Previously, the Federal Court in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (Woolworths) held that where an element of a trade mark had a degree of notoriety, this was relevant to determining whether it was deceptively similar to another trade mark. The rationale was that the presence of an element with a degree of notoriety reduces the potential for imperfect recollection.
This was explicitly rejected by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (Protox). Notoriety in any element of a trade mark can no longer be taken into account when comparing trade marks.
I was tempted initially, to think that notoriety could still be considered after the fact (i.e. not for the purpose of determining deceptive similarity, but for the purposes of determining whether the deceptively similar mark should still be registered on the basis of other circumstances). But, I have come to the conclusion that this cannot be what the judges in Protox intended. It would be circular to remove notoriety as a relevant factor for consideration under s 44 (1) and (2), only to build it back in as a relevant consideration under s 44 (3)(b) once s 44 (1) and (2) have been made out.
That is, other than vis a vis an application for a defensive trade mark, achieving acceptance of a non-distinctive trade mark, or filing an infringement action under s 12 (3), notoriety is now irrelevant.
IP Australia now confines the assessment of whether two trade marks are deceptively similar to a comparison of their particulars and the uses to which the marks might be properly put.
It follows that if we are confining the assessment so narrowly, it is not just notoriety that can no longer be taken into account, but other contextual factors as well.
Whereas it used to be that if a party held a family of trade marks, it would appear more likely that a mark falls within that family of trade marks, and thus deceptive similarity might more readily be found, I suggest that the Protox decision eliminates the appropriateness of taking account the family of marks when conducting the deceptive similarity analysis. Arguably this is analogous to notoriety anyway, as it would require consumers to be aware of the other marks in the family of marks, for them to add weight to the likelihood of confusion between a mark and any one of the marks in the family of trade marks. And so just like any other notoriety evidence, this family of trade marks evidence is not relevant anymore. All that matters is the two marks being compared.
Potentially, holding a family of trade marks helps with passing off or misleading and deceptive conduct claims, but for trade mark infringement matters where all that counts is a mark to mark comparison, devoid of any context, the family of trade marks argument becomes obsolete.
Nuance doesn’t apply anymore. All the fine lines and crinkles that made trade mark law interesting are being ironed out. Protox has a lot to answer for.
