Trade Marks – infringement – deceptive similarity – relevance of reputation – distinctiveness of acronyms

The trial judge had held that the appellant’s marks were deceptively similar to those of the respondent within the meaning of 120(1) of the Trade Marks Act 1955 (Cth).

The respondent’s marks were (a) a device mark comprising a stylised map of Australia with the letters “AMH” in stylised form and (b) a word mark comprising the words “AMH” simpliciter.

The appellant’s marks all involved the acronym “AMG”. They also involved a stylised map of Australia with the addition of the words “Australian Meat Group”. One had the additional words “Premium Angus Beef” and another the words “Southern Ranges Platinum”. There was also a word mark consisting of the letters “AMG”.

A prominent feature of the trial was evidence of the significant reputation of the respondent’s business and the AMH brand at wholesale, retail and consumer level going back to at least 1989. This was of course relevant to the respondent’s associated claims for passing off and misleading or deceptive conduct. However, those claims were abandoned. Nevertheless, the trial judge relied on the evidence of reputation as supporting the trade mark infringement case of deceptive similarity. This proved to be the principal ground on which the Full Court reversed the trial judgment. (Ironically enough, at trial the appellant had also relied on the respondent’s reputation; the strong and ubiquitous reputation of the respondent’s marks would, it was said, lessen the likelihood of imperfect recollection.)

The Full Court discussed in some detail Registrar of Trade Marks v Woolworths [1999] FCA 1020; 93 FCR 365 and CA Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1539; 52 IPR 42.

Their Honours concluded at [41] that the proposition from those cases was

not that reputation is relevant generally to deceptive similarity. That is what was being rejected. It was a proposition that deceptive similarity from imperfect recollection might be countered by showing the well-known nature of the registered mark and the lessened likelihood of imperfect recollection.

The comment might be made that this seems not all that far from what the appellant had argued at trial.

On more detailed issues, the Full Court held at [69] that the trial judge’s focus on the reputation of the AMH acronym shifted attention from other features of the AMH device mark and other features of the AMG marks.

The Full Court took into account at [73] the fact that the transactions in which the marks are used take place in a market “where the buyers are likely to bring to bear an inquiring mind in respect of purchases of some considerable value.”

In considering the word marks, their Honours noted at [81] that “(t)he world of commerce is conditioned to the use of acronyms” and at [83] “the Australian public is quite used to acronyms in the market place and is used to relying on small differences to distinguish between them.”

An application for special leave to appeal to the High Court has been filed.