FEDERAL COURT OF AUSTRALIA

Verrocchi v Direct Chemist Outlet Pty Ltd [2016] FCAFC 104

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The appellants pay the respondents’ costs of and incidental to the appeal.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1    The appellants have appealed the decision and orders of a judge of this Court dismissing their application for relief against the respondents for misleading or deceptive conduct and misrepresentation in contravention of ss 18 and 29 of the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)) and the predecessor provisions ss 52 and 53 of the Trade Practices Act 1974 (Cth) and for passing off.

2    The appellants also sought relief below for trade mark infringement, but such an application was dismissed; no appeal has been brought against that dismissal. The respondents also cross-claimed against the appellants seeking the revocation of Australian Trade Mark No 1195650. His Honour granted the relief sought on the cross-claim; there also has been no appeal against that determination.

3    The appellants, trading as Chemist Warehouse, and the respondents, trading as Direct Chemist Outlet, each own or operate discount retail pharmacy chains throughout Australia. They are direct competitors. At first instance, the appellants sought orders restraining the respondents from using a get-up and colour scheme on their pharmacy storefronts that was substantially identical or deceptively similar to the appellants’ storefront get-up. The appellants did not, however, rely upon any trade mark for the overall get-up of their stores or any infringement thereof. Rather, they relied upon claims of misleading or deceptive conduct. The appellants’ claims therefore involved a consideration of the trade indicia adopted by the respective parties and whether the storefront get-up of the appellants obtained a distinctive reputation.

4    In summary, the appellants asserted before the primary judge that since 26 May 2006:

(a)    the respondents had adopted a get-up for their stores with the descriptive and non-distinctive name “Direct Chemist Outlet”, which was likely to cause consumers to believe that the respondents’ pharmacies were associated with the appellants’ pharmacies; in these reasons we will from time to time use the acronym “DCO” for “Direct Chemist Outlet”;

(b)    the respondents had failed to adequately distinguish themselves from the appellants’ business and intentionally copied various visual attributes of the appellants’ get-up to further consumers’ misconceptions; and

(c)    as a result of such conduct, consumers were or were likely to have been misled or deceived.

5    As we have said, his Honour dismissed the appellants’ proceeding. In our opinion, no error has been identified with respect to his Honour’s findings and determination. The appeal will be dismissed.

BACKGROUND

6    Before proceeding further, it is appropriate to set out a brief statement of the factual background.

7    The appellants, Mr Mario Verrocchi and Mr Jack Gance, are registered pharmacists. They have owned pharmacy businesses in partnership with one another and other pharmacists for over 32 years. They have traded under various names including “Chemist Warehouse”, “My Chemist”, “Amcal”, “Gance Chemist” and “Verrocchi Chemist”. Between 1997 and late 1999, approximately 40 pharmacies in Victoria and one in Adelaide were owned either alone or in partnership by the appellants and with others.

8    In late 1999, the appellants identified a business opportunity to establish a new chain of large format discount retail pharmacies in Australia. Between 2000 and 2001, the appellants developed certain key features for their stores. Such features included a bright yellow painted shop exterior together with red and blue colours, a narrow blue band along the base of the store exterior, and signage containing slogans such as “Is This Australia’s Cheapest Chemist?” and “Prescriptions Up To 50% Off”. Apparently, one of the appellants’ primary objectives in developing their store get-up was to differentiate their pharmacies from “traditional community” pharmacy businesses at the time.

9    In June 2000, the appellants launched their first discount pharmacy in Victoria under the name “Chemi Stop”. Over the 12 months from mid-2002, the appellants decided to slowly transition the Chemi Stop brand name to the Chemist Warehouse name so as not to lose any goodwill or brand recognition. On 21 May 2002, the appellants applied to register the trade mark “Chemist Warehouse” comprising a logo containing an outline of a house without a chimney. In mid-2002 they decided to include a chimney in the house logo. The appellants decided that a red house with a chimney would be used on all Chemist Warehouse signage and marketing materials.

10    In approximately September 2002, the appellants began trading under their current name, Chemist Warehouse. In April 2003, the first store branded fully as Chemist Warehouse was opened in Victoria. Since that time, the appellants have also operated an online retail pharmacy at www.chemistwarehouse.com.au.

11    The appellants have licensed the use of the Chemist Warehouse trade marks, get-up and slogans to proprietors of retail pharmacies. Each Chemist Warehouse pharmacy is owned by registered pharmacists or companies owned by registered pharmacists trading either alone or in partnership.

12    As at 26 May 2006, there were approximately 38 Chemist Warehouse stores nationally. On 28 August 2007, the appellants applied to register the trade mark “Is This Australia’s Cheapest Chemist?”. The primary judge found this trade mark to be invalid (at [293]) and allowed the first respondent’s cross-claim seeking revocation thereof. This determination has not been challenged before us.

13    As at January 2014, there were over 250 Chemist Warehouse stores across Australia. As at March 2014, the appellants had a proprietary interest either as sole traders, together with one another, or in partnership with other pharmacists in 68 of those pharmacies.

14    In relation to the respondents, a number of matters may be observed.

15    Mr Ian Tauman, the second respondent, has been a registered pharmacist for around 30 years. He established his first pharmacy in March 1989. Since the early 1990s he has been involved in opening and operating pharmacies primarily in Victoria and Queensland. Mr Tauman had been aware of Chemist Warehouse since around 2002 as high volume chemists, and was aware of the market’s perception of value or low price and its use of a yellow, blue and red colour scheme.

16    In early 2005, Mr Tauman apparently decided to re-brand his pharmacies in a discount chemist format. This resulted in a group of pharmacies that were intended to operate under the brand name “Direct Chemist Outlet”. The first DCO store opened in Victoria on 26 May 2006. Since August 2006 until prior to trial, the DCO stores used the slogan “Who is Australia’s Cheapest Chemist?”.

17    Direct Chemist Outlet Pty Ltd, the first respondent, of which Mr Tauman is the sole director and shareholder, was formed on 7 February 2007. It licenses the use of the “Direct Chemist Outlet” name and trade marks to pharmacies within the DCO group. It is responsible for the marketing and merchandising of DCO pharmacies.

18    As at April 2014, there were 24 DCO stores in Victoria, Queensland and New South Wales.

19    The appellants’ case before the primary judge relied upon secondary branding and pleaded a cumulative storefront get-up for their pharmacies that included:

(a)    a colour scheme comprising:

(i)    where permitted, the predominant use of a yellow background, together with the lesser use of red and blue as background colours;

(ii)    the predominant use of white and black writing;

(iii)    a narrow blue band along the base of the storefront; and

(b)    a large logo with a red background bearing white writing with the logo usually surrounded by yellow above a strip of blue background with white writing stating “Discount Chemist”.

20    It was said that the get-up was as depicted “visually”. It was also asserted that “cluttered” signage was also part of the storefront get-up.

21    The appellants also claimed that they had conducted their business, advertising and website by reference to the phrases “Up to 50% Off Prescriptions”, “Is this Australia’s Cheapest Chemist?” (where the words “Is this?” were in a smaller angled font compared to the remainder of the phrase) and “Discount Chemist”. It was alleged that the appellants had acquired a substantial reputation and goodwill in Australia by reference to their get-up and, in some respects, phrases.

PRIMARY judge’s PRINCIPAL FINDINGS

22    It is appropriate to set out some of the principal findings of the primary judge.

23    First, in respect of colour schemes, branding and storefront get-up the primary judge observed at [7] and [8]:

First, I accept that branding, as a concept, is of great importance and significance in a business model. Where colour is used as a key branding element, it is not to be regarded as a trivial or insignificant component of the brand concept. Consumers will often quickly register the colour or colours used in branding, and will often retain a conscious or subconscious recognition and association of a colour or colours with a particular brand. From the business’s perspective, any visual impact of its branding (including colour) is often intentional and important.

In this proceeding, the competing parties make heavy use of colour in the branding and promotion of their stores. However, as the Applicants correctly contended, it is important not to “over-intellectualize the likely analysis of the consumer” in undertaking the relevant legal assessment of the possible consumer responses to the branding of competitors. Further, I am mindful that the relevant consumer’s likely analysis would not involve the viewing and side-by-side comparison of all the photographs put into evidence in this proceeding; rather the consumer’s analysis will be governed by an overall impression of colours in combination with other branding features, including the relevant (and dominant) logo in situ.

His Honour elaborated on these matters at [64] and [238].

24    His Honour said that this was not a proceeding concerned with a single colour, yellow, but a palette of three primary colours (yellow, blue and red) in combination with a red logo with white text and descriptive discount slogans (at [29]). But he also observed at [12]:

The colour yellow can also be used to denote a value proposition. A number of discount retailers (including discount chemists) use that colour as part of their storefront and many retailers use yellow to promote sales. The prominent, loud and garish use of yellow imparts the look and feel of “cheapness”, or heavily discounted goods or services.

25    And at [100] his Honour also noted:

I observe that in this proceeding, as I have remarked earlier, the colours used by the Applicants had a practical and functional role. The colour yellow was accepted as being attention-grabbing. It has a general connotation of cheapness, good value or discount, and not just in the retail pharmacy industry. It is readily apparent that other traders would want to, and do, use this colour (and the other primary colours used by the parties in this proceeding) as part of their branding elements. There is nothing novel, unusual or unexpected in the way in which the Applicants used colour, nor in their advertising phrases and slogans. This is relevant to the consideration of whether the Respondents’ conduct was misleading or deceptive, or likely to mislead or deceive.

26    His Honour also set out images of predominantly yellow storefronts used by discount chemists and other retailers (at [11] and [13]).

27    Further, the primary judge found that there were relevant differences between the DCO and Chemist Warehouse storefronts. His Honour set out numerous example images of the storefronts at [167] to [170], [234] to [236] and [242] and [243]. Further, during the hearing at first instance an inspection was undertaken by his Honour of certain stores the subject of the proceeding. His Honour had the benefit of an actual inspection which we have not. Such an inspection gave the primary judge the advantage of assessing how a potential customer’s perception of the get-up of a store depended on the direction and distance from which one approached or viewed the store (at [15]). Further, such a perspective differed depending upon whether one was stationary or in a moving car.

28    His Honour appears to have accepted that the Chemist Warehouse logo, of a red house with a chimney and “Chemist Warehouse” in capitalised white text within the house, was the only relevantly distinctive and consistently used branding element across all stores. Mr Verrocchi acknowledged in cross-examination that the storefront get-up was variable but there would never be a store without the logo. The Chemist Warehouse logo above a blue strip with the words “Discount chemist” in white writing immediately beneath it was present on less than half of the stores (at [155]).

29    His Honour found that generally, with few exceptions, the colour yellow featured as a background colour to varying degrees on most of the Chemist Warehouse storefronts which also featured red and blue banner slogans and occasionally window and door frames (at [153], [167], [170]). The primary colour palette was used generally consistently but not distinctively (at [171]).

30    His Honour found that the banners contained often capitalised “loud” slogans, which created a consistently “cluttered” and “loud” look (at [167]). The slogans included “Up to 50% Off Prescriptions”, “Is this Australia’s Cheapest Chemist?” (where the words “Is this?” were in a smaller text size and oriented at 45 degrees to the remainder of the slogan), “Stop Paying too Much”, “Discount Chemist”, “Never Beaten on Price” and “Lowest Price Guaranteed”. The slogans appeared in various colours (not limited to black, white, yellow, red and blue) against various backgrounds (at [156]). Slogans in black, red or blue text were often applied directly onto the yellow background. The slogans were usually present in various combinations and to varying degrees but not consistently in the same colour and against the same background. His Honour found that the slogans were not consistently present such that Chemist Warehouse could establish a reputation for any one or all of them (at [160]).

31    His Honour found that regardless of the “loud” signage or prominent use of other colours such as red or blue, the yellow colour was dominant and consistent (at [167] and [169]). His Honour accepted Mr Verrocchi’s evidence that in 2000 the appellants were the first pharmacy to use yellow which was “tattooed” in consumers’ minds together with the “red logo” (at [162] to [163]). His Honour noted (at [164]), however, that Mr Verrocchi’s intended colouring strategy was not always possible or uniform due to planning or physical limitations although these did not prevent the use of the logo. His Honour observed that in any event, the colour yellow was merely one component of the appellants’ pleaded get-up. His Honour also said (at [239]) that there was no consumer association of the colour yellow alone with Chemist Warehouse or a reputation of such.

32    In respect of the respondents’ stores, his Honour found that there were more exceptions to the general DCO theme than the Chemist Warehouse theme (at [236]). However, his Honour observed that the respondents’ stores mostly used the same primary colour palette, and some had a yellow background, as used by the appellants although there was an absence of consistency in the text and background colours used by the respondents (at [231] and [234]).

33    His Honour considered that the dominant features of the respondents’ stores were the relatively consistent use of “lifestyle” photographs of pharmacists or customers often set against gradient backgrounds of red, yellow or blue, and the primary colour palette, either of which were present in all stores (at [235] and [236]). Lifestyle photographs were not a feature of Chemist Warehouse’s get-up (at [243]). Aside from the photographs, his Honour said that the most recognisable and distinguishing features of DCO’s exterior get-up, with certain exceptions, were the DCO logo (the words “Direct Chemist Outlet” on a red half sunburst where “Direct” and “Outlet” were in blue text with a white outline and “Chemist” in a white and larger sized text) and the words “Discount Chemist” in various coloured text and against various coloured backgrounds usually displayed near the DCO logo (at [231] and [278]). The respondents’ stores also displayed slogans such as “Save”, “Save up to 50% off prescriptions”, “Why pay more?”, “More than just the lowest price” and “Lowest price guarantee” in a circular blue and white logo accompanied with a tick against a red background. His Honour observed however, that DCO storefronts were “cleaner” in appearance than Chemist Warehouse storefronts (at [242] and [244]).

34    Further, his Honour found that there was insufficient uniformity in the visual branding devices relied upon by the appellants to support a claim for misleading or deceptive conduct. There was no sufficiently common identity in the design and layout to give rise to a distinctive storefront get-up or catalogue or website associated with the appellants (at [32]). There was no uniformity between the appellants’ storefront get-up, catalogues and website (at [33]).

35    At best there was some consistency in the use of bright and primary colours including yellow and the red “Chemist Warehouse” logo. But the primary colour palette used in the store exteriors was not a sufficiently distinctive element of the get-up. Many businesses in various industries including pharmacies use a primary colour palette and especially yellow in their storefront get-up, most probably because yellow, blue and red contrast well with black or white writing and with each other. Mr Verrocchi conceded in cross-examination that primary colours were obvious contrasting colour combinations for any retailer seeking to grab attention or communicate that their products were low priced (at [240]). Further, his Honour said that the relevant consumers were more concerned with the identity of the store by reference to its logo than by any other feature of its get-up (at [280]).

36    The DCO stores also lacked a sufficiently consistent appearance (at [40]). His Honour noted that it would have been difficult to precisely identify which DCO stores were deceptively similar to the two storefront examples annexed to the appellants’ proposed orders, assuming those examples were indeed the “best” depiction of the appellants’ storefront get-up (at [40]).

37    Moreover, there was no distinctive consistency of appearance in either of the parties’ catalogues. The parties’ websites were also quite different and the appearance of the appellants’ website varied substantially over time.

38    Further, his Honour held that the respondents had sufficiently distinguished their trade indicia so that the logo, colours and appearance of their stores, catalogues and website would not have been likely to mislead or deceive consumers (at [32]). His Honour noted that if he had found that the exteriors of the Chemist Warehouse and DCO stores were sufficiently similar, the difference in their interiors would not have mitigated the respondents’ liability (at [34]).

39    Further, his Honour found that the respondents had copied, although not uniformly, many of the appellants’ ideas including elements of the get-up, in addition to drawing influence from other retailers (at [17], [268] and [272]). It was likely that Mr Tauman had chosen a similar primary colour palette for the same reason as the appellants, namely, that it was eye catching and associated with value (at [275]). Another indication of copying by Mr Tauman was the use of the slogan “Who is Australia’s Cheapest Chemist?” which bore a striking resemblance to the slogan used by Chemist Warehouse on its stores, “Is this Australia’s Cheapest Chemist” (at [273]).

40    But evidence of deliberate copying was not necessarily sufficient to attach liability. It had to be assessed with other relevant evidence. His Honour observed that the focus was on how consumers perceived the DCO business as a result of its get-up and whether as a result they were misled or deceived or likely to be misled or deceived (at [217]). His Honour found that the respondents did not fraudulently copy elements of the appellants’ get-up and that Mr Tauman did not intend to mislead or deceive consumers or pass off his stores as associated with the appellants’ stores (at [17] and [276]). He considered that Mr Tauman’s aim was to establish his own discount chemist brand in competition with the appellants (at [276]). His Honour noted that the appellants’ failure to show a sufficient consistency of get-up to establish liability could not be overcome even if deliberate copying was undertaken (at [218]). In any event, his Honour considered that DCO had sufficiently distinguished itself by its own logo, signage and different get-up despite the deliberate copying (at [17] and [218]).

41    Further, as to geographical reputation, the primary judge said at [19]:

If I were to consider this using a geographical analysis, the Applicants would still need to establish that it was the Respondents’ actions that caused any likelihood of deception within each geographic area. This may mean that if the Applicants had set up a store in a particular area already (or previously) occupied by a DCO store, then the Applicants may not rightly complain of any “confusion” in that area being caused by the Respondents. The Applicants did not adduce any specific evidence directed to establishing reputation on a geographical basis.

His Honour said that even if he were to take a geographical approach as suggested by the appellants, and assess Chemist Warehouse’s reputation in each particular area as at the date on which a DCO store opened in that area, the result would not have been any different (at [27]).

THE APPEAL – A CHALLENGE ON THE FACTS ONLY

42    It is now convenient to turn to the grounds of appeal. The notice of appeal contained 19 grounds of appeal many of which overlapped and were repetitive of what were essentially the central complaints. We will discuss these grounds in detail later under separate subject headings. The appellants principally asserted that the primary judge had incorrectly applied the test set out at [8] of his reasons by over-intellectualising the likely analysis and comparisons of the ordinary consumer. We disagree with this criticism. We also note that the appellants have not asserted that his Honour misstated any relevant legal proposition or failed to consider any relevant legal proposition (see his Honour’s exposition at [58] to [99]). Rather, the appellants’ challenge is to his Honour’s secondary factual conclusions, based upon the largely uncontentious primary facts.

43    The respondents have submitted that the appellants have impermissibly sought to overturn findings of fact and re-argue the case. They contend that the findings were open to his Honour on the evidence, that there was no misapplication of the relevant principles and that there was no failure to take into account relevant evidence or submissions. We largely agree.

44    The respondents have contended that the appellants have impermissibly sought to by-pass much of his Honour’s reasons, failed to take into account the advantages that his Honour had to see the witnesses cross-examined and view various Chemist Warehouse and DCO stores, and ignored the fact that the question whether misleading or deceptive conduct had been made out was a matter of “judicial estimation and impression” in the context of all relevant circumstances. There is considerable force in the respondents’ criticisms.

45    It is not in dispute that the principal role of an appellate court on a re-hearing is that set out in Warren v Coombes (1979) 142 CLR 531 at 551, where Gibbs ACJ and Jacobs and Murphy JJ stated that:

… in general an appellate court is in as good a position as the trial judge to decide on the proper inference to be drawn from facts which are undisputed or which, having been disputed, are established by the findings of the trial judge. In deciding what is the proper inference to be drawn, the appellate court will give respect and weight to the conclusion of the trial judge, but, once having reached its own conclusion, will not shrink from giving effect to it.

46    It is also not in doubt that in the context of an appeal concerning misleading or deceptive conduct, as this Court in Windsor Smith Pty Ltd v Dr Martens Australia Pty Ltd (2000) 49 IPR 286; [2000] FCA 756 at [16] (per Sundberg, Emmett and Hely JJ) observed:

Once the primary facts have been found, the question whether conduct is misleading or deceptive or is likely to mislead or deceive is itself a conclusion of fact. Even where primary facts are not in dispute, an evaluation of facts not depending on assessment of credibility requires appellate caution in reversing the findings of a trial judge. The nature of the issue that arises in such a proceeding, involving as it does matters of impression, is one in which particular respect and weight should be given to the decision of the trial judge, unless some error in his judgment is demonstrated. Nevertheless, such a principle does not preclude an appellate court from reaching a different conclusion from the trial judge if it forms the view that conduct is not misleading or deceptive, even if it was found to be so by the trial judge...

47    We accept that the appeal before us is by way of a rehearing, but to so conclude does not obviate the need to show error on the part of the primary judge. Where the issue concerns a matter of impression or evaluation, the demonstration of error is not straight-forward. In this respect, we would adopt the observations of Allsop J (as he then was) in Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 at [24] to [30]. In such a case, the appellants’ onus to establish error will not be easily discharged. For our part, it has not been discharged in the present case.

THE APPELLANTS’ CASE AT TRIAL

48    There seems to have been a shift in the appellants’ case as it was presented to us as compared with how the case was run below.

49    Chemist Warehouse alleged at trial a specific store-front get-up comprising a number of features, all of which in combination, were pleaded to define a get-up alleged to exist independently of the words "Chemist Warehouse". Paragraph 5 of the Amended Statement of Claim pleaded as follows:

(5)    Continuously since about September 2002, the Applicants, by themselves and with or through their licensees, have carried on throughout Australia business under the name “Chemist Warehouse” (the Applicants’ business) of operating, inter alia, physical discount retail pharmacies (the Applicants’ pharmacies) providing pharmacy services and selling, inter alia, discount goods under and by reference to a get up which includes the following features on the store front of most of the Applicants’ pharmacies:

(a)    a colour scheme which comprises:

(i)    where permitted, the predominant use of yellow as a background colour, together with lesser use of red and blue as background colours;

(ii)    the predominant use of white and black writing;

(iii)    a narrow blue band along the base of the store front; and

(b)    a large logo with a red background colour bearing white writing, with the logo usually surrounded by yellow (the Applicants’ Logo), sitting above a strip of blue background colour with white writing stating “Discount Chemist”,

where the font of the writing is in sans-serif format (the Applicants’ Store Front Get Up).

50    The appellants at trial did not plead or run a case using the words “Chemist Warehouse” as part of the get-up.

51    Considering this get-up, the primary judge considered the photographs of the stores in evidence, some of which were illustrated at [167]. His Honour found at [170]:

The above analysis further supports my observations that the only relevantly distinctive and consistently used branding element in the store exterior get-up was the Chemist Warehouse logo. There was also the generally consistent (although not distinctive) use of the primary colour palette.

52    This was supported by the evidence at trial.

53    The primary judge found that the use of the primary colour palette was not a sufficiently distinctive element of get-up. As his Honour found, many businesses in various industries (including pharmacies) use a primary colour palette in their storefront get-up, especially the colour yellow for the reason that yellow, blue and red contrast particularly well with black or white writing, and with each other (at [240]).

54    His Honour found that the distinguishing feature consistently presented across the stores in the Chemist Warehouse chain was the Chemist Warehouse logo, which in all cases included the words "Chemist Warehouse". The logo was the dominant and distinctive feature which had the branding function (at [159]).

55    His Honour found that DCO distinguished itself by its use of its own logo and signage and a different get-up (at [218]). These features were said to be eye-catching and identified the store as a DCO store (at [231]).

56    His Honour found that consumers identified a store by reference to its logo, rather than by any other feature of the get-up. If a person did not identify the logo, he or she did not identify the store to be a Chemist Warehouse store or a DCO store (at [280]). Of course, different stores could innocuously bear some resemblance to each other (at [41]).

57    Some of the key distinguishing features of the DCO stores were the DCO logo and the use of lifestyle photos on the exterior. As his Honour found, the shape of the red half sunburst in the logo was particularly distinctive and recognisable (at [278]).

58    Further, DCO storefronts were not as cluttered as those of Chemist Warehouse. The DCO storefront get-up could be characterised as clear and lifestyle photo based.

59    Contrastingly, Chemist Warehouse storefronts were consistently "loud" and "cluttered" with slogan-bearing banners. The Chemist Warehouse store exterior could be categorised as cluttered and banner based. His Honour considered that they were different get-ups (at [243] and [244]).

60    Chemist Warehouse has contended before us that it should have succeeded in the proceeding below on the basis of various different storefront get-ups. But the pleaded get-up is defined in paragraph [5] of the Amended Statement of Claim as we have previously set out. It did not include the words "Chemist Warehouse" within the logo, just a red logo with white lettering. What Chemist Warehouse has sought to do on appeal is to change their alleged distinctive get-up of colours common between Chemist Warehouse and DCO, to include in the Chemist Warehouse logo the words "Chemist Warehouse" as part of the get-up. We agree with the respondents that this is not how the trial was conducted. The appellants should be held to the case as pleaded and run below concerning the pleaded get-up. But in any event, the primary judge correctly found that the Chemist Warehouse logo and the DCO sunburst logo identified different chemist brands, not associated ones.

LEGAL PRINCIPLES

61    It is only necessary to refer to some matters of principle concerning the statutory claims for misleading or deceptive conduct. As his Honour recited (see at [57]), the appellants acknowledged that if they failed on such claims, they would also fail on the other statutory claims and the passing off claims.

62    First, it is not sufficient for the appellants to establish that a consumer has been caused to wonder whether two products or services have come from or are offered by the same source. The question is whether a consumer is likely to be misled or deceived.

63    Second, a trader can acquire a reputation for services or goods by reason of the get-up used. The question is one of fact and in particular whether the services or goods have become distinctive of and associated with a particular trader by reason of the get-up. Moreover, a get-up can acquire a reputation independently of trade names (Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 280 ALR 639; [2011] FCAFC 98 at [185] per Greenwood J). For example, although it is not the present case, there may be an independent or secondary reputation in the features or shape of a product such as a coffee plunger as distinct from a trade name or trade mark. Further, the distinctive features of the product may have a secondary reputation even if used in association with a trade name. The secondary reputation may not be lost by such an association. But the case of the coffee plunger discussed in Peter Bodum is, of course, far removed from the present case.

64    Third, although it is usually necessary to establish a relevant reputation in the get-up that has become distinctive of the relevant business or products, it is not necessary to establish an exclusive reputation. As was said in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 at [99] (per Black CJ, Emmett and Middleton JJ):

Whether or not there is a requirement for some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the Trade Practices Act. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant’s product to believe that the two products are associated, having regard to the state of the knowledge of consumers in Australia of the claimant’s product.

65    Fourth, all of the circumstances must be considered, not just the logos, get-up, colours etc used.

66    Fifth, and relatedly, even if one was only to focus on get-up, the appellants’ selectivity is not justified. In relation to the selectivity of the appellants’ case, we would adopt, as this Court previously did in Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136 at [44], Lord Lindley’s observations in Schweppes Ltd v Gibbens (1905) 22 RPC 601 at 607 where his Lordship said:

It appears to me that the real answer to the appellants' case is this – that they invite your Lordships to look, not at the whole get-up, but at that part of the get-up which suits their case. The resemblances here are obvious enough, but, unfortunately for the appellants, so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look at the whole get-up, and not only at that part of it in which the resemblances are to be found, the whole get-up does not deceive.

67    Sixth, there is nothing impermissible per se in a rival copying another’s get-up as long as no relevant contravention occurs, ie there is nothing misleading or deceptive or likely to mislead or deceive as a consequence of such copying.

68    Seventh, contravening conduct is not limited to that which induces or is likely to induce entry into a transaction. It may include an inducement to open negotiations or invite approaches (see the primary judge’s reasons at [60]), which in the present context involves an invitation to enter the relevant store(s).

69    Eighth, as the primary judge stated at [62]:

In considering whether consumers are likely to be misled or deceived, it is necessary to consider what was said and done against the background of all surrounding circumstances. These include:

(a) the strength of the applicant’s reputation, and the extent of distribution of its products;

(b) the strength of the respondent’s reputation, and the extent to which the respondent has undertaken any advertising of its product;

(c) the nature and extent of the differences between the products, including whether the products are directly competing;

(d) the circumstances in which the products are offered to the public; and

(e) whether the respondent has copied the applicant’s product or has intentionally adopted prominent features and characteristics of the applicant’s product.

70    Ninth, a trader may establish a reputation in trade indicia or get-up that may include a colour scheme. A colour scheme can constitute part of a brand element. Indeed, in some cases it can be a significant component of the get-up used to attract consumer attention. The get-up, including the colour scheme, may establish a reputation distinct from any trading name. Whether it has done so in a particular case is a question of fact.

71    Tenth, once a trader has established such a reputation in get-up (or a secondary reputation independently of any trade name), the practical and factual question is whether the rival trader has done enough to sufficiently differentiate itself.

72    We understand that none of the above statements of principle are in issue. It is appropriate to now turn to the specific grounds of appeal.

SECONDARY BRANDING (GROUND 1)

73    The first ground of appeal alleges that the primary judge erred in failing to find that the respondents’ use of the appellants’ get-up contravened ss 18 and 29 of the Australian Consumer Law (and also ss 52 and 53 of the Trade Practices Act or constituted passing off), having regard to his findings at [7], [8], [39] and [163].

74    The appellants asserted that they had established a secondary reputation in their trade indicia or storefront get-up, namely, their predominant use of yellow, the use of red and blue, the words “Chemist Warehouse” in white writing against a red background and the words “Discount Chemist”. The appellants also submitted that the dominant image of the Chemist Warehouse get-up is the “yellow box”. The appellants submitted that there was sufficient similarity in the key features of secondary branding between the Chemist Warehouse and DCO pharmacies such that a not insignificant number of persons within the relevant class of the public, namely, current or prospective purchasers of pharmacy products, would have been led to believe that the DCO pharmacies were associated with Chemist Warehouse. It was said that the words “discount” and “chemist” featured prominently in the signage of Chemist Warehouse pharmacies. Further, the appellants submitted that the DCO pharmacies were not adequately distinguished such as to overcome the impression of trade connection by reason of the copying of the appellants’ secondary branding.

75    It was also said by the appellants that the issue of insufficient consistency in get-up was at odds with the respondents’ copying of key features of the appellants’ get-up. It was said that the question of consistency of usage should be one of impression having regard to the likely impact on a not insignificant portion of consumers.

76    The appellants submitted that unless primary branding was sufficiently distinct, even if a difference was observed by the consumer, a not insignificant number of persons would assume an affiliation of the DCO pharmacies with Chemist Warehouse because of the branding cues constituted by secondary branding. It was said that the use of a similar descriptive name would convey an associated business.

77    The appellants submitted that the differences identified by the primary judge in the respondents’ primary brand, namely, the “Direct Chemist Outlet” name and logo, the less loud or cluttered slogan bearing banners, the use of the phrase “Discount Chemist” which was not capitalised, and the use of lifestyle photographs, were not sufficient to cause consumers to doubt an association with the appellants.

78    The appellants relied on the observations of Greenwood J in Peter Bodum at [246]:

The references in the primary judgment to the association between the distinctive features of the Bodum product and the use of Bodum’s name and logo inverts the real question to be addressed. A consumer looking specifically for the Bodum Chambord Coffee Plunger by reference to the name Bodum could pick up the Bodum product as displayed out of its box, hold it (as put in cross-examination – even at arms-length in the right hand) and see the Bodum name and trade mark. … The real question is what impression is made on the mind of the reasonable or ordinary member of the class of consumers seeking to buy a coffee plunger (rather than sophisticated members of the class, which applies a more stringent and incorrect test) drawn to the rival product by reason of the copying of the distinctive features of the Bodum product and conscious of the reputation associating the product distinctly with Bodum (although the name might not be immediately recalled), when such a consumer examines the rival product without any differentiating name, title or logo on the product at all to signify that it is not actually a Bodum product.

79    The appellants also referred to Greenwood J’s observations at [263]:

I am not satisfied that the adoption of the unknown brand name “Euroline” on the box for the rival product at July 2004 had the effect of distinguishing or differentiating the rival product from that of the Bodum Chambord Coffee Plunger or a product promoted and sold with the licence, sponsorship or approval of Bodum.

80    The appellants submitted that the primary judge paid insufficient regard to the “real world” of consumers seeking a familiar discount pharmacy experience being drawn to a DCO pharmacy because of the copying of Chemist Warehouse’s get-up and not being disabused of the impression that the store was associated with Chemist Warehouse because the DCO name did not have any reputation in itself and in any event was descriptive. It was said that this was like the Bodum case and unlike Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90, where the respondent’s product was marked with the well-known “Remington” trade mark, and unlike Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136 (see also the prominent and well-known marks in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 where purchasers were brand driven).

81    Further, the appellants submitted that Mr Verrocchi’s evidence did not just support the conclusion that their colour palette simply reflected the use of contrasting colours which worked well and were designed to communicate “cheapness”. It was said that Mr Verrocchi’s evidence was consistent with the proposition that by May 2006 many consumers would recognise Chemist Warehouse pharmacies by their use of get-up, regardless of the use of the name “Chemist Warehouse”. Further, it was said that focussing on the fact that the Chemist Warehouse logo was the primary branding element distracted from the impact of Chemist Warehouse’s secondary branding.

82    Further, the appellants said that that colour palette could not be seen as indicative of discounting per se. It was said that yellow has a usage in retailing which transcended communicating discounting. For example, the use of yellow for business telephone directories and as used by the Commonwealth Bank of Australia. Moreover, other colours can be used to communicate value.

83    It was submitted that in relation to consumers’ ability to identify which store is which by reference to the primary branding as his Honour noted at [280], secondary branding plays a particularly important role in the typical environment of the busy shopping experience. Further, it was said that the store names and logos were not sufficiently distinctive to disabuse the impression of connection conveyed by the similarity in secondary branding.

84    We reject the appellants’ contentions. In large part they involve a re-run of the case run below and on which the appellants failed.

85    First, as we have indicated, the appellants have sought to change their alleged distinctive get-up to colours common between Chemist Warehouse and DCO, to include in their logo the words “Chemist Warehouse” as part of the get-up and to deny that the DCO sunburst trade mark was a brand. That was not how the trial was conducted. In any event, as we have said, the primary judge correctly found that the Chemist Warehouse logo and the DCO sunburst logo identified different chemist brands, not associated ones.

86    Second, Chemist Warehouse did not establish any secondary reputation beyond its reputation in the Chemist Warehouse logo. The primary judge was correct not to recognise that the appellants had such a secondary reputation. Error is not demonstrated by the appellants’ mere assertions.

87    Third, no error has been shown in his Honour’s findings that the primary colour palette used by Chemist Warehouse was not distinctive. First, there was considerable variability in the nature of the Chemist Warehouse get-up. The primary judge distinguished other authorities where secondary branding had been accepted on the basis of a consistent presentation of colours in a particular juxtaposition. Second, the colours had a functional aspect. Colour can be used for its practical or functional utility, for example, high visibility for a road sign. In the present case his Honour appears to have accepted that the colour yellow was used to take advantage of the attributes of visibility and its association with discount value; but such a function could apply to any type of discount goods, not just pharmacy goods. The use of yellow to create the so-called “yellow box” was also to draw the attention of potential consumers on the street; it cannot be said that the use of the colour yellow in that way denoted trade origin. His Honour accepted the functionality of yellow (see at [9], [10], [12], [14] and [100]). He also accepted that the yellow, blue and red combination served a functional purpose (see at [240]). No error is demonstrated in any of these findings.

88    Fourth, the dominant and distinctive “Chemist Warehouse” logo was the only consistent branding element across the appellants’ stores prior to May 2006; see his Honour’s findings at [33] and [171] which have not been shown to be in error. Further, in terms of the appellants’ pleaded get-up for the Chemist Warehouse stores, when one analyses the photos for the stores reproduced by his Honour at [167] to [170], only one out of the eleven stores identified (that for Mount Gravatt, Queensland) had all features of the get-up pleaded; see the respondents’ table (two pages) provided to us on appeal.

89    Fifth, in any event, even if a colour-based reputation could have been shown, that would not have answered the question of whether there had been misleading or deceptive conduct or a misrepresentation. The respondents had a different get-up with different distinguishing features. Indeed the primary judge had distinguished the respondents’ stores by not only the “Direct Chemist Outlet” trade mark but also the different distinctive logo, cleaner appearance and lifestyle photographs. None of these were part of the appellants’ pleaded get-up. The respondents’ schedules two and three to its closing submissions, by reference to the primary evidence before his Honour consisting of the relevant photos, well summarise the variability in get-up used at the DCO stores and the Chemist Warehouse stores, and relevant differences.

90    Sixth, as his Honour found at [218], the failure of the appellants to show a consistency of get-up to establish liability cannot be overcome even if the respondents engaged in deliberate copying (see ground 1(g)).

RELEVANT DATE AND USE OF YELLOW (GROUNDS 2 TO 5)

91    Ground two asserts that the primary judge ought to have found that the relevant date for assessing the respondents’ conduct for the purposes of the misleading or deceptive conduct and passing off claims was 26 May 2006 when the respondents commenced the present use of their get-up.

92    The appellants said that as at 26 May 2006 there were 38 Chemist Warehouse pharmacies nationwide, being 16 in Victoria, nine in Queensland, seven in NSW, two in South Australia, two in Tasmania and two in Western Australia. The appellants submitted that in the year ending 30 June 2006 Chemist Warehouse had made approximately $224 million in sales with 6,045,000 transactions. It was said that it could be inferred that up to the relevant date there had been about six million visits to Chemist Warehouse by consumers who had been exposed to the storefront livery. It was pointed out that Mr Tauman had said that his Mt Waverley DCO store had between 80,000 and 100,000 customers and the DCO chain comprising about 23 stores served approximately 2,000,000 customers per year.

93    The appellants pointed to the primary judge’s finding that since late 2002 the appellants had advertised on national and regional television mostly throughout each year and commonly displaying the front exterior of a Chemist Warehouse store. It was submitted that the primary judge ought to have found that by 26 May 2006 a significant number of current or prospective purchasers of pharmacy goods in Australia was able to identify Chemist Warehouse pharmacies by their distinctive external get-up. This included their predominantly yellow storefront with the lesser use of red and blue, a large red logo with Chemist Warehouse in white writing (“Chemist” being larger than “Warehouse”) and the words “Discount Chemist” in white writing on a blue background typically under or close to the red logo and the use of a blue kicker.

94    His Honour addressed the date question at [22] to [27] of his reasons as follows:

The Applicants’ “primary submission” was that the date for assessing conduct should be 26 May 2006, when the impugned conduct began. However, the Applicants submitted that it may be more appropriate to consider the reputation of the Applicants as at the date that the Respondents commenced business in a new area, given the localised nature of the pharmacy operators and marketing.

The Applicants in their submissions (seemingly in the alternate) also invited the Court to take a geographical approach and treat the relevant date for assessing the Applicants’ reputation as at the opening of each DCO store, unless the new DCO store opened relatively close to an existing store.

However, if the Applicants and Respondents were concurrently trading and building independent reputations in separate areas, it may have been the case that it was not the Respondents’ conduct that was misleading or deceptive at that later time.

For example, the Lalor DCO store opened in 2014, well after 26 May 2006. Both parties had advanced their own reputations by that time. What is the Court to conclude is the position of the competing parties in that particular area and at that particular time? It is to be recalled that since 26 May 2006 both businesses involved in this proceeding have increased their respective exposure to the relevant consumers by opening many new stores. There has been co-existence in the market place for approximately eight years prior to litigation commencing. Further, stores have opened in numerous locations, and Chemist Warehouse stores have opened in close proximity to existing DCO stores (as in the case of the Warrnambool store, for example).

In any event, on the basis of the view I have reached that DCO stores adequately distinguish themselves from Chemist Warehouse stores so as not to mislead consumers, even if one took the later date in Lalor (for example), this would not result in liability attaching to the Respondents. The relevant consumers in Lalor (for example) would not be misled as they would appreciate the difference between the two pharmacy outlets. There is also evidence to suggest that in the years between 26 May 2006 and 2014, the Applicants made even more prominent use of the Chemist Warehouse logo so as to distinguish itself from DCO.

I have come to the view that in this proceeding, even if the Court was to take a geographical approach as suggested by the Applicants, and assess Chemist Warehouse’s reputation in each particular area as at the date on which a DCO store opened in that area, the result would not be any different.

95    There is no substance to this complaint. No error has been identified in his Honour’s analysis which analysis appears to us to be unremarkable.

96    Ground three asserted that the primary judge erred in having regard to the use of yellow to denote discounting by businesses other than pharmacies and in finding that yellow had an established connotation of cheapness when used by pharmacies. Relatedly, ground four asserted that the primary judge ought to have found that the appellants were the first predominant user of yellow on pharmacy storefronts and were the only such user at the relevant date.

97    The appellants submitted that the fact that the colour yellow may have functional attributes in providing high visibility does not detract from its capacity to also act as a key branding element. It was said that Mr Tauman accepted in cross-examination the impact of yellow as part of branding. Further, the appellants submitted that the predominant use of a yellow background on a pharmacy storefront had never been done prior to the appellants’ usage, was rarely done for other retailers and was not necessarily associated with “cheapness”. It was said that the appellants had established an association with the use of yellow. Further, it was said that this case was about the palette of yellow, blue and red, not just the colour yellow. It was said that there was no evidence of any other pharmacies using the appellants’ colour scheme before May 2006 or using yellow to denote discounting. It was said that no examples of other relevant uses by discount retailers of the colour palette as used by the appellants before May 2006 were identified or in evidence other than possibly JB Hi-Fi.

98    Further, the appellants submitted that it is relevant to distinguish between types of retailers. Consumers will be less inclined to draw an association between retailers in different sectors, for example pharmacies and tyre retailers, simply because of a matching storefront get-up. However, consumers will draw such conclusions within a retail sector, for example pharmacies.

99    In our opinion, no error has been established.

100    We agree with the respondents that any store has to use a combination of colours so that signs stand out against the background. Primary colours such as yellow, blue and red are commonly used in high visibility street signs. Discount retailers use these colours to grab attention and the presence of yellow communicates that the products are low priced items. But, as his Honour correctly found, such colours do not denote trade origin. They have more of a functional quality as his Honour rightly discussed at [9], [10], [12], [100] and [240] of his reasons. Again, the appellants’ arguments rise no higher than mere assertion, rather than identification of error on his Honour’s part.

101    Ground five asserts that having found that the proceeding was not concerned with the single colour yellow but a palette of three primary colours in combination with a red logo and white text, the primary judge erred in focusing on the use of yellow by other retailers and in relying on discount pharmacies that were not open at the relevant date, and ought to have found that the appellants were the first and only users on pharmacy storefronts of such a palette at the relevant date. But in our view, the primary judge did not so err. Moreover, it was not relevant that Chemist Warehouse was the first predominantly yellow pharmacy or yellow, blue and red pharmacy. Such colours were at all times used in a functional sense as we have discussed earlier by reference to his Honour’s reasons. Further, other discount retailers used such colours in this way. Chemist Warehouse does not have a monopoly in functional colours simply because it started using those colours first for pharmacies.

DELIBERATE COPYING OF FEATURES OF GET-UP (GROUNDS 6 TO 10)

102    It is appropriate to make some brief observations on the question of intention before discussing these grounds in more detail.

103    First, it is not necessary to show an actual subjective intention to mislead. But proof of a subjective intention to mislead (in the sense that the respondents’ get-up is adopted for the purpose of appropriating part of the trade or reputation of a rival) may be some evidence that in a border line case the respondents’ conduct is likely to mislead or deceive (see Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 657 per Dixon and McTiernan JJ and Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 234 FCR 549; [2002] FCAFC 157 at [62] per Weinberg and Dowsett JJ).

104    Second, there is a distinction between an intention to copy and an intention to deceive. The former does not establish the latter. For the inference identified in Australian Woollen Mills to arise, the latter must be established.

105    The appellants’ grounds of appeal on this aspect overlap. It is convenient to group them.

106    Ground six asserts that having found that the respondents had copied elements of the appellants’ get-up and used the same colour palette, the primary judge ought to have found that the respondents had wrongfully appropriated part of the appellants’ goodwill in their branding. We do not see how copying establishes wrongful appropriation, let alone conduct that contravenes the relevant statutory provisions. The asserted chain of “reasoning” contains a number of non sequiturs. Ground seven asserts that the primary judge erred in failing to make such a finding on the basis that it was necessary to establish that the respondents intended to mislead or deceive consumers or to pass off their stores as associated with the appellants. We do not consider that this ground accurately embodies his Honour’s reasoning process when he dealt with copying. His Honour was not saying that intention to mislead was a necessary element for establishing the statutory conduct; but if such intention did exist then it would be a relevant fact. Ground eight asserts that the primary judge erred in finding that it was relevant that Mr Tauman did not fraudulently copy the appellants’ get-up and that it was necessary to show that he intended to create a perceived association between DCO and Chemist Warehouse. But such a matter, in our view, was relevant to the Australian Woollen Mills scenario.

107    In support of these grounds, the appellants referred to the fact that prior to opening his first DCO store, Mr Tauman took photographs of a Chemist Warehouse store for an unrelated planning dispute. He apparently provided those photographs to a Mr Mendham who was engaged to design the DCO stores. Mr Tauman dismissed various storefronts suggested by Mr Mendham that looked nothing like Chemist Warehouse. It was said that Mr Tauman chose a storefront concept which looked the same as Chemist Warehouse including using the same shades of blue and red.

108    The appellants contended that the respondents’ selection of yellow, blue and red, including the particular pantones for blue and red, derived from Chemist Warehouse pharmacies. It was said that the copying extended to how those colours were used, with the predominant use of yellow and lesser use of blue and red as background colours, the predominant use of white and black writing on those backgrounds, the blue “kicker” and a large red logo with white writing.

109    The appellants further submitted that just because their choice of colour scheme in 2001 was a good one does not mean that the respondents needed to copy such colour combination. There were other ways of communicating a discounting message such as Priceline’s pink from 2010, Bunnings Warehouse’s green, red and white or Big W’s white and blue.

110    The appellants also referred to the primary judge’s comment that Mr Tauman copied the “best parts” of the Chemist Warehouse concept although that was not to say that he did not draw inspiration from other retailers (at [268] and [272]). The appellants said that the primary judge should have inferred that the “best parts” of the Chemist Warehouse get-up were those that the respondents considered to be important in the marketing of Chemist Warehouse. The appellants also said that the primary judge erred in attaching undue weight to the descriptive name “Discount Chemist Outlet”, which incorporated “discount” and “chemist” in white and larger sized text set against a red logo, in overcoming the association conveyed by the copying of key Chemist Warehouse features. The appellants submitted that the primary judge ought to have found that Mr Tauman intentionally copied the appellants’ get-up to create a perceived association between DCO and Chemist Warehouse.

111    Further, the appellants said that notwithstanding the finding that the respondents also considered other influences, the primary judge found that there had been deliberate copying. There was no other available explanation as to why the colour palette was chosen and how that palette was used.

112    But in our view, even accepting all of this it does not take the appellants forward. It shows an intention to copy, but not an intention to mislead.

113    Ground nine asserts that the primary judge ought to have found that in appropriating part of the appellants’ goodwill in their branding, the respondents did not do enough to distinguish their pharmacies and in particular did not do so by the adoption of the descriptive name “Discount Chemist Outlet”. We do not see how this assertion can be sensibly maintained. His Honour found that the DCO stores were sufficiently different to the Chemist Warehouse stores (see at [17], [26], [40], [41], [218], [231], [233] to [236], [242] to [244], [278] and [281]). Further, his Honour found that DCO developed its own brand reputation, primarily by reference to the DCO sunburst logo (see at [24] to [26] and [278] to [280]). None of these findings have been successfully impugned.

114    Ground 10 asserts that the primary judge ought to have found that the respondents copied elements of the appellants’ get-up for the purpose of appropriating part of the appellants’ trade or reputation and that such conduct should be presumed to be likely to deceive or confuse and that it was not necessary to establish that the respondents intended to mislead or deceive. This is merely to repeat what has gone before. It was said that his Honour failed to properly consider the “evidential value” or “fitt[ing] for purpose” referred to at [89] that ought to have been inferred from the respondents’ deliberate copying.

115    Further, the appellants said that it was not necessary to show that the respondents had a subjective intention to mislead, but rather that the objective consequence of their deliberate copying had the effect of misleading. That is correct, but his Honour made no such error. As his Honour indicated at [89], deliberate copying of a trade rival’s get-up provides “evidential value” which his Honour took into account.

116    We reject the appellants’ attack on this aspect of the case. His Honour dealt carefully with the question of intention and copying (see his reasons at [17], [215], [216], [227], [261], [268], and [274] to [276]). No specific error is established. The appellants’ arguments are little more than a re-run of those put to his Honour and rejected.

117    First, the primary judge made factual findings that there was no intention to mislead or deceive. Such findings depended upon the primary judge’s view of Mr Tauman’s credit. Such credit findings were not contrary to incontrovertible facts or uncontested testimony, glaringly improbable or contrary to compelling inferences in the case. They have not been successfully impugned by the appellants.

118    Second, the primary judge correctly distinguished the concepts of copying and intention to mislead or deceive. Copying does not of itself show an intention to mislead or deceive. The primary judge correctly found that although some copying had taken place, there was no intention to mislead or deceive. Accordingly, the principle in Australian Woollen Mills did not apply.

119    Third, and in any event, any evidence of an intention to mislead or deceive had to be weighed with the remaining evidence. Such evidence cannot be conclusive of misleading or deceptive conduct. The appellants’ failure, on his Honour’s analysis with which we agree, to show a relevant reputation and that the competing storefronts were relevantly the same or sufficiently similar such that consumers were likely to be misled or deceived, could not be overcome by showing a relevant intention in any event, even accepting the appellants’ contentions at their highest.

IDENTIFICATION OF GET-UP AND COMMON IDENTITY OF GET-UP (GROUNDS 11 TO 13)

120    Grounds 11 to 13 assert that the primary judge erred in finding that there was insufficient common identity or distinctiveness in the appellants’ storefront get-up notwithstanding findings:

(a)    that the respondents copied elements of the appellants’ get-up;

(b)    as to the general get-up of the appellants’ stores and the dominant use of the colour yellow;

(c)    that the relevant comparison had to be made at a reasonably general level without over-intellectualisation;

(d)    that deviations from the overall impression were few and could be seen as exceptions to the general Chemist Warehouse get-up;

(e)    that the appellants’ get-up was highly prominent, loud, garish and prone to be noticed by consumers.

121    Again, these grounds repeat much of what has gone before.

122    The appellants challenged the finding that the Chemist Warehouse logo was the only relevantly distinctive and consistently used branding element. It was said that his Honour was being too limiting in his approach on the consistency of usage, having made key findings about the use of the colour combination including that the respondents had copied elements of the appellants’ get-up and that their stores mostly used the same colour palette as the appellants. It was said that the colour yellow was distinctive of the appellants, including in combination with the other palette colours, but could be qualified by the way it was used by a trade rival.

123    The appellants submitted that there was sufficient uniformity in their use of yellow, blue and red and the Chemist Warehouse logo (being the large word “Chemist” in white and the smaller word “Warehouse” in white on a red logo) to give rise to a relevant reputation in that get-up recognised by consumers. It was said that this reinforced the similarity in get-up used across a wide range of their pharmacies at the relevant date which gave rise to a dominant impression of the get-up. It was said that there was no need to establish that the usage was identical or closely identical in each case. It was said that the impugned findings do not take sufficient account of consumers’ imperfect recollections of the precise details of the get-up of particular Chemist Warehouse outlets as compared with their overall impression.

124    The appellants submitted that the primary judge also fell into error regarding the consistency of appearance of the DCO pharmacies and the extent to which they were different from the Chemist Warehouse pharmacies. It was said that it was not necessary to consider the DCO pharmacies as a whole. Each one could have been considered separately to determine whether it was sufficiently similar to the appellants’ store get-up.

125    The appellants submitted that the primary judge ought to have found that the respondents adopted a sufficiently consistent approach in overall impression to the Chemist Warehouse get-up given the findings that the respondents mostly used the same colour palette as Chemist Warehouse and had copied the appellants’ get-up.

126    The appellants also submitted that in distinguishing the DCO pharmacies, the primary judge placed undue weight on the use of the DCO logo and lifestyle photographs. Further, it was said that the primary judge did not give sufficient attention to the important nature of secondary branding in giving rise to a belief in consumers of an association with the primary brand. It was also said that the DCO logo was not sufficiently distinctive. It had the same main features of the Chemist Warehouse logo and would reasonably be understood by many consumers to be a spin-off of the Chemist Warehouse brand. The appellants also said that the respondents’ name was not distinctive and would not dispel consumers’ misconception that a DCO pharmacy was affiliated with Chemist Warehouse. It was said that the name conveyed a discount pharmacy operation such that it may not have been obvious to consumers what name branding was used. Further, the appellants from time to time had used the word “Direct” on their stores. The appellants also said that there was no evidence that lifestyle photographs were a distinguishing feature. In any event, it was said that Chemist Warehouse used such lifestyle images prior to DCO; on this aspect, we would note that this was not part of the appellants’ pleaded get-up. Further, it was said that consumers would be reasonably likely to identify the similarity of get-up of the DCO pharmacies to the Chemist Warehouse pharmacies.

127    The appellants submitted that even if the consumer compared the primary brands and noticed that the Chemist Warehouse name and logo was missing from the DCO pharmacies, they would still reasonably conclude that the store was associated with Chemist Warehouse. It was said that consumers are prone to assume such association where the marketing material is plainly a “take-off”, “spoof” or “send-up” or otherwise connected. Shopping for basic consumer requirements by reference to get-up features should be understood as part of ordinary consumer behaviour. The impression of connection was said to be reinforced by the prominent use by the appellants and respondents in their signage of the words “discount” and “chemist”.

128    Further, it was submitted that the primary judge ought to have found that the evidence of consumer confusion given by Mr Ian Carroll (a sign writer for Chemist Warehouse) and two former employees of the Mount Waverley DCO pharmacy was supportive of the conclusion that the respondents had engaged in misleading conduct. We will address this issue when dealing with ground 16.

129    We reject these grounds of challenge.

130    The primary judge rightly held that the respondents had sufficiently distinguished their chemists from those of Chemist Warehouse so as not to mislead consumers. DCO distinguished itself by its own logo and signage and different get-up. Such features were eye-catching and identified the store as a DCO store. We see no error in his Honour’s analysis that DCO developed its own brand reputation primarily by reference to the sunburst logo (see at [24] to [26] and [278] to [280]). Further, we agree with his Honour’s analysis that the DCO stores and their appearance were sufficiently different (see at [17], [26], [40], [41], [218], [231], [233] to [236], [242] to [244], [278] and [281]).

OTHER MATTERS (GROUNDS 14 TO 19)

131    Ground 14 asserts that the primary judge erred in finding that the appellants did not adduce any specific evidence to establish reputation on a geographical basis and ought to have found that the appellants had a proper basis for relief with regard to particular areas.

132    The appellants submitted that the primary judge had sufficient information as to the reach of consumers for the Chemist Warehouse pharmacies by geography at any point in time by virtue of the evidence of Mr Verrocchi. Such evidence identified where and when each store opened, the sales made by geography for each year, the number of transactions by geography for each year, spending on advertising by television, radio and catalogues by geography for each year and the number of prescription or prescription repeats issued annually. In addition, the storefronts were featured on national television current affairs programs in 2001 and 2004 and national and local television advertisements from 2002, well before May 2006. Mr Verrocchi explained that there were primary, secondary and tertiary catchment areas for any store which extended to a 15 km radius from the store and to which catalogues would be delivered. The majority of the customer base for any suburban Chemist Warehouse pharmacy was at least 15 km, and for country towns could extend to neighbouring towns. It was said that this generally accorded with the evidence of Mr Tauman. The appellants submitted that there was also sufficient evidence as to when and where each of the DCO pharmacies opened so that the Court could consider the reputation of Chemist Warehouse at the opening date and the relevant territory of each DCO pharmacy.

133    We reject this ground. The primary judge correctly set out the difficulty in considering the present case from a geographical perspective (at [18] to [27]). We have set out relevant extracts in an earlier part of our reasons. Moreover, the appellants never sufficiently explained how the Court might properly implement a geographical approach in this case or what probative evidence might be relied upon to overcome the problems identified by his Honour. The nebulous assertions of the appellants that we have summarised in the preceding paragraph do not sufficiently meet the point.

134    Ground 15 asserts that the primary judge ought to have found that the dominant features of the get-up were reinforced by the appellants’ catalogues, website, television advertisements and prescription backings. His Honour considered these other matters (see for example at [16] and [33]). His Honour referred to the lack of uniformity in the various forms of promotion used by the appellants and concluded that the “one constant was the Chemist Warehouse logo” and that “it was this logo which communicated” the relevant brand (at [33]). This ground also lacks substance.

135    Ground 16 asserts that the primary judge ought to have found that the evidence of Mr Carroll, a sign writer engaged by the appellants, (at [197] to [204]) and two former employees of the Mount Waverley DCO store (at [206] to [211]) was supportive of the conclusion that the respondents had engaged in misleading conduct. It is not in dispute that his Honour considered this evidence, as his reasons show. His Honour found that the evidence of Mr Carroll was highly unreliable (at [205]). Moreover, the former employees’ evidence was of little, if any, weight (at [211]). His Honour’s approach does not manifest any error. This ground goes nowhere.

136    Ground 17 asserts that given the finding concerning the marketing web of the respondents, the primary judge erred in considering the interior of the respondents’ stores or their catalogues for the purposes of establishing misleading conduct or passing off in relation to the exterior of the respondents’ stores. This ground seems misconceived. It is clear from his Honour’s reasons that he was concentrating on the exteriors of the DCO stores (see generally at [230] to [244]). It is true that his Honour discussed interiors (see at [245] to [248]), but as his Honour made clear at [248], the exteriors were more important. In his conclusions (at [278] to [281]), it is apparent that his analysis is focused on exteriors. In our view, the appellants have taken his Honour’s statement at [36] out of context. As his Honour was discussing at [34] and [35], he was only looking at interiors and their significance if he had found that the exteriors were sufficiently similar. His Honour was not using the interiors to assess or characterise the exteriors.

137    Ground 18 asserts that the primary judge ought to have found that the comparisons between the parties’ storefronts were illustrative of misleading conduct. We have, in effect, disposed of that general and amorphous submission in what we have said earlier on the other specific grounds.

138    Ground 19 fails as it asserts a conclusion based upon the assumed success of one of the earlier grounds.

conclusion

139    None of the appellants’ grounds of appeal have been made out. Accordingly, the appeal must be dismissed. We also see no good reason why costs should not follow the event. We will order accordingly.

Associate:

Dated: 16 August 2016