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ausip:trade-mark-registration [2019/03/05 17:41]
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ausip:trade-mark-registration [2019/03/10 13:22] (current)
jessiej_87
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 There are five stages in the application process. ​ There are five stages in the application process. ​
  
-The first stage is completing the application which can be filled out either online or by paper. The application is in a prescribed form. ((s 27)) In order to complete the application,​ the applicant needs to set out the sign and class which the sign will operate in. In order to determine the particular class the mark is to be registered in, the applicant will need to consider the 45 classes and choose the one which best suits the purpose of the sign. Once the application is complete the applicant will pay the required fee and attend to filing. ​+The first stage is completing the application which can be filled out either online or by paper. The application is in a prescribed form. ((//​TMA// ​s 27)) In order to complete the application,​ the applicant needs to set out the sign and class which the sign will operate in. In order to determine the particular class the mark is to be registered in, the applicant will need to consider the 45 classes and choose the one which best suits the purpose of the sign. Once the application is complete the applicant will pay the required fee and attend to filing. ​
  
 The second stage of the process is the examination. The examiner reviews the application and determines whether there are any reasons why the trade mark should not be registered. There are two main reasons a mark may not be registered. First, if another person already has a mark registered in the same class which is deceptively similar to the mark being sought for registration. Second, if the mark is scandalous, such as a profanity. There are a number of other potential reasons a trade mark may not be registered. These will be discussed below in this chapter. ​ The second stage of the process is the examination. The examiner reviews the application and determines whether there are any reasons why the trade mark should not be registered. There are two main reasons a mark may not be registered. First, if another person already has a mark registered in the same class which is deceptively similar to the mark being sought for registration. Second, if the mark is scandalous, such as a profanity. There are a number of other potential reasons a trade mark may not be registered. These will be discussed below in this chapter. ​
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 The fourth stage is the opposition. ​ The trade mark is published in the journal of the Trade Mark Office for the purpose of the public, especially other traders to oppose the trade mark if they believe they are effected. This may involve other trade mark holders opposing on the basis of a number of reasons including deceptive similarity. The opposition period is two months. If the trade mark is opposed there will be a hearing. If there is no opposition at the end of the two month period or if the opposition is dismissed the registration will be formalised. ​ The fourth stage is the opposition. ​ The trade mark is published in the journal of the Trade Mark Office for the purpose of the public, especially other traders to oppose the trade mark if they believe they are effected. This may involve other trade mark holders opposing on the basis of a number of reasons including deceptive similarity. The opposition period is two months. If the trade mark is opposed there will be a hearing. If there is no opposition at the end of the two month period or if the opposition is dismissed the registration will be formalised. ​
  
-The final stage is registration. The registrar must register the trade mark. ((s 68)) The trade mark will be afforded 10 years of protection from the date of filing of the application. As noted in the previous chapter, this period of protection can be extended indefinitely. ​   ​+The final stage is registration. The registrar must register the trade mark. ((//​TMA// ​s 68)) The trade mark will be afforded 10 years of protection from the date of filing of the application. As noted in the previous chapter, this period of protection can be extended indefinitely. ​   ​
  
  
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 ## Benefits of Registration ​ ## Benefits of Registration ​
  
-Registered trade marks are registered for a period of 10 years initially and can be renewed indefinitely after this time. The basic requirement to renew the trade mark is continuous use of the mark. ((s 72(3) ))+Registered trade marks are registered for a period of 10 years initially and can be renewed indefinitely after this time. The basic requirement to renew the trade mark is continuous use of the mark. ((//​TMA// ​s 72(3) ))
  
 Trade marks are not domain names or business names or company names. They are signs that are applied to a product or service to distinguish a product or service from something else. The difference is that whilst names are significantly important, they are not trade marks. Unlike names, trade marks denote the origins of a product or service.  ​ Trade marks are not domain names or business names or company names. They are signs that are applied to a product or service to distinguish a product or service from something else. The difference is that whilst names are significantly important, they are not trade marks. Unlike names, trade marks denote the origins of a product or service.  ​
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-Trade marks that are capable of distinguishing due to their *intrinsic characteristics* will be inherently distinctive,​ irrespective of use, intended use or other circumstances. Kitto J in  *[Clark Equipment Co v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1964/​55.html)*,​ (([1964] HCA 55)) outlined the test for inherent distinctiveness:​+Trade marks that are capable of distinguishing due to their *intrinsic characteristics* will be inherently distinctive,​ irrespective of use, intended use or other circumstances. Kitto J in  *[Clark Equipment Co v Registrar of Trade Marks](http://​classic.austlii.edu.au/​au/​cases/​cth/​HCA/​1964/​55.html)*,​ (([1964] HCA 55)) outlined the test for inherent distinctiveness:​
  
 >‘The question whether a trade mark [MICHIGAN for earthmoving equipment] is adapted to distinguish [must] be tested by reference to the  likelihood that other persons, trading in goods of the relevant kind and being actuated by only proper motives ... will think of the word  and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.’ >‘The question whether a trade mark [MICHIGAN for earthmoving equipment] is adapted to distinguish [must] be tested by reference to the  likelihood that other persons, trading in goods of the relevant kind and being actuated by only proper motives ... will think of the word  and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.’
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 * (iii) Any other circumstances. ​ * (iii) Any other circumstances. ​
  
-__Gazal ​Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd__+__//​Gazal ​Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd//​(([1999] ATMO 90))__
  
 In *Gazal Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd*, (([1999] ATMO 90)) it was held that the word combination '​Fineform'​ had some descriptive connotation,​ but it is not one most appropriate for normal description of the goods in question. However, when combined with the other relevant factors (evidence of sales, promotion, etc), the trade mark '​Fineform'​ for lingerie could be registered. ​ In *Gazal Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd*, (([1999] ATMO 90)) it was held that the word combination '​Fineform'​ had some descriptive connotation,​ but it is not one most appropriate for normal description of the goods in question. However, when combined with the other relevant factors (evidence of sales, promotion, etc), the trade mark '​Fineform'​ for lingerie could be registered. ​
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-__Koninklijke ​Philips Electronics NV v Remington Products Australia Pty Ltd__+__//​Koninklijke ​Philips Electronics NV v Remington Products Australia Pty Ltd//​(([1999] FCA 816))__
  
 In *Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd*, (([1999] FCA 816)) the design of a triple-headed rotary shaver could not be registered as a trade mark since the configuration of the three heads was the best design and did not add anything extra to distinguish the product. In *Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd*, (([1999] FCA 816)) the design of a triple-headed rotary shaver could not be registered as a trade mark since the configuration of the three heads was the best design and did not add anything extra to distinguish the product.
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 In *[Chocolaterie Guylian N.V. v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2009/​891.html)*,​ (([2009] FCA 891)) the seahorse shape of Guylian chocolates could not be registered as a trade mark as Guylian did not use the shape as its trade mark. Despite evidence that consumers associated the shape with Guylian chocolates, Guylian solely used its name as a badge of origin for goods. The seahorse shape was thus not distinctive. In *[Chocolaterie Guylian N.V. v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2009/​891.html)*,​ (([2009] FCA 891)) the seahorse shape of Guylian chocolates could not be registered as a trade mark as Guylian did not use the shape as its trade mark. Despite evidence that consumers associated the shape with Guylian chocolates, Guylian solely used its name as a badge of origin for goods. The seahorse shape was thus not distinctive.
  
-__Kenman ​Kandy Australia Pty Ltd v Registrar of Trade Marks__+__//​Kenman ​Kandy Australia Pty Ltd v Registrar of Trade Marks//​(([2002] FCAFC 273))__
  
 In *[Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCAFC/​2002/​273.html)*,​ (([2002] FCAFC 273)) the 3D shape of an imaginary six-legged spider-like creature (the millennium bug), was capable of registration as a trade mark as it had no functional significance,​ was distinctive of the applicant'​s product and was not based on an actual bug that existed in nature. In *[Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCAFC/​2002/​273.html)*,​ (([2002] FCAFC 273)) the 3D shape of an imaginary six-legged spider-like creature (the millennium bug), was capable of registration as a trade mark as it had no functional significance,​ was distinctive of the applicant'​s product and was not based on an actual bug that existed in nature.
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 **Colour Trade Marks** **Colour Trade Marks**
  
-__Philmac ​Pty Limited v The Registrar of Trade Marks__+__//​Philmac ​Pty Limited v The Registrar of Trade Marks//​(([2002] FCA 1551))__
  
 In *Philmac Pty Limited v The Registrar of Trade Marks*, (([2002] FCA 1551)) a terracotta shade on plastic pipes and pipe fittings could be registered as a trade mark as the colour had no functional purpose. In contrast, in *Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks*, (([1967] HCA 42)) the colour scheme of a pharmaceutical capsule which was half transparent and revealed multi-coloured pellets of medicine was refused registration as the trade mark could not be described apart from the capsule. In *Philmac Pty Limited v The Registrar of Trade Marks*, (([2002] FCA 1551)) a terracotta shade on plastic pipes and pipe fittings could be registered as a trade mark as the colour had no functional purpose. In contrast, in *Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks*, (([1967] HCA 42)) the colour scheme of a pharmaceutical capsule which was half transparent and revealed multi-coloured pellets of medicine was refused registration as the trade mark could not be described apart from the capsule.
  
-__Woolworths ​Limited v BP p.l.c.__+__//​Woolworths ​Limited v BP p.l.c.// (([2013] ATMO 61))__
  
 In *Woolworths Limited v BP p.l.c.*, (([2013] ATMO 61)) Woolworths successfully opposed BP's application to register a shade of green in respect of service stations. BP failed to show it used the colour as a trade mark, as the colour was always used in conjunction with the BP logo. The shade of green alone was not capable of distinguishing BP's goods. In *Woolworths Limited v BP p.l.c.*, (([2013] ATMO 61)) Woolworths successfully opposed BP's application to register a shade of green in respect of service stations. BP failed to show it used the colour as a trade mark, as the colour was always used in conjunction with the BP logo. The shade of green alone was not capable of distinguishing BP's goods.
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 An application for registration must be rejected if, because of some *connotation* ​ the use of the trade mark (or a sign contained in the trade mark), in relation to those goods/​services,​ would be *likely to deceive or cause confusion*.((//​TMA//​ s 43)) The connotation may exist because the mark falsely suggests some quality or connection to the goods or services that it does not have. An application for registration must be rejected if, because of some *connotation* ​ the use of the trade mark (or a sign contained in the trade mark), in relation to those goods/​services,​ would be *likely to deceive or cause confusion*.((//​TMA//​ s 43)) The connotation may exist because the mark falsely suggests some quality or connection to the goods or services that it does not have.
  
-__Scotch ​Whisky Association v De Witt__+__//​Scotch ​Whisky Association v De Witt// (([2007] FCA 1649))__
  
 In *[Scotch Whisky Association v De Witt](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2007/​1649.html)*,​ (([2007] FCA 1649)) an application for the trade mark 'Glen Oaks' for bourbon was refused on the basis the words 'Glenn Oaks' (particularly '​Glenn'​) conveyed a clear connotation of Scottish origin, and its use in relation to bourbon products was likely to deceive or cause confusion. In *[Scotch Whisky Association v De Witt](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2007/​1649.html)*,​ (([2007] FCA 1649)) an application for the trade mark 'Glen Oaks' for bourbon was refused on the basis the words 'Glenn Oaks' (particularly '​Glenn'​) conveyed a clear connotation of Scottish origin, and its use in relation to bourbon products was likely to deceive or cause confusion.
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-__Shell ​Co (Aust) Ltd v Esso Standard Oil (Aust) ​Ltd__+__//​Shell ​Co (Aust) Ltd v Esso Standard Oil (Aust) ​Ltd//​(([1963] HCA 66]))__
  
 Windeyer J in *[Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1963/​66.html)*,​ (([1963] HCA 66])) observed that: Windeyer J in *[Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1963/​66.html)*,​ (([1963] HCA 66])) observed that:
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 Substantial identity cannot be established simply on the basis that one trade mark is contained within another trade mark. For example, ​ 'St Agnes Liquor Store' was held not to be substantially identical to 'St Agnes'​.((*Angoves Pty Ltd v Johnson* (1982) 43 ALR 349)) Substantial identity cannot be established simply on the basis that one trade mark is contained within another trade mark. For example, ​ 'St Agnes Liquor Store' was held not to be substantially identical to 'St Agnes'​.((*Angoves Pty Ltd v Johnson* (1982) 43 ALR 349))
  
-__Coca ​Cola Co v All-Fect Distributors ​Ltd__+__//​Coca ​Cola Co v All-Fect Distributors ​Ltd//(( (1999) 96 FCR 107))__
  
 In *Coca Cola Co v All-Fect Distributors Ltd*, (( (1999) 96 FCR 107)) the Full Court observed: In *Coca Cola Co v All-Fect Distributors Ltd*, (( (1999) 96 FCR 107)) the Full Court observed:
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 **Video overview by Laura O'​Brien on the [Test of Substantial Identity](https://​www.youtube.com/​watch?​v=KTluc6T23oY)** **Video overview by Laura O'​Brien on the [Test of Substantial Identity](https://​www.youtube.com/​watch?​v=KTluc6T23oY)**
  
-__Woolworths ​v Register of Trade Marks__+__//​Woolworths ​v Register of Trade Marks//​(([1999] FCAFC 1020))__
  
 In *Woolworths v Register of Trade Marks*, (([1999] FCAFC 1020)) the '​Woolworths Metro' logo was held to be registrable,​ despite the fact that the word '​metro'​ was already registered. This is because when the logo, which included wavy lines, was compared to the word, they could not be said to be similar. In *Woolworths v Register of Trade Marks*, (([1999] FCAFC 1020)) the '​Woolworths Metro' logo was held to be registrable,​ despite the fact that the word '​metro'​ was already registered. This is because when the logo, which included wavy lines, was compared to the word, they could not be said to be similar.
  
-__Torpedoes ​Sportswear Pty Limited v Thorpedo Enterprises Pty Limited__+__//​Torpedoes ​Sportswear Pty Limited v Thorpedo Enterprises Pty Limited//​(([2003] FCA 901))__
  
 In *[Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2003/​901.html)*,​ (([2003] FCA 901)) Torpedoes Sportswear owned two trade marks for '​Paradise Legends Torpedoes'​ word and '​Torpedoes'​ logo. It opposed the registration of '​Thorpedo'​ for sportswear. In *[Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2003/​901.html)*,​ (([2003] FCA 901)) Torpedoes Sportswear owned two trade marks for '​Paradise Legends Torpedoes'​ word and '​Torpedoes'​ logo. It opposed the registration of '​Thorpedo'​ for sportswear.
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 The marks need not be compared side by side. Instead, the residual impression on consumers that the trade mark leaves in considered - both aural and visual. respective meaning of the marks (visual and aural). To some extent, common prefixes and suffixes are discounted to make this comparison. It is the net impression of the mark that must be considered – how the mark is perceived as a whole – are consumer likely to be ‘caused to wonder'​ if the goods or services are connected. The marks need not be compared side by side. Instead, the residual impression on consumers that the trade mark leaves in considered - both aural and visual. respective meaning of the marks (visual and aural). To some extent, common prefixes and suffixes are discounted to make this comparison. It is the net impression of the mark that must be considered – how the mark is perceived as a whole – are consumer likely to be ‘caused to wonder'​ if the goods or services are connected.
  
-__Southern ​Cross Refrigeration Co v Toowoomba Foundry Pty Ltd__+__//​Southern ​Cross Refrigeration Co v Toowoomba Foundry Pty Ltd//​(([1954] HCA 82))__
  
 In *[Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1954/​82.html)*,​ (([1954] HCA 82)) the High Court approved the wonderment test - the trade mark will be deceptively similar if it causes a reasonable person to wonder whether it might not be the case that the two products come from the same source. In that case, the words '​Southern Cross' were applied for in respect of refrigerators. This was successfully opposed by Toowoomba Foundry, which owned the mark '​Southern Cross' in respect of well drilling machinery, milking machines, engines and windmills. There was evidence of actual confusion between the marks. Particularly relevant was that the '​Southern Cross' mark was used for many years over a large range of goods, sold at country stores that sold a wide range of products. Therefore, the marks were deceptively similar. In *[Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1954/​82.html)*,​ (([1954] HCA 82)) the High Court approved the wonderment test - the trade mark will be deceptively similar if it causes a reasonable person to wonder whether it might not be the case that the two products come from the same source. In that case, the words '​Southern Cross' were applied for in respect of refrigerators. This was successfully opposed by Toowoomba Foundry, which owned the mark '​Southern Cross' in respect of well drilling machinery, milking machines, engines and windmills. There was evidence of actual confusion between the marks. Particularly relevant was that the '​Southern Cross' mark was used for many years over a large range of goods, sold at country stores that sold a wide range of products. Therefore, the marks were deceptively similar.
  
-__Berlei ​Hestia Industries v the Bali Co, Inc__+__//​Berlei ​Hestia Industries v the Bali Co, Inc//​(([1973] HCA 43))__
  
 In *[Berlei Hestia Industries v the Bali Co, Inc](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1973/​43.html)*,​ (([1973] HCA 43)) the aural similarities between '​Berlei'​ and '​Bali'​ made the mark deceptively similar by reason of phonetic confusion. A consumer would be caused to wonder if there was a relationship between the two brands. In *[Berlei Hestia Industries v the Bali Co, Inc](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​1973/​43.html)*,​ (([1973] HCA 43)) the aural similarities between '​Berlei'​ and '​Bali'​ made the mark deceptively similar by reason of phonetic confusion. A consumer would be caused to wonder if there was a relationship between the two brands.
  
-__Campomar ​Sociedad Limited v Nike International ​Limited__+__//​Campomar ​Sociedad Limited v Nike International ​Limited//​(([2000] HCA 12))__
  
 In *[Campomar Sociedad Limited v Nike International Limited](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​2000/​12.html)*,​ (([2000] HCA 12)) Campomar marketed a 'Nike Sports Fragrance'​ and applied for a trade mark in class 3. Nike had no registration in this class. The court held there was no likelihood of confusion in 1986 when the first mark was applied for, but some likelihood of confusion from 1992 when the second mark was applied for, once Nike engaged in a worldwide advertising campaign. In *[Campomar Sociedad Limited v Nike International Limited](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​HCA/​2000/​12.html)*,​ (([2000] HCA 12)) Campomar marketed a 'Nike Sports Fragrance'​ and applied for a trade mark in class 3. Nike had no registration in this class. The court held there was no likelihood of confusion in 1986 when the first mark was applied for, but some likelihood of confusion from 1992 when the second mark was applied for, once Nike engaged in a worldwide advertising campaign.
  
-__Crazy ​Ron's v Mobileworld__+__//​Crazy ​Ron's v Mobileworld//​(([2004] FCAFC 196))__
  
 *[Crazy Ron's v Mobileworld](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCAFC/​2004/​196.html)*,​ (([2004] FCAFC 196)) concerned Crazy Johns, which operated since 1993 and Crazy Ron's, which operated since 1996. It was held the words CRAZY RON'S did not infringe the Crazy Johns globe device mark, as the words 'Crazy John'​s'​ was not an essential feature of the logo. However, a different conclusion might have been reached if the reputation of Crazy John's was greater. *[Crazy Ron's v Mobileworld](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCAFC/​2004/​196.html)*,​ (([2004] FCAFC 196)) concerned Crazy Johns, which operated since 1993 and Crazy Ron's, which operated since 1996. It was held the words CRAZY RON'S did not infringe the Crazy Johns globe device mark, as the words 'Crazy John'​s'​ was not an essential feature of the logo. However, a different conclusion might have been reached if the reputation of Crazy John's was greater.
  
-__Wingate ​Marketing v Levi Strauss__+__//​Wingate ​Marketing v Levi Strauss//​(([1994] FCA 1001))__
  
 In *[Wingate Marketing v Levi Strauss](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1994/​1001.html)*,​ (([1994] FCA 1001)) '​Revise'​ was held to be deceptively similar to '​Levis',​ both aurally and visually - '​Revise'​ was pronounce '​Ree-vise'​ to sound like '​Levis',​ as it was remade second-hand Levis. In *[Wingate Marketing v Levi Strauss](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​1994/​1001.html)*,​ (([1994] FCA 1001)) '​Revise'​ was held to be deceptively similar to '​Levis',​ both aurally and visually - '​Revise'​ was pronounce '​Ree-vise'​ to sound like '​Levis',​ as it was remade second-hand Levis.
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-__CA Henschke & Co v Rosemount Estates Pty Ltd__+__//​CA ​Henschke & Co v Rosemount Estates Pty Ltd//​(([2000] FCA 1539))__
  
 In *[CA Henschke & Co v Rosemount Estates Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2000/​1539.html)*,​ (([2000] FCA 1539)) compared the applicants trade mark 'Hill of Grace' with the respondents'​ 'Hill of Gold' and concluded that there was no infringement. The judgement applied the common law test for deceptive similarity by considering the impression an ordinary person with ordinary recollection would derive from the marks. The case turned on the finding of a distinct character of the metaphorical connotations of the marks. Notably, the case established that evidence as to reputation of the initial mark was not relevant to proving infringement by deceptive similarity where the initial mark is not notoriously so ubiquitous that consumers must be familiar with it. ((Distinguishing *Woolworths v Register of Trade Marks* [1999] FCAFC 1020 and *Coca Cola Co v All-Fect Distributors Ltd* (1999) 96 FCR 107)) In *[CA Henschke & Co v Rosemount Estates Pty Ltd](http://​www.austlii.edu.au/​cgi-bin/​viewdoc/​au/​cases/​cth/​FCA/​2000/​1539.html)*,​ (([2000] FCA 1539)) compared the applicants trade mark 'Hill of Grace' with the respondents'​ 'Hill of Gold' and concluded that there was no infringement. The judgement applied the common law test for deceptive similarity by considering the impression an ordinary person with ordinary recollection would derive from the marks. The case turned on the finding of a distinct character of the metaphorical connotations of the marks. Notably, the case established that evidence as to reputation of the initial mark was not relevant to proving infringement by deceptive similarity where the initial mark is not notoriously so ubiquitous that consumers must be familiar with it. ((Distinguishing *Woolworths v Register of Trade Marks* [1999] FCAFC 1020 and *Coca Cola Co v All-Fect Distributors Ltd* (1999) 96 FCR 107))
  • ausip/trade-mark-registration.txt
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