Pierre Fabre Dermo-Cosmetique (the Opponent) is registered under the Trade Marks Act 1995 (Cth) (the Act) as the owner of Trade Mark No 592970, a representation of which is set out in Schedule 1 (the Opponent’s Mark). On 1 December 2003, Senator Automation Pty Limited (Senator) applied for registration under the Act of two trade marks, which would be Nos 980194 and 980195 (Senator’s Marks). Representations of Senator’s Marks are set out in Parts 1 and 2, respectively, of Schedule 2.
The Opponent opposed the registration of Senator’s Marks under Part 5 of the Act. On 28 July 2006 a delegate of the Registrar of Trade Marks concluded that the grounds of opposition relied on by the Opponent were not established and directed that Senator’s Marks may proceed to registration. However, the delegate also directed that registration would not occur until any appeal had been decided or discontinued. By notice of appeal filed on 17 August 2006, the Opponent appealed to the Federal Court from the decision of the Registrar’s delegate. The appeal is before me today.
Section 52 of the Act provides that, if the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition. Under s 55, the Registrar must, after giving the opponent and the applicant an opportunity of being heard on the opposition, decide either to refuse to register the trade mark or to register the trade mark, having regard to the extent, if any, to which any ground on which the application was opposed has been established.
Section 57 of the Act provides that the registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected. Section 44 relevantly provides that an application for the registration of a trade mark must be rejected if that trade mark is deceptively similar to a trade mark registered by another person in respect of similar goods. Section 10 provides that, for the purposes of the Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. In addition, s 60 provides that the registration of a trade mark in respect of particular goods may be opposed on the ground that another trade mark had, before the priority date for the registration of the first trade mark, acquired a reputation in Australia and, because of the reputation of that second trade mark, the use of the first trade mark would be likely to deceive or cause confusion. Those are the grounds on which the Opponent now opposes the registration of Senator’s Marks.
Section 56 of the Act provides that an applicant or an opponent may appeal to the Federal Court from a decision of the Registrar made under s 55. An appeal to the Court under s 56 requires a hearing de novo by the Court without any presumption in favour of the correctness of the Registrar’s decision from which the appeal is brought.
The first question that requires consideration by the Court is whether Senator’s Marks so nearly resemble the Opponent’s Mark that they are likely to deceive or cause confusion. Related to that question is whether the use of Senator’s Marks would be likely to deceive or cause confusion because of the reputation of the Opponent’s Mark. While the two questions are not precisely the same, they raise the same issues as to likelihood of deception or confusion. That involves a comparison of Senator’s Marks with the Opponent’s Mark. That, in turn, involves a comparison between the marks, assuming notional use of both. Such notional use means a normal and fair use for all goods covered by the marks under consideration.
To determine deceptive similarity, the marks must not be placed side by side. Rather, consideration must be given to any common net impression inferred from the two marks. In making the comparison that is required, the Court must consider all surrounding circumstances, including the circumstances in which the marks will be used and the circumstances in which the goods to which they relate will be bought and sold, together with the character of the probable acquirers of the goods…
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Kimberly-Clark Worldwide, Inc v Goulimis  FCA 1415; (2008) 253 ALR 76