A mire of unpredictability 2 min read
The rules of deceptive similarity are simple and can be summarised with one very short idiom: the truth is in the eye of the beholder. Through several chapters, IP Australia, the Federal Court and the Full Federal Court have considered whether the trade marks VAGISIL and VAGISAN are deceptively similar. The final answer has now been handed down by the Full Federal Court.
We take a look at the decision and what it tells us about deceptive similarity.
The IP Australia chapter
Before the Registrar of Trade Marks, Combe International opposed Dr August Wolff's application for VAGISAN for soaps, perfume, cosmetics and hair lotion in Class 3, as well as pharmaceutical preparations and sanitary products in Class 5. Combe argued that Dr August's VAGISAN mark was deceptively similar to Combe's VAGISIL mark and should be refused registration because both products are used in relation to similar products (feminine hygiene products). The Registrar disagreed that the marks were deceptively similar under section 44 because she considered that the shared prefix of both marks, VAGI-, had obvious suggestive relevance in relation to feminine hygiene generally and therefore the common element between the marks was inherently weak. For that reason, the different endings of the marks was more important than the common prefix and prevented deceptive similarity.
However, she found under section 60 that, at the filing date of the VAGISAN application, the VAGISIL trade mark had such a reputation in Australia that consumers were more likely than not to be confused into thinking that the VAGISAN trade mark originated from the same commercial source.
Dr August appealed the Registrar's decision to the Federal Court.
The Federal Court chapter
Justice Stewart heard the appeal from Dr August and His Honour's judgement (after a possibly too-involved consideration of possible meanings for the prefix 'vag' in the opening paragraphs of the decision) focused on the principles relevant to deceptive similarity and whether the VAGISAN mark is deceptively similar to the VAGISIL mark.
Justice Stewart relied on the following reasons for finding that the marks were not deceptively similar:
- would a consumer with imperfect recollection mix up the marks?
- a near resemblance between the marks is required and that resemblance must be the cause of the likely deception or confusion.
- deceptive similarity must be assessed by way of one practical judgement that takes into account the resemblance of the marks in light of the degree of similarity between the goods.
- visual, phonetic and aural similarities (or dissimilarities) must all be considered.
His Honour agreed that the common VAGI- element was descriptive and therefore of limited distinctiveness, so greater weight should be given to the other aspects of the marks. In addition, the marks were phonetically and aurally different, which worked against a finding of deceptive similarity.
In relation to the also-appealed grounds of opposition under sections 59 (no intention to use) and 60 (reputation of an earlier mark), Justice Stewart found that Combe's evidence was insufficient to establish that Dr August lacked an intention to use the VAGISAN mark in Australia. His Honour also held that Combe's evidence did not establish that a significant number of consumers would be confused by use of the VAGISAN trade mark because of the reputation associated with the VAGISIL mark.
Justice Stewart ordered that the VAGISAN mark should proceed to registration, so Combe appealed the decision to the Full Federal Court.
The Full Federal Court chapter
The appeal was heard by Justices McKerracher, Gleeson and Burley.
Combe argued on appeal that the VAGISAN mark should be refused registration under sections 44 (deceptive similarity) and 60 (reputation of a prior mark). In relation to deceptive similarity, Combe argued that Justice Stewart had erred when making his assessment by:
- making a side-by-side comparison of the marks;
- breaking the marks down into their individual components, rather than judging them as a whole;
- ignoring the longstanding principle that consumers pay the most attention to the first word or syllable in a trade mark;
- failing to take into account the invented nature of each mark; and
- finding that -SAN in the VAGISAN mark was distinctive, rather than accepting that it is readily understood as a reference to sanitary.
Their Honours disagreed with Justice Stewart's approach to the assessment of deceptive similarity. They said that the following factors should have been considered:
- the common prefix between both marks is VAGIS-, not VAG- or VAGI-;
- the presentation of a common idea by both marks is a relevant consideration but can be outweighed by an absence of visual or aural similarity;
- the full scope of the goods should have been considered; instead there was an assumption that the goods were strictly vag-related and therefore too much emphasis was placed on the common prefix; and
- the trade marks are both invented words.
When assessing the VAGISAN mark against the VAGISIL mark under these factors, their Honours held that the marks are deceptively similar and the VAGISAN mark should be refused registration.
Since their Honours found that the marks were deceptively similar, they saw no need to consider the section 60 ground of opposition.
This stoush is an excellent demonstration of the unpredictability associated with 'deceptive similarity'.
While there are settled rules of comparison and principles enshrined in decades of case law, nothing is certain and each assessor approaches the comparison in their own way and gives weight to the factors most relevant to their mind. Each of the Registrar, Justice Stewart and the Full Court relied on traditional principles to reach their decision so there is little to criticise in any of the decisions issued.
The real takeaway point is that trade mark owners should pick marks that are visually, aurally and conceptually different to their competitors' marks or they risk ending up in lengthy stoushes with an uncertain outcome.