It used to be the case (Registrar of Trade Marks v Woolworths Ltd, CA Henschke & Co v Rosemount Estates Pty Ltd and Australian Meat Group Pty Ltd v JBS Australia Pty Ltd) that notoriety of a mark or component of a mark reduced the risk of imperfect recollection, which is one of the factors to be taken into account when determining deceptive similarity of two marks. This meant that a notorious trade mark is not as likely to be deceptively similar to third party marks, meaning less likelihood of citation under s 44 (and less likelihood of infringement under s 120).
Since Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (Protox) [2023] HCA 8, this is no longer law.
But, the uncomfortable issue remains that the old law stands to reason. Well known marks are less likely to be mucked up, remembered in part, mispronounced or misspelt. We don’t wonder whether GOOGLE is spelt GOOGIL or GOOGEL, because we know the GOOGLE name like it’s one of our own children’s names. So, immediately, if we were to see a different spelling, we would not be caused to wonder whether it was in any way affiliated with GOOGLE, we would assume immediately that it was not. Why on earth would GOOGLE devalue its strong singular branding with a new variant: say GOOGUL? We would know immediately the two brands are unrelated.
So, how does our gut instinct that the old law had some merit, intersect with the indisputable fact that the issue has been decided: Reputation should not be taken into account when determining deceptive similarity for the purposes of s 44?
Well, in my view, it comes into play under other circumstances. Section 44(3)(b) allows the acceptance of a trade mark application where the application would otherwise be subject to rejection under ss 44(1) or 44(2). Acceptance based on ‘other circumstances’ depends on a consideration of the commercial realities which, in the Registrar’s opinion, make the acceptance of an application proper notwithstanding a real risk of deception or confusion.
It is here, under s 44(3)(b), that IP Australia can factor in the notoriety of one of the marks and decide that, in the circumstances, where one mark is so well known that imperfect recollection is unlikely and therefore the theoretical risk of deception or confusion is negated by the commercial reality, the marks can co-exist.
Therefore, I believe, notoriety of marks did not become irrelevant after Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (Protox) [2023] HCA 8, it just became relevant at a later point. Only once a finding of deceptive similarity has been reached under s 44, does it then become relevant, as a factor in determining registrability of a mark under s 44(3)(b).