered
whether consumers of food products will be confused (and has disregarded
a niche reputation amongst food industry specialists). 13 In relation to DVR
players, the relevant public for establishing reputation was the general public
and while the reputation of an earlier mark amongst enthusiasts was
relevant to establishing such a reputation, the knowledgeable nature of
these enthusiasts made it more difficult to make out a case of confusion. 14
In relation to child care services, the court found that there was a reputation
amongst people who were interested in child care and early learning centres
(in other words, the consumers or potential consumers of the goods/services
for which the mark was used), and that the use of the impugned mark was
likely to cause confusion. 15
Infringement Proceedings “well known mark”
There is currently no detailed judicial guidance on whether a mark is well
known. The only cases that have dealt with this issue have been
interlocutory proceedings for injunctions pending a final hearing of the
matter. 16 In these cases, the relevant public has been the
13
Renaud Cointreau v Cordon Bleu International Ltée [2001] FCA 1170 (Renard Cointreau).
14
Tivo.
15
Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618. In that case, the relevant public was also
defined by reference to a particular geographic location (the state of Victoria)
16
Nintendo Co Ltd v Care [2000] FCA 1538 (“SUPER MARIO”); Virgin Enterprises Ltd v Klapsas [2001] FCA 1502
(“VIRGIN”); Australian Associated Motor Insurers Ltd v Australian Automotive Motor Inspection Centre Pty Ltd
[2003] FCA 1088 (“AAMI” — well known Australian insurance company); San Remo Macaroni Co Pty Ltd v San
Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 (“SAN REMO” — well-known Australian pasta manufacturer)
and Lone Star Steakhouse & Saloon v Zurcas [2000] FCA 29 (“LONESTAR”).
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consumers/potential consumers of the goods/services for which the “well
known mark” is registered.
(b) Would the relevant public be populated by actual/potential
consumers/buyers of the products/services in question only or a larger
public? Please explain how the delimitation is made.
In considering whether a trade mark has such “notorious ubiquity” that it
should be registered under s 44, regard will be had to the mark’s
reputation in relation to the particular goods and services in relation to
which it is used, but it appears that the relevant public is the general
public;
In considering whether a mark has acquired a reputation under s 60,
reference is made in the case law to a substantial number of people in
the general public (although a niche reputation may suffice to
demonstrate such a reputation);
There is no definitive case law as to the relevant public for the purpose
of considering whether a mark is well known under s 120(3);
Actions under the ACL will consider the effect of the use of the mark on
the general public (which is relevant to ss 42 and 88 of the TMA); and
Passing off requires reputation amongst consumers of the respondent’s
goods and services.
(c) Could the relevant public be composed of business/professional end
consumers?
The relevant public may be composed of business/professional end
consumers if the nature of the goods/services in question means they are
targeted at those particular consumers. This is apparent from recent case
law in relation to the issue of whether use of a particular mark in relation to
speciality goods would deceive or cause confusion. 17
However, where a mark is opposed on the basis of the niche reputation of
an earlier mark, the nature of the goods applied for may determine the
extent to which a niche reputation will be taken into account in determining
confusion. Where an opposed mark relates to fast moving consumer goods
which are generally available, the relevant public is likely to be the general
public, and it may be irrelevant that the goods have a reputation amongst a
smaller group. 18
17
Idameneo (No 780) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164 (Symbion).
18
Renaud Cointreau; Suntory Limited v Aktion Zahnfreundlich [1998] ATMO 44
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(d) Could the relevant public be composed of people in the trade of the goods or
services in question, such as distributors, licensees and retailers?
Case law supports the view that the relevant public may include people in
the trade of the goods or services in question as well as end users of the
goods and services, depending on the nature of the goods or services which
are the subject of the registration. 19
In considering whether use of a mark will be misleading or confusing, the
issue of any deceptive resemblance between the respective marks must be
considered from the viewpoint of the specialised consumer for those goods
and services. 20
In the case of determining whether a mark is “well-known” for the purposes
of s 120(3) infringement proceedings, the express words of s 120(4) refer to
the “relevant sector of the public” — therefore allowing for a mark to be “wellknown”
within a specialised market such as persons in the trade rather than
end users.
(e) Could the relevant public be “mixed” in a sense that it is composed of
persons involved in trade, professional/business end customers and private
end customers?
Yes, if the users of the goods and services would be mixed, the relevant
public may be mixed.
(f) How limited in terms of quantification can the relevant sector of the public be
to constitute the relevant public? Is there a clear established “lowest level”?
For opposition under s 60, it is necessary to prove that there is a reputation
amongst a “significant” or “substantial number” of people (although this is not
quantified, and case law indicates that a small class may constitute a
substantial number). For actions under the Australian Consumer Law and
passing off, it is necessary to demonstrate that there are a substantial
number of persons who may be misled or deceived (which in practical terms
will require establishing reputation among a “substantial number” of
people). 21
19
For example in the context of an opposition, in Ainsworth Game Technology Ltd v IGT (2011) 93 IPR 532, the
Trade Marks Office was required to determine the relevant public in relation to goods including components for
gaming machines, parts and accessories for gaming machines and computer hardware and software and
networking systems for linking gaming machines. The Trade Marks Office held that the relevant public were the
hotels, clubs or casinos that purchased the gaming machines and not the general public who used the
machines. However, in relation to a registration for, among other things, entertainment in respect of gaming
machines, the Trade Marks Office held the relevant public to be the segment of the adult population at large
which makes use of gaming venues.
20
Symbion.
21
Tivo (in respect of s 60); Hansen
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(g) Is it possible to see any differences for different products/industry sectors in
respect of the delimitation of the relevant public?
The relevant public may vary according to the products or services which are
the subject of the impugned registration.
4) Are there any differences between the “relevant public” concept when assessing
the recognition of trade marks in respect of e.g. dilution, free riding or when
determining likelihood of confusion in infringement proceedings?
It is unclear how the relevant public will be determined in the context of wellknown
marks.
To succeed in an action under Australia’s consumer protection law, the ACL, the
applicant must establish that a significant proportion of the public will be misled
or deceived (although that requirement may be satisfied if there is a niche
reputation and there would be confusion among that group). To succeed in a
case of passing off, the applicant must establish that potential consumers of the
products will be misled or deceived by use of the impugned mark.
Consumer protection and passing off actions have been successful in protecting
marks such as “Nike” which are used on dissimilar products, such as personal
hygiene products — see, for example, the decision of the High Court in
Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12.
As noted above, the determination of the relevant public in opposition
proceedings (judged by reference to the specification applied for) and
infringement proceedings (judged by reference to the plaintiff’s specification),
appears to allow for consideration of a niche reputation, provided that reputation
is among a substantial number of people.
5) When does the assessment of the relevant public come into play e.g. in
registration matters, proceedings in respect of wrongful use such as free riding,
dilution, infringement proceedings and opposition proceedings?
See above.
6) Is the relevant public determined by a test, a specific procedure or in some
similar manner, or rather on a case-by-case basis? Please give a brief
description of how the test or analysis is made.
The relevant public is determined on a case-by-case basis based on the matters
referred to above.
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II. Proposals for Harmonisation
Is harmonisation desired? If yes, please respond to the following questions
Yes, harmonisation is desirable.
1) Is the general public at large or a particular sector of the public that should be
considered as the relevant public in determining the knowledge, recognition or
fame of a mark?
In order to determine whether a mark “is a mark with a reputation”, reference
should be had to the sector of the public which consumes the relevant
goods/services.
However, in determining whether a mark is a “well-known” or “famous” mark, the
mark should be known or recognised by the general public.
This should be a separate enquiry to whether use of the mark would be
misleading or deceptive or confusing.
2) Please briefly set out the criteria to be used when establishing the relevant
public for determining the degree of recognition of famous marks, well-known
marks and marks with a reputation.
For “marks with a reputation”, the relevant public should be based on:
the nature of the goods/services offered under or in relation to the
reputed mark (particularly whether they are goods/services that are
purchased by the general public or by a small section of the public, the
trade channels for the goods/services, whether similar companies
engage in brand extension etc); and
the way in which the goods/services are marketed (particularly
advertising expenditure and promotional activities, but also, if such
evidence is led, the target audience of advertising/marketing
campaigns).
As noted above, for “well-known” or “famous” marks, the relevant public should
be the general public (construed by reference to reasonable members of the
general public).
3) Should the relevant public be construed differently for famous marks, well-known
marks or marks with a reputation? If so, please define the terms used and
describe what criteria is to be used for the different types of marks.
If the protection afforded to a “famous” or “well-known” mark is broader than that
extended to a mark with a “reputation” (as suggested above), the criteria for a
“famous” or “well-known” mark should be different than the criteria for a mark
with a “reputation”, and should be based on reputation among the general
public.
4) Would it possible or desired to establish a test or a specific method of
establishing the relevant public or should this be done on a case-by-case
assessment? How should the test or analysis be made?
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A case by case approach is most appropriate.
III.
Other Comments
N/A
Summary
Australian trade mark law recognises marks with “notorious ubiquity”, “well-known”
marks and marks “with a reputation in Australia”.
A mark is a “notoriously ubiquitous” mark if it is “notoriously familiar” amongst the
general public at large. A “notoriously ubiquitous” mark is not likely to be confusingly
similar to another mark because of its reputation — this can be useful in the registration
and opposition (brand extension) contexts, but harmful for proprietors of “notoriously
ubiquitous” marks seeking to prove infringement.
Section 60 of the Trade Marks Act allows a person to oppose the registration of a trade
mark if it is confusingly similar to a mark that has “acquired a reputation in Australia”.
This reputation must be proved “in respect of particular goods or services” for which the
opposed mark is to be registered, and needs to be amongst a “significant” or
“substantial” number of people or potential customers. The relevant public is assessed
on a case-by-case basis, as the determination of the number of potential customers and
the members of the field of potential customers (which can include
business/professional end consumers and people in the trade) is dependent on the
nature of the relevant goods and services. A niche reputation is therefore sufficient in
some circumstances.
Section 120(3) allows the owner of a registered trade mark that is “well-known in
Australia” to bring an infringement action against a person who uses as a trade mark a
substantially identical or deceptively similar sign in respect of unrelated goods or
services. Section 120(4) specifically states that a mark may be well-known within “the
relevant sector of the public”. There is currently no authoritative guidance on what is
meant by “the relevant sector of the public”.
Under the Australian Consumer Law, the plaintiff must establish that a significant
proportion of the general public know the plaintiff’s mark and would be misled or
deceived by the defendant’s use of it. Under the tort of passing off, the plaintiff must
establish that the potential consumers of the defendant’s products would be misled or
deceived by the defendant’s conduct because of the reputation of the plaintiff’s mark.
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