FEDERAL COURT OF AUSTRALIA
QUD 1163 of 2015
Date of judgment:
INTELLECTUAL PROPERTY – consideration of the question of whether the conduct of the respondent engages acts of infringement of the registered trade marks of the applicant for the purposes of s 120 of the Trade Marks Act 1995 (Cth) (the “Act”) on the footing that the respondent is said to have used as a trade mark a sign that is substantially identical with the registered trade marks in relation to goods for which the trade marks are registered
INTELLECTUAL PROPERTY – consideration of whether the conduct of the respondent engages infringement of the applicant’s trade marks on the footing that the respondent is said to have used as a trade mark a sign that is deceptively similar to the registered trade marks in relation to goods for which the trade marks are registered
INTELLECTUAL PROPERTY – consideration of the test to be applied in determining whether the conduct of the respondent engages use as a trade mark of a sign deceptively similar to the trade marks of the applicant in relation to goods for which the marks are registered having regard to s 10 of the Act – consideration of the principles to be applied
Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353
CA Henschke & Co. v Rosemount Estates Pty Ltd (2000) 52 IPR 42
Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45
Crazy Ron’s v Mobileworld (2004) 61 IPR 212
Jafferjee v Scarlett (1937) 57 CLR 115
Jones v Dunkel (1959) 101 CLR 298
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd  FCAFC 174
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365
Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529
The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
26, 27, 28 July 2016
Date of last submissions:
28 July 2016
National Practice Area:
Number of paragraphs:
Solicitor for the Applicant:
Bennett & Philp Lawyers
Counsel for the Respondent:
Mr E J C Heerey QC and Mr B Gardiner
Solicitor for the Respondent:
DATE OF ORDER:
THE COURT ORDERS THAT:
2. The costs of and incidental to the proceedings up to and including the making of orders as contemplated by Order 1 are reserved.
3. The parties file and serve within 14 days short submissions in relation to the question of the costs of and incidental to the proceedings to date.
4. The matter be listed for review at a date to be nominated by the Court in order to determine the procedural steps to be taken in relation to the determination of the separate question of damages or an account of profits.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
1 These proceedings are concerned with the question of whether the respondent, Australian Meat Group Pty Ltd (“AMG”), has infringed and, if so and not restrained by injunction, whether AMG will continue to infringe two trade marks of the applicant, JBS Australia Pty Limited (“JBS”), by using, in the course of trade in goods for which each trade mark is registered, a trade mark said to be substantially identical with or deceptively similar to each of the JBS trade marks in suit.
2 JBS is the owner of the trade mark depicted below (TM 515268), registered under the provisions of the Trade Marks Act 1995 (Cth) (the “TM Act”) having a priority date of 20 July 1989 (the “device mark”).
3 According to the “Details” of the registration, the “image” consists of a “stylised” map of Australia “on ribbon”. The device mark is registered in Class 29 for the following goods: “meat and meat products including boneless meat, chilled bone-in meat, frozen boneless meat, frozen bone-in meat”.
4 JBS is also the owner of registered trade mark (TM 1719465) for the mark “AMH” (the “AMH mark”) having a priority date of 4 September 2015. It too is registered under the TM Act in Class 29 although the range of goods is more expansive than the description of goods for which the device mark is registered. Nevertheless, the goods include, among other things, “meat; prepared meat; meat products; meat jellies; meat extracts; and offal”.
5 Notwithstanding the different description of goods in each registration, the applicant has used each trade mark (so far as the evidence in these proceedings is concerned) almost exclusively, and extensively, in connection with its trade, over time, in processed meat and meat products (rather than, for example, “fish, poultry, game”).
6 There is a reasonably long history of use, by the applicant, of the device mark and the AMH mark at various functional levels in the sequence of transactions characterised by the acquisition of live animals, the slaughter (called kill and boning) of those animals, the processing and packaging of meat into primal cuts and the supply of primal cuts (and other meat products) to intermediaries (often wholesalers), retailers and consumers. I will describe this as the “supply chain”. Set out below are two images which show the way in which the AMH device mark is applied to packaging containing meat products generally described as “whole primal cuts”. The images are to be found at “NLM-4” to the affidavit of Nicole Louise Murdoch, Vol 1, Tab 14 at p 34, and “GJB-1” to the affidavit of Grant John Braddock, Vol 1, Tab 12 at p 15.
See also the images depicted at , , ,  (as to boxes) and  of these reasons.
7 There is also a significant reputation subsisting in each trade mark, in JBS, in the eyes of members of those cohorts operating at some (perhaps all) functional levels of the supply chain in meat processing such as wholesalers, competitors of JBS, other intermediaries, retailers and others. The question of whether that reputation subsists at the functional level of the supply chain where a consumer engages with retail sellers of meat (butcher shops, supermarkets) is a matter contested by the respondent.
8 Otherwise, the respondent says that the reputation, developed over time, in the two trade marks, having regard to the volume and value of trade in meat products by JBS, in connection with its use of the two trade marks, is sufficiently pronounced or prominent, as a badge of origin, that this case falls, analogically, into the same class of case as the Maltesers authority (Mars Australia Pty Ltd v Sweet Rewards Pty Ltd  FCAFC 174; (2009) 84 IPR 12) with the result that JBS is, in effect, a “victim of its own success”: T, p 50, lns 41-46. The respondent’s essential point in making that analogical comparison is to say that it follows that no person of “ordinary intelligence and memory” engaging with the impugned marks of AMG could be “caused to wonder” whether the products endorsed with the AMG trade marks come from JBS. Thus, AMG says that there is no “real, tangible danger” of confusion occurring: Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 595 per Kitto J. Put simply, AMG says that in determining the question of contended deceptive similarity, a judgment as to the likelihood of deception or confusion is “a very practical one” and the probability of deception or confusion must be “finite and non-trivial”: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, French J at  and . As to the reputation subsisting in the AMH trade marks, AMG “[does not] dispute that there is a strong reputation amongst the wholesalers, and in the export markets, and for supermarkets, and for independent butchers for the AMH brand”: T, p 333, lns 18-20. See also T, p 334, lns 17-18; lns 40-46; T, p 336, lns 1-45. The respondent says it relies upon that reputation “because [it] weighs against the chances of an imperfect recollection … in the sense that the better known the mark is, the less logical reason there is to attribute some imperfect memory of that mark”: T, p 333, lns 22-26.
9 On the other hand, however, the respondent also says that the applicant’s former name until October 2007 was Australia Meat Holdings Pty Limited and from 2008 when that name ceased to be used, the applicant ceased to promote and emphasise the name or “AMH” or the AMH device mark in connection with the applicant’s trade in meat products with the result that its reputation in AMH and the device mark diminished over time in favour of other brands or names such as “Swift” or “JBS” itself, thus suggesting that a retail consumer engaging with the impugned marks could not be caused to wonder in the sense relevant to the tests for confusion.
10 The applicant says that, in substance, these two contentions are inherently inconsistent and that AMG is engaging in approbation and reprobation and the respondent “cannot have it both ways”. Either the AMH trade marks enjoy a reputation at the relevant functional level of the market so as to be relevant to the tests of whether conduct engages s 120(1) and s 120(2) of the TM Act, or they do not.
11 More fundamentally, the respondent also says that parties engaging with the respondent and its trade marks in both the domestic and export markets are in no doubt at all about who they are dealing with when engaging with the respondent’s impugned trade marks.
12 It should be noted that no industry participant opposed the registration of either of the two AMH trade marks in suit and in these proceedings no cross-claim is made by the respondent for expungement of the marks. Validity is not in issue in these proceedings.
13 It is convenient to now identify the impugned marks of AMG. On 8 April 2014, AMG lodged an application under the TM Act to register the device trade mark depicted below (Application No. 1616230) in Classes 29, 35, 39 and 40 (the “AMG device mark”).
14 JBS has opposed the registration of the AMG device mark on grounds engaging ss 43, 43, 44, 58, 60 and 62A of the TM Act. The opposition proceedings are presently stayed by operation of orders of this Court made on 11 February 2016.
15 AMG has also applied for two other trade marks both of which incorporate the device mark. On 3 March 2016, AMG lodged Application No. 1756459 (the “AMG Premium Angus Beef mark”) and Application No. 1756462 (the “AMG Southern Ranges Platinum mark”) depicted below.
16 These marks at  are better illustrated later in these reasons in the depiction of the lids on AMG boxes being Exhibits 23 and 22 respectively: see  and .
17 Apart from the service mark categories, each of the above two trade marks are sought to be registered in connection with Class 29 goods described in this way: “Meat products, food products, meat, beef; beef products; lamb; lamb products; sausages; offal; meat extracts; prepared meals consisting wholly or substantially wholly of meat”.
18 AMG uses the device mark and the two marks depicted at  of these reasons in the course of its trade in meat products. It also uses “AMG” in the course of marketing its products. The mark “AMG” is an acronym for the words “Australian Meat Group”. AMG also uses a version of the device mark in the course of marketing its meat products. That version, as depicted below, consists of the stylised outline of a map of Australia with AMG within the map (as depicted at  of these reasons), in green, with a green backing or field bearing the words “Australian Meat Group”. The southern part of the map overlays the green field.
19 The image at  of these reasons forms part of Annexure “DBJ-1” to the affidavit of Ms Danielle Belinda Jepson (Vol 1, Tab 13). Ms Jepson says that on 25 October 2015 she visited the IGA Store at East Brisbane and looked at the meat section within the store. She saw a display of bulk beef contained within AMG branded bags, for sale. She took the photograph at “DBJ-1” and purchased some of the meat.
20 It should also be noted that on 1 December 2014, AMG commenced publication of its website at amg.com.org.
21 As to the history of the applicant, JBS was incorporated on 27 July 1990 as Parley Investments Pty Ltd (“Parley”). Parley changed its name to Australia Meat Holdings Pty Limited on 29 May 1991 (“AMHPL”). On 17 July 2007, the shares in AMHPL were acquired by an entity which resulted in AMHPL becoming part of what is sufficiently described as the “JBS Group”. On 15 October 2007, AMHPL changed its name to Swift Australia Pty Ltd (“Swift”). On 18 January 2011, the corporation changed its name to JBS Australia Pty Limited, no doubt, to better reflect its relationship with the JBS Group (the ultimate holding company of which is JBS SA).
The evidence of the applicant
22 As to JBS and its operations, Mr Hugh Brent Eastwood is the Chief Executive Officer (CEO and a Director) of JBS. Mr Eastwood has been the CEO of JBS since 2012. Mr Eastwood has been working in the “meat industry” in Australia since 1989 and first began working in the industry in 1983 in New Zealand. Since 1991, he has been working for companies now owned by the JBS Group. In 1991, he began working for the D.R. Johnston Group which, in the 1990s, became part of the JBS Group. Since 1991, Mr Eastwood has discharged senior roles within the JBS Group. In the period 2000 to 2007, he was the General Manager of the “AMH Trading Divisions” (which then included D.R. Johnston) when JBS was operating as AMHPL. From 1998 to 2000, he was the CEO of the ConAgra Trade Group. He was President of Global Trading for the JBS Group in the United States with Swift Beef Company and JBS Carriers Inc. (from 2007 to 2009), and Head of Sales for the US Beef Division from 2009 to 2011. He was CEO for JBS Northern from January 2012 to September 2012 and from then, CEO of JBS. He is responsible for all of the JBS operations in Australia and New Zealand.
23 Mr Eastwood says that during his period with JBS Group and his time in the meat industry, he has continuously engaged with suppliers, customers of JBS including distributors of its products, and consumers of meat products. He says that although JBS does not deal directly with retail consumers, JBS personnel are required to have a very good understanding of how the industry operates at all functional levels including retail sales. He says that he regularly visits, as part of his role, clients, butcher shops and other meat retail outlets. He says he has observed over many years transactional practices within the meat industry at the wholesale and retail level. Mr Eastwood says that Australia Meat Holdings Pty Limited was known by the acronym “AMH” for at least 16 years (during the period May 1991 to at least July 2007) by people within the company and by industry outsiders. He says that during the period May 1991 to July 2007 it was unusual to hear or see the use of the full company name other than in a formal setting. He also says this (para 12, Eastwood affidavit, Vol 1, Tab 11):
It is also commonplace to hear reference to AMH today, even though JBS has been through two name changes since being known as Australia Meat Holdings. I have no doubt that even today a reference to AMH in the industry would be understood as a reference to JBS. JBS is the legal name of the company but our brands are a connection to our consumers.
24 As to its operations, Mr Eastwood says this (at paras 15 and 17 of Vol 1, Tab 11):
15 Today, JBS is the largest meat processing company in Australia, it wholesales meat products for sale in Australia and exports Australian meat to over 80 countries worldwide. It has a number of business divisions including Northern, Southern, Swift & Company Trade Group and D R Johnston Group. Other companies within the JBS Group operate 30 retail butcher stores in New South Wales and Queensland and own the Hans and Primo brands of smallgoods and other businesses.
17 In the [meat] industry, livestock are processed by abattoirs and are referred to as a kill. I estimate JBS’ current share of the four Australian state eastern states beef kill (excluding service kill, where JBS does not purchase the livestock) would be approximately 20%.
25 Mr Eastwood says that the “AMH Brand” which he describes as the “AMH name” and the device mark (which incorporates AMH) is the “longest standing brand” of JBS and “always was and still is the dominant brand” used by JBS on its meat products: para 18, Vol 1, Tab 11. Mr Eastwood says that JBS has developed other brands for its meat products because over the last two decades brands have become “critically important”: para 20, Vol 1, Tab 11. Nevertheless, he says that the “largest quantity” of beef produced by JBS is produced under the “AMH Brand”. He says JBS continues to market beef which carries the AMH Brand within Australia and overseas and “[m]ore beef is packed under the AMH Brand than any other JBS brand alone” (para 21, Vol 1, Tab 11).
26 As to the use of the AMH Brand (as he describes it) Mr Eastwood says this at para 22, Vol 1, Tab 11:
The AMH Brand is printed on packaging in which the beef is placed at abattoirs. It is also printed on cartons which are used to transport the beef. It also appears in other marketing. This beef is also usually referred to in business documents as “AMH”, for example AMH was used on product lists. I am certain that people within the industry including suppliers, distributors and retailer consumers would be aware of the AMH Brand because the brand is on the packaging that contains the beef including on the cartons the meat is transported within and is used in other advertising within the industry.
Mr De Luca
27 Mr Bradley John De Luca is the “Marketing Executive” employed by the applicant. He has held that position since September 2013. He has worked in the meat production industry since 2010. In 2010, he was retained as the Marketing and Communications Advisor for the Australian Agricultural Company (“AA Co”) which is a competitor of JBS in the sale of processed branded meat products. AA Co is also a potential supplier of livestock to JBS. AA Co operates feedlots and farms comprising around seven million hectares of land in Queensland and the Northern Territory. It produces branded beef products such as “1824 Premium Beef”, “Darling Downs Wagyu” and “Master Kobe”.
28 As to JBS and its brands, Mr De Luca says the following things and in doing so he uses the expression “AMH brand” by which he says he means a composite phrase capturing the name AMH, the “AMH plain word” and the “AMH trade mark”. Mr De Luca, in referring to the “AMH trade mark” is referring to the device mark depicted at Annexure “BJDL-1” which is a photograph of primal cuts in a plastic bag (cryovaced) bearing the trade mark in the terms depicted at  of these reasons.
29 An example of the plastic packaging used as described by Mr De Luca is Exhibit 17 and two photographs of Exhibit 17 are set out below.
30 Mr De Luca says that the AMH trade mark is considered by JBS to be “one of the most recognisable and respected beef brands both in Australia and internationally”: para 12, Vol 2, Tab 16. JBS has a daily beef processing capacity of approximately 9,550 head of cattle at the processing plants at Beef City (west of Toowoomba), Dinmore, Rockhampton, Townsville, Riverina, Brooklyn, Devonport, Longford and Scone. He says that due to the cuts of meat produced from beef cattle and the particular specifications for beef marketed under the various beef brands used by JBS, approximately 20% of the carcass slaughtered at the Riverina, Dinmore, Rockhampton, Townsville and Beef City facilities is packed into a carton which has a lid, on which the AMH trade mark (device mark) is printed. He says that 20% is the minimum percentage of meat product sold under the AMH trade mark as other cuts of meat from beef (and offal), are also packed into cartons with lids bearing the AMH trade mark.
31 All boneless beef cuts produced at Townsville, Rockhampton and Dinmore are also packed into bags which have the AMH trade mark printed on them (the “AMH Bags”). He says that JBS packs five brands of beef into AMH Bags. The five brands under which JBS sells meat product so bagged are “AMH”, “AMH White”, “Friboi”, “Swift Premium” and “Royal”. He says that the Friboi, Swift Premium and Royal brands are all co-branded with the AMH trade mark and are packed into cartons with lids printed with the Friboi, Swift Premium and Royal brands. The beef within the cartons, in each case, is sealed in AMH Bags. In addition, where appropriate, inserts are placed inside the bag to indicate the co-branding.
32 Mr De Luca says that the “AMH brand” is used in the supply chain of beef including the packaging of beef products under the AMH brand and the advertising and sale of beef products using the AMH brand. He says that, in his experience, it is “not uncommon for livestock suppliers, customers and the general public” (ie: non-meat industry people) to refer to the JBS plants, earlier mentioned, as being “an AMH plant”: para 15, Vol 2, Tab 16. He says that the AMH brand is only used on beef products. He says that JBS has various beef brands with particular specifications which apply to the particular beef product. Mr De Luca identifies eight domestic beef brands (excluding the AMH brand) and the corresponding specifications applicable to product sold under each of those brands (for example, “Swift Premium”, “Friboi”, “King Island Beef” and “Riverina Beef”, among others): para 20, Vol 2, Tab 16.
33 Notwithstanding these differential brands and specifications, Mr De Luca says that all beef produced by JBS is eligible to be packed under the AMH brand but only grain fed beef can be packaged under the brand known as “AMH White”. He also says this at para 21, Vol 2, Tab 16:
… The majority of beef produced by JBS is not eligible to be packed under some of the other brands (because it does not meet that brand specification) and so the AMH brand is the most heavily used brand by JBS on beef products.
34 Mr De Luca addresses aspects of packaging and sales more fully at paras 26 to 30 of his affidavit (Vol 2, Tab 16). He says that meat produced by JBS is packaged into individual bags, placed in cardboard cartons and palletised. The cardboard cartons have a lid which is printed with a brand owned by JBS and the lid is sealed to the carton. The lid used corresponds to the brand of meat sold. The lid is printed with the trade mark for that brand which ordinarily corresponds to the brand printed on the bags within the cartons. Sometimes, the bag is not printed with a trade mark. Sometimes, the bag is printed with a different trade mark to the trade mark on the lid. The beef within cartons which have an AMH lid is either sealed in an AMH bag; or contained in a bag that is not sealed; or placed on a plastic liner that is not printed with a trade mark; or sealed in a bag that is not an AMH bag, although this is a rare occurrence.
35 However, Mr De Luca says that since 2009 the beef within cartons from the JBS owned Dinmore, Townsville and Rockhampton plants which have Swift Premium, Royal or Friboi printed lids, is sealed in an AMH bag. He says that these bags are then placed in cartons with lids which display the Swift Premium, Royal or Friboi brands. At Annexure “BJDL-3”, Mr De Luca annexes a copy of photographs of AMH lids used by JBS since 2008 which exhibit the AMH device mark.
36 At paras 31 to 33 of his affidavit (Vol 2, Tab 16), Mr De Luca sets out a process of analysis he caused to be undertaken so as to identify these things:
(a) How many AMH bags (containing meat) have been sold to domestic and export customers between 2008 and 2015?
(b) How many AMH lids to cartons containing meat (which include the AMH and AMH White brands) have been sold to domestic and export customers between 2008 and 2015?
(c) What is the weight and value of those sales to JBS at the wholesale level?
37 Mr De Luca annexes a confidential schedule, “BJDL-4”, which sets out answers to those three questions based on the research he caused to be undertaken. In his fifth affidavit (contained in the Supplementary Court Book at Tab 6), Mr De Luca sets out more thoroughly and more comprehensively the steps taken and the methodology deployed in bringing into existence the spreadsheet data at “BJDL-4” of his first affidavit (Vol 2, Tab 16). It is not necessary to set out the detail of that material in these reasons.
38 Although the data in the schedule is confidential, the applicant has extracted, from the schedule, data not broken down between domestic and export sales but which nevertheless shows for the period 2008 to 2015 the number of AMH branded bags (containing meat), the volume of sales in kilograms and the value of those sales in Australian dollars. It also sets out the number of cartons with AMH branded lids, the volume of sales in kilograms and the value of sales in Australian dollars. This data is related exclusively to material that bore the AMH trade mark. The statistics are these:
Number of AMH Branded Bag
Volume of Sales (Kgs)
Value of Sales (AUD$)
Number of Cartons with AMH Branded Lids
Volume of Sales (Kgs)
Value of Sales (AUD$)
39 So, as to the cartons, 94.563 million cartons of beef were sold by JBS between 2008 and 2015 bearing the AMH device mark depicted at  of these reasons representing 2.173 billion kilograms of beef sold in AMH marked cartons generating sales of $10.585 billion.
40 As to the AMH branded bags, 251.598 million bags of beef product were sold bearing the AMH device mark depicted at  of these reasons between 2008 and 2015 representing 1.048 billion kilograms of beef so sold, generating sales of $6.559 billion. As to the 251.598 million bags of beef product so sold as described, the cartons containing those bags may have been labelled with the AMH device mark or the brands Friboi, Royal or Swift Premium.
41 It is a rare case indeed where a trade mark owner (whether of a registered or common law trade mark) is able to demonstrate use of a trade mark (which is unchallenged as to validity) on 251.598 million items of packaging (in this case plastic packaging) and 94.563 million items of other packaging (in this case cardboard packaging) in connection with products in the volumes (by kilograms) in the schedules generating sales of $6.559 billion and $10.585 billion, respectively, in sales of goods the subject of (in this case) each registration of the trade marks in suit.
42 Although it is said by AMG that JBS has done little since October 2007 when AMHPL changed its corporate name to Swift Australia Pty Ltd to promote the device mark or the AMH mark, Mr De Luca describes in his affidavit (Vol 2, Tab 16) at paras 34 to 62 a range of promotional activities at, in or on which reference is made to the AMH device mark including: community events and trade shows since 2010; billboard advertising between 14 July 2014 and 10 August 2014 displaying an advertisement before 78,600 viewers in the catchment with, on average, 5.1 views; 317 employment advertisements placed on the “Seek website” since 12 February 2015 with “a detailed view count of 165,882; a newspaper advertisement (size 10 x 8) in the Queensland Country Life publication on 27 June 2013 which had a circulation for that week of approximately 30,000 recipients; signage displayed on one of the JBS Carriers trailers which, since May 2013 when the device mark was applied to the trailer, has travelled 360,762 kilometres.
43 Apart from these things, JBS operates the websites jbssa.com.au and amh.com.au. JBS has operated the jbssa.com.au website since 2013. In January 2014, Mr De Luca updated it. The new website went live on 28 January 2014. The website displays the AMH device mark on the “beef brands” page. Between January 2014 and 17 March 2016 that page had 21,171 views of which 13,872 were from browsers located in Australia. The homepage contains a promotional video which displays the AMH trade mark at moments between 11 different time settings. The device mark is displayed, in all, for 41 seconds across the various time periods. The video has been viewed 5,649 times.
44 The amh.com.au website does not display to the viewer as a webpage and an enquirer is redirected to the jbssa website.
45 In terms of the marketing expenditure, Mr De Luca sets out some confidential domestic marketing expenditure data for the Northern division which bears a relationship to the AMH device mark.
46 In Mr De Luca’s fourth affidavit (Vol 5, Tab 39), he gives evidence at paras 5 to 25 of the steps taken by JBS to market its beef products overseas in connection with a range of brands including the AMH device mark and “AMH” mark. He says that beef product bearing the marks is advertised and sold, or promotional activities which exhibit the mark are undertaken overseas, by JBS or by its distributors in a range of ways. It is not necessary to set out those activities in any detail. These things, however, should be noted. Mr De Luca says that based on his many trips to the various marketplaces in which JBS customers operate, including Taiwan, Indonesia, Hong Kong, the United States, Japan and China, he has observed how those marketplaces display meat product for sale. The brand is displayed endorsed on packaging exhibited at retail facilities and also at the “food service level (restaurant)”, to consumers. Annexure “BJDL-37” contains a series of photographs exhibiting the way in which primal cuts are displayed in cabinets in packaging bearing the AMH trade marks among many other images of meat displayed for sale. Some clear examples exhibiting the AMH device mark are the images at pp 21, 24, 25, 26, 27 and 86. The remaining images show many examples of primal cuts in packaging marked with the trade marks of the competitors of JBS. Some of the images show portion cuts of meat displayed for sale some of which bear the AMH device mark. Mr De Luca gives evidence of JBS activities at trade shows and industry events to promote its marks including the AMH marks.
47 If there be any doubt about the promotion of the AMH trade marks of JBS in these forums, see the photographs at “BJDL–39” at pp 97, 98, 99, 101, 102, 104, 106, and 108. See also the data at para 18 of Mr De Luca’s affidavit (Vol 5, Tab 39). JBS representatives regularly travel to customer sites and deliver presentations about the company, its products and its brands. As to the use of the AMH device mark in these presentations, see the following: the presentation at “BJDL-40” at pp 149 and 150; the presentation at “BJDL-41” at p 187; and “BJDL-42” at pp 193 and 194.
48 Apart from these matters, Mr De Luca also gave evidence about the trend towards differentiation in the number and variety of beef products. As mentioned earlier, Mr De Luca identified eight different brands each with its particular specification (for example, grain fed beef, days of feeding; grass fed, etc). He says that over the last six years, through branding, there has been a “rapid and exponential increase” in the number and variety of beef products developed by competitors in the upstream supply side of the supply chain in both the domestic market and supply by Australian processors and exporter intermediaries into the export market.
49 Mr De Luca says that 2.2% of all beef consumed in Australia is “displayed to retail consumers in whole primal form in a retail environment” by which he means that the meat is displayed “as a full cut in the form it leaves the processor and in its original packaging” and thus the meat is “not portion controlled” and the “whole cut” is offered for sale as shown in Annexure “BJDL-1”: paras 76 and 77, Vol 2, Tab 16. Mr De Luca explains in his affidavit the basis for his calculation having regard to the different types of retail outlet (such as the “Super Butcher” retail outlets) and the data contained in the Meat and Livestock Australia 2011 report entitled “Red Meat Market Report”.
50 At para 77, (“BJDL-23”), Mr De Luca sets out an assessment, in spreadsheet form, for the period 2008 to 2015 of the postulated retail value of AMH beef (based on an estimate of 2.2% of the annual volume of AMH, Friboi, Swift Premium and Royal branded beef product (contained in AMH branded bags)), presented, by retailers, to retail consumers in whole primal form. He assumes a retail sales price per kilogram of either $10.00/kg or $20.00/kg or $30.00/kg. He applies a variance of plus or minus 2%. The data in the spreadsheet is confidential. Nevertheless, it shows the number of AMH bags branded with the device mark represented by the 2.2% share; the volume in kilograms; the percentage share of the relevant retailer of meat sold in primal form; the variance; and the retail value of sales on each of the three price postulates. Without disclosing the data in these reasons, it is fair to say that even though the percentage (2.2%) is small, the volumes are nevertheless significant and the retail sales value across the three postulates is also significant.
51 At para 78 of his affidavit (Vol 2, Tab 16), Mr De Luca annexes (as “BJDL-24”) a series of photographs he took on 22 March 2016 of meat (which appear to be primal cuts) in bags bearing the AMH device mark at retail outlets around Brisbane and Ipswich which he attended on that day. The outlets were these: Cutting Edge Meats, Everton Park; Joe’s Butcher, Wacol; (two photographs); Village Meats, Toowong (two photographs); Hillmans, Taringa (10 photographs); Clayfield Markets, Clayfield (two photographs). The photographs show primal cuts such as “full rib fillet premium”, “sirloin yearling grain fed”, “eye fillet”, “whole rib fillet” etc. A number of the primal cuts packaged in this way also contain other trade marks reflecting the mark of the seller and other marks. Some bags also are marked with a sticker “Swift Premium” and on some occasions that sticker partially overlays the AMH device mark. In any event, there can be very little doubt that meat products in the form of whole primal cuts exhibiting the AMH device mark (among other marks) are displayed in cabinets for purchase by retail consumers, in some retail outlets.
52 Mr De Luca also annexes as “BJDL-25” to his affidavit (Vol 2, Tab 16) a photograph taken on 14 July 2013 of AMH beef offered for sale in bags marked with the AMH device mark in a Woolworths store. Also, in the course of giving evidence Mr De Luca identified two cartons used by JBS in which it supplies meat product. The first is a carton which exhibits the trade mark “Swift Australia” (Exhibit 11) and the second is a carton which exhibits the trade mark “Royal” (Exhibit 12). Images of those exhibits are illustrated below.
53 Mr Henry James Tancred is and has been since 2007, the Group General Manager of D. R. Johnston (“DRJ”). Mr Tancred says this in his affidavit at Vol 2, Tab 17:
54 DRJ is a division of JBS. The division operates as a separate business and keeps its own books of account. It orders meat products from JBS but also places orders with other producers, that is, competitors of JBS. DRJ negotiates over the price of the meat products it acquires and then on-sells the meat to its customers. Mr Tancred’s contextual background should be noted. He has been involved in the meat industry for a long time (he says “all of my life”). His grandfather with other family members formed the company “The Tancred Bros.”(the “family company”). Mr Tancred’s father also worked in the family company. Mr Tancred began working in the meat industry in December 1981 in the family company, with his father and his uncle. The family company operated a wholesale meat business selling meat products both domestically and into the export market. Mr Tancred recalls events in the 1980s concerning the formation of AMHPL. Once that company was formed, Mr Tancred’s father left the family company and, I infer, joined AMHPL. At this time the family company was known as the “Northern Meat Group”.
55 From 1986 to 2002, Mr Tancred was the Manager responsible for wholesale sale of pork, veal and lamb. Some of these meat products were traded into Taiwan, Korea and Japan. In 1992 the company moved to the Cannon Hill Abattoir and conducted its operations from that facility although the facilities in Innisfail and Katherine continued to operate. In 1996 or 1997 Tancred family members entered into a Joint Venture with the Packer Group of companies in relation to the Rockhampton Abattoir facilities. The Joint Venture was called “Consolidated Meat Group”. It traded until approximately 2002 when the Tancred family interests were acquired by the “Packers” and “Teys”.
56 In September 2002, Mr Tancred accepted a position with AMHPL to manage DRJ. He became Manager of the Brisbane office on 28 January 2003 and Group General Manager on 25 September 2007.
57 In 2007, JBS took over the export operations of DRJ. DRJ continued to develop the domestic operations. In 2007, 50% to 60% of the sales of meat products by DRJ represented meat sourced from AMHPL.
58 Mr Tancred says that DRJ now trades in over 50 brands of meat including the full range of cuts and trimmings of beef, veal, lamb and mutton. DRJ is the exclusive distributor of products supplied under the JBS brands Friboi, Swift Premium and Riverina Angus. DRJ is a non-exclusive distributor of JBS meat products bearing the AMH trade marks or name. Mr Tancred annexes to his affidavit at “HJT-1”, a copy of a price list dated 2 December 2013 used by DRJ for Sydney which shows the products offered or distributed by DRJ to its customers. That annexure also exhibits a price list for DRJ Sydney dated 21 March 2016. Mr Tancred says that the price lists identify the acronyms for the brands for meat products distributed by DRJ. He says the “acronyms are broken down to three letters for the brands and that lets the customers know what brands are being offered for sale”. The price list for 2 December 2013 consists of a series of columns which show the particular cut of meat or meat product, an acronym identifying the source of the product, and the prices. So, for example, meat products or cuts are described as: Insides, Inside Cap Off, Inside Denuded, Knuckle, Strips, Rump, Cube Roll, Outsides, Fillets, T-Bone, Frozen Beef, Beef Trim Fresh and many other product names. The price list is distributed by DRJ to its Sydney industry buyers which include butchers, food processors and other intermediaries. The source of the product is identified by a three letter acronym for ease of reference in ordering. Examples, among many, are these (leaving aside the prices which, for present purposes, are not relevant although the prices are, of course, highly important to the buyer):
Source of Product
YG STRIP 3.6-5.0kg
YG STRIP 5+
YG STRIP 3.6-5.0kg
YG STRIP 4.5+
YG STRIPLOIN 4-5kg & 5kg+
YG STRIP 4.5+
YG STRIP 4.5+ MSA
YG STRIP 6+
S STRIPLOIN 3.6kg+
S STRIPLOIN 5.0 UP
S STRIPLOIN 3.2-4.5kg
S STRIPLOIN 0-5kg
S STRIPLOIN 5.0 UP
S GF STRIPLOIN
S GF STRIPLOIN
BEEF STRIPLOIN 2.7-3.6kg
BEEF STRIPLOIN 3.6-5kg
59 The price list of 21 March 2016 also sets out products by reference to acronyms in the same way as illustrated at  of these reasons. Mr Eastwood says that DRJ has “abbreviated [the] name for ease of identifying the brand” and by so doing is “encouraging [the] customers to order by reference to those three letter acronyms: T, p 80, lns 22-47; T, p 81, lns 1-8.
60 Mr Tancred says that part of his role with DRJ and his work in the last 35 years with other companies in the meat industry, has involved working as a salesman selling meat to customers. He says that in the meat industry those sales have mostly occurred by telephone. From 1981 to 2007 it was part of Mr Tancred’s role to sell meat directly to customers. He says he has made thousands of sales by telephone. Since becoming Group General Manager in 2007, he has been responsible for supervising all of DRJ’s salesmen. From time to time he still fills the role of a salesman especially when absences due to sickness occur. He says that in the meat industry it is critical to move a lot of meat product. He says that typically managers will describe meat products sourced from JBS and supplied by that company under the AMH brand, as AMH product. References are made to a customer’s “large order for AMH”. He says that managers working for him will say to him: “We need more of AMH” or we need more of whatever the brand being purchased that day might be. If it’s AMH product it will be described as “AMH”.
61 Although it will be necessary to return to a more precise description of the supply chain process, it should be noted that DRJ is a “distributor”. It purchases meat from processors and distributes the meat to its customers which may include other distributors, butchers, cutting rooms and small supermarkets. Although the customer can be of any size, DRJ does not “portion control” the meat nor does it sell meat products to the general public, in the ordinary course. Between 2010 and 22 March 2016, DRJ has supplied meat to over 6,000 customers. Mr Eastwood uses different terms to describe, in substance, the same functional processes. He says that the price lists referred to by Mr Tancred at “HJT-1” would be typical of DRJ’s price lists published in other States. He says that the price lists are distributed to retailers and businesses that further process meat (distributors), cutting rooms and manufacturers and the like. Mr Eastwood says that the price lists would probably not be distributed to “wholesalers so much” because DRJ is itself a wholesaler: T, p 79, lns 13-46.
62 Mr Tancred says that he uses “AMH” to refer to both the company previously known as Australia Meat Holdings and as a reference to the meat supplied and distributed under the AMH trade mark by JBS. When Mr Tancred refers to the AMH trade mark he is referring to the AMH device mark as depicted at  of these reasons and illustrated at “HJT-2” of Mr Tancred’s affidavit. He also says that he has been “part of countless conversations where my customers, or my colleagues, refer to AMH”. He says that when he hears other people in the industry refer to AMH he understands them to mean either the company JBS or AMH meat. He says that it is the context within which the term is used by customers and colleagues which enables him to determine whether AMH is a reference to the company or AMH meat products.
63 Mr Tancred also says that he has many conversations with livestock producers. JBS acquires livestock in a number of ways which include either through JBS buyers directly or through agents. Livestock acquired by JBS are sent directly to an abattoir (processing facility) for slaughter and boning. Mr Tancred says that in conversations with livestock producers, he is often asked questions like this: “what kind of money does AMH have for bullocks this week” or “what does AMH have on the grid” (which is a reference to a price list for product). Mr Tancred says he has conversations like this, on average, monthly. In that context, he understands AMH to be a reference to the company, JBS. He says it is more common to hear “AMH” spoken than “JBS”. He says that he has also had many conversations with customers where it is clear to him from the context that the customers when saying “AMH” are referring to meat product and ordering meat, and he understands the customers to be referring to AMH branded meat product. He says, for example, that a customer, Dunton South, from Bidvest in Morningside often places an order for “A-trd 1.8 AMH” and he understands that order to be an order for AMH meat product. He says that he has had many conversations with customers ordering in this way.
64 Mr Tancred says that customers tell him that it is the consistency of the AMH meat products that causes them to re-order AMH meat.
65 As to the business method, Mr Tancred says that DRJ distributes product lists to its clients approximately once a week, that is, “at least [on] a weekly basis for as long as DRJ has operated”: para 36, Vol 2, Tab 17. The price list sets out the brand of meat on offer, the cut of meat and the prices, in table form. The form of the list might vary depending upon the customer. The trade marks for each brand of product are not always displayed on the price list. The list dated 1 February 2016 is Annexure “HJT-3”. It shows 15 beef products (70 days grain fed) much along the lines of the product cuts earlier described, all offered under the Friboi brand name, and the prices. It also shows 12 beef products (grain fed) all offered under the Swift Premium brand, and the prices. It shows other products, the relevant brands and prices. It also shows eight beef products all offered under the reference AMH, and the prices.
66 As to AMH meat, Mr Tancred says that when DRJ distributes AMH meat, it distributes it in cartons with lids bearing the AMH trade mark (that is, the device mark at  and  of these reasons). He says that the meat inside those cartons is always in bags although the bags may be sealed or unsealed, depending upon the particular meat product. Sealed bags bear the AMH trade mark (depicted at  of these reasons). For meat products sold under the brands Friboi, Swift Premium and Royal, the brand is printed on the lid of the carton but the meat within those cartons is contained in a bag marked with the AMH device mark. Sometimes the sealed bags in the Friboi, Swift Premium and Royal cartons also contain an “insert” identifying the Friboi, Swift Premium and Royal brand, although this is not always the case.
67 However, he says it is always the case that when any meat is processed and packaged by JBS and placed in a sealed bag, that bag has the AMH device mark printed on it. The photographs at “HJT-4”, pp 36 and 37, show examples of meat products (sold under the Swift Premium brand), contained in bags marked with the AMH device mark with a Swift Premium (insert), being meat within a Swift Premium carton. Page 38 shows the Swift Premium carton. Page 39 shows AMH bags marked with the AMH device mark without an insert and p 41 shows the “Royal” carton.
68 The two images at pp 36 and 37 described above are shown below.
69 Mr Tancred, on 14 March 2016, caused a search to be conducted of DRJ’s business records to determine the quantity and price of meat distributed by DRJ in AMH cartons between 2002 and 2015. On 17 March 2016, he caused a search to be made of DRJ’s business records to determine the quantity and price of meat products purchased under the brands Friboi, Swift Premium and Royal as those boxes all contain meat contained in bags endorsed with the AMH device mark. Confidential Annexure “HJT-5” shows the results of those two searches The data is, for all the obvious reasons, confidential and sensitive. However, it is enough to say that the volumes and the cost and sales values across the period of the years contained in the tables, are simply enormous. DRJ describes itself as Australia’s leading domestic wholesale and meat trading business: “HJT-8”. The DRJ website illustrates seven device brands for beef products supplied by DRJ and the particular characteristics of those products supplied under each brand. As to the AMH device mark, DRJ simply puts it this way on its website: “AMH is the leading brand of beef in the world. Customers, the world over, recognize the commitment to quality and consistency that the AMH brand represents”: “HJT-8”.
70 Mr Brendan William Tatt is the “Commercial Manager Beef Northern” for JBS. He has held that position since December 2015. Between October 2011 and October 2013, he was the “Domestic Beef Manager” for JBS and from November 2013 to December 2015, he was the “Sales Manager Beef Northern” for JBS. Mr Tatt grew up in the country. His father is a cattle auctioneer. In April 2002, Mr Tatt started working as an international trader in beef and lamb products for Swift and Company Trade Group and he held that role until November 2006 when he took up the position of “Sales and Marketing Export Sales” with responsibility for markets including the United States, Canada, Russia and the Philippines. Mr Tatt explains aspects of the supply chain, among other things, in his affidavit at Vol 2, Tab 15.
71 JBS is a meat producer, that is to say, a producer of processed meat. JBS does not operate cattle properties or rear cattle although it does operate five beef feedlots. In Australia, JBS operates nine beef abattoirs, those five beef feedlots and 14 distribution centres. It processes through its facilities cattle purchased from livestock producers and feedlot operators. JBS sells meat in wholesale quantities to “distributors” trading in the domestic and export markets. It does not sell “portion controlled meat”. It sells meat to “customers” who order in “wholesale quantities” which involves a number of cartons and thousands of kilograms. Thus, JBS acquires livestock from growers through its own buyers or contractors and agents. It processes the cattle through the kill and bone process at the relevant facilities. The processed meat (normally whole primal cuts) is sold at the wholesale functional level to a distributor who may (or may not) seek to “add value to the product” by portion controlling the meat into particular sequences of individual portions. The distributor might elect to sell bulk meat to another distributor or sell the meat directly to retail outlets or to end-users. The meat may pass through a number of distributors or intermediaries before it reaches a retail consumer. Mr Tatt says that often, although not always, meat may be portioned controlled as it passes through this chain of distribution.
72 Mr Tatt says that in this supply chain, distributors (those who do and do not portion control), retail traders (butchers, restaurants) and retail consumers are exposed to the “AMH name” and the “AMH trade mark” by which he means the AMH device mark, having regard to the illustration at “BWT-2” (Vol 2, Tab 15). He says that the AMH brand has a “significant and strong reputation” in these cohorts. He says that because of his employment since 2002 he has come to know that until 2007 JBS was known as Australia Meat Holdings which was abbreviated to AMH. He says he abbreviated the name to AMH when engaging with others either in writing or when speaking and referring to the company and “[a]lmost without exception” people who spoke to him concerning the company’s operations used the acronym AMH: para 22, Vol 2, Tab 15. He says that up to 2007 he heard people use the acronym AMH “daily”. He also says that based on his experience in the meat industry and as a result of engaging in discussions with meat industry participants (both internal and external to JBS), JBS is “still often referred to as AMH” due to the reputation developed in AMH up to 2007: para 23, Vol 2, Tab 15. Mr Tatt refers to a conversation on 8 March 2016 as an example of one industry participant who told him that his people continue to refer to “your company” as AMH. Mr Tatt says that the AMH trade mark is still the “most recognised brand” in what he describes as the “full entirety of what JBS does” and it remains a “big portion of the JBS business”: para 25, Vol 2, Tab 15.
73 Mr Tatt also gave evidence about the method by which trades take place between JBS and its customers for the sale of beef products under the AMH brand. Orders are placed by a customer over the telephone or mobile phone or by sending JBS an email requesting certain categories and quantities of products. JBS assigns a salesperson (a “seller”) to each customer to directly look after its account with that customer. The customer places orders with that seller directly. When orders are placed by phone, the customer will call the JBS nominated customer seller. Alternatively, an email may be sent to that seller. New customers are also allocated a seller and if the new customer is big enough, JBS will conduct a site visit. Mr Tatt says that he has been involved in thousands of such telephone calls with customers. He says that “whenever” AMH branded meat products are referred to, the customer “always” uses the letters AMH: para 28, Vol 2, Tab 15. Mr Tatt says he recalls many such calls. Email orders also refer to the acronym “AMH” as the method of identification of the relevant meat product when the customer wants to order AMH branded meat products. As to that, Mr Tatt, at “BWT-2” (Vol 2, Tab 15), attaches a number of emails by which orders are placed or discussed for AMH meat products, by reference to “AMH”: see Woolworths Order 14 February 2013 at p 17; Order 7 October 2009 (export) at p 18; Coles Order 29 July 2011 at p 22; Coles Purchase Order Request, 29 July 2011 concerning nine beef products which recites: “Supplier Name: Swift (AMH)”, p 23. Other product orders identify the product of the applicant by using other differentiating brand names such as “Royal”: see p 28.
74 Mr Tatt says that retail end consumers can purchase meat in portion controlled packaging or in full primal form. When meat is cut into portions by operators of cutting rooms, butchers and retail outlets, the meat is rarely re-packaged in its original packaging. Mr Tatt says that in his experience, when meat is displayed for sale to the end-retail customer in “full primal form” (such as a rump cut of meat), the meat is kept in its original bag marked with the AMH device mark. The illustration at “BWT-1” is set out below:
75 As to market structure, Mr Tatt says that there are approximately 10 major meat distributors (not including processors) in the industry representing about 80% of market demand. The remaining 20% is comprised of “a significant number of smaller distributors”. Mr Tatt estimates that nationwide the number of distributors “would be well over 100” and he says he has confidence in his assessment because JBS sells its products at the wholesale functional level. Some of those distributors supply meat products in more than one State. Some have a distribution network in many States and thus have a “national footprint”: para 36, Vol 2, Tab 15.
76 As to some examples of current lids and boxes used by JBS marked with the AMH device mark, see the images set out below which are, respectively, a chilled meat carton lid and an AMH White, grain fed beef product (“BWT-4”, pp 43 and 46):
77 As already mentioned, Mr Tatt gave evidence about the industry method of buying and selling beef products either through telephone calls or by email exchanges. Mr Tancred gave further evidence about that matter in his affidavit at Vol 4, Tab 29. He says that on 27 May 2016, he caused the business records of DRJ to be examined so as to identify copies of emails concerning the sale and purchase of beef products which illustrate a use of “AMG” in connection with beef products. At “HJT-9”, Mr Tancred attaches a number of emails identified as a result of that search. Mr Tancred does not explain the emails. However, in large part the emails speak for themselves. At “HJT-9”, p 4, Mr Tancred attaches an email from Mr Warwick Scanlan at Oakdale Meat Company Pty Ltd (“Oakdale”) dated 16 November 2015. The company address is in Dandenong, Victoria. The email sets out the “Oakdale offer” for “current and available stocks” of beef products and the prices for those products “delivered into eastern states (ADD 30c WA)”. The email then sets out a range of beef products: blade, chuck, cube roll, rump, shortloin, striploin, tenderloin and other beef products. Under each heading for those products particular sub-descriptions are set out. For example, cube roll has the sub-description “YG CUBE ROLL – PIECES”. Shortloin has the sub-description “YG SHORTLOIN O-RIB”. At p 4, the offer sets out “TRADED PRODUCT” and that box contains 11 items describing product by reference to the supplier such as MC, AMG, Teys and AMH. Ten of the products are set out in the following way leaving aside the product number:
MC HERD BEEF CHEEK
MC HERD BEEF TONGUE SWISS CUT FRZ
AMG A RUMP 5KG +
GREENHAMS A CUBE 2.2 – 3.1KG
AMG OVINE RACKS
AMG BEEF TONGUE
TEYS UNGRADED CUBS
TEYS BEEF STRIPLOIN
TEYS S CUBE ROLL 7 RIB
AMH PR CUBE ROLL 5 – RIB GRAIN FED
78 Based on the email, I infer that Oakdale is a distributor operating at that functional level of the market. The applicant says that this email is an illustration of someone offering a number of cuts of meat, in the “TRADED PRODUCT” category, by reference to the different trade marks as badges of origin, or badges of source, of those products at the prices and volumes identified by Oakdale, and they do so through the use of acronyms: MC, AMG, TEYS, AMH. At “HJT-9”, p 6, there is an email from Mr David O’Hanlon of Midfield Trading Pty Ltd (“Midfield”). That company also has a Victorian address. The email, dated 16 November 2015, is under the subject “Buy now for XMAS!!!”. The email says that Midfield has been told that two of its biggest suppliers will be closing at the end of November for a number of reasons. Mr O’Hanlon encourages the persons to whom the email has been distributed (presumably clients of Midfield) to purchase now.
79 Again, the 31 products the subject of the offer in the email are identified by reference to acronyms or abbreviated names. The email, in effect, has three columns. One describes the product in quite specific terms. The second identifies the price and the third identifies the corresponding source of the beef product. As a person casts an eye across the columns in the email, these acronyms appear in the following order: AMH, Swift, Swift, AMH, Midfield, AMH, Hunter Valley, Harvey, Swift, Harvey, AMH, AMG, AMH, Teys, Swift, Midfield, Union Station, Vintage, Midfield, Major, Swift, Union Station, AMG, Kilcoy, Swift, Kilcoy, Bindaree and Harvey (three of the products are identified by the number 246 rather than a supplier brand name or acronym).
80 The applicant places emphasis upon price lists which identify beef products by acronyms and, in particular, the acronyms AMH and AMG. The applicant says that having regard to AMH’s reputation, a customer may become confused and be likely to place an order with AMG when they are intending to place an order with AMH. More particularly, if they see AMG alone and act in reliance upon their imperfect recollection of AMH, the respondent’s use of AMG is sufficient to be deceptively similar to the AMH trade marks, or likely to cause confusion with those trade marks, because such a person brings to the transaction, when seeing or hearing AMG, an imperfect cognitive recollection of AMH. That, in itself, is said to be enough.
81 The applicant concedes that that proposition might be “less compelling” if the person placing the order can see AMH and AMG “next to one another” but if “it’s there by itself”, the proposition that use by the respondent of the sign or trade mark AMG is deceptively similar to the trade mark “AMH” (which the applicant describes as the AMH word mark), is said to be “very powerful” because the only difference between the two is that in one case the acronym ends with “H” which stands for “Holdings” and, in the other, “G” which stands for “Group”, in circumstances where the relevant customer brings an imperfect recollection of AMH to the oral or email purchase transaction or, in the relevant circumstances, a consumer transaction: T, p 30, lns 12-46; T, p 31, lns 1-27. The applicant also says that a person bringing an imperfect recollection of the AMH device mark to a purchase transaction might be caused to wonder whether the AMG device mark is simply a more “modern” version of what might be said to be a device mark of AMH which “looks a bit old fashioned”: T, p 31, lns 35-37.
82 In other words, such a person would bring an imperfect recollection of this:
when engaging in trade in beef products with this:
83 The applicant takes the same position in relation to use of AMG and says that where the applicant has a reputation in the trade mark AMH, an imperfect recollection of which is said to be brought by such a person to a transaction in which that person engages with the mark AMG in relation to meat products, such a person will be caused to wonder whether AMG is really AMH or a version of or connected with in some fashion, AMH.
84 In illustrating the two device marks in this way at , I am not suggesting, plainly enough, that the test for determining whether the respondent’s use of its mark is deceptively similar to the device mark in suit is a side-by-side comparison. Plainly it is not. Nor is a side-by-side comparison the relevant approach to determining deceptive similarity in relation to AMH and AMG as “word marks”.
85 On the other hand, a side-by-side comparison is the correct approach to determining whether the respondent’s use of the device mark or the AMG word mark is substantially identical with the trade marks in suit.
Ms Jepson and Ms Murdoch
86 As to the question of contended infringement, apart from the evidence already mentioned, JBS relies upon the affidavit of Ms Jepson (also already mentioned; Vol 1, Tab 13). Ms Jepson illustrates at “DBJ-1” whole primal cuts seen on 25 October 2015 at an IGA store at East Brisbane. Ms Jepson purchased the “whole budget beef rib fillet” illustrated in the photograph, that day. JBS also relies upon the affidavit of Ms Nicole Louise Murdoch at Vol 1, Tab 14. Ms Murdoch is an employee of the solicitors for JBS. On 13 January 2016, she visited an IGA store at Brighton in Queensland and examined the meat section in the store. She saw bulk beef displayed for sale. She saw bulk beef within an AMG branded bag for sale bearing a version of the AMG device mark in the same terms as illustrated at  of these reasons. She took a photograph of it: Annexure “NLM-1”. On 13 March 2016, she attended an IGA store at Ascot in Brisbane. She examined the meat section. She saw meat bearing the AMH device mark for sale. There were a number of packets of bulk beef for sale. However, the only branded bulk beef on sale was bulk meat in bags marked with the AMH device mark. Ms Murdoch took a number of photographs of the display cabinets containing bulk meat for sale: “NLM-2”.
87 An example of one image from “NLM-2” is illustrated below.
88 On 19 March 2016, she visited a butcher shop in Clayfield, Brisbane and examined the meat section within the store. She noted seven to eight whole fillets for sale within bags marked with the AMH device mark. One bag contained an insert for the Swift Premium brand. She took a series of photographs of the displays of bagged meat.
89 On 20 March 2016, Ms Murdoch visited the SuperButcher store at Eagle Farm, Brisbane and examined the meat section within the store. She noted five or six whole rumps for sale within bags marked with the AMH device mark. The bags contained an insert for the Royal brand. She took photographs of the displays of meat and close-up images of a number of bags of bulk meat.
90 On 14 March 2016, Ms Murdoch conducted a Google search online under the search term “bulk meat AMH price”. The search revealed 10.4 million results. She says that the search “JBS bulk AMH price” revealed 18.6 million results. She says that the search results also identified “an alternative search … to be ‘JBS bulk AMG price’”: para 7. Ms Murdoch describes at paras 9 to 13 other Google searches she undertook. On 14 March 2016, a search under the term “meat AMH price” returned 356,000 results and gave an alternative search of “meat AMG price”. On 15 March 2016, Ms Murdoch attempted to conduct a Google search for the words “AMG meatworks”. The Google search engine attempted to “autocomplete” the search term to “amh meatworks”. It did not attempt to autocomplete the search term to “amg meatworks”.
91 Ms Murdoch also conducted searches of the domain names amg.com.au, australianmeatgroup.com and australianmeatgroup.com.au. The respondent is the registered licensee for each domain name.
92 At para 12 of her affidavit Ms Murdoch annexes as “NLM-10”, a copy of a print-out of a web page at amg.com.au/brands which displays the brands of meat products supplied by the respondent by reference to the boxes each of which exhibit the AMG device mark although the oral evidence of the respondent’s witnesses was that the respondent did not use the terms “white” box or “brown” box. The images from the webpage are displayed below.
93 Apart from the evidence of Mr Tatt and Mr Tancred about the methods of transacting the sale and purchase of beef products, Mr Grant John Braddock gave this evidence at Vol 1, Tab 12.
94 Mr Braddock commenced his career in the meat industry as a butcher in 1988 when he was 16 years of age. He undertook an apprenticeship for three and a half years and worked as a retail butcher for approximately 22 years until he joined DRJ in about 1 July 2010. He has 28 years of experience in the meat industry as a butcher and salesman. He worked for DRJ until January 2016 as a salesman and was then promoted into the role of “Depot Manager” for Brisbane. In his role as a salesman, and in his current role, he trades meat every day for DRJ. That is, he buys meat from the meat processors and he sells meat to customers. In his role as a butcher he was responsible for purchasing meat and would buy meat at wholesale from suppliers like DRJ. He is familiar with the AMH device mark.
95 As to the method of selling, he says that when he sells meat to customers he does it by making telephone calls on a call sheet and by sending out emails. The telephone calls start early in the morning as butchers are commencing work and setting up their stores. The calls continue throughout the day. The computer records tell him the details of the customer, their latest order and previous purchases. He says that throughout his time in selling meat, he has sold a large quantity of AMH branded meat. He says that customers want the same product regularly (“each time”) and will insist that they are sold only AMH meat. Calls where clients insist on having AMH product happen daily or a number of times a day throughout DRJ’s office. He says that in his experience as a salesman, AMH meat is the brand of meat most requested by customers. He also says that in the meat industry customers will source different products from many wholesalers/distributors. In his affidavit, Mr Braddock says that there are four or five meat distributors and wholesalers close to the DRJ Brisbane office and he has observed the products supplied by a range of distributors on trucks which also collect product from DRJ.
96 Mr Michael Stanley Black is a Manager of the “Hans” retail butchers store at Wacol. Hans is a brand of processed meat products. Mr Black is a third generation butcher and has been involved in the meat industry all his life having commenced an apprenticeship at 14 in 1981. Over the last 35 years he has worked as a butcher (with short breaks) including running his own store as a butcher. He has also managed retail stores. In those roles he has been responsible for buying meat from suppliers; displaying meat in general retail stores; and responsible for butchers selling meat to retail consumers. He says that he has had “thousands of conversations” with retail consumers over the last 35 years. He says that he has been part of “thousands of transactions” by which he has purchased meat from suppliers. He says that, in the main, these transactions have occurred over the telephone although he also orders meat by email. Mr Black began working as Manager of the Hans shop at Wacol in December 2013. The Hans business was acquired by JBS in 2015. Mr Black says that he is aware of the AMH device mark, which he illustrates in his affidavit: Vol 4, Tab 31. He says that the AMH brand has been known to him for approximately 30 years as a brand and logo. He says that he recognises it immediately once a carton of meat is delivered. He says that for a period of some years he worked as a Manager of “Foodworks” in two stores at Loganholme and Woodridge. Foodworks is a small convenience retail chain of stores similar to IGA although the two stores Mr Black managed were independently owned by one owner. As Manager, Mr Black could buy and sell meat. He says that he purchased meat and would display the meat for sale. He says that whole primal meat was displayed in branded packages. Mainly, he sold “whole rumps” and those cuts were presented to the retail customer, in most cases, in the bag with the logo on the bag. The only time the whole primal meat product was not presented to the retail customer in that way was when there was no logo on the bag. This happened “only from time to time”. He says that when meat was delivered where no brand appeared on the bag, the meat was nevertheless delivered in a branded box containing that bag. He says that neither he nor anyone else at the stores he worked in, would re-package the stock. He says that there was no policy within Foodworks that meat contained in bags displaying a brand was not to be displayed to retail customers and Mr Black says that he was not concerned whether consumers could buy the brands elsewhere. So far as he knows none of the other managers of Foodworks stores had a concern to conceal the brand on a bag out of fear that customers could buy the same brand of meat elsewhere.
Evidence of confusion
97 In this case, the applicant has not put on any evidence of actual confusion although, of course, it is not necessary to do so in order to establish the contended causes of action. Nevertheless, the respondent says that the lack of any evidence of confusion is “telling”. I will address that matter later in these reasons.
The changes to the proceedings
98 It is now convenient before turning to the respondent’s evidence and contentions in response, to identify briefly the matters in issue in the proceeding and those matters now not in issue.
99 At the commencement of closing submissions, the applicant (as a result of discussions between counsel) sought and was given leave to rely upon a fourth amended fast track statement (the “FT Statement”) which had the effect of narrowing the applicant’s case. The respondent was given leave to rely upon an amended fast track response (the “FT Response”), by which two defences are not pursued. As to the applicant, it elected not to pursue an allegation that the respondent held, and had acted upon, a “deliberate intention to deceive”. The applicant had earlier abandoned a claim that the respondent’s conduct engaged contraventions of the Australian Consumer Law (“ACL”). In addition, claims based on contentions of passing off were not pursued. As to the respondent, it elected not to pursue a contention that it had used, in good faith, its own name (that is, a contention that use of “AMG” was use in good faith of the name Australian Meat Group Pty Ltd) and a contention that the trade marks of AMG are otherwise registrable by reason of honest concurrent use. In consequence, the applicant’s response to the contended honest concurrent use defence and the applicant’s reliance upon s 60 of the TM Act, fell away.
100 The central question remaining in the case for determination is whether the conduct of the respondent in using the AMG device mark; using either or both of the marks depicted at  of these reasons; and, or, using the AMG mark, is use of a sign that is either substantially identical with, or deceptively similar to, the AMH device mark or the AMH mark (the latter of which the applicant calls the AMH “word mark”) in relation to goods (meat products, put simply) the subject of the two registrations. The applicant says that it has not abandoned the contention of substantial identicality concerning the word mark although Senior Counsel for the applicant observes: “I am not going to say very much about it”. Senior Counsel adds that the applicant wants to “leave the argument open” T, p 268, lns 3-14; T, p 287, lns 24-27. Plainly enough, not very much emphasis was placed upon the contention by Senior Counsel for JBS. Nevertheless, the applicant relies upon the contention and I will address it.
101 The substantial battleground between the parties is whether the respondent’s conduct engages use of a deceptively similar sign as a trade mark in respect of the relevant goods for the purposes of s 120 of the TM Act.
102 The respondent seems to concede that it has used the impugned trade marks, “as trade marks”. Those trade marks are, plainly enough, used in relation to goods in respect of which the applicant’s two trade marks are registered.
103 The respondent contends, put simply, that its use of its trade marks, viewed as a matter of the application of the principles derived from the authorities to the relevant facts of the case, leads to the conclusion that its use does not engage use of a sign which is deceptively similar to the applicant’s marks in respect of the relevant goods, for the purposes of s 120 of the TM Act.
104 The respondent also says that a side-by-side comparison of the device marks or the “words” AMH and AMG makes plain that they are not substantially identical.
105 The respondent also says that it engages with very sophisticated participants in its trading relationships and none of those participants would be likely to be caused to wonder about whether the source or origin of the meat products in question is anything other than the respondent. I will return to those matters having examined the evidence upon which the respondent relies.
106 The applicant’s election not to pursue the ACL claims or the passing off claims does not mean, however, that the question of the “reputation” subsisting in the applicant’s AMH device mark or the AMH (word) mark is no longer relevant. It remains relevant to the central question of whether the conduct of the respondent can, in all the circumstances, be characterised as use of a sign which is deceptively similar to the applicant’s trade marks in respect of the relevant goods. Both parties have addressed submissions on the intersection between that question and the extent to which JBS enjoys a reputation in the two AMH trade marks. I will return to that question later in these reasons.
107 In the course of the proceedings, a number of orders were made on 11 February 2016. As to procedural matters, an order was made that the issues raised in paras 1 to 53 of the amended fast track statement filed on 2 February 2016, including whether there is a basis for the applicant’s claim to additional damages under s 126(2) of the TM Act or exemplary damages at common law, be determined separately from and prior to the issue of quantum of any pecuniary relief (including additional or exemplary damages) as claimed in para 54 of the fast track statement: para 2. Paragraph 54 of the present FT Statement continues to make that claim.
108 It seems clear enough therefore that the matters to be determined as a separate question in this part of the proceeding are the matters of infringement and whether the respondent has engaged in conduct which gives rise to a basis for the applicant’s claim to additional damages under the TM Act or exemplary damages at common law. If so, the quantification of that claim along with the determination of the quantum of any claim for damages is to be determined in the separate proceeding.
The evidence of the respondent
109 I will now turn to the evidence relied upon by the respondent.
110 Mr Pierre Gilbert Cabral is the Managing Director of AMG: his affidavit is at Vol 3, Tab 22.
111 Mr Cabral says this.
112 Mr Cabral has worked in the meat industry for over 35 years. He began working with Mr Joe Catalfamo in the early 1980s. He ultimately took over, from 1987, as Managing Director of companies controlled by Mr Catalfamo which were referred to as the “Tasman Group”. Mr Cabral held that role until 2008 when the Tasman Group was sold to JBS Southern Australia Pty Ltd, a company related to JBS. From 1987 until 2008, Mr Cabral was responsible for the “meat processing side” of the business. Mr Catalfamo was responsible for the “retail side” of the business. Mr Cabral began working with Mr Catalfamo again on 1 January 2014 in a company, controlled by Mr Catalfamo, called Administration Group (EAG) Pty Ltd (“EAG”) with the intention of starting a new meat business. They decided to re-enter the meat processing business. They needed a new name because EAG meant nothing in relation to meat. In early 2014, they held regular meetings on Friday mornings at EAG’s office in Brooklyn to discuss starting a new business. The meetings were attended by Mr Catalfamo, Mr Tony Tarquinio (who later took up the role of Chief Financial Officer and Company Secretary in AMG), Mr Catalfamo’s two sons, Sebastian Catalfamo and Joseph Catalfamo Jnr, and Mr Catalfamo’s daughter, Rosaria Catalfamo, who is Mr Catalfamo’s Secretary.
113 During one of these meetings, Mr Tarquinio provided a short list of potential business names he had “come up with” for the new meat processing business and although Mr Cabral could not recall the names on the original short list he recalls that Australian Meat Group was not on Mr Tarquinio’s list.
114 Mr Cabral says that he and Mr Tarquinio emailed EAG’s Accountant, Mr Peter Zervos, in February 2014 with a number of potential names for the new meat business drawn from Mr Tarquinio’s short list. He says that he and Mr Tarquinio asked Mr Zervos to undertake company searches to check whether any of the chosen names were available. One of the names they asked Mr Zervos to search was “Australian Consolidated Meat Group” and some variations of that name. Mr Cabral’s recollection when giving evidence was that there was no email sent by him (at least) and probably no email sent by either him or Mr Tarquinio prior to the commencement of the email chain of 11 February 2014 mentioned below. His recollection was that he had a telephone conversation with Mr Zervos about some possible names or key words he was looking for in relation to a new company: T, p 160, lns 38-40; T, p 161, lns 12-13; T, p 164, lns 26-32.
115 On 11 February 2014 at 2.53pm, Mr Zervos sent an email to Mr Cabral telling him that nine company names were available for registration (none of which were Australian Meat Group Pty Ltd) and that the names Australian Meat Exports Pty Ltd and Australian Meat Processors Pty Ltd were not available. On 14 February 2014 at 5.32pm, Mr Zervos sent an email which addresses “Tony” (Mr Tarquinio) and tells him that the name in red in the email, Australian Consolidated Meat Group Pty Ltd, is available. The email also addresses “Gil” (Mr Cabral) and tells him that the names Australian Consolidated Meats Pty Ltd and Australian Consolidated Meat Exports Pty Ltd are also available: Exhibit 30.
116 Mr Cabral says that on a Saturday morning in February 2014 he was driving to his home from the Brooklyn office (the Melbourne office of AMG) and saw a truck with a name along the lines of Australian Food Group. That caused him to think about a name incorporating the words “Australian”, “Meat” and “Group” in the new name for the new company. On Saturday, 15 February 2014 at 12.50pm, Mr Cabral sent an email to Mr Zervos saying this:
ACMG Aust consolidated meat group seems too long
AMG – Australian Meat Group – as per joes cars
117 Mr Cabral says that the reference to “Joe’s cars” is a reference to Mercedes SL500–AMG cars which Mr Catalfamo had enjoyed driving over a period of 25 to 30 years. Mr Zervos said he would look into the names. Out of that group of names only Australian Meat Group Pty Ltd was available. On 17 February 2014 at 1.32pm, Mr Zervos sent Mr Cabral an email telling him that of the nominated names only Australian Meat Group Pty Ltd was available. At the Friday meetings, the group earlier described, continued to discuss names for the new company throughout February. On 21 February 2014 at 11.24am, Mr Tarquinio sent an email to Mr Zervos saying this:
The preference would be to use Australia Meat Group but our concern is that someone is already using AMG Pty Ltd and [there] could [be] brand issue implications in the future.
The other name – Australian Consolidated Meat Group is too long therefore can you try if available the following:
Australia Consolidated Meat Pty Ltd, and
ACM Pty Ltd
118 Mr Zervos responded on 21 February 2014 at 1.27pm saying that AMG Pty Ltd is registered; Australia Meat Group Pty Ltd is available; Australia Consolidated Meat Pty Ltd is available; ACM Pty Ltd is registered; and The Australian Meat Group Pty Ltd is available. On 21 February 2014 at 1.50pm, Mr Tarquinio sent an email to Mr Zervos asking him to determine whether the following names were available: Meat Group of Australia Pty Ltd; MGA Pty Ltd; Meat Company of Australia Pty Ltd; and MCA Pty Ltd.
119 Mr Cabral says that he recalls that the name Australia Meat Group was finally decided upon at one of the Friday meetings and Mr Tarquinio then emailed Mr Zervos to ask him to register the name. On 5 March 2014 at 11.35am, Mr Tarquinio sent an email to Mr Zervos copied to Mr Cabral saying this:
Please proceed ASAP to register Australian Meat Group Pty Ltd. We at the same time will commence working on a logo in order that we register the trade mark. I require ASAP the TFN and ABN for the company.
120 On 5 March 2014 at 4.58pm, Mr Zervos responded to Mr Tarquinio attaching a Certificate of Registration issued by ASIC for the company. On 6 March 2014 at 12.17pm, Mr Zervos provided the ABN and TFN numbers for the new company. Mr Joseph Catalfamo Jnr designed a logo for the new business, as depicted at  of these reasons, in a green tone. Mr Cabral says that the green tone was designed to “denote pasture”. He wanted the words AUSTRALIAN MEAT GROUP at the bottom of the logo “because it was new people, new logo and a new company so I wanted to make it obvious what we were selling”: para 24.
121 Mr Cabral says that he has no recollection of any discussion of “AMH”, and “AMH” never crossed his mind. He says that at the time he thought that JBS was not using the AMH brand. He says that he has not seen the AMH brand “around in Victoria for a long time”: para 25. He says that if he had thought that using the abbreviation AMG or the AMG trade mark would cause people to think that the respondent was associated with JBS or the AMH brand, he would not have used it: para 28.
122 As earlier mentioned, there is no longer any contention on the part of the applicant that the respondent held, and acted upon, a deliberate intention to deceive, in adopting use of any of the impugned trade marks. Nevertheless, some of Mr Cabral’s evidence as to the adoption of the trade marks in the context of industry practice remains relevant. Mr Cabral accepted that whilst working in the meat industry from 1987 he, of course, knew of Australian Meat Holdings and he knew that the company owned several abattoirs. He also knew of the AMH brand: T, p 147, lns 29-46; T, p 148, lns 25-29. At T, p 175, lns 36-38, Mr Cabral explained as he had done so in his earlier evidence that a decision had been made to “go with” Australian Meat Group. In that context, the proposition was put to him that he “at all times intended to use the acronym AMG”. He responded by saying this at T p 175, lns 44-47:
We used Australian Meat Group and the industry – it has always been the same that they just drop – they use acronyms often so – but the Australian Meat Group is what we went for.
123 The following exchange then occurred as part of the cross-examination:
Q: You said, I think, to his Honour a few minutes ago that you thought that ACMG [an acronym for Australian Consolidated Meat Group] was too long because you wanted a three-letter acronym, didn’t you?
A: Much easier.
Q: So at the time when you decided to pursue Australian Meat Group you always intended to use a three-letter acronym?
A: That’s what I preferred.
Q: It’s what you intended.
124 Mr Cabral was asked whether he accepted that the only difference between Australian Meat Group and Australian Meat Holdings is the description of the type of corporate structure, one name using the description “Group” and the other using the description “Holdings”. He accepted that that was correct: T, p 182, lns 5-8. Mr Cabral then emphasised a number of the considerations which led to the decision to adopt the name Australian Meat Group as the name of the new company: T, p 182, lns 10-28. The following exchange then took place with Mr Cabral:
Q: And part of that [that is, the explanation of the factors leading to the adoption of the new name] was to have a nice crunchy three-letter acronym because that was the way your company was to be known, was it not?
A: Australian Meat Group was – people used the acronym, yes, they use the acronym. I liked the acronym. I said it and I wrote it in my affidavit. It had a right – great zing to the AMG. We all love to have an AMG car, a Mercedes. It’s easy. It’s easy to remember. A lot of the – lot of the customers we talk to, we say this is Australian Meat Group and, you know ... in our email address it has got [G Cabral] @amg.com.au. AMG, it has a good zing to it. It has got a – people look at it and smile and say, “How did you get an [AMG] name”? … [s]o I’m getting that sort of feedback about it. It’s easy to remember.
125 On the same topic, the following exchange occurred at T, p 186, lns 33-43 and T, p 187, lns 5-11:
Q: So in the month of February 2014, you say you had not seen the AMH brand around in Victoria for a long time, but it was always your intention, wasn’t it, that the acronym AMG would be used Australia-wide and overseas?
A: The Australian Meat Group name was adopted, and the – the acronym would – would follow the way the industry operates.
Q: So is the answer to my question …
A: It would – people would be using it.
Q: Around Australia and overseas?
A: I’m sure it would be. Yes.
Q: … [Y]ou, I think, accepted before lunch that you always intended that it [Australian Meat Group] would be used as an acronym?
A: The other way round, sir. It’s Australian Meat Group first. That’s what I will aim for initially, and the acronym comes after.
Q: You know that it is the habit in the industry to refer to companies by acronyms, don’t you?
A: It’s – it’s commonly done in the industry to – to shorten the abbreviated names.
126 As to other aspects of “reputation”, Mr Cabral says that JBS is perceived in the industry as “ruthless”. He says AMH has a long association with “northern cattle” which he says are “inferior in flavour” to “southern cattle” which the respondent generally uses for the production of processed meat: para 29. Mr Cabral also says that AMH was a brand “based in northern Australia” in the Northern Territory and Queensland before it was purchased by JBS. He says that the companies that he and Mr Catalfamo set up were southern-based companies which focused on Victoria and Tasmania and because of that differentiation he says that he and Mr Catalfamo “did not focus on AMH as a brand and were not worried about competing with them”: para 30.
127 Mr Cabral accepted in cross-examination that he, as the Managing Director of the respondent, knew that the respondent was applying for trade marks not confined to Victoria and Tasmania and that the trade marks obtained by AMG were “going to be national”. He accepted that he knew that both the respondent and JBS and all their brands were competitors in relation to the export of meat, amongst other competitors: T, p 193, lns 18-31.
128 Mr Cabral also gives evidence about market segmentation and steps taken to differentiate the new business in the market. He says that AMG plants have the “highest standard of cold chain management” in the industry and the company differentiates itself “on the basis of quality”. He says that customers from Japan, Korea and Taiwan choose their meat based on quality and associate a certain standard of quality with the “establishment number of the processing plant”. He says that when AMG attended the “Gulfood” trade fair in Dubai in 2016, AMG exhibited the establishment numbers (3085 and 2488) affixed to the wall of the booth so that any potential customers could see and identify the numbers and associate those numbers with AMG’s products. Those numbers are said to convey the notion that the beef products processed in those establishments are of “good quality”. In relation to AMG’s current plants, Mr Cabral says that the Dandenong facility already enjoyed a good reputation in its establishment number under the operation of the former owners, the “Castricum brothers”. AMG kept that number: 3085. He says that AMG’s Deniliquin plant had a bad reputation due to the history of that facility under the previous owners. Once the plant was taken over, AMG secured a new number: 2488.
129 Mr Cabral says that in relation to export customers in the United States, those customers are also familiar with the establishment numbers although those customers focus more on the relationship with AMG itself. That is said to follow because the people AMG sell to in the United States know Mr Cabral and Mr Catalfamo and know the quality of AMG’s meat. He says that AMG’s quality control is “superior” and that “better cold chain management means a longer shelf life”. This is said to be a very important differentiating matter to export customers: paras 32 to 34.
130 Mr Cabral says that in the two years since commencing operations as Australian Meat Group, the plants have been redesigned and remodelled along with the processing methods. This is said to give AMG “the reputation that we sell on”: para 35. He says overseas and domestic customers visit the plants regularly. They want to know about the company, the processing method, the handling procedures and the region generally.
131 Mr Cabral says that in the two years since the respondent has commenced business, the operations have expanded rapidly with revenue for the 39 weeks ending 27 March 2016 amounting to $126 million. Annexure “PGC-11” suggests that “All Domestic” revenue amounted to $40.5 million and “Export Meat” amounted to $86.3 million. Mr Cabral says that typically a container of meat has a value of approximately $75,000 to $150,000. He says that AMG’s buyers are sophisticated buyers and typically they have either visited AMG’s plant or know the reputation for the product by reason of the establishment numbers. He says that an average sale to AMG’s domestic customers is approximately $15,000 and the average invoice for export sales is approximately $85,000. He says that these customers make “well informed choices about what they buy”: para 37. He also says that he has never heard of anyone “confusing the AMG brand or logo with the AMH brand or thinking that AMG or AMG branded goods are somehow associated with JBS”: para 38.
132 When giving evidence, Mr Cabral identified a number of boxes used by AMG for particular products. Exhibit 20 is a box used by the respondent for selling frozen meat, that is, meat which has been frozen by “air blast” methods and stored at minus 20 degrees. The lid of the box is green although the box itself is brown. The lid is exhibited below.
133 Exhibit 21 is a box used by the respondent for selling chilled meat, that is, meat which is vacuum-packed, chilled and kept in refrigerated conditions at 0 degrees. The lid is white and the box is brown. The lid is exhibited below.
134 Exhibit 22 is a box used for supplying chilled vacuum-packed meat. The lid also bears the description “Southern Ranges PLATINUM”. The lid of the box is exhibited below.
135 Exhibit 23 is another box used by AMG in supplying chilled beef product. The lid bears the description “PREMIUM Angus Beef”. The lid of the box is exhibited below.
136 Although there is no longer any contention that AMG held and acted upon a “deliberate intention to deceive”, the origination of the AMG device mark ought to be contextually mentioned.
Mr J J Catalfamo
137 Mr Joseph John Catalfamo (“Mr J J Catalfamo”) is a former employee of the respondent and a former employee of EAG. He is the youngest son of the major shareholder in the respondent, Mr Giuseppe “Joe” Catalfamo. Mr J J Catalfamo is the man Mr Cabral refers to as “Joe Jnr”. Mr J J Catalfamo worked exclusively within businesses owned and operated by the Catalfamo family from 2003 to 2015. He currently operates his own business. In 2003, he began working for Tasman Group Services Pty Ltd (“TGS”) full time. TGS was a company engaged in meat processing and the export of meat products. He worked at TGS in the period 2003 to 2007. In the period 2005 to 2006, he became responsible for the management of the abattoirs which were a key part of the meat processing business operated by TGS. The TGS business was sold to JBS in 2007. He worked for AMG in 2014 and 2015. In March 2014, he was asked by his father to develop a logo for the new company to be established by his father as the restraint of trade arising out of the sale of TGS to JBS had recently expired and Mr Catalfamo Snr wanted to get back into the meat business. He was able to recall the date of March 2014 having regard to statements made by Mr Tarquinio in Mr Tarquinio’s declaration of 3 August 2015 in the opposition proceedings (Exhibit 27). The name Australian Meat Group had already been selected. In his affidavit at Vol 3, Tab 24, he explains the process he undertook in designing the AMG device mark and the considerations he took into account. He annexes various documents reflecting the process of origination. Mr J J Catalfamo says that although he had heard of “AMH” in the course of working in the meat business, he did not turn his mind to the AMH device mark in the process of creating the AMG device mark.
138 Mr Peter John Hurst is the “Sales Manager, Export” for the respondent.
139 Mr Hurst has worked in the meat industry for over 14 years. Between 2002 and 2008 (apart from 18 months in London), he was employed by the “Tasman Group” as a salesman. That Group was a group of companies controlled by Mr Catalfamo (Senior) and Mr Cabral. It owned and operated six abattoirs in Victoria and Tasmania and a feedlot in New South Wales. It sold Australian meat to more than 20 different countries. In that role, Mr Hurst specialised in the sale of small stock. After the sale of the Tasman Group of companies to JBS in 2008, Mr Hurst worked for JBS from 2008 to 2010 and then for Thomas Foods for four years from 2010 to 2014. In August 2014, he commenced employment with the respondent. Since then he has been employed by AMG in the current role.
140 Mr Hurst says that he has not heard of a customer “misunderstanding” the respondent in either its full name or its abbreviated name, AMG, as being “somehow associated” with the applicant’s AMH brand or JBS.
141 Mr Hurst explains the functional activities of AMG. He says this in his affidavit at Vol 3, Tab 21.
142 The respondent purchases meat for processing directly from suppliers (farmers) or through agents such as Elders or Landmark. After processing, it sells the meat in three broad functional ways: export sales, sales to wholesalers and sales to manufacturers of meat products. AMG does not sell directly to consumers and, with limited exception, does not sell to retailers. The exceptions are significant. AMG sells directly to Coles supermarkets and larger independent butchers such as “Tasman Market Fresh Meats”. Neither the respondent nor the “AMG brand” is promoted to end consumers.
143 As to export sales, Mr Hurst estimates that exports account for approximately 70% of AMG’s total sales. As earlier mentioned, Mr Cabral at Annexure “PGC-11”, provided data which shows that export meat sales amounted to $86.3 million in total sales in the 39 weeks ended 27 March 2016 of $126 million, that is, on the precise figures in the Annexure, 68.04%. Export sales are made to the 13 countries identified by Mr Hurst. He estimates that export sales to the United States account for 20% of the overall sales of the “whole business” of the respondent which, based on total sales contained in the above data, amounts to $25.381 million.
144 Mr Hurst says that it is important to understand the relevance of relationships and establishment numbers to overseas importers of Australian meat. He says that as a new meat processor and exporter, AMG is reliant on the established reputations of Mr Joe Catalfamo and Mr Cabral as suppliers of high quality meat. He says that, in his experience, export customers want to ensure that the standard of processing is of the highest quality. The establishment number is the unique number given to each meat processing plant in Australia. He says that this number carries the reputation of the quality and consistency of the product coming out of that plant and since meat is a perishable commodity, quality and consistency is very important. He says the establishment number carries the reputation of the way the meat is processed in the relevant plant by which he means: how it is cut, the cold chain management process for the product, and the consistency of the application of that process. He says the reliability of the product is “critical” for an exporter because large orders are placed, often in excess of $100,000 per order. The buyers need to have confidence that the product supplied will be reliable and that it will be a long shelf life (which is directly affected by how the meat is handled during processing).
145 Thus, he says this at para 24:
In my experience, it is either the relationships that we have with customers and the trust that they have in our product, or establishment numbers with a reputation for quality meat which are the most important factors considered by purchasers of meat for export sales.
146 Mr Hurst says that in December 2014 he, Mr Cabral and the export salesperson for AMG, Mr Mike Latemore, embarked on an overseas sales trip to commence marketing AMG meat to purchasers in other countries (including Japan, Korea, Taiwan and Singapore). During this trip, meetings were held with importers who had previously purchased meat from the Tasman Group and many of the individuals were known well to Mr Cabral and Mr Hurst due to personal relationships deriving from the Tasman Group days. They also met potential new customers. At the various meetings in the course of the sales trip, Mr Hurst and Mr Latemore made a PowerPoint presentation to various importers. That presentation is “PJH-2” to Mr Hurst’s affidavit, Vol 3, Tab 21. The presentation begins in this way at Slide 1:
Australian Meat Group Pt[y] Ltd
147 Throughout the extensive presentation, the acronym AMG is used and the AMG brands are displayed and emphasised as depicted at , ,  and  of these reasons.
148 Mr Hurst says that in February 2015 he and Mr Cabral attended the “Gulfood” trade show in Dubai at which AMG had a stand in the Australian section. The brochure for the Gulfood trade show for February 2016 identifies exhibitors in the “Australian Meat Pavilion”. It shows Australian Meat Group and the AMG device mark.
149 As an illustration of the opinion expressed by Mr Hurst and quoted at  of these reasons, Mr Hurst says this. AMG sells beef product into the United States export market through approximately 12 individual importers. Mr Hurst has a personal relationship with each of those importers. Mr Hurst says AMG has not transacted business in the United States with anyone who he has “not spoken with, met or sent an email copy of our PowerPoint presentation to”: para 42. He says that in Japan there are only a small number of people AMG works with in selling export meat. Japan is another significant export market for AMG. The importers AMG deals with in Japan either know Mr Cabral, Mr Catalfamo or Mr Latemore personally or, alternatively, they have received AMG’s PowerPoint presentation. Mr Hurst says that in Taiwan and Korea, there are only a small number of buyers and Mr Latemore knows each of them personally. For Taiwanese buyers, the establishment number of the processing plant is also critical. Mr Hurst says that having regard to these various relationships and the detailed understanding importers have of AMG’s processing plants, “I am not aware of any importer who has bought stock directly from us being confused it was from JBS”.
150 As to domestic sales, Mr Hurst says that AMG sells only to wholesalers; food manufacturers using meat as an ingredient such as “Patties” or “Heinz”; large independent butcher shops like “Tasman Market Fresh Meats”; and, recently, “Coles supermarkets”. Mr Hurst says that all of these domestic customers purchase in bulk and the respondent ordinarily does not sell less than one pallet of product at a time to any customer. He says that in developing AMG’s wholesale domestic market business, he (and others in AMG) consistently tell customers that the people standing behind AMG are the people who used to operate Tasman Meat Group, namely, Mr Catalfamo and Mr Cabral. Mr Hurst says that he has heard AMG’s domestic salesman, Mr Ross Goodman, making that point on many occasions on the phone to customers.
151 AMG has approximately 50 to 70 domestic customers. It has supplied meat to wholesalers in Queensland, New South Wales, Victoria, South Australia, Tasmania and Western Australia. He says the wholesalers sell AMG meat to buyers in a spectrum from restaurants to food services providers and to butcher shops. Again, Mr Hurst says that relationships lie at the core of the transactions with domestic customers. Mr Goodman is said to be well-known to AMG’s domestic customers. He used to work for the Tasman Group. Mr Hurst says he has taken domestic wholesale customers on tours of AMG’s processing plants. He estimates that approximately 30% of AMG’s domestic customers have visited one or more of the AMG processing plants. He says that he and Mr Goodman (and others) “form personal relationships with each of the individual purchasers”.
152 Mr Hurst says that he has been shown Annexures “A” and “C” to the FT Statement. The image at Annexure “A” is depicted at  of these reasons and it is Annexure “DBJ-1” to Ms Jepson’s affidavit (Vol 1, Tab 13). Annexure “C” is a photograph of AMG meat product displayed for sale at Tip Top Butchers, Laverton North, Victoria. He says that in these examples, AMG meat products have been purchased by a wholesaler and the wholesaler has sold that product to the retailer. The retailer has kept the product in its AMG packaging. He says that retailers keep the product in the packaging in that way so as to preserve the age and shelf life of the product.
153 Mr Hurst says that “if the cut is small enough to be sold at the retail level, it will sometimes be resold without packaging”.
154 As to labelling, Mr Hurst says that it is common for retailers to put their own label over any pre-existing supplier’s brand because the retailer wants its customers to develop loyalty to the retailer’s brand; the retailer wants the flexibility to purchase from different suppliers; and there is, he says, “generally no consumer awareness of the supplier’s brands in any event”.
155 He says that it is more common for retailers to remove the product from the supplier’s packaging and re-package it into smaller portions for retail sale. He says that the primal cuts supplied by AMG to wholesalers are too big for most retail customers and so the retailer slices the meat into smaller portions. He also says that in his experience in selling “small stock” to Coles and Woolworths supermarkets when working for the Tasman Group and Thomas Foods (and having regard to conversations he has had with IGA representatives), “as long as the meat passes on quality and specification, then they will just buy on price”. As to IGA, he says that when branded meat is stocked in IGA stores, “an IGA label is often placed over the brand”.
156 Mr Hurst says that buyers of AMG meat products whether wholesalers or manufacturers or export customers, are “highly sophisticated buyers, most of whom are well-known to me” and he says that he has seen no evidence of any of AMG’s customers mistaking Australian Meat Group or any of its products “as in some way associated with AMH or JBS”. Mr Hurst contests Mr Eastwood’s proposition that he was previously an AMH salesman. He makes the point that during the relevant time, he worked at JBS and he was a JBS salesman selling stock which was not branded as AMH.
157 In the course of cross-examination, Mr Hurst was taken to a number of annexures to his affidavit (Vol 3, Tab 21) and, in particular, Annexures “PJH-3” and “PJH-4”. Annexure “PJH-3” is the flyer for the “Gulfood 2016” exhibition. At p 32, there is an entry for the Australian Meat Pavilion for Australian Meat Group. The number R-248 is not an establishment number. The entry has the AMG device mark next to the name Australian Meat Group. Annexure “PJH-4” includes three photographs (pp 34-36) which show the stand at the exhibition for Australian Meat Group. Mr Hurst accepted that the meat contained in the cabinets on display show the trade marks or brands which Mr Hurst (and others at AMG) had shown to people in the PowerPoint presentation: T, p 251, lns 30-34. Mr Hurst also accepted that behind the cabinet is AMG’s very large AMG logo (although the transcript incorrectly uses the word “photo” rather than “logo”). Mr Hurst also observed that AMG also exhibited its establishment numbers 2488 and 3085 although they are not apparent in the three photographs: T, p 251, lns 27-44. Set out below is an example drawn from p 35 of “PJH-4”.
158 The respondent places considerable emphasis upon the evidence given by Mr Allister Calder Watson: his affidavit is at Vol 4, Tab 26.
159 Mr Watson is an independent consultant to the meat industry and former General Manager of meat for Coles supermarkets, a division of Wesfarmers Limited. He says that from 2003 until 2015, he was employed in a number of roles specialising in meat production, retail sales and wholesale sales “for the largest supermarket chains in Australia and New Zealand”. For six years prior to 2009, he was the Divisional Manager of Meat and Seafood for Woolworths New Zealand. From March 2009 until December 2015, he worked in management roles involving meat, for Coles supermarkets. For six months from around November 2013 to March 2014, he was “General Manager of Production (Meat)” for Coles and from March 2014 until December 2015, he held the role of “General Manager, Meat and Production”. In the various roles he held at Coles from 2009, he was responsible for: the management of the retail meat business from “paddock to plate”; the meat export business; the livestock purchasing team that buys meat from farmers; the operation of meat processing plants and the establishment and operation of “retail ready rooms” which are secondary meat processing facilities where meat is prepared for retail sale. He resigned from Coles in December 2015.
160 In his affidavit, Mr Watson sets out the method adopted by Coles for sourcing, producing and selling meat which is, he says, with limited exception, “Coles branded meat”. He says the process adopted by Coles is “tightly controlled” so that meat branded with the Coles brand is “synonymous with consistent and particular standards”. Coles does not own any farms. It purchases livestock directly from farmers and agents. It has a livestock purchasing team which attends saleyards to make purchases. Once livestock has been purchased, Coles outsources the processing of the animal to others who undertake the kill, and process the carcass into “primal cuts” according to the “strict specifications” of Coles. Thus, abattoirs are paid a fee to process the meat to the specific requirements of Coles which include the “cold chain management and quality control” process. The fee paid by Coles for such processing is referred to as a “kill and bone fee”. Coles sometimes also purchases meat from meat processors. However, between 90% and 95% of the meat that Coles sells is processed from livestock purchased by Coles. Once processed into primal cuts, the meat is then sent to a “retail ready” room for processing for sale. Coles causes livestock it purchases to be processed through a kill and bone process at plants at “Harvey Beef” in Western Australia; “Cannon Hill Australian Country Choice” in Queensland; Scone in New South Wales; and Brooklyn in Melbourne. The third and fourth facilities just mentioned are owned by JBS.
161 The remaining 5% - 10% of the meat that Coles sells is purchased by Coles after processing. This is packaged “trim meat” or “carton meat” which has been processed into the processor’s own bags or boxes. This meat is supplied in the processor’s own packaging. It is required to meet the specifications set by Coles concerning cut, quality, cold chain management and quality control. Such meat is only acquired by Coles from any approved facility of which there are 20 to 30 such facilities throughout Australia. All secondary processing of meat is undertaken by “specific processors” for Coles under contract. The “retail ready plants” can only supply Coles, as a retailer. The contracts provide for a set processing fee and an approved method or process. There are four such “toll processors” that Coles uses around Australia. In July 2015, Coles opened its own retail ready room in Sydney. This is where a lot of secondary processing and packaging for meat products for Coles is now undertaken. Mr Watson says that approximately 76% of all livestock and meat purchased and processed on behalf of Coles “will end up in Coles supermarkets marketed under Coles’ own brand”.
162 Mr Watson says that apart from the retail business, Coles has a very significant processing, export and wholesale business. Cuts which are not as popular in the Australian market are often sold for export. Approximately 23% to 24% of the volume of meat purchased by Coles is sold to the export market after processing.
163 Mr Watson says that in his experience, “purchasers of Coles’ meat for export are primarily interested in where the meat was processed – that is, which particular establishment number”. He says it would be very rare for an export buyer or any wholesale purchaser to not enquire of Coles about the establishment number their purchase was coming from. He says that in the domestic market Coles may sell meat, excess to its requirements, to IGA in the same way that other meat processors may make wholesale sales.
164 As to the relationship between Coles and the processors, Mr Watson says that Coles regularly monitors each facility to ensure that the meat is processed in accordance with the specifications set by Coles. He says that Coles buyers maintain close relationships with the management of each facility and in this regard, Coles “functions like other meat wholesalers”. He says that over many years he has had regular contact with many meat wholesalers around Australia and, based on these interactions, he says that most other wholesalers are just as focused as Coles on the quality of the meat, the consistency of that quality and the establishment numbers of the facilities undertaking the processing. The establishment numbers are a unique number used to identify the abattoir or accredited boning room or accredited processing room. Mr Watson says that the establishment numbers specific to each individual facility are well-known to the buyers. He says that the establishment number “carries the facility’s reputation” and “it is distinct from the brands of meat that may be produced at that facility”. Mr Watson says that the buyers for Coles know which establishments provide “specific cuts” to the volume and specifications required by Coles. Coles is actively engaged in quality control and quality assurance with its processors. He says that Coles employees regularly attend every meat processing plant in its supply chain and certify that the establishment meets the requirements stipulated by Coles. He says that the buyers regularly attending these facilities in the Coles supply chain “know them inside and out”. Coles will only purchase meat from a plant which can produce the volume required by Coles to the correct specifications.
165 Mr Watson says that Coles would never purchase meat from someone it did not know and during his time at Coles, the company never purchased meat from someone “we did not know extremely well”. He also says this at para 38:
… Even if Coles had a shortfall of mince, for example over the summer Christmas period, Coles would prefer to have empty shelves than take a risk on purchasing meat from someone Coles had not certified. There certainly would never have been any possibility of Coles purchasing meat from one supplier in the mistaken belief that it was coming from elsewhere.
166 Mr Watson was involved, at Coles, in overseeing the sale of meat to the domestic wholesale and export markets. He says that the domestic and export customers were, like Coles, primarily focused on the establishment number of a processing plant and the buyers that he engaged with during his period at Coles “all had a sophisticated knowledge of the establishment numbers”. He says, at para 41, this:
Domestic wholesale and export purchasers would, in my experience, always ask which establishment number or plant their purchase was coming from. Many of these buyers had a deep knowledge of the particular processing facility and had visited the facility personally.
167 As to brands, Mr Watson says at paras 44 and 45 that, in his experience, “specifically branded meat is rare in the Australian meat market”. He says that, for Coles “there is a very clear imperative that no brand other than the Coles brand appears on the meat”. He says that “one of the few meat brands” on the “Australian retail market” is the King Island Beef brand of beef. This brand used to be owned by the Tasman Group but is now owned by JBS. He says another brand is David Blackmore’s Wagyu beef. He says both these brands can be found in retail stores, “but they are among the few”. He says that in his experience, “only a small minority of customers would be aware of these brands and there are few other red meat brands at the retail level in Australia (except for the retailers’ own brand)”. He says that, in his time at Coles, Coles supermarkets rarely sold red meat under brands other than the Coles brand except for King Island Beef. That occurred because the commercial interests of Coles were best served by presenting meat products with only “Coles brand beef” to customers.
168 Mr Watson says that part of his role at Coles involved keeping a close eye on its competitors with the result that he visited the stores operated by competitors at least once a week and, in particular, he regularly visited stores operated by Woolworths and IGA. He also made visits to independent butcher shops so as to be always up to date with what was happening at the retail level. He says that independent butchers tend to buy their own carcasses or buy boxed meat from processors such as JBS or elsewhere.
169 Mr Watson says that, in his experience, in relation to brands, independent butchers have the same imperative Coles faces. These butchers do not want people to go to another butcher which might carry the same supplier’s brand of meat. They want customers to return to their store because their meat is consistently of good quality. He says that, because of this, independent butchers rely on “good establishment numbers” in the same way that Coles does when buying meat. He says they tend “not to stock branded meat”. He says, based on his discussion with meat wholesaler customers, that when making purchase orders, independent butchers typically ask for meat from a specific facility.
170 Mr Watson says that butchers are also sophisticated buyers and have good knowledge of where the meat they are selling has come from.
171 Mr Watson says that based on his experience he estimates that a supermarket or independent butcher may receive up to five different telephone calls from meat wholesalers each day. In these calls, both supermarket buyers and independent butchers interrogate the price and product and clearly demonstrate that they “understand the product that they need that will satisfy their cutting, yield and eating requirements”. He says that these calls may sometimes be quick because these customers want the current prices of various products so as to make an assessment of what is available in the market. The butcher or supermarket will then call back, often quickly, to place an order after assessing what products are available in the marketplace. Mr Watson says that, in his experience, a buyer will not be confused about what product they are ordering. He says that if a buyer wants AMH branded product, they will order AMH and if they want AMG product, they will order AMG. He puts it this way at para 57:
That is because that butcher has made a sophisticated buying decision, informed by quality, price, processing plant, cut and breed of meat. To suggest that a butcher would intend to order AMH and happily receive a box of AMG meat suggests that [that] butcher would not be interested in where their meat came from, what the quality of meat was like and what customer feedback had been given about the meat. This is not an accurate representation of the sophistication of buyers in the meat market at a domestic level.
172 Mr Watson, like Mr Hurst, has looked at Annexures “A” and “C” to the FT Statement. As to those images, he says that the existence of the AMG logo on the meat in the photographs “is just a by-product of IGA buying meat traded from a wholesaler and not repackaging it”. He says that if you look at a “retail docket” for the sale of meat, it would not identify the brand of meat as AMG but simply identify the cut of meat, for example, “eye fillet”. Mr Watson says that he has looked at the receipt for the purchase by Ms Jepson of AMG branded rib fillet at the IGA supermarket in East Brisbane and notes that the receipt makes no reference to AMG.
173 At para 64, Mr Watson also says this:
In my experience I have not seen AMH as a significant brand in the marketplace, either as a buyer of meat, a wholesaler or a brand for sale at a retail level and have not done so since JBS purchased Australian Meat Holdings in 2007.
174 Mr Watson also says that in the course of his employment with Coles, when interacting with JBS representatives, they have always identified themselves as JBS employees and never as representatives of AMH. He says that he has, of course, been aware of AMH as a major meat processor in Australia prior to its sale to JBS. He says he was at all times very clear about whom he was contracting with and there was never any room for confusion because he knew the establishments Coles was buying from and their approved establishment number. He also says that there is “some continuing awareness of the AMH brand within the Australian industry, at least amongst long-term industry participants”. He says the brand is remembered as “what was a major beef brand”. It was considered to be a Queensland brand “because its meat generally came from northern cattle processed at Queensland establishment numbers [facilities]”.
175 At para 67, Mr Watson says this:
I think consumer awareness of the AMH brand today would be very low if it exists at all. I have read the affidavit of Bradley De Luca, in particular paragraphs  and  of that affidavit in which comments are made about the strength of the AMH brand. In my experience there is no doubt that AMH is known in the meat industry and in the Queensland meat community in particular. However I believe most of this association is historical. In my experience, JBS have made a concerted effort to push their brands over the top of the AMH brand.
176 As to the AMG device mark, Mr Watson says that he has been shown that trade mark. He says that if he saw this mark being used in relation to meat, either on packaging or in any other way, he would not think that it was related to the old AMH brand or to JBS and he is not aware of confusion between these brands. He says that market participants are, in his experience, very well informed about precisely what they are buying and from whom they are buying it.
177 The respondent also places particular emphasis upon the evidence of Mr Ross James Goodman. His first affidavit is at Vol 2, Tab 19 and his further affidavit is at Tab 5 of the supplementary material.
178 Mr Goodman is a domestic Sales Manager for AMG. From 1974 to 1990, he worked as a Meat Inspector for the Victorian Department of Agriculture. He was the Inspector in charge of boning rooms. From 1990 until 2002, he was employed by DRJ and managed its “Melbourne branch”. For approximately six years he was employed as a salesman at DRJ. He was engaged in both purchasing meat and meat products and selling meat to independent butchers, supermarkets and restaurants. After six years he became Manager of the Meat Sales Team. From 2002 until 2008, he was employed by Tasman Group Services (“TGS”) and he was working there until the business was sold to JBS in May 2008. He ceased employment with TGS on 28 August 2008. From 6 October 2008 until November 2010 he worked as a Meat Trader with another organisation and from 22 November 2010 until 28 March 2014 he was employed as a Meat Buyer for Tasman Fresh Meats (“Tasman”), a business operated by Mr Catalfamo Snr. Tasman operated 15 large stores selling meat (among other food products). When employed at Tasman, Mr Goodman purchased meat from many different manufacturers and wholesalers including JBS, Teys, Kilcoy, Bindaree, Major Meats, Oakdale, Thomas Foods and others. From 2 February 2015, his employment transferred to the respondent company and Mr Goodman has worked there ever since.
179 Mr Goodman disagrees with Mr Eastwood’s observation that he was previously an AMH salesman. He says that at DRJ he traded all brands as well as AMH meat and when he worked for DRJ it was not a company associated with JBS.
180 As to the question of differentiation, Mr Goodman says that he and others at AMG had to undertake significant work to establish a reputation for AMG in the domestic meat market, as a new entrant. He says that Mr Catalfamo Snr and Mr Cabral have generally worked with southern cattle which are either an Angus breed or a Hereford breed whereas AMH generally uses northern cattle. He says that even though AMG uses “better cattle” and gets a “better cut”, AMG has had to ensure that potential new customers understand the quality of the AMG beef product and this means, he says, that customers need to understand the company, its focus on quality “from start to finish” that is, from procurement to boning to processing and chilling.
181 As a result, Mr Goodman and others within AMG began contacting in late 2014 wholesalers to educate those buyers about AMG and the product and this occurred before completion of the refurbishment of the purchasing plants. In these telephone calls, Mr Goodman explained the role of Mr Catalfamo, the engagement of some of the people from the old TGS and the new name selected for the business. Mr Goodman says that there are approximately 15 domestic wholesalers with which AMG trades. He said he contacted many of these wholesalers when making his telephone calls. Many of the calls were made to well-established wholesalers who knew Mr Catalfamo and Mr Cabral from the TGS days. He says that about 80% of the transactions AMG has with wholesalers are based “around relationships” and a sense of “trust and quality”. Nevertheless, he says what matters most to buyers is the quality of the meat in the carton. He says buyers do not buy AMG meat because of the name of the company, they buy it on the basis of the quality of the product and on the footing that “the cutting lines are right”. He says that, in his experience, domestic wholesale buyers that he contacts have “critically analysed our product to make sure it stands up”. He says that no domestic customer that he has dealt with has ever said anything to him to indicate any confusion between AMG and AMH. He says that if someone had said to him that they thought AMG was associated with JBS and AMH, he would have wanted to change AMH’s name partly because, as to JBS, he has “not liked what [he] has seen” in terms of business practices.
182 In his supplementary affidavit, he says some things about the practices of butchers in acquiring meat products. He says that, in his experience, if a butcher has not purchased a particular brand of meat before, he or she would ask where the meat comes from; the name of the producer; what the quality of the meat is; and what the seller thinks of the meat products. He also says that butchers are often sceptical of the way meat is described and want to see it for themselves and they often order a small quantity so they can check the quality of it before buying more product.
183 As to this north/south divide issue, Mr Goodman says that AMH is “well known to be a Queensland brand of beef”. In the retail and wholesale meat trade there is, he says, a big distinction between Queensland beef and Victorian beef. He says that this is because the climates and the pastures of each of those States are very different and different breeds of cattle are used in each of those States. He also says that the AMG cartons carry a sticker and other text referring to Establishment Number 3085 which is a reference to AMG’s Dandenong plant (as to the examples see “RJG-1” and “RJG-2” to the supplementary affidavit).
184 During the course of cross-examination a number of emails (Exhibits 31, 32 and 33) were put to Mr Goodman. Mr Goodman accepted that during the period from 22 November 2010 to 28 March 2014 when he worked for the “retailer” Tasman Fresh Meats (a company then controlled by Mr Catalfamo Senior), it was “commonplace” for Tasman to be ordering meat by reference to the trade mark AMH: T, p 231, ln 18; T, p 231, lns 20-32; T, p 235, lns 1-10. Exhibit 31, relevantly, consists of an email sent on 28 October 2013 at 12.09pm from Mr Knapman of DRJ offering Mr Goodman (Tasman), eight products, five of which are described as AMH products such as “½ plt Cube roll AMH 2.2-3.1kg $9.80 (will be $10.20 on next lot)” and three of which are “Swift” products. Mr Goodman responded at 12.14pm on the same day (five minutes later) to say he would take the “budget cubes” and provided a purchase order. Mr Knapman then sent the email exchange to Mr Tancred, his Manager.
185 Exhibit 32 is another example, this time on 27 September 2013, of email exchanges between Mr Knapman of DRJ supplying Mr Goodman of Tasman with “two plts A Cubes 2.2-3.1kg AMH at $8.60” and Mr Goodman providing Mr Knapman with a purchase order (279703). Mr Goodman gave evidence that this particular purchase of AMH product was a “budget product” as they had a “budget product going out”, presumably for retail sale: T, p 235, lns 4-6.
186 Exhibit 33 is an invoice dated 28 August 2013 issued by DRJ for the supply of product which Mr Goodman accepts was “indicative of the kind of document which [he] received during [his] time [at Tasman]”: T, p 235, lns 46-47. It recites a “Code” of “AMH 22442” in a column next to a description of the meat product and then columns showing the number of cartons, weight, unit price and total amount. Mr Goodman said that he regarded the reference “AMH 22442” as not so much a code but rather a “reference to the supplier and the meat I was buying”: T, p 235, lns 35-36.
187 Exhibit 34 is another invoice, issued by DRJ to Tasman, for the supply of “100 d GF Cube Roll” dated 10 February 2014. The product code is described as AMH with product numbers. The point of this invoice apart from reciting AMH adjacent to the product description is that it also recites “Direct delivery 120927”. Mr Goodman accepted that this invoice provides for special delivery instructions such that the product is to be “sent directly from [DRJ] in Queensland without going via [DRJ] Melbourne”: T, p 236, lns 31-37.
188 Mr Latemore is an export sales representative of the respondent. He has worked in the meat industry for over 35 years. He worked for AMHPL from 1986 to 1990 and re-joined the company as a domestic salesman in 1991. He worked for the company until 2007. After that, he was employed by JBS.
189 In his affidavit (Vol 2, Tab 20), he asserts that the “AMH brand” is now just a “commodity brand” or a generic or “home-brand” style brand. He says that in his experience in working for JBS, the AMH brand was never treated as a “specialist brand”. Nevertheless, however Mr Latemore might seek to characterise the nature of the AMH brand, there is no doubt that JBS, on Mr Latemore’s evidence, continued to treat the AMH brand as a brand or badge of identification of its meat products. The respondent makes no point in its submissions about any distinction between a specialist brand and any other class of brand so far as it relates to the AMH trade marks.
190 As to the respondent, Mr Latemore says that he began working for the respondent on 3 November 2014. He says that in December 2014, he and Mr Cabral and Mr Hurst undertook a sales trip overseas to commence marketing the new company to purchasers in other countries. He says that he met up with many of the clients and customers he had worked with over the last 20 years. He spoke to the PowerPoint presentation previously mentioned. He met with people across the meat processing and sales industry, from people in production to people in industry. He met people who spoke of the reputations of Mr Cabral and Mr Catalfamo built up when they were trading as the Tasman Group. He says that he, Mr Cabral and Mr Catalfamo made it clear that they were setting up a new business. Mr Latemore takes issue with the observations of Mr Eastwood to the extent that there might be confusion from either previous customers or new customers arising out of his former employment with JBS. He takes issue with the notion that there might be any confusion, by reason of his former employment, about whether there is a relationship between JBS and the Australian Meat Group. He says he has no knowledge of this ever occurring. He also says that when he makes phone calls to make export sales for the respondent, he “always” uses the full name of the company, Australian Meat Group, “as it tells the listener who we are and what we sell”. When dealing with new customers, Mr Latemore says that he takes time to explain the company and its operations. He says that with new customers he always makes clear that he is working for a new company called Australian Meat Group. Mr Latemore also takes issue with some aspects of Mr Braddock’s evidence about the potential for distraction caused by background noises of equipment when conversations are taking place about possible orders. Mr Latemore says that in the export market, these circumstances do not arise as the conversations are always taking place in office environments.
191 Mr Tony Tarquinio is the Chief Financial Officer and Company Secretary of AMG. His name has arisen in two contexts. First, he was engaged in email exchanges with participants engaged in the investigation of possible names for the new company and ultimately the adoption and proposed use of the name Australian Meat Group Pty Ltd. Second, the applicant contends that the respondent’s failure to call Mr Tarquinio coupled with a failure to explain his absence as a witness notwithstanding that he was present in Court on day one and resides in Australia, gives rise to a Jones v Dunkel (1959) 101 CLR 298 inference that his evidence would not have assisted the respondent’s case on the issue of a contended failure by the respondent to address in evidence what response was made, if any, to Mr Tarquinio’s concern expressed in his email of 21 February 2014 at 11.24am to Mr Zervos (quoted at  of these reasons) where Mr Tarquinio expressed a “preference” for the name Australia Meat Group although there “could [be] brand issue implications in the future”. I will address that question later in these reasons.
Associate Professor Cox
192 The respondent also places emphasis upon the report of Associate Professor Felicity Cox and related material. Associate Professor Cox holds a position in the Department of Linguistics in the Faculty of Human Sciences at Macquarie University. Associate Professor Cox’s Curriculum Vitae is set out at “FMC-1” to her affidavit dated 28 April 2016: Vol 3, Tab 23. Associate Professor Cox was asked to express an expert opinion on three questions by the solicitors for the respondent, Holding Redlich. The questions were these:
1. How would ordinary Australians be likely to perceive, pronounce and remember the linguistic elements of the following trade mark (“the First Trade Mark”)?
2. How would ordinary Australians be likely to perceive, pronounce and remember the linguistic elements of the following trade mark (“the Second Trade Mark”)?
3. From the perspective of an ordinary Australian who has previously encountered the First Trade Mark, what linguistic similarities and/or differences would that person be likely to perceive in the Second Trade Mark?
193 Associate Professor Cox responded to Holding Redlich and said this:
… With respect to the questions that you have outlined in the draft linguistic expert retainer letter, I am confident that I can provide an assessment of questions 1 and 2, but specific to the following [area of enquiry] “How would ordinary Australians be likely to pronounce and auditorily perceive” the two marks[,] I want to make it clear that I am not an expert in visual perception so cannot comment on the visual impact of the marks. Note also, that I cannot comment on how people would ‘remember’ these marks.
For question 3, I am able to provide an assessment of the linguistic similarities and differences between the two marks in terms of how they would be pronounced and auditorily perceived by ordinary Australians. Note again that I cannot comment on any possible ‘remembered’ aspects of the marks.
194 As to those matters, Associate Professor Cox provided an expert report dated 26 April 2016.
195 The following matters should be noted.
196 Associate Professor Cox is a “phonetician” employed as earlier described. She is the Director of Undergraduate Studies for the Department of Linguistics and she teaches Undergraduate and Post Graduate courses in phonetics, phonology and speech science. Associate Professor Cox regularly speaks at local and international conferences on the phonetics of Australian English. Associate Professor Cox is widely published in this discipline.
197 Phonetics and phonology are two closely related scientific branches of linguistics that involve the study of speech sounds and in particular their production, perception and patterning in human language. Associate Professor Cox says that her extensive knowledge of these areas of linguistics allows her to form an expert opinion with regard to the similarities and differences between the two marks “AMH” and “AMG” in terms of how they would be pronounced and, by extension, how they would be auditorily perceived. In summary, she says this:
5. It is my opinion based on my linguistic knowledge, that the two trademarks AMH and AMG, which are acronyms constructed as labels to represent separate commercial entities, would be pronounced differently when read by ordinary Australians and would therefore also be auditorily perceived as different. …
198 Associate Professor Cox explains the difference between acronyms and initialisms. An acronym is a process of word formation by which various parts of a sequence of words such as Australian Broadcasting Corporation are extracted and recombined resulting in an abbreviation such as ABC. Some acronyms are pronounced as words, such as SWAT and UNICEF whereas, for others, the pronunciation of the acronym is based on “producing a string of individual letter names”, such as references to, the ABC. Acronyms pronounced as a string of letter names are sometimes differentiated as initialisms. Associate Professor Cox says that it is likely that the trade marks AMH and AMG would both be pronounced as initialisms. Associate Professor Cox then explains some of the factors that contribute to whether an acronym emerges either as a “word-form” or an “initialism”. One of those factors relates to English word construction which requires each syllable to contain a vowel sound. It is not necessary to examine the rules governing word construction in English, in these reasons. It is enough to note that Associate Professor Cox considers that the trade marks AMH and AMG do not satisfy the criteria for word-forms in English and thus in order for readers to pronounce the acronym they would be likely to instead use the letter names. Associate Professor Cox observes that the two trade marks are similar in that they both contain three syllables each of which is a representation of a letter name but the difference between them lies in the “pronunciation of the final syllable”. Associate Professor Cox says that the method linguists use to test whether a phonetic difference is important in signalling different meanings in language is to compare pairs of words that are identical in every way but differ by a single phonetic element. The phonetic difference between two words is considered to be a linguistically important difference if listeners identify words within the pair as meaningfully different from one another. Associate Professor Cox gives an example of that proposition in the words “dog” and “dot”, observing that the difference in the last speech sound of each word is the differentiating feature that leads to different meanings.
199 Associate Professor Cox says that the orthographic representation of the marks AMH and AMG are similar as they contain the same sequence of first two letters. The sequence AM, when pronounced as an initialism, contains two syllables each representing a letter name. Associate Professor Cox says that it is the last syllable of each mark that differentiates them in production. However, it is “not just a single phonetic element that differs in this syllable (as in the ‘dog’ and ‘dot’ example above) but the entire syllable differs” [emphasis added]. Associate Professor Cox concludes that this final syllable difference is linguistically important ensuring that the two marks would be pronounced differently by speakers and auditorily perceived as different by listeners.
200 Transposing that proposition to words or illustrating the point by reference to words, Associate Professor Cox notes that an example of English words that contain three syllables and differ only in the final syllable, when spoken, are dinosaur and dynamite.
201 Associate Professor Cox also observes that there are many common acronyms that also contain three syllables comprised of letter names which differ only in the final syllable examples of which are AFI (Australian Film Institute), AFL (Australian Football League) and AFP (Australian Federal Police).
202 The ultimate conclusion reached by Associate Professor Cox at para 18 of her report is this:
In conclusion, it is likely that AMH and AMG will be pronounced as initialisms by ordinary Australian[s] because the letter sequences do not comply with productions that could create legal sequences of sounds in [the] syllables necessary to create words in English. There is no question that the pronunciation of the first two syllables of the two marks would be the same. The critical difference lies in the pronunciation of the final syllable. This type of difference is linguistically important as evidenced by real words such as ‘dinosaur’ vs ‘dynamite’ and other acronyms such as [the three earlier mentioned examples: AFI, AFL and AFP]. These examples are used to highlight the importance of the final syllable in differentiating the two marks in pronunciation and therefore auditory perception.
203 I have examined the evidence in considerable detail particularly having regard to the emphasis placed by the respondent on the need to consider all of the relevant circumstances put in evidence (on both sides of the record) which condition an answer to the central question of whether the respondent has engaged in conduct of using, as a trade mark, a sign that is deceptively similar to the AMH trade marks in suit in relation to the relevant goods, quite apart from the question of whether the impugned mark AMH is substantially identical with the AMH word mark. The applicant presses the probative value of all of the evidence it has put on and says that the matters of emphasis relied upon by the respondent (and much of its evidence) is to a large degree ultimately irrelevant to the resolution of the central question having regard to the principles to be applied to the relevant facts.
The principles to be applied
204 The principles to be applied are reasonably clear.
205 JBS is the owner of the AMH device mark and the AMH mark:  and  of these reasons. There is no challenge to validity.
206 As registered owner, it has the exclusive right to use the marks and to authorise others to use the marks: s 20(1). It also enjoys the right to obtain relief under the TM Act if either trade mark has been infringed: s 20(2). These rights accrue from the date of registration of each trade mark and by operation of the definition of “date of registration” in s 6, the rights accrued in respect of the device mark on 20 July 1989 and in respect of the AMH mark on 4 September 2015.
207 The measure of whether a trade mark has been infringed is found in s 120. Although s 120 of the TM Act is well-known, it is worth remembering that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to, relevantly, the goods in respect of which the trade mark is registered. Section 10 provides that, for the purposes of the TM 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 120(2), relevantly, provides that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with or deceptively similar to the trade mark in relation to goods of the “same description” as that of the goods (registered goods) in respect of which the trade mark is registered.
208 However, for the purposes of s 120(2), the person is not taken to have infringed the trade mark if the person establishes that using the sign, as the person did, is “not likely to deceive or cause confusion”. If the proviso to s 120(2) were to be relied upon and the burden of it discharged, the registered trade mark would not be taken to be deceptively similar for the purposes of s 10 and thus s 120(2) of the TM Act.
209 The applicant bears the onus of making good all of the elements of the causes of action upon which it relies.
210 The question of whether the respondent has used any of the impugned signs as a trade mark is simply a question of whether it has used any of those signs as a “badge of origin” of its goods to distinguish its goods from others in the course of trade in meat products. Plainly it has and does so in its competition with others for the sale and supply of meat products on the domestic and export markets.
211 The question of whether the respondent’s use of any of its trade marks is substantially identical to either of the AMH trade marks involves a side-by-side comparison of the particular impugned mark and the particular registered trade mark, according to the following orthodoxy: the similarities and differences emerging out of the comparison should be noted and the importance of them assessed having regard to, first, the essential features of the registered trade mark and, second, the total impression of resemblance or dissimilarity emerging out of the comparison.
212 Whether one trade mark is substantially identical with another is a question of fact. In deciding that question of fact, the identification of an essential feature depends partly on the Court’s own judgment as to that feature and partly on the burden of the evidence placed before the Court: The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (“Shell”) at 414.
213 In this case, the contention is that the AMG word mark is substantially identical to the registered trade mark AMH. Although it is so often said that deciding whether one trade mark is substantially identical with another involves a side-by-side comparison, it should be remembered that the process of identifying an essential feature of the registered trade mark may depend, in the relevant case, partly on evidence and partly the Court’s own judgment. In this case, no written or oral submission has been addressed to the Court on any part of the evidence that ought to be taken into account in identifying an “essential feature” of the registered trade mark. The applicant says that greater weight ought to be given to “AM” in each case because “AM” is a “substantial part” of the mark in suit and that substantial part has been retained in the impugned mark. “Substantial part”, of course, is not the test but I take the reference to substantial part to mean that “AM” is said to be an “essential feature” of the registered trade mark.
214 The impugned mark must, however, be “substantially identical” with the registered trade mark.
215 The applicant seems to concede that the final syllables “H” and “G” are “phonetically and visually dissimilar” (para 82, final submissions) although these dissimilarities are said to add nothing to the understanding of the viewer since the letter “H” simply means “Holdings” and the letter “G” simply means “Group”.
216 If aspects of (or the burden of) the evidence were to be taken into account in forming a view about that which is an “essential feature” of the registered trade mark (rather than simply a matter of visual comparison), there may be shown to be some force in the notion that the dissimilarities in the final syllable are not such as to render AMG anything other than a mark substantially identical with AMH. However, the registered trade mark and the impugned mark each simply have three letters. Sure enough, “AM” is a substantial part of both and since AM represents 662/3% of each trade mark it may well be an essential feature of both. I accept that it is an essential feature of the registered trade mark. However, one of the three letters in each case is different, that is, one third of the composition of each three letter trade mark is different and the final syllable “G” contains phonetic and visual dissimilarities from “H”. Plainly enough, the trade marks are not identical. I am not persuaded, absent anything else, that they are substantially identical.
217 Even though I am willing to accept that “AM” is an essential part of the registered trade mark, I am not satisfied (absent anything else) that comparing the two trade marks side-by-side, and taking into account the similarity conveyed by the essential feature “AM” and the dissimilarity conveyed by “H” and “G”, that the total impression emerging from the comparison, side-by-side, is such that AMG is substantially identical with AMH.
218 The applicant contends that the AMG device mark (at ), the two AMG (so-called AMG ribbon) trade marks (at  and  and ) and the version of the AMG device mark (described and depicted at ), are deceptively similar to each of the applicant’s trade marks.
219 The question is whether each or any of the impugned trade marks “so nearly resemble” any one of the applicant’s registered trade marks that the impugned mark is “likely to deceive or cause confusion” and if so, the impugned mark is then taken to be deceptively similar to the registered trade mark, as described earlier.
220 Although not a side-by-side comparison, s 10 of the TM Act, on the question of deceptive similarity, nevertheless contemplates a comparison between the registered trade mark and another mark to determine whether one “so nearly resembles that other” that the likelihood contemplated by s 10 arises. The comparison, this time, “is the familiar one of trade mark law”, as Sir Victor Windeyer observes in Shell. It is one between the impression persons of ordinary intelligence and memory would have of the registered trade mark, on the one hand, and the impression that such persons “would get from … exhibitions” of the impugned mark or marks: Shell at 415, Windeyer J. Importantly, the “deceptiveness that is contemplated must result from similarity but the likelihood of deception must be judged not by the degree of similarity [that is, the degree of near resemblance] alone, but by the effect of that similarity in all the circumstances” [emphasis added]: Shell at 416, Windeyer J. The issue is not one of “abstract similarity” but “deceptive similarity”: see also CA Henschke & Co. v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at 61, the Court.
221 The comparison engages an attempt by the Court to estimate the effect or impression produced on the mind of potential customers by the registered trade mark or registered device mark. That impression or recollection carried away and retained by the customer is necessarily the basis of any mistaken belief that the impugned mark or device is the same: Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (“Australian Woollen Mills”) at 658, Dixon and McTiernan JJ. The registered mark might be used and “exhibited” orally. Dixon and McTiernan JJ also said this in Australian Woollen Mills at 658 about the effect of oral use and spoken descriptions:
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.
222 In 1953, Kitto J, in exercising original jurisdiction in the High Court, framed elements of the scope of the enquiry (equally relevant to the comparison contemplated by s 10 of the TM Act) in these terms in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 (“Southern Cross Refrigerating”), leaving aside his Honour’s observations about onus:
(ii) It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough – for there must be a real, tangible danger of its occurring (Reckitt & Colman (Australia) Ltd v Boden …) – it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
(iii) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods: Jafferjee v Scarlett).
(iv) In applications for registration, the rights of the parties are to be determined as at the date of application.
223 As to the proposition at (ii), Kitto J also said this at 595:
The proposition means that a probability of confusion, if it is real, is sufficient [under s 114] even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. … Of course, it is in relation to commercial dealings with goods that the question of confusion has to be considered, and the persons whose state of mind is material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark. References to these persons as purchasers or customers, and to buying and selling, in the Reckitt & Colman Case as in many others, indicate nothing more than a recognition of this fact.
224 Kitto J also rejected as incorrect, at 596, the notion that:
... [T]here cannot be a likelihood of deception … if ordinary caution would lead an ordinary purchaser, in whose mind confusion had been engendered by the mark, to inquire into the origin of the goods, and if a competent seller of the goods, acting competently and honestly, would be likely to answer the inquiry in such a way as to dispel the confusion before a sale took place.
225 Kitto J also said this in relation to proposition (ii) at 596:
The second of the propositions I have set out has the authority, not only of Romer L.J., but also of Lord Morton, who, as Morton J., said in Re Hack’s Application: “The question whether a particular mark is calculated to deceive or cause confusion is not the same as the question whether the use of the mark will lead to passing-off. The mark must be held to offend against the provisions of s.11 if it is likely to cause confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived”.
226 At 608, the Full Court of the High Court in Southern Cross Refrigerating (Dixon CJ, McTiernan, Webb, Fullaghar and Taylor JJ) said that the question of whether it is likely that deception will result from the use of a mark which closely resembles a trade mark already in use raises the following considerations:
It may be of importance to see whether the registered mark is general or special in character and to ascertain the extent of its reputation. Again, it may be important to see whether the goods in respect of which it is registered constitute a narrow class or a wide variety of goods as also will be the question whether the goods of both the applicant and the opponent will be likely to find markets substantially in common areas and among the same classes of people. It is, of course, for the person applying for registration to establish that there is no likelihood of confusion and we agree with Kitto J. that registration should be refused if it appears that there is a real risk that “the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source”; it is, of course, not necessary that it should appear that the user of the mark will lead to passing-off.
227 In assessing the impression created by the mark, two other things are important.
228 First, it is important to consider “the idea which the mark will naturally suggest to the mind of one who sees it” (Jafferjee v Scarlett (1937) 57 CLR 115, Latham CJ at 121), and as Latham CJ says at p 122 (in the context of the two marks in issue as described at pp 119 and 120):
… [I]t is very important to remember that the purchasers in [the] market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived. … Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks. They will be guided, so far as they are influenced by trade marks at all, by a general recollection or impression of the mark which they have seen.
229 Second, the Court must make allowance for the “imperfect recollection” a person may have of the registered mark in determining whether another mark so nearly resembles it that the impugned mark is likely to deceive or cause confusion: Crazy Ron’s v Mobileworld (2004) 61 IPR 212 at 228 . The Court must also be conscious of careless pronunciation and speech on the part of not only persons seeking to buy but also those engaged in the selling process, especially in an industry where telephone offers are made and orders accepted, and sometimes retailers might receive up to five calls a day from meat wholesalers.
230 As to the notion of “likely” in the context of s 10, the word does not import a requirement of “more probable than not”. The probability of deception or confusion, however, “must be finite and non-trivial” and “there must be a ‘real tangible danger of it occurring’”: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 (“Woolworths”) at 380 : French J.
231 In Woolworths, French J observed (Tamberlin J agreeing) that the essential elements of the Kitto J propositions in Southern Cross Refrigerating mentioned earlier continue to apply to the issue of deceptive similarity under the 1995 TM Act. His Honour elected to “restate” those essential elements in this way at 382 :
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based on what the applicant can do if registration is obtained.
232 French J also said this in Woolworths at 382 :
The judgment of the likelihood of deception or confusion is a very practical one and what has long been accepted as the proper approach to making that judgment was set out in Australian Woollen Mills Ltd. It requires assessment of the effect of the challenged mark upon the minds of potential customers. Impression or recollection taken away from the point at which the challenged mark is observed will be the basis of any belief about a connection between the new and the old marks. The effect of spoken description must be considered. What confusion or deception may be expected is to be based upon the behaviour of ordinary people. As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded. The question ultimately is not susceptible of much discussion.
233 French J also emphasised the following observation of Dixon and McTiernan JJ in Australian Woollen Mills at 659:
It [the judgment as to the likelihood of deception or confusion] depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.
234 The observations of Mason J in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362 need to be kept in mind. That is:
… the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.
235 In Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45, the High Court in the joint judgment (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ), expressed some observations (among many other remarks) on the scope of the phrase “would be likely to deceive or cause confusion” in s 28(a) of the Trade Marks Act 1955 (Cth) and although s 10 of the TM Act uses the phrase “is likely to deceive or cause confusion”, the remarks at  nevertheless ought to be noted:
… The question whether there was a likelihood of confusion was not to be answered by reference to the manner in which the applicant for registration had used its mark in the past. Rather, regard was to be had to the use to which, within the ambit of the registration, the applicant could properly put the mark if the application were to be granted. The onus to show that there was no such likelihood was to be discharged by the applicant in respect of all of the goods coming within the specification in the application, not only in respect of those goods on which the applicant proposed to use the mark immediately. Thus, if registration were sought in respect of particular goods and there would be a likelihood of deception if the mark were used upon such goods marketed as expensive products, it was no answer that the applicant proposed to use the mark only upon goods to be sold as inexpensively produced items.
236 In these proceedings, I accept that the goods in question are essentially the same goods. They are various forms of meat products. Some of the products are differentiated by reference to other descriptions which are intended to suggest differentiations in quality, such as “Platinum”. However, both the applicant and the respondent are rivals in respect of a broad sweep of the same meat products in the domestic and export markets.
Findings and observations in relation to the evidence
237 It is now necessary to say some things about the evidence described in these reasons.
238 I find as facts the matters set out at -, - and - of these reasons.
239 As to the evidence of Mr Eastwood, he expressed some views about the conduct of Mr Goodman and Mr Latemore and others. He took the view that their conduct would be likely to lead to confusion. Those observations are contested by Mr Goodman and Mr Latemore. It is not necessary for me to decide questions about those matters. It seems to me unlikely that the conduct of either person, by reason of their former employment as they describe it, would bring about the confusion Mr Eastwood expresses. As to his other evidence, I accept his evidence generally and I accept the matters described at - of these reasons.
240 I also accept the evidence of Mr De Luca and, in particular, the matters described at - and -.
241 I also accept the evidence of Mr Tancred and, in particular, the matters described at -.
242 I also accept the evidence of Mr Tatt and, in particular, those matters described at -.
243 I accept the evidence of Ms Jepson and Ms Murdoch.
244 Mr Braddock and Mr Black have both given evidence about their own experience in selling meat products to retailers on the one hand and buying meat as a butcher on the other hand. I accept their evidence described at - subject to one aspect of Mr Braddock’s evidence, that is, I accept that in the context of telephone conversations about offers for the sale of meat products and acceptances of those offers in relation to export sales, the distractions which may occur in the domestic industry mentioned by Mr Latemore, are not likely to arise.
245 As to the evidence of the respondent, Mr Cabral is clearly a highly experienced industry participant. I accept the evidence he gave as described at  up to and including the first sentence of . I will return to the remainder of the evidence described at . I accept the evidence he gave as described at -. I accept that he holds the opinions described at  but, of course, I make no findings about the facts asserted. I note the matters Mr Cabral accepted in cross-examination described at . I also accept that Mr Cabral holds the opinions described in the first two sentences of . I accept that his experience is that customers from Japan, Korea and Taiwan either choose, or tell him that they choose, their meat for reasons of quality and that they associate a certain standard of quality with the establishment number of a processing plant. I accept the matters described in the fourth sentence of  and I accept that he holds the opinion described in the fifth sentence of . I accept his evidence in relation to the remaining matters described in .
246 I accept the matters described in the first two sentences of  and I accept that Mr Cabral holds the opinion described in the third sentence of . I accept Mr Cabral’s evidence described at -.
247 There are, however, two qualifications to be made to the acceptance of Mr Cabral’s evidence. The first concerns an aspect of his own evidence and the second concerns observations which go to aspects of Mr Cabral’s evidence but also views expressed by Mr Hurst (and to some extent at least, also the evidence of Mr Goodman and Mr Latemore, although less so).
248 As to Mr Cabral individually, the remaining matters described at  and his oral evidence to the same but more extensive effect, I do not accept that a person of the standing, knowledge, experience and commercial sophistication, so far as the dynamics in operation in the domestic and export markets for the supply of meat products at the various functional levels of the market is concerned, did not know that JBS was using the “AMH brand” in 2014 or in the period between 2008 and 2015. It seems to me highly likely that Mr Cabral understood, in substance, the size and scale of the “AMH” business of JBS (although, of course, not in any statistical detail for all the obvious reasons). Mr Cabral is a man with a clear degree of connectedness to the meat industry over a long period of time and his engagement in the supply-side of the industry must have made him astute to the presence of the AMH brand (having regard to its presence and reputation demonstrated by the enormity of the use of that mark) even though it may also have been used in conjunction with some other branding such as Swift Premium, Friboi and Royal, apart from very substantial use on its own. The data is compelling.
249 That is not to say that I do not accept that Mr Cabral was doing the best he could with his evidence. Although it was put to him in cross-examination that he seemed to be minimizing his knowledge of the AMH brand, I am certain that Mr Cabral is simply confused about his recollections about these matters. The opinion Mr Cabral holds on this issue is expressly inconsistent with the extent of the reputation in the AMH brand adopted and conceded by the respondent in these proceedings (T, p 333, lns 18-20) to the point where at the functional levels of the “wholesalers, export markets, and for supermarkets, and for independent butchers”, there is a “strong reputation”. Senior Counsel for the respondent, Mr Heerey, “embraces” what Senior Counsel for the applicant, Mr Shavin, “says about the endless thousands of millions of kilograms and cartons [and bags] flowing into wholesalers and distributors, and butchers, on a regular basis with the AMH brand blazoned all over it with its particular logo”: T, p 333, lns 26-29. Mr Heerey says that a certain consequence flows from that (the Maltesers point) but as to reputation at those functional levels (which excludes the functional level of the retail consumer), the actual position adopted by the respondent is clear.
250 These observations are not designed to enter into a territory not pressed by the applicant concerning any contended intention to deceive. These observations go to the extent of the reputation subsisting in the AMH trade marks in JBS which is a matter relevant to deceptive similarity.
251 I will return to the second qualification in relation to Mr Cabral’s evidence which also goes to the evidence of Mr Hurst (and to a lesser degree, the evidence of Mr Goodman and Mr Latemore).
252 I accept the evidence of Mr J J Catalfamo.
253 As to Mr Hurst, I generally accept the matters described at -. I will address the qualification shortly. As to the matters described at , I accept that it may well be common, in Mr Hurst’s experience, for some retailers to put their own label on meat products. However, I do not accept that it is common for retailers to put their own label “over” any “pre-existing supplier’s brand”. That proposition is far too general in its apparent ubiquity. It is not supported by the many images in evidence in the proceeding or the images at , , ,  and . If transactional visitations to sites on particular days resulted in inspections showing the results reflected in the photographs, I am not content to act on the basis that it is common that retailers place their own label over a pre-existing supplier’s brand, so as to support the proposition that the pre-existing supplier’s brand is obscured, obliterated or not otherwise able to be seen and inspected. Nor do I accept the generality of the statement that at IGA stores an IGA label is often placed over the pre-existing supplier’s brand. I am, of course, willing to accept that Mr Hurst holds the view he has described. I accept that these things happen from time to time. I do not suggest for one moment that Mr Hurst is not doing the best he can in giving his evidence. It seems to me that his observations must be confined to an expression of his own views in his own experience. However, the broader overall evidence suggests to the contrary. As to one illustration in relation to IGA, it is perfectly plain at  that IGA has not placed its label over the version of the AMG device mark. The other photographs (not all of which can be included in these reasons for all the obvious reasons) illustrate primal cuts where, for example, the AMH device mark is transparently plain and is not covered over.
254 I also have reservations about the generality of the statement that all of the buyers of meat products from the respondent whether “wholesalers, manufacturers or export customers” are “highly sophisticated buyers”. Again, I am willing to accept that Mr Hurst holds that opinion. No doubt some, perhaps most, of the buyers are sophisticated buyers. I am willing to apply the relevant principles on the footing that the buyers (wholesalers, manufacturers, supermarkets and export buyers) of the respondent’s meat products, as the business has emerged to date, are discerning buyers in seeking out product, and are likely to bring an enquiring mind to the relevant transactions. I will return to that matter shortly.
255 The qualification I have concerning the evidence of Mr Hurst and aspects of the evidence of Mr Cabral is this. Each witness emphatically says that what matters in making transactional sales in the export and domestic market for beef products across the various functional levels from meat processing to wholesalers, distributors and retailers is the importance of the establishment number for the facility in which the processing has occurred. The establishment number is said to be the badge of quality. The seller is important as an entity but the quality is said to attach to the establishment number because the establishment number conveys standing in relation to cold chain management processes and other aspects of the processing of meat. Great emphasis is placed upon these things to illustrate the proposition that the brand is not the decisive thing which determines choice by a buyer. Choices are overwhelmingly informed, it is said, by the establishment number.
256 I have no doubt that rigorous, compliant, disciplined cold chain management and supervision of all of the processes undertaken in an accredited meat processing facility are very important matters in meat production and send a signal about quality. Because meat is a perishable commodity, its handling in terms of processing, chilling, freezing, transport and all steps associated with the processing of meat products are critical in ensuring that quality beef products are available for human consumption. I am sure that buyers want to know that the processing facilities are accredited and have a recognised establishment number.
257 However, I do not accept that these fundamental matters of physical meat production diminish the role that trade marks in the industry have in differentiating goods as a badge of origin of one trader as against another. A number of things make that perfectly plain. One of the first things that Mr Cabral and Mr Tarquinio did when they established their new company, was to engage Mr J J Catalfamo to design a new logo or device mark. They knew that their products would need to be differentiated in the market by a badge of origin. When they adopted the company name, they knew that the industry practice was to abbreviate a name such as Australian Meat Group to AMG. Mr Cabral was perfectly plain and frank about it: paras - of these reasons. When the respondent went to the Gulfood exhibition at Dubai, as earlier described, it displayed its device mark immediately next to its name in the brochure (not the establishment number). At its booth, it emblazoned the device mark all over the booth: . When it displayed its meat in the cabinets at the exhibition it had its device mark on the packaging containing the beef products although it may have been the version of its device as depicted at . Nevertheless, it is uncontested that the respondent placed its device mark on the products on display at the exhibition. It puts its device mark on the plastic packaging containing its primal cuts of meat for all to see: . It puts its device mark on its boxes (cartons) in a prominent way: , -. It displays its boxes under the heading “Brands” on its website which display the device mark: . It puts its trade marks on its PowerPoint presentations given to new customers and given to other customers who previously had relationships with one or more of the AMG principal actors: . It uses “AMG” throughout the PowerPoint presentation: ,  and “PJH-2”. In essence, the respondent does everything in this regard that the applicant does in its trade except that the respondent’s numbers are small, by comparison (yet nevertheless significant) with the applicant’s numbers, as the respondent is a relatively new company.
258 The idea that the establishment number is the pivotal matter of differentiation to the point where the AMG trade marks are so significantly diminished that they do not operate as a badge of origin or that they are not important in transactions and thus, no real tangible danger of deception or confusion arises by reason of the respondent’s use of its trade marks, in all the circumstances, is not correct (at least by reason of that factor alone). The establishment number is, no doubt, important because a seller of beef is supplying a product which has to be handled in facilities which have rigorous standards so that humans do not get sick when they consume the product. Of course, a buyer wants to know the establishment number, and buyers might well come to understand the high standards (or otherwise) deployed in particular facilities with a particular establishment number. However, there is no doubt, on the evidence before me, that the respondent is engaged in a field of rivalry with other suppliers at functional levels of the meat industry in which its trade marks are vigorously promoted as a badge of origin of its meat products in market contestable conduct in the domestic and export markets.
259 However, as to other aspects of Mr Hurst’s evidence, I accept that in addition to the role played by the respondent’s trade marks as badges of origin, the respondent engages in transactions, especially in the export market, which are characterised by very large orders: . I also accept that customers placing orders at these levels are likely to be focused upon questions of quality and consistency and that such buyers would want to have confidence that the product supplied is reliable. I also accept that in respect of these sorts of transactions, the relationship between the buyers and the supplier is important and the buyer’s confidence about the standards applied in the supplier’s processing facilities is important. In other words, in a suite of particular transactional arrangements between the respondent and particular buyers, the nature of the relationship and the value and volume of the goods purchased would be likely to cause such a buyer to bring an enquiring mind to the transaction.
260 As to the evidence of Mr Goodman, I generally accept that he has taken significant steps to introduce the new company into the domestic market, the breeds of cattle the respondent prefers, the boning, processing and chilling processes and that many of the 15 domestic wholesalers with which AMG trades have been contacted in this way. I also accept that many of these wholesalers are known to Mr Cabral and Mr Catalfamo.
261 As to Mr Latemore, his evidence is to the same effect in substance as Mr Goodman. He says that when he makes phone calls to secure export sales he always uses the full name of the company, Australian Meat Group, and that he takes time to explain its operations. I accept that Mr Latemore adopts a practice along these lines although I am caused to wonder to what extent he would rapidly adopt use of the acronym AMG. Mr Latemore was involved in developing the PowerPoint presentation and in that presentation, from page 1 and thereafter, the presentation speaks of Australian Meat Group in terms of AMG throughout and gives prominence to the respondent’s trade marks. Mr Latemore was not cross-examined.
262 As to the evidence of Mr Watson, he is an independent consultant to the meat industry and as described earlier, he was, for a time, the General Manager of Meat for Coles supermarkets (“Coles”). I generally accept his evidence subject to the following matters. I accept the matters described at  to  of these reasons. When speaking of his experience of engaging with processors described at  and the tolling arrangements described at , it needs to be remembered that Mr Watson is speaking about a very particular purchaser which stipulates specifications for the processing of meat. He speaks for a buyer which is particularly conscious of the “Coles brand” and the uniformity of providing consistent quality meat products under that brand throughout a whole network of supermarkets. In that sense, Coles is engaged in very particular bilateral transactions. It is not standing in the markets at large. Coles, apart from providing product for sale under the “Coles own brand” in its network of supermarkets, sells on the export market about 24% of the volume of meat it purchases through the particular arrangements with the four processing plants described at  or by reason of the tolling arrangements described at .
263 Mr Watson says that when Coles sells meat into the export market, the buyers are primarily interested in where the meat was processed and, particularly, the establishment number. That may be a result of Coles having acquired beef product for ultimate sale under the “Coles own brand”, under the contractual arrangements with the four particular processing plants mentioned at  and under the tolling arrangements described at , rather than having acquired branded product per se. All product acquired by Coles would ultimately be sold under the Coles brand except for meat, surplus to domestic requirements, being sold on the export market and some sold to other distributors. Mr Watson says that wholesalers also make these enquiries of Coles should Coles be selling (as it sometimes does) meat surplus to its own requirements to a wholesaler. Again, in the context of the particular procurement arrangements adopted by Coles, those enquiries about the source of the processing might be very particular to the circumstances of Coles. However, as described at , Mr Watson puts the matter more broadly than I have just described it and I accept his evidence that there is a practice at the export level and in engaging with wholesalers, so far as he understands the position, to make enquiries about the particular facility in which the meat has been processed and its establishment number. In the remaining part of , I describe Mr Watson’s evidence concerning the practice of the buyers for Coles. I accept that the buyers for Coles know the establishments, visit plants in the supply chain and are very familiar with all of the upstream activities specifically relevant to Coles and its specifications. I also accept that Coles would never purchase meat from a supplier it did not know extremely well. I also accept that in Mr Watson’s experience, the wholesalers with whom he dealt, were sophisticated buyers who had knowledge of the facilities and the establishment numbers relevant to each facility.
264 Mr Watson gave some evidence which seems a little odd to me in the context of the evidence overall. He said that specifically branded meat is rare in the Australian market. He may well have that perspective because he says that, for Coles, there is a very clear imperative that no brand other than the Coles own brand appear on the meat. That may mean that Mr Watson is not really very conscious of branding because ultimately everything is subsumed to the “Coles own brand”. He says he knows of the King Island Beef brand and David Blackmore’s Wagyu Beef brand. However, the evidence is that wholesalers deal with a range of brands and in the plurality of market transactions characterising the field of rivalry at the various functional levels of the market (as opposed to the bilateral procurement arrangements particular to Coles), there are plainly a range of brands of beef. The respondent itself talks about its Premium Angus brand and its Southern Ranges Platinum brand apart from its boxes marked with the AMG device brand alone. There is the AMH brand, the Swift Premium brand, the Friboi brand, the Royal brand, the 1824 Premium Beef brand, the Darling Downs Wagyu brand, the Master Kobe brand, the Riverina Angus brand and a number of others. As Mr Watson says, the commercial interests of Coles have been best served by presenting meat products with only “Coles brand beef” to customers and this focus may have caused him to believe that there are very few brands on the market. He is plainly wrong about that matter. On the question of the rapid increase in the emergence of brands over the last six years or so, I accept the evidence of Mr De Luca at  in preference to the views of the respondent’s witnesses.
265 I generally accept Mr Watson’s evidence as described at -.
266 At , I note evidence given by Mr Watson to the effect that he has not seen AMH as a significant brand in the marketplace either as a buyer of meat or as a wholesaler of meat or as a brand for sale at a retail level. He says he has not had that experience since JBS acquired Australian Meat Holdings in 2007. Again, that evidence seems odd to me because the statistics demonstrate the enormity of the sales by JBS as a wholesaler of AMH meat products to the domestic market and the export market. The sheer volume of meat sold under the brand, packaged as it is in the plastic bags as described, and supplied in the cartons as described, generating the revenue as described, seems to make it difficult to conclude that AMH has not operated as, at the very least, a “significant brand” either in circumstances of being a buyer or a wholesaler or as a brand attached to meat available for sale at the retail level. Mr Watson accepts that AMH as a brand is “known” in the meat industry but he believes this to be “historical” and he says that JBS, in his opinion, has made a concerted effort to push its brands “over the top of the AMH brand”.
267 There are three things to note about these observations.
268 First, Mr Watson comes at these matters from a very particular perspective as a person who has been engaged in operating the meat trading activities of a very particular buyer in the particular circumstances determined by that buyer with all of its upstream management.
269 Second, Mr Watson does not have the data concerning the trading activities in the AMH brand from 2008 to 2015. It would be objectively difficult to hold the views he holds in the face of that data. Moreover, the evidence is that trades have been occurring, offers made in pricelists, and emails exchanged, between relevant market participants for the purchase of meat products using the product description “AMH”: , , , , , - and -.
270 Third, moreover, the opinion Mr Watson holds on this issue is expressly inconsistent with the extent of the reputation in the “AMH brand” adopted and conceded by the respondent in these proceedings (T, p 333, lns 18-20; except at the level of the retail consumer), to the point where at the functional levels of the “wholesalers, export markets, and for supermarkets, and for independent butchers”, there is said to be a “strong reputation”. As mentioned earlier, Senior Counsel for the respondent, Mr Heerey, “embraces” what Senior Counsel for the applicant, Mr Shavin, “says about the endless thousands of millions of kilograms and cartons [and bags] flowing into wholesalers and distributors, and butchers on a regular basis with the AMH brand blazoned all over it with its particular logo”: T, p 333, lns 26-29. Nevertheless, I certainly accept that Mr Watson holds those views.
271 As to the evidence of Associate Professor Cox, I have not found her evidence to be very helpful because her opinions operate at too high a level of abstraction. In making that observation, I do not wish to suggest any disrespect to Associate Professor Cox and I recognise and accept her expertise in phonetics and phonology, the two closely related scientific branches of linguistics.
272 I accept that acronyms pronounced as a “string of letter names” are sometimes differentiated as initialisms and that because the trade marks AMH and AMG do not satisfy the criteria for word-forms in English, readers or observers are likely to pronounce the acronym by using the “letter names”. I accept that, plainly enough, the last syllable “H” and “G” differentiates each initialism by reason of the final “syllable”. I also accept Associate Professor Cox’s view that the pronunciation of the first two syllables “AM” would be the same but there would be a difference in the pronunciation of the final syllable. I also accept that as a matter of principle, the difference in the final syllable would be linguistically important in the pronunciation of the final syllable: .
273 The point of departure I have with the evidence of Associate Professor Cox is that it has no contextual application to the engaged field of common human endeavour in question in the case. It is entirely acontextual.
274 For example, Associate Professor Cox seeks to illustrate the differentiating phonetic feature of words by contrasting the words “dog” and “dot” observing that the difference in the last speech sound of each word leads to different meanings. Of course, in context, when a person makes a telephone call to a veterinary surgeon to enquire about a problem the person has with his or her dog, he or she would be unlikely to find that the receptionist or the veterinary surgeon hears, as a matter of pronunciation by the caller, a “speech sound”, of “dot” for the word “dog”, largely because, no doubt, the receptionist or the veterinary surgeon is cognitively expecting to hear a reference to “dog”, rather than “dot” in the context of enquiries made to a veterinary practice about an animal taxonomically described by the word “dog” rather than “dot”. Similarly, a person engaging with another in a field of activity or in a context which conditions the use of the word “dinosaur”, would be unlikely to find that the person with whom they are engaging hears a “speech sound” consistent with “dynamite”. Context is everything, especially in the hurly burly of oral commercial transactions in the purchase and sale of meat products as revealed in the evidence.
275 Associate Professor Cox then applies those concepts just described derived from principles governing words, to acronyms pronounced as initialisms and observes that AFI (an acronym for Australian Film Institute) and AFL (an acronym for Australian Football League) and AFP (an acronym for Australian Federal Police), are examples of acronyms which constitute initialisms which differ only in their final syllable and are differentiated in their pronunciation by the final syllable. However, in context, a person who is asked, in Melbourne, for example (as I have been asked many times as a non-resident but regular visitor to that great city), “which AFL team do you follow?”, would be unlikely to hear the acronym “AFL” as “AFI” because the context would render it nonsensical. Similarly, two persons steeped in an interest in film and film genre, talking about which actors, directors or writers, might win awards at the Annual AFI Awards would be unlikely to hear, as a matter of speech sound or pronunciation, “AFI” as “AFL” or “AFP”. References, by initialisms, to the Australian Football League or the Australian Federal Police would also be nonsensical in that context.
276 However, if two initialisms are in play in a common field of activity by participants in a field of rivalry engaged in the sale of the same or substantially the same meat products in a domestic and export market amongst many of the same market participants, the theoretical differentiation in pronunciation of the final syllable in AMH and AMG might well lose its structurally deconstructed abstracted integrity in the context of the cut and thrust of ordinary commercial arrangements by ordinary commercial people pronouncing AM something and AM something else in the sale and purchase of meat products, having regard to what is ordinary in that sense on the evidence.
277 Thus, I do not find the opinions expressed by Associate Professor Cox to be helpful in the context of the real questions that have to be asked about the use of the initialisms in an applied way.
278 As to the evidence, I simply add this observation. I have read the transcript of the proceedings closely and have taken all the evidence into account. I have attempted to deal with all of the evidence comprehensively. To the extent that I have not mentioned or set out in these reasons aspects of the evidence, I should not be taken as not having considered all of the relevant matters.
279 It is now necessary to apply the governing principles to the evidence I have accepted. In doing so, I make these observations:
(1) The AMG device mark was lodged for registration on 8 April 2014. The AMG trade marks depicted at  were lodged for registration on 3 March 2016. The respondent commenced trading in beef products in cartons (boxes) in January 2015: Exhibits 20, 21, 22 and 23. The boxes were designed between September and December 2014.
(2) As the image at  reveals, the AMH device mark consists of a stylised map of Australia enclosing a white field with the letters AMH across the centre of the map, with the map and enclosed letters, sitting on a ribbon feature. The word mark consists of the letters AMH.
(3) The AMG device mark consists of a stylised map of Australia in more free-flowing form enclosing a white field with the letters AMG in something akin to cursive text sitting in the centre of the map with the words Australian Meat Group in small but capital text as depicted at . There is a version of the device mark described and depicted at .
(4) As to the two trade marks depicted at , they too incorporate the AMG device mark. The applicant says that they are also characterised by a ribbon device. Minds might legitimately differ about whether that is an accurate description. However, what is clear is that each of the trade marks depicted at  (and, of course,  and ) contain the AMG map device with the three letter acronym in the middle. I accept that the impression on the mind’s eye when looking at those trade marks is that the dominant feature is the AMG device mark. It is true that the image at  contains the additional words forming part of the branding for the box of “Southern Ranges” and underneath it the word “PLATINUM”. It is also true that the image at  contains the additional words forming part of the branding for the box of “PREMIUM” and underneath that word in apparent handwriting Angus Beef. Those words are essentially descriptive and laudatory of the quality of the meat contained within the box. Notwithstanding the addition of those words in each case, I am satisfied that an essential feature of the branding or badging for each box is the AMG device mark as described.
(5) For all the reasons mentioned in the evidence which I have accepted, some of which is summarised at , it is perfectly plain that the respondent uses the AMG device mark as a badge of identification and uses the acronym AMG as a badge of identification.
(6) The industry practice is that acronyms are used to identify the source of product, that is to say, as a bridge or link or badge of origin. Mr Cabral was very much influenced to select the name Australian Meat Group because he understood that industry participants would quickly abbreviate the name to the three letter acronym AMG. I mention that matter not because of any question going to intention to deceive but simply because Mr Cabral recognised the industry practice in this regard, and that practice influenced his selection of the company name. The acronym AMG would, he thought, prove to be “easy to remember” and have a “zing to it”.
(7) The evidence makes plain that industry participants order meat products by reference to the acronyms AMH and AMG.
(8) As to the reputation subsisting in AMH and the AMH device mark, there can simply be no doubt that there is a very significant and substantial reputation subsisting in those two trade marks. The respondent does not contest that proposition insofar as the reputation is recognised in cohorts operating at functional levels of the market which involve buying and selling activity by wholesalers, those acquiring meat products for sale for export, direct export by processors, supermarkets and independent butchers. The respondent describes the character or quality of that reputation as a “strong reputation”. The respondent contends that, at the level of the retail consumer as a buyer of meat products, AMH does not enjoy a “strong reputation” or, for all relevant present purposes, a reputation at all.
(9) As to the question of scale, the statistics in evidence which I have accepted, speak for themselves. As to the export market, AMH, is the largest meat processing company in Australia. It exports to 80 countries. Plainly, the applicant enjoys a strong reputation at the various functional levels of the supply chain in the sale and supply of meat products in the domestic market and it enjoys a strong reputation for its products in the export market. So much is accepted. However, notwithstanding the “strong reputation” at all functional levels of the market except at the functional level of retail sales (a matter to which I will return later in these reasons), I am not satisfied that that reputation is so pronounced in the Maltesers sense that no “imperfect recollection” of the AMH device mark and AMH word mark would be brought to any engagement with the AMG device mark and AMG word mark by members of the cohorts operating at those functional levels of the market. In other words, the reputation is not so pronounced that somebody seeing the AMG trade marks and especially the AMG device mark would, analogically speaking, say: “That’s not a Maltesers box”. The recollection would be imperfect and thus the conduct of the respondent is susceptible of deception and confusion.
(10) The supply chain for the sale of meat products into the domestic market is explained in the evidence which I have accepted. However, the supply chain activities involve these steps. Livestock is purchased by the applicant either at saleyards or from the “farm gate” under contracts with farmers. Livestock are transported to an abattoir where each animal is killed and boned. Some abattoirs (processors) conduct kill and bone operations on a tolling basis for buyers such as Coles and Woolworths. The processing activity results in the meat being reduced to whole primal cuts which are then placed in bags as described in the evidence and chilled, or the meat is frozen. The supply chain involves the supply of meat products in whole primal form to a range of wholesalers, and also supply by the applicant to D.R. Johnston, as described in the evidence. Wholesalers and DRJ on-sell meat to others as described in the evidence. The wholesale entities supply distributors, manufacturers and/or retail entities. The whole primal cuts are then normally cut into portions by retailers (butchers) for consumers to buy. Sometimes, whole primal cuts are placed on display in cabinets where consumers can cast their eyes upon them in that form: , ,  and . Sometimes, retailers acquire portion-cut meat from intermediate processors.
(11) The evidence demonstrates that whole primal cuts packaged in plastic bags marked with the AMH device mark are available for purchase by retail consumers in that form at some retail sites. The evidence also shows that whole primal cuts in bags marked with the version of the AMG device mark depicted at  are available for purchase by retail consumers at some sites. In each case, in the images in evidence, the device mark can readily be seen. Sometimes, the AMH mark will be on a bag which also contains an insert exhibiting another mark as well, such as Swift Premium: . Sometimes, the device mark endorsed on the plastic bag might be overlayed with another trade mark by a retailer such as IGA. Sometimes, butchers as retail traders, might place their own brands on the meat. Generally, butchers will remove whole primal cuts from the processor’s packaging and cut the meat into portion controlled segments. Nevertheless, the evidence shows that in a number of retail sites, whole primal cuts can be purchased, packaged in the processor’s plastic packaging bearing the device marks.
(12) 80% of the applicant’s processed beef is sold into the export market into 80 countries as previously mentioned. 70% of the respondent’s meat products are sold on the export market.
(13) The evidence is that 2.2% of all beef consumed in Australia is displayed to retail consumers in whole primal form in a retail environment. So far as AMH is concerned, that means that approximately 2.2% of the 20% of its processed beef sold into the domestic market is displayed to retail consumers in whole primal form in a retail environment. It also means that 2.2% of the 30% of the AMG processed meat sold into the domestic market is displayed to retail consumers in whole primal form in a retail environment.
(14) That being so, although 2.2% appears to be a small percentage, it means that in the period 2008 to 2015 in the case of AMH, there were 972,701 bags marked with the AMH device mark available for retail sale as primal cuts representing 3,776,417 kilograms of meat product, according to Mr De Luca’s Annexure “BJDL-4”, apart from the evidence of Mr Tancred and his schedule.
(15) In the domestic market, there is a strong reputation for the AMH brand in all functional aspects of the supply chain amongst those cohorts participating as wholesalers, distributors, manufacturers, supermarkets, butchers and retailers. I am also satisfied that the AMH trade marks enjoy recognition and reputation at the functional level of interactions between a retail seller of whole primal cuts and a consumer. The reputation in the AMH device mark and AMH word mark is, obviously enough, less pronounced than the reputation those marks enjoy at other functional levels of the market. Nevertheless, the marks enjoy recognition and reputation at the retail level. I am not satisfied that the so-called Maltesers principle has any role to play at the retail level.
(16) The export cuts produced by AMH are either cryovaced in bags marked with the AMH device, by and large, or frozen. The primal cuts tend to be in AMH marked bags. The bags containing meat supplied in boxes marked with the brands Swift or Swift Premium or Friboi or Royal bear the AMH device mark on the bag. It is true that the AMH brand might be on the “bottom” of the bag in the sense that the bag is inverted or turned over, with an inset on the “top” section of the plastic bag. Nevertheless, each bag is endorsed with the AMH device mark at .
(17) As to the so-called north/south divide, I accept that AMG procures livestock for slaughter and processing predominantly in southern Australia and that AMH predominantly procures livestock in northern catchments. However, two things should be noted. First, the applicant’s registrations of its trade marks are national and unqualified. Second, there is some evidence that cattle are acquired by the applicant in Victoria and southern New South Wales and taken to Dinmore for slaughter. Moreover, the evidence demonstrates that at least to some extent the respondent is supplying its primal cuts for sale in Queensland.
(18) Purchase and sales transactions occur as between wholesalers and retailers by telephone and thus orally and by email. DRJ has 6,000 customers who buy meat products. Mr Tatt says that there are about 10 major meat distributors which represent 80% of the market demand and the remaining 20% is comprised of a significant number of smaller distributors. The total would be about 100: .
(19) Without wishing to unduly constrain the balancing of all the relevant circumstances, it seems to me that the question (subject to the consideration discussed at (28) and following), ultimately comes down to this, so far as the domestic market is concerned, leaving aside for the moment the cohort represented by the retail consumer: that is, having regard to:
(a) the circumstance that AMH is a trade mark that has been used for decades;
(b) its reputation is strong at all functional levels of the market amongst the cohorts engaged in market activity at these levels;
(c) the AMH device mark and the AMH mark have been used in connection with a vast number of bags and cartons containing meat products the subject of the registrations;
(d) the goods of the applicant and the respondent are traded in markets substantially in common areas among the same cohorts of buyers although particular sectors of those cohorts may tend to engage with the applicant on the one hand, or tend to engage with the respondent on the other hand;
(e) the essential feature of the AMH device mark is a stylised map of Australia enclosing a white field with the letters AMH across the centre of the map with the map and enclosed letters sitting on a ribbon feature;
(f) the essential feature of the AMG device mark is a stylised map of Australia enclosing a white field with the letters AMG across the centre of the map without the map being located on a ribbon feature albeit with the words Australian Meat Group across the bottom of the map;
(g) the visual impression and imperfect recollection of the essential features of the AMH device mark carried away by those traders having engaged with it over time; and
(h) the characteristics of the supply chain and the methods of sale and purchase of meat products in that supply chain and thus the ordinary conduct of buyers and sellers engaging in steps in the supply chain,
is there a finite and non-trivial () real tangible danger, that is to say, a real non-trivial likelihood ((ii)), that use of the AMG device mark will result in a number of people being caused to wonder, or left in doubt ((ii)) whether it might not be the case that the meat products of AMG are those of, or associated with, AMH (JBS)?
(20) I am satisfied that the answer to that question is “yes”.
(21) I am also satisfied that when the same question is asked having regard to the same considerations except that the focus of the enquiry is upon the respondent’s use of “AMG”, in the context of the longstanding reputation of “AMH” (conditioned by use of the AMH device mark containing the acronym) coupled with the volume of trade by reference to the acronym, the answer is also “yes”.
(22) As to the AMG device mark, I do not regard the addition of the words “Australian Meat Group” placed across the bottom of the continent on the map as a sufficiently distinguishing feature so as to cause the answer to the questions to be “no”.
(23) Further, the circumstance that “H” is the final syllable in the acronym “AMH” and that “G” is the final syllable in the acronym “AMG”, is not a sufficiently distinguishing feature of the two marks when AMH has been used in the same market for so long.
(24) I accept that in oral communications in the hurly burly of oral trading transactions between retailers and wholesalers the emphasis is likely to be upon the “AM” component of the letter acronyms and that the last syllable is not sufficiently differentiating. As I indicated earlier, I am not assisted by Associate Professor Cox when the question is examined, as it must be, in a relevantly applied context.
(25) I accept that at the level of engagement between a retailer and a consumer when it comes to potential sales of whole primal cuts, there is at least a reputation subsisting in the AMH device mark and word mark. I accept that a consumer is likely to bring to the presentation of whole primal cuts bearing the AMG device mark and the letter acronym “AMG” an imperfect recollection of the AMH device mark and the AMH word mark. I accept that there is in those engagements a finite and non-trivial real tangible danger of confusion. Such confusion might be dispelled at the point of a purchase transaction or it might not. Whether it is or is not, is not the relevant question. There is, in my view, a real non-trivial likelihood that consumers exposed to whole primal cuts in the way depicted at  will be caused to wonder or left in doubt whether it might not be the case that the meat products of AMG are those of AMH.
(26) I also accept that an element of a likelihood of such a consumer being caused to wonder or being left in doubt is whether a consumer might think, as a matter of imperfect recollection, that whole primal cuts in a bag marked with a stylised map of Australia enclosing a white field with “AMG” in the middle of the map is, somehow or other, a version, or a more modern version, or some form of variant upon, the AMH device mark.
(27) In the export market, the applicant exports to 80 countries and again has a very substantial volume of meat product supplied through export channels. Sales occur directly into the export market and to entities within Australia which supply meat products into the export market. I also accept that there is a real non-trivial risk or tangible danger or a real non-trivial likelihood, that export customers having a recollection of the AMH device mark and the AMH word mark, might be caused to wonder or left in doubt about whether meat products marked with the AMG device mark and the AMG letter mark are products of the applicant or products associated in some way with the applicant. This is especially so having regard to the many different languages in the various export destinations in which importers of meat products operate.
(28) The consideration mentioned at (19) is this. I accept that in the domestic market many of the wholesalers acquiring meat products from processors and resupplying meat to distributors, manufacturers, retailers, supermarkets etc are participants in the market who bring an enquiring mind to purchase transactions having regard to the consideration that the orders placed are normally orders for significant quantities of meat. The average purchase order into the domestic market placed with wholesalers is mentioned in the evidence. Some of those wholesalers may not be as “sophisticated” as others. There may be as many as 100 or so buyers operating at greater or lesser degrees of market engagement exhibiting a greater or lesser degree of enquiry. However, on balance, many of the wholesalers (but not all) are likely to be discerning and in that sense they are “sophisticated”. I proceed on the basis that this is a consideration which characterises ordinary transactions at this functional level of the domestic market. I suspect that in the course of transactions, over time, some wholesalers are likely to ultimately come to recognise that notwithstanding the reputation of AMH and the understanding such wholesalers have of the word mark and the device mark (and their imperfect recollection of it), the trade marks adopted by the respondent in the form of the AMG device mark and the AMG letter mark convey a notion that those marks are a badge or source of origin of goods supplied or offered to be supplied by a new or different company, not associated or connected with JBS but one which is a contestable rival of JBS.
(29) Nevertheless, I am entirely satisfied that the use by the respondent of its trade marks at this functional level of the market engages a finite and non-trivial danger or real and non-trivial likelihood that a number of participants at the wholesale level of the market will necessarily be caused to wonder or left in doubt about whether it might not be the case that the meat products of AMG are those of the owner of the AMH trade marks. That finite and non-trivial danger or real and non-trivial likelihood might well, over time, come to be dispelled in the minds of some wholesalers (but not necessarily all), but that is not an answer to the question of whether use by the respondent of its trade marks involves deception or confusion. It plainly does so and, no doubt, a respondent engaging in that conduct would try very hard to bootstrap itself into a position where it seeks to dispel the deception or confusion once it has engaged the market participant and, from its perspective, hopefully, captured it as a buyer. However, it is not necessary for the applicant to show passing off or that transactions have actually been lost. There is a very good reason for this in the trade mark law of this country. It is very difficult, often, to show the extent to which transactions have been lost. The trade marks of an owner are sufficiently prejudiced and compromised and their integrity diminished when rivals seek to use a sign in connection with the relevant goods, which is deceptively similar. A respondent engaging in conduct which gives rise to deception and confusion in the sense discussed in the authorities, is the very essence of the infringement right.
(30) On this issue of the sophistication of wholesalers or buyers at particular functional levels (leaving aside the retail consumer level), I am not aided by Mr Watson’s evidence. His evidence operates at a very particular level as earlier described. The respondent says that Mr Watson’s evidence is absolutely emblematic of the extent to which wholesalers generally bring discrimination and sophistication to the purchase transactions, in the markets. For the reasons I have already identified, I do not agree that Mr Watson’s evidence is decisive of that question or even necessarily influential in an assessment of the position relating to behaviour in a multilateral field of rivalry as opposed to the very particular features characterising the “arrangements” under which Coles operates.
(31) I take the view that the same conclusion reflected at (29) and (30) applies in relation to conduct in the export market. It is clear that the respondent vigorously promotes its trade marks in connection with the export sale of its goods. It vigorously promotes its trade marks to potential new clients. It uses the device mark in its PowerPoint presentations and it emblazons its device mark on stands at international trade fairs. Again, international importers of meat products might, ultimately, come to understand that the trade marks used by the respondent in connection with trade in its meat products, operate as a badge of origin of a new company unrelated to JBS. However, that is not the test. I accept that the respondent has embarked upon a relationship-based campaign to attract buyers of its export meat products and I accept that it has pressed many of the pre-existing relationships enjoyed by Mr Cabral and Mr Catalfamo with buyers from an earlier time. I accept that in respect of a number of these bilateral relationships, AMG’s relationship partner would not be in any doubt that the person he or she is dealing with is a representative of a new company brought into existence by Mr Cabral and Mr Catalfamo and one not associated with the owner of the AMH trade marks. However, these engagements simply reflect the course of conduct to date by the respondent. In any event, the respondent is not simply dealing with relationship partners. It is promoting itself and its meat products to the export market at large under and by reference to its trade marks. Its use of those trade marks in that way involves a finite non-trivial real tangible danger that some participants in the export market will be caused to wonder in the relevant sense I have described.
(32) It should also be recalled that Mr Cabral was very direct about the utility of a three letter acronym like AMG and although the respondent says that in dealing with new customers great emphasis is placed upon the name Australian Meat Group, it seems to me having regard to the PowerPoint presentation that “AMG” is very likely to be the acronym used to describe the respondent and its products together with the badge of identification emblazoned on its meat products in the form of the AMG device mark.
(33) It follows from all of this that I am satisfied that at each functional level of the domestic market and the export market, the conduct of the respondent engages infringement of s 120(1) of the TM Act on the footing that the respondent has used as a trade mark two signs consisting of the AMG device mark and AMG word mark that are deceptively similar to the AMH trade marks in relation to goods in respect of which the trade mark is registered having regard to the tests to be applied to the facts in the context of s 10 of the TM Act.
(34) I am also satisfied that the use by the respondent of the two trade marks depicted at ,  and  also engages an infringement on the footing that these trade marks constitute use, as trade marks, of signs deceptively similar to the AMH device mark and the AMH word mark in relation to goods in respect of which both AMH trade marks are registered.
(35) Without restating the totality of the evidence on infringement, I am satisfied that the evidence I have accepted makes good the causes of action.
280 At  to , I describe the evidence in relation to the evolution of the name Australian Meat Group and the various company names which were investigated as possibilities for use. There were a number of company names that were considered and were available. However, for the reasons identified by Mr Cabral, a name reflecting a three letter acronym was to be preferred. At , I note an email sent by Mr Tarquinio to Mr Zervos on 21 February 2014 in which Mr Tarquinio says that the decision-making group had exercised a preference for Australian Meat Group. However, he added the qualification that “but our concern is that someone is already using AMG Pty Ltd and [there] could [be] brand issue implications in the future”.
281 It is not clear what Mr Tarquinio meant by that observation but he seems to have reflected an opinion that there could be brand issues in the future in relation to the use of the name Australian Meat Group recognising, of course, that which Mr Cabral recognised, which is that industry practice is to abbreviate a name to, in this case, an “easy to remember” acronym “AMG” which has a “zing to it”.
282 Having regard to those matters, the applicant says that Mr Tarquinio’s unexplained failure to give evidence, gives rise to a Jones v Dunkel inference that Mr Tarquinio’s evidence on the nature of the “brand implications for the future” would not have been helpful to the respondent.
283 I am not willing to draw that inference because it is equally open to conclude that Mr Tarquinio’s reservation was in relation to the very specific entity AMG Pty Ltd rather than anything else.
284 The applicant also says that the evidence demonstrates that nothing was done by the respondent to investigate the possible consequences of adopting the name Australian Meat Group in circumstances where it was expected from the outset, as a matter of industry practice, that that name would rapidly be abbreviated to AMG in relevant market behaviour. The applicant says that no enquiry was made about the consequences of associating its products with the acronym “AMG” or the AMG device mark. The applicant says that no legal advice was taken about these matters and that, in effect, the respondent pushed on in disregard, perhaps reckless disregard, of the consequences of using the trade marks to be adopted. This is said to give rise to a proper foundation for a finding that the respondent’s conduct warrants the imposition of additional damages which are to be calculated in the later separate hearing.
285 I do not propose to recite the content of the factual matters going to that question, in these reasons. I have examined the evidence and the submissions carefully. I am not satisfied that there is a proper foundation for an award of additional damages. The respondent, by its officers, engaged in conduct. The applicant has made good the proposition that that conduct, in the way I have described, engages infringement of its trade marks. However, there is no basis for additional damages.
286 As I indicated earlier, I am also satisfied that the use by the respondent of the trade marks reflected at ,  and  engage infringements of the applicant’s trade marks. The addition of other words and titles on the boxes and in conjunction with the AMG device mark does not have the effect of distinguishing or differentiating the branding which adopt as an essential feature, the AMH device mark which suffers from the difficulties earlier described in the sense that it reflects the essential features of the AMH device mark. Use of these marks is infringing conduct.
287 I propose to make directions that the applicant submits proposed orders to be made arising out of these reasons within seven days. The costs of and incidental to this stage of the proceedings will be reserved for later determination upon the making of orders arising out of this part of the proceedings.