//
you're reading...
CHEQUE BOUNS CASE

IDENTICAL WITH OR DECEPTIVELY SIMILAR – commonly used in the world of TRADE

IDENTICAL WITH OR DECEPTIVELY SIMILAR – commonly used

Red Bull GmbH

Image via Wikipedia

in the world of TRADE

These words carries very importance in the world of Trade.

The traders who wants to sell their goods to the customers, put some marks , designs , logos , names for easy identification so that the purchaser can easily choose it’s product in the very busy market.

Red Bull GmbH v Chia Khim Lee Food Industries Pte Ltd [2012] ATMO 7 (25 January 2012)

It is a very interesting case where the Red Bull doing business in soft drinks from the beginning. It’s recognized Trade Mark emblem is RED HAWK. It has got good reputation  in the market.

Where as Chia Khim Lee doing same business applied for Registration of it’s Trade Mark as RED EAGLE.

this was objected by RED HAWK  [ Red Bull GmbH ].

Their objection was that Red Eagle is similar that off their Red Hawk and as such the people may get confused and would start to buy the product of Red Eagle instead of their Red Hawk or may misunderstand that Red Eagle is also the product of Red Hawk.

Whether this objection is tenable and how to determine and decide the case is very interesting one.

Their Lordships quoted so many citation and did  so many interpretation and analysis.

These marks are like that off  voter identification cards. no one face   is the similar or deceptive of another face . Recognize the person by face is established one  except in twins and  in the same family group of persons.

TRADE MARKS  are like that off identity photo card of each individual company  or products.

copying a trade mark with that off the already existing trade mark by identical or deceptive method is not allowable as per law.

Sec. 44 of Trade marks act of Australia

TRADE MARKS ACT 1995 – SECT 44

Identical etc. trade marks

(1)  Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant‘s trade mark ) in respect of goods ( applicant‘s goods ) must be rejected if:

(a)  the applicant‘s trade mark is substantially identical with, or deceptively similar to:

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

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

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

Note 1:       For deceptively similar see section 10.

Note 2:       For similar goods see subsection 14(1).

Note 3:       For priority date see section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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

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

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

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

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

Note 1:       For deceptively similar see section 10.

Note 2:       For similar services see subsection 14(2).

Note 3:       For priority date see section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)  If the Registrar in either case is satisfied:

(a)  that there has been honest concurrent use of the 2 trade marks; or

(b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant‘s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant‘s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:          For limitations see section 6.

(4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used theapplicant‘s trade mark for a period:

(a)  beginning before the priority date for the registration of the other trade mark in respect of:

(i)  the similar goods or closely related services; or

(ii)  the similar services or closely related goods; and

(b)  ending on the priority date for the registration of the applicant‘s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:       For predecessor in title see section 6.

Note 3:       For priority date see section 12.

in our case

1.both companies are doing business in the same products means to say soft drinks etc.,

2. RED HAWK is already in existence. RED EAGLE  wants to come in the market.

3. Both contains the similar word RED

4. HAWK AND EAGLE are belongs to one and same SPECIES though sub species is different.

5. When both kept side by side , it may differ like twin brothers. But generally people may get confused who is who . This concept is very crucial to decide whether it is deceptive or not.

6. Regarding identical  no explanation is required as the word itself carries meaning for it. Two HAWKS  and TWO EAGLES. in this case people may directly purchase without any doubt that it is the product of one and same company.

7. The role of mob psychology/ public  customers psychology in respect of goods takes an important role while deciding a case.

8. unless and until the good that is going to be purchased by the customer is very precious one and valuable one and is accompanied with any obligations and burdens and duties on him, he would not notice each and every particular cautiously and meticulously.

9. The attention of the human eye and recognising capacity of the human brain also plays vital role in choosing an item carefully or carelessly depending it’s value in the eyes of the customer.

Considering all these facts in to count, their Lordships rejected the registration of trade mark of chia… with RED EAGLE . as the general customer would not pay much attention in respect of soft drinks and would purchase the soft drink as that of RED HAWK of RED BULL.

Advertisements

About advocatemmmohan

ADVOCATE

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: