Similarities, not differences, the key to “substantial identity”

The Full Court of the Federal Court recently clarified the way in which the “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical.

The clarification occurred in the context of an opposition to the registration of a trade mark pursuant to s 58 of the Trade Marks Act 1995 (Cth) (TMA).  However, the Full Court’s clarification will have broader relevance as the question of whether a mark is substantially identical to another arises in several other sections of the TMA (for example sections 44, 120 and 122).

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83

The Appellant, Pham Global (previously known as Insight Radiology Pty Ltd), “Insight Radiology”, had sought to register (in class 44) the trade mark on the right below (IR mark).  The Respondent, “Insight Clinical”, was (and is) the registered owner (in class 44) of the trade mark on the left below (Insight mark). Insight Clinical opposed registration of the IR mark on various grounds, including that the IR mark was substantially identical to the Insight mark such that Insight Clinical owned the IR mark (TMA, s 58).

The delegate of the Registrar of Trade Marks found the trade marks to be substantially identical and upheld the opposition.  Insight Radiology appealed and Insight Clinical separately sued for infringement of the Insight mark.

The trial judge found, amongst other things, that Insight Clinical had a reputation in connection with radiology services and that Insight Radiology’s use of the IR mark would be likely to deceive or cause confusion.  On this basis, registration of the IR mark was refused because use of the mark would be misleading or deceptive contrary to s 18(1) of the Australian Consumer Law (TMA, s 42(b)).  Insight Radiology sought, and was granted, leave to appeal but the Full Court of the Federal Court dismissed the appeal.

The trial judge also disagreed with the delegate and found that the two marks were not substantially identical.  This finding was appealed to the Full Court by Insight Clinical.  In overturning the trial judge’s decision, and in finding that the two marks are substantially identical, the Full Court clarified the test to be applied in determining whether two marks are substantially identical.  This is considered below.

The issue of substantial identity arose in the context of section 58 of the TMA.  This section provides:

“The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.”

To successfully oppose registration based on section 58, it was not disputed that Insight Clinical needed to establish that:

• The marks are identical or substantially identical;
• The Insight mark has been used in respect of goods or services of “the same kind of thing” as the IR mark; and
• It (Insight Clinical) had the earlier claim to ownership based on its use of the Insight mark before the filing of the IR mark (or before any use of the IR mark by Insight Radiology).

Insight Radiology conceded items (b) and (c) above, and the only issue for determination by the Court was whether or not the marks were substantially identical.

Both the trial judge and Full Court cited the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414 as the starting point for analysis of whether marks are substantially identical.  In that case Windeyer J said:

“In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it””  [reference omitted]

At first instance, the trial judge, after acknowledging that both marks use the word “insight” and have other similarities, focussed on the differences between the two marks, and concluded that the two marks were not substantially identical.  The trial judge, said, at [18]:

“Whilst acknowledging these similarities… I do not consider that the IR composite mark is substantially identical to [the Insight mark].  … There is not a “total impression of resemblance”.  The visual differences combined with the different wording, albeit that “imaging” and “radiology” may be interchangeable in relation to the services to which the marks relate, make the marks sufficiently different on a side by side comparison.”

The Full Court found that the approach of the trial judge was erroneous.

[55] “The primary judge’s analysis, … does not refer to the essential elements of the marks or assess the relative importance of the differences and similarities having regard to those essential elements.”

The Full Court carried out its own analysis and came to a different view, saying:

[52] “… it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements … the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.”

[56] “The essential elements are the words “Insight” and the device. The word is the same in both marks. The device appears to the left of the word in both marks. While the differences which her Honour noted do exist, the dominant cognitive clues in both marks is a device which is circular in shape evoking an eye to the left of the word “Insight”, in circumstances where the other words “clinical imaging” and “radiology” are descriptive of the services offered. The importance of the visual differences which her Honour noted, and which we accept exist, must be assessed having regard to these essential elements of the marks. Once this necessary exercise is undertaken, we consider that not only is there a total impression of resemblance between the marks, but also that the differences between the marks are slight having regard to their essential elements or the dominant cognitive clues which they present.” [Emphasis added]

Accordingly, in order to assess whether a mark is substantially identical with another mark, the dominant cognitive clues or essential elements (in this case the words “insight” and the device) must be assessed in the first instance.  The differences between the two marks are then considered, including whether those differences comprise other words which may be (merely) descriptive of the services offered.  If the differences between the marks is slight having regard to the essential elements, or dominant cognitive clues, then the marks will be substantially identical.

Applying this assessment, the Full Court found the two marks were substantially identical and so Insight Clinical’s appeal, and opposition to registration of the IR mark based on s 58 of the TMA, succeeded. Thus, by making it plain that the side by side comparison begins with an assessment of the essential elements of the marks, before considering the differences between them (in light of those essential elements), the Full Court has clarified how the “side by side comparison” is to be carried out when considering whether two marks are substantially identical.