Having a trade mark registration is important in protecting your IP rights, however the mark’s reputation may not always assist you in enforcing it against others. In circumstances where a mark does have a significant reputation behind it, actions for passing off and breach of the Australian Consumer Law may form an important part of any infringement claim. This was demonstrated in Australian Meat Group v JBS Australia[1], where the Full Federal Court considered an appeal from a single judge of the Court regarding a decision surrounding deceptively similar marks, evidence of use and reputation in the market.
Background
JBS Australia Pty Ltd (JBS) was the owner of two registered trade marks, one comprising the letters AMH per se, and the other comprising a logo including those letters and a stylised map of Australia (the AMH Logo). Australian Meat Group Pty Ltd (AMG P/L) were using the acronym AMG, both on its own and also as part of a logo including a (different) stylised map of Australia, above the words AUSTRALIAN MEAT GROUP (the AMG Logo). AMG P/L also used the AMG Logo in other devices that included the words PREMIUM ANGUS BEEF with a cow’s head device, or the words SOUTHERN RANGES PLATINUM.
JBS alleged that all of the marks used by AMG P/L infringed its registered trade marks and also constituted passing off and a breach of the Australian Consumer Law, and sued AMG P/L on those grounds.
At trial, JBS filed extensive evidence of use and reputation in its marks, which had been used in Australia both for the domestic market, and for export of Australian meat, for many years. The trial judge found, on the basis of this evidence, that the AMH word mark and AMH Logo had a strong reputation at all levels of the market. Despite this evidence, the claims based on passing off and breach of the Australian Consumer Law were ultimately abandoned and the case proceeded only on the issue of infringement of the registered marks. The trial judge found that the respective marks were deceptively similar and that infringement had occurred. This decision was appealed to the Full Court.
The appeal
On appeal, AMG P/L asserted that the trial judge erred in finding that its marks were deceptively similar to the JBS trade mark registrations. They argued that it was improper for the judge to have considered the reputation of the AMH word and AMH Logo marks when determining deceptive similarity. They also argued that the judge had not considered the extent to which the common elements between the marks (the letters ‘AM’, which were used in the trade as an acronym for ‘Australian Meat’ and the stylised maps of Australia), were descriptive or common to the trade; nor considered the principal that marks consisting of a small number of initials have little inherent capacity to distinguish.
In considering the appeal, the Full Court reviewed existing case law on the issue of whether reputation can be considered when determining if marks are deceptively similar. In the context of an application for registration, the reputation in the mark WOOLWORTHS was held to be a relevant consideration in finding that WOOLWORTHS METRO was not deceptively similar to a range of prior METRO registrations. On the other hand, the marks HILL OF GRACE and HILL OF GOLD were found not to be deceptively similar, despite extensive evidence of reputation in the HILL OF GRACE mark. This is because the court in that case found that evidence of reputation, whilst relevant for passing off and Australian Consumer Law actions, was not an appropriate consideration when determining deceptive similarity. AMG P/L relied upon this case in support of their appeal.
Conclusion
After considering the authorities, the Full Court
found that whilst deceptive similarity arising from imperfect recollection may
be countered by demonstrating the well-known nature of the registered mark,
reputation of a registered mark is otherwise not a relevant
consideration when determining deceptive similarity between marks. The Court
found that the trial judge had erred in taking the reputation of the AMH marks
into account. They further found that, by focusing on the reputation of the AMH
marks, the trial judge had failed to give proper consideration to other issues,
such as the stylistic differences between the AMH Logo and AMG Logo, and the
common use of acronyms in the industry. The trial judge had also placed too
much emphasis on the ‘AM’ component of the marks, given its use to reference
‘Australian Meat’ in acronyms used in the industry, and had placed insufficient
emphasis on the differences between the concluding letters ‘H’ and ‘G’. Having
considered those issues, the Full Court found that the marks were not
deceptively similar, and allowed the appeal.
[1] Australian Meat Group Pty Ltd v JBS Australia Pty Ltd, [2018] FCAFC 207