FEDERAL COURT OF AUSTRALIA

TRADE MARKS – Application for registration of trade mark in respect of retailing and wholesaling services – Application rejected on basis that the mark was deceptively similar to 14 cited marks, 13 in respect of goods and one in respect of distribution services – Cited marks all consisted of the word “metro” alone or “metro 22” – Subject mark consisted of two words “WOOLWORTHS metro.” with wavy line background – Significance of use of word  “Woolworths” – Subject mark not deceptively similar to any of the cited marks.

Trade Marks Act 1995 – ss 10, 14, 35, 44(2) and 241(3)

WOOLWORTHS LIMITED v THE REGISTRAR OF TRADE MARKS

NG418 of 1998

JUDGE:          WILCOX J

PLACE:          SYDNEY

DATE:            9 OCTOBER 1998

THE COURT ORDERS THAT:

1.                  The appeal be allowed.

2.                  The order of the delegate of the Registrar of Trade Marks, rejecting application number 675941 by Woolworths Limited for registration of a composite mark consisting of the words “WOOLWORTHS metro.”, be set aside.

3.                  In lieu of the said order, it be ordered the said mark proceed to registration.

4.                  The costs of the proceeding be reserved.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

WILCOX J:  This is an appeal by Woolworths Limited, under s 35 of the Trade Marks Act 1995, against a decision of a delegate of the Registrar of Trade Marks rejecting an application relating to a composite mark consisting of the words “WOOLWORTHS metro.” against a background of flag-like wavy lines.  The word “Woolworths” is printed in bold upper case letters above “metro” in larger cursive lower case script, each letter of “metro”, and the full stop, being merely outlined but shaded on one side. 

The application to the Registrar

The application was lodged on 23 October 1995.  The governing statute at that time was the Trade Marks Act 1955.  Woolworths sought registration in Part A of the Register maintained under that Act in respect of “Retailing and Wholesaling services in the nature of supermarkets, department stores, variety stores, boutiques, speciality products stores, liquor outlets and discount stores” (Class 42).  On 1 January 1996, before the application reached examination, the 1995 Act came into force.  As a consequence it was examined under the provisions of that Act.  No complaint is made about that course, as to which see s 241(3) of the new Act.

The examiner who first examined the application cited 22 registered marks and a further eight pending applications, all containing the word “metro”, and considered whether Woolworths’ mark was substantially identical with, or deceptively similar to, any of them.  When the application went to the delegate, Don Nancarrow, he determined only 14 of those citations were relevant.  Twelve of them consisted simply of the word “metro” in upper case letters:  METRO.  A thirteenth citation was for the same mark with the addition of the figure “22”.  The final citation was for the word “metro” in cursive script enclosed in a rectangle.  Thirteen citations related to particular types of goods and involved registrations in classes other than class 42.  The remaining citation, for the word METRO (upper case) alone, was an application for registration in class 42 for “Distribution of goods from all goods classes with the exception of cl 6, 12, 34 and 35”.  Woolworths gave notice of opposition to this application.

The delegates reasoning

Mr Nancarrow noted submissions by Ms Kate Johnston, the solicitor for Woolworths, that her client’s mark was not substantially identical with, or deceptively similar to, the cited marks.  He recorded this submission:

“She argued that the trade mark consisted of two words WOOLWORTHS and METRO, whereas the cited trade marks consisted of one word.  Additionally, WOOLWORTHS was a very well-known registered mark in relation to the services covered by this registration.  METRO, she submitted, was a descriptive word in relation to services supplied through a city store, being an abbreviation for the word ‘metropolitan’.  Ms Johnston also stated that because of the inclusion of the word WOOLWORTHS in the present mark, it was not substantially identical to any of the cited marks.  In considering whether the trade mark is deceptively similar to any of the cited marks, she submitted, the surrounding circumstances incorporating the inclusion of the word WOOLWORTHS in the present mark and the nature of the services provided should be considered.”

Later he said:

“Ms Johnston argued that the applicant is providing specialist retailing services and is not using the mark on goods at all.  She said that if the applicant’s services are held to be closely related to the goods of the cited marks because the goods are sold in the store, then by logical extension, the goods trade marks themselves should not be able to co-exist.  She said that, clearly, as sale of goods ‘side by side’ is only one test for closely related goods and services and has not prevented co-existence of the goods trade marks themselves, it should also be only one of the tests by which this matter is decided.  She submitted, in relation to the citations which involved goods being closely related to the applicant’s services, that the present services bore no direct relationship to the goods, as required in the examples outlined by Lockhart J. in Caterpillar Loader Hire (Holdings) Pty Ltd. v. Caterpillar Tractor Co. (1983) 1 IPR 265 at 276.

Ms. Johnston submitted that the only service trade mark cited against this application, application number 668454, was pending and that the ‘distribution’ services claimed were ambiguous.  She said that it would appear not to be intended to cover retail or wholesale services or this would have been stated in the specification.  She said that, even if the services were of the same description, the submissions in relation to substantially identical and deceptively similar trade marks should be sufficient to enable co-existence.

Ms. Johnston made other submissions which were offers to amend the specification of services to apply only to the metropolitan area and also to disclaim the word METRO, if necessary, to enable the application to proceed to acceptance.”

After setting out these submissions, Mr Nancarrow said the matter for decision “is whether the present application falls foul of section 44 of the Trade Marks Act 1995, specifically subsection 44(2)”, which he quoted.  It reads:

“44(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)               it is substantially identical with, or deceptively similar to:

(i)                 a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)               a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)               the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.”  (Original emphasis)

As the examiner had not relied on substantial identity in rejecting the application, Mr Nancarrow confined himself to considering whether Woolworths’ mark was deceptively similar to any of the cited marks.  He quoted the guidance on the proper approach to determining deceptive similarity given by Dixon and McTiernan JJ in Australian Woollen Mills Limited v FS Walton and Company Limited (1937) 58 CLR 641 at 658:

“In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.”

In relation to “the course of business and the way in which the particular class of goods are sold”, Mr Nancarrow noted what he regarded as the “extremely common” “modern practice of the use of housemarks and individual product marks on some lines of goods, especially by large multi-national companies”.  He went on:

“Use by the applicant of the WOOLWORTHS METRO mark to identify its retail services could very easily be seen as use involving a line of METRO goods in conjunction with their well known WOOLWORTHS trade mark.

Given that some of the goods of all 13 cited trade marks which involve goods could be sold in Woolworths stores, I must conclude that ‘the course of business and the way in which the particular class of goods are sold’ namely, involving the use of housemarks, would indicate that, in this instance, the goods provided under any one of the 13 cited METRO trade marks would be seen, by the ordinary purchaser, to be from the same trade source as the retail services supplied under the WOOLWORTHS METRO trade mark.

Although the service of retailing can be seen to be readily linked to the individual goods items within a store, because the retailer’s trade mark is used in connection with all of the goods in the store, this does not mean to say that the individual goods need to have any direct connection.  The tests for goods v. goods as being similar for the purposes of s.44(1) and the tests for goods v. services being closely related for the purposes of s.44(2) are not always parallel.  The general use made of housemarks in connection with retailing services elevates the comparison of retail services v. goods onto a level that is quite different from the comparison of goods v. goods.  Purchasers might not believe the METRO trade mark found on, say, meat products and on clothing in the same supermarket had the same trade source – unless that source was in connection with the retailing services of all of the goods delivered in the one store.  Thus any consideration of whether the actual trade marks WOOLWORTHS METRO and METRO are deceptively similar is, in essence, dependent upon how the trade marks are used in the market-place.

It is important to note that the 13 cited trade marks with the goods specifications can co-exist for the word METRO, because none fall foul of the standard tests for ‘similar goods’, which would prevent the METRO trade mark being registered in the name of the several different proprietors.

Later he said:

“Although Ms. Johnston argued that the trade marks were not deceptively similar, on the basis that the present mark consisted of two words and the cited marks each of one word, I do not believe this point is persuasive when it is common for traders to use housemarks (which in this instance could be WOOLWORTHS) together with a mark indicating a specific product line (METRO).  Ms. Johnston has argued that WOOLWORTHS is a well-known registered trade mark for the services of the application and, thus, no confusion would occur because the general public would readily recognise who was providing the services.  That the general public would believe that Woolworths Ltd supplied the services, I must agree.  I believe that the real source of difficulty, however, is that the general public would also believe that Woolworths Ltd provided the goods displaying the METRO trade mark for the reasons discussed in the preceding paragraphs.”

Mr Nancarrow then referred to a submission by Ms Johnston that “metro” simply indicates use of the mark in “metropolitan” areas.  Mr Nancarrow thought that, in Australia, the word “metro” does not have a clear single meaning for the general population; it might be taken to refer to an underground rail system.  He also thought the applicant’s offer to disclaim use of the word “metro” standing alone, or limit use of the mark to metropolitan areas, did not assist its claim.  His conclusion was:

“ that all 13 METRO trade marks with goods specifications are deceptively similar to the present WOOLWORTHS METRO mark for retailing and wholesaling services.”

Mr Nancarrow then turned to the question whether the goods of the 13 cited trade marks are “closely related” to the services proposed in respect of Woolworths’ mark.  He said:

“In the present circumstances, the wholesale and retail services are offered in relation to the goods, or by means of the goods.  If goods were not available to be sold, the services of wholesaling and retailing could not exist alone.  I do not consider the connection between the goods and the services to be remote by any means.  Nor can I see that the nature of the particular services is such that this would make it unlikely that the consumer would fail to make such a connection, …

Following consideration of the goods of the cited registrations, … I note that each registration contains goods which are available through retail and wholesale stores.  In particular, they are sold through supermarkets, department stores, variety stores, boutiques, speciality products stores, liquor outlets and discount stores.  The retail and wholesale services could therefore be ‘performed on, or performed in relation to or performed by means of’ the cited goods.  Consequently, I hold that retail and wholesale services are closely related to the goods of the cited marks.  Thus, I find on the basis of the 13 goods citations that this application must be rejected in terms of s. 44(2).”

Mr Nancarrow considered the fourteenth cited mark, the opposed application relating to distribution of goods.  He thought the word “distribution” was wide enough to cover wholesaling services, something that fell within Woolworths’ description of its proposed use.  Accordingly, he found Woolworths’ mark deceptively similar to that mark and this furnished a further reason for rejecting the application for registration.

Mr Nancarrow concluded his reasons by saying:

“From the foregoing, as I have found that the present application falls foul of s. 44(2) in respect of 13 registered trade marks and one accepted trade mark, I refuse this application for registration.”

Counsel’s submissions

In his Outline of Submissions, counsel for Woolworths, Mr Stephen Burley, drew attention to some other statutory provisions.  Section 10 of the Trade Marks Act 1995 explains the term “deceptively similar”.  It says:

“10.     For the purposes of this 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.”

Section 14 reads:

“14.(1)  For the purposes of this Act, goods are similar to other goods:

(a)               if they are the same as the other goods; or

(b)               if they are of the same description as that of the other goods.

(2)       For the purposes of this Act, services are similar to other services:

(a)               if they are the same as the other services; or

(b)               if they are of the same description as that of the other services.”

Mr Burley then stated the issue in the appeal:

“assuming use by the owners of the cited marks in a normal and fair manner on any of the goods or services covered by the registration of their marks, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration also uses its mark WOOLWORTHS METRO. normally and fairly in respect of services covered by its proposed registration.”

Mr Burley noted his client bore the onus of demonstrating there is no reasonable probability of confusion.  He accepted the test stated in Australian Woollen Mills that was quoted by Mr Nancarrow but submitted it led to the conclusion that the subject mark is not deceptively similar to any of the cited marks.  Mr Burley said:

“The evidence of use provided by the applicant demonstrates the application of the mark to the provision of retailing services.  In all but one example the mark is used with the flag background.  In all of the examples the word METRO. is used in conjunction with the word WOOLWORTHS.

The only manner in which the cited marks could be considered to be deceptively similar to the applicant’s mark is by discounting the first word and ignoring the flag background thereby leaving the word METRO. alone.  The delegate to the respondent did so.”

In supporting that claim, Mr Burley cited a passage in Mr Nancarrow’s reasons that I have already quoted; in particular, the sentence;  “Use by the applicant of WOOLWORTHS METRO to identify its retail services could very easily be seen as use involving a line of METRO goods in conjunction with their well known WOOLWORTHS trade mark”.  Mr Burley went on:

“21.     In taking this approach the delegate failed to have regard to the features of the mark itself.  In Australian Woollen Millsthe question of use of the mark in the course of business is part of an overall test for determining deceptive similarity.  The focus is a comparison of the marks.  This could take into account, for instance, the imperfect recollection of the mark by a purchaser, or a likely method of pronunciation of the words.  There is no foundation in law for assuming that an ordinary purchaser would deliberately ignore features of the mark, or would make mistaken factual assumptions as to the relationship between one dissimilar mark and another such as is supposed in the delegate’s reasoning.

22.            It is submitted that when considering whether one mark is deceptively similar to another the court should always begin with a comparison of the marks themselves in the circumstances of their use.  Prominent features of the mark should not be ignored unless there is a clear reason for doing so which is supported by evidence or recognised principles of trade mark law.

23.            The visual impact of the WOOLWORTHS METRO. mark is clearly different to a mark consisting of METRO. alone.  In shopping venues such as supermarkets the visual, as opposed to aural, significance of a mark is heightened when purchasers shop by selecting goods which are on display.  There is no reason to suppose that a shopper would cease to notice prominent features of a mark by reason of the existence of house marks.

24.            Further, there is no basis for the court to suppose that in its aural rendition customers would contract WOOLWORTHS METRO. to the word METRO; nor did the respondent’s delegate appear to think that such an approach was likely.  The evidence supplied by the applicant indicates that in all visual renditions of the mark both of the words are used.

25.            Finally, it is submitted that usually when one analyses the impact of a word mark, prominence is given to the first elements of the mark.  Such was the case when the court analysed the words CASTROL against TRIPCASTROID10 and COCA-COLA against PEPSI-COLA.11

26.            It is submitted that only in specific circumstances would it be appropriate to ignore a prominent element of a trade mark, for instance where in two marks there is a common feature:

                        one must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common – although it does not flow from that … that you must treat the words as though the common part was not there at all.12

27.       It might be appropriate to ignore the word Woolworths if that were a common word in the industry and the cited marks all included it.  In the current circumstances WOOLWORTHS clearly has trade mark significance and ought not to be excluded from the analysis.”

Footnotes 10, 11 and 12 referred, respectively, to In the Matter of London Lubricants’ (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, The Coca-Cola Company of Canada Limited v Pepsi-Cola Company of Canada Limited (1942) 59 RPC 127 at 134 and Broadhead’s Application (1950) 67 RPC 209 at 215.

Turning to the question whether Woolworths’ services are “closely related” to goods sold by it, Mr Burley noted a comment of Lockhart J in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 1 IPR 265 at 276:

“Although service marks are in their infancy in Australia they may give rise to problems of confusion between service marks themselves, and between goods marks on the one hand and service marks on the other, of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone.  It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related.  Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other, because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programmes) on the other.”

Mr Burley commented that, in each of the examples given by Lockhart J:

“32.     … the nature of the services provided was closely connected to the goods and the purchaser of the goods would be likely to perceive that the service provider would perform services on the goods themselves.  In each example the expectation of the purchaser was a significant factor.

33.              The WOOLWORTHS METRO. application is for the registration of a mark for retailing and wholesaling services in the nature of such services as are provided at department stores and supermarket stores.  The applicant is a well known supplier of such services.  The ordinary purchaser of goods from a Woolworths Store would recognise that he or she is able to purchase a broad range of goods from a wide range of sources from Woolworths by utilising the retailing services provided.  That is the attraction of a supermarket or department store.”

Mr Burley accepted there is a similarity of services between those proposed by Woolworths and the proprietor of the fourteenth cited mark.  He submitted the fourteenth mark ought not be admitted to the register but conceded the Court could not decide that issue in this appeal; if the subject mark is deceptively similar to the fourteenth mark, this application would have to be returned to the Registrar for reconsideration after determination of the opposed application for registration of the fourteenth mark.

In her Outline of Submissions, counsel for the Registrar, Ms Julia Baird, supported the delegate’s decision.  She emphasised that, for purposes of s 44 of the Act, the relevant comparison was between the statutory rights of use, not actual use.  She also contended the test under s 44 provides a lower threshold than s 52 of the Trade Practices Act 1974 and quoted an observation of Fisher J in McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 49 FLR 455 at 476:  “To be confused is an inherently different state of mind from that of being deceived or misled …”  Ms Baird mentioned the comment of Kitto J in Southern Cross Refrigeration Company v Toowoomba Foundry Proprietary Limited (1954) 91 CLR 592 at 595 about it being sufficient that there is real confusion, even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. Ms Baird argued the ideas conveyed by the marks are relevant; the comparison is to be made on the basis that customers may have only an imperfect  recollection of a mark and therefore confuse it with another.

Turning to the facts of this case, Ms Baird submitted:

“17.     The word element of each of the ‘blocking’ marks, the whole of 13 of the marks and a principal component of the remaining citation, is wholly contained in the Mark.  The sole, distinctive feature of each of the ‘blocking’ marks is given prominence in the Mark.  The word ‘metro’ retains a strong identity in the Mark as a separate, distinctive, word.

18.            Whilst different graphic elements may save a composite mark from being deceptively similar to another mark with same word component but distinctly different device components, where, as in the Mark, the device elements are trivial, and on an imperfect recollection less likely to be recalled, such elements will not distinguish a mark such as the Mark from a mark comprising solely the word ‘metro’.  As observed by Gummow J in Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 441, common experience would affirm that fine details such as different type faces (and, the Respondent submits, simple detail such as background lines) are likely to be overlooked by those to whom the Mark will be addressed in trade.”

Ms Baird went on to argue the word “metro” is the more dominant visual element in the subject mark; it “appears in a smaller superscript, consistent with the appearance of a house or group mark, with the word ‘metro’ carrying the message of the store name or a particular retail or wholesale service to customers”.  She submitted the “attractive” force of the mark is the word “metro” and that word conveys its overall impact.  Ms Baird supported Mr Nancarrow’s view that, in Australia, “metro” does not have a clear, single descriptive meaning.

In relation to use of the mark, Ms Baird said:

“The breadth of the services for which registration of the Mark is sought must be borne in mind.  Daily experience teaches that consumers are aware of, and accustomed to, traders using a number of trade marks in proximity to one another; of ‘house’ or ‘group’ marks co-existing on or in relation to services or goods with individual product or service marks.  Consumers are aware of the practice of offering ‘own’ brand goods in retail outlets and in supermarkets and department stores in particular. … The Respondent submits that in the context of retail services consumers will readily infer a connection between retail services offered under a mark comprising a group mark (ie. ‘Woolworths’) and a store mark (ie. ‘metro’), and goods offered for sale in the dual branded retail outlets under one only of the components of the mark (ie. ‘metro’).

There is a reasonable likelihood that a substantial number of consumers in a supermarket or other store operated by the Applicant with depictions of the Mark on signage above its entrance and inside the store, seeing goods on the shelves of that supermarket labelled ‘metro’, would reasonably make the assumption that those goods were the Applicant’s.”

In dealing with the term “closely related goods”, Ms Baird said:

“The expression ‘goods of the same description’ implies a relationship between goods such that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks.  A similar relationship is implied between goods and services by the words ‘closely related’ …

Goods may be closely related to services where the relationship between them is close, not merely a tenuous or remote connection.  Where services are performed upon or in relation to certain goods, this is a factor which makes deception or confusion between marks used in respect of those services and goods more likely.

Retail and wholesale services are the services of procuring for sale, arranging or displaying for sale, and selling, goods.  The trade channels through which goods in respect of which each of the 13 ‘blocking’ goods marks are registered pass to reach their consumers are trade channels which, by modern business practice, must include wholesale and retail channels.  A consumer will attend retail premises to purchase goods within the specifications of each of the 13 ‘blocking’ goods marks.  A wholesaler will sell goods within each of the ‘blocking’ marks’ registrations to retailers and the trade.  These are close relationships between the goods of the cited marks and the services of the Application.  This is not a tenuous or remote connection.

Foods such as meat and poultry are most particularly to be found in supermarkets and the food halls of department stores, clothing, light fittings, bicycles, games, toys and playthings, combs and hairbrushes and chairs are good to be found in department stores and variety stores and, to a lesser extent, supermarkets and class 34 goods are to be found in supermarkets and liquor outlets.  Depending on the particular ‘speciality products stores’ in relation to which the Applicant chooses to use the Mark, the goods of one or more of the ‘blocking’ marks may be the principal products sold in those stores. …

Goods within each of the 13 ‘blocking’ goods mark registrations are goods that when offered for sale are likely to be marked with a trade mark of their manufacturer or supplier.  In the case of 12 of the ‘blocking’ goods marks, that trade mark is ‘Metro’, simpliciter.  They are goods to be placed in a shopping trolley as part of a regular household shopping expedition.  They are not likely to be expensive goods in respect of which an extensive time is spent in their selection and purchase.  The circumstances of their purchase are thus circumstances in which the mark will be viewed briefly, with little deliberation.

Further, the evidence is that the Applicant does offer for sale on the shelves of its stores operated under the Mark goods made or packaged for it, and that those goods may be offered under an ‘own brand’ label.  It is extremely likely that when sold in a store with store signage depicting the Mark purchasers, already conditioned to the fact of own brand goods offered for sale by the Applicant, will confuse ‘metro’ labelled goods as another own brand good offered by the Applicant. … It may be that as is the case with other house or ‘own brand’ goods currently offered by the Applicant, purchasers do not expect to see the name ‘Woolworths’ on the goods’ labels, the word ‘metro’ alone will provide the connection.

Whilst the probable confusion may be that purchasers are confused that goods labelled ‘metro’ within the scope of any one of the 13 ‘blocking goods marks on the shelves of the Applicant’s stores are products offered by ‘Woolworths’, this remains confusion within s44.

Looking at the marks themselves and ignoring matters extraneous to the marks, the connection between the 13 ‘blocking’ goods marks and the Mark is extremely strong and is likely to suggest to a substantial number of persons that goods offered for sale under any of the ‘blocking’ goods marks are the goods of the Applicant, offered for sale by the Applicant in the provision of services for which it seeks to register the Mark.”

Ms Baird then dealt with the fourteenth cited mark, for distribution services.

Conclusions

I have quoted extensively from counsel’s submissions because they well present the competing points of view.  I think Mr Burley’s argument is to be preferred. 

The questions whether one mark is deceptively similar to another and whether the first mark is used in respect of services closely related to particular goods (or similar to other particular services) are conceptually distinct.  However, the first question cannot be addressed in isolation from the second.  The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.  The examples offered by Lockhart J in Caterpillar Loader Hire make the point.  There are extremely close associations between the sale of data processing equipment and the provision of programs for its operation, the sale and sewing of curtains and the sale and tailoring of clothes.  Because the relevant service is so specialised, and focused on the particular goods, it would be natural for any member of the public to treat a similarity of name as being an indication of a link between the origin of the goods and that of the service.  At the other extreme, the use of even the same name, by traders in different industries, would not usually cause members of the public to assume a link between the traders.

The present case does not lie at either of these extremes.  There is a connection between the services in respect of which Woolworths seeks registration of its mark and goods that may be sold under one or other of the first 13 cited marks; most of those goods are of a type that might be stocked in a wholesale or retail store.  On the other hand, the connection is not of the same order of closeness as in Lockhart J’s examples.  Woolworths’ services are not specific to particular goods but involve the conduct of stores stocking hundreds, perhaps thousands, of different lines produced by numerous manufacturers.  I do not think the mere fact that an item branded with the word “metro” is displayed in a Woolworths Metro store would cause a shopper to believe in a common origin.  For that to occur, there would need to be some similarity in styling or get up.  Shoppers of ordinary experience are aware it is common marketing practice to facilitate brand recognition by using a standard styling or get up; this is a fundamental technique.  The greater the differences in traders’ presentation of a particular word, the less likely that viewers will assume a common origin; to the point, perhaps, of treating a significant difference in presentation as a counter-indication of common origin.  That is why, in this case, it is not enough to note the word “metro”.  One must come back to the critical question posed by s 44(2) of the Act:  whether Woolworths’ mark, considered as a whole, is deceptively similar to a mark consisting merely of the word “metro” (or “metro 22”) printed in block letters or cursive writing in a rectangular box.  Woolworths’ mark is similar, to the extent it includes the word “metro”.  But it also includes the word “Woolworths” and a pattern of wavy lines.  I place little weight on the latter feature; it is something a purchaser might fail to notice or recall.  However, it is impossible to brush aside the word “Woolworths”. The word appears in smaller script than “metro”, but it is printed in solid bold capitals.  It constitutes a strong visual element of the mark, to my eye an element at least as strong as the word “metro”.  Moreover, it is a word inherently likely to be noted and remembered.  The word is familiar to all Australians, as the name of an Australia-wide chain of stores that has existed for generations.  Although I take Ms Baird’s point about imperfect recollection, I cannot accept that viewers of the mark would overlook or forget that it refers to “Woolworths metro”, not merely “metro”.  The word that is unique to this mark, as against each of the cited marks, constitutes a major feature of it.  Applying the Australian Woollen Mills test, the impression or recollection of the subject mark a viewer would carry away and retain is quite different from that which he or she would retain in respect of any of the cited marks.  To put the matter in terms of s 10 of the current Act, Woolworths’ mark does not so nearly resemble any of the cited marks as to be likely to deceive or cause confusion.

Similar comments may be made about the fourteenth cited mark, for distribution services.  There is likely to be some similarity between the services in respect of which registration of that mark is sought and the services offered by Woolworths.  As the name would not be displayed on goods, the aural impression may here be more important than the manner of visual presentation.  But it is only possible to say the oral use of the term “Woolworths metro” is deceptively similar to “metro” if one ignores or discounts the word “Woolworths”.  In comparing the marks, it is not legitimate to ignore a major element in one of them; and, for the reasons I have given, I do not think that word should be discounted.  On the contrary, having regard to its aural prominence and familiarity to Australians, it is the element of the mark most likely to be noticed and remembered.

I think Mr Nancarrow gave undue weight to the fact that the subject mark contained a word that constituted the whole, or virtually the whole, of each of the cited marks.  He thought that, if there was a substantial connection between the services proposed by Woolworths and the goods or services offered or proposed in respect of the cited marks, this would necessarily cause confusion.  However, with respect to him, that approach is too narrow.  It is necessary to look beyond the coincidence of the word “metro” and consider the marks themselves, the dissimilarities as well as the similarity.  When this is done, it seems to me impossible to conclude that Woolworths’ mark is deceptively similar to any of the cited marks.

Orders

I propose to allow the appeal and set aside Mr Nancarrow’s order rejecting the application for registration of the applicant’s mark.  In lieu thereof, I will order the mark proceed to registration.  As requested by the parties, I reserve the matter of costs.

Associate:

Dated:              9 October 1998