Nothing went south for The North Agency
5 mins reading time
The direction has been set by the Full Federal Court in the appeal for trade mark infringement in The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203, and all signs were pointing north.
Background
In our recent article, we gave more detailed insight into the case, where The Agency Group Australia Limited (The Agency Group) sued H.A.S Real Estate (H.A.S) for trade mark infringement and misleading and deceptive conduct for their use of the brand, ‘The North Agency’, and the associated ‘N’ logo:
N Logo
The Agency Group owns the following Australian trade marks:
Registration No: 1836914, Priority Date 6 April 2017 (The Agency Mark)
Registration No: 1877216, Priority Date 2 October 2017 (Logo mark)
In the first instance, The Agency Group were unsuccessful at establishing that H.A.S.’s conduct amounted to trade mark infringement and appealed the decision to the Full Federal Court.
Appeal by The Agency Group
The Agency Group appealed the decision on three grounds confined to the trade mark issue. In particular, The Agency Group disagreed with Justice Jackman’s interpretation of the meaning of their registered marks and the proper application of the established principles on deceptive similarity under s 120(1) of the Trade Marks Act 1995 (Cth) (Act).
Composite Marks
The difficulty for the Court and the primary judge was that the Agency Group was pursuing infringement on a ‘composite mark’. A composite mark is one that is made up of words and images in a stylised form.
When considering trade mark infringement, they must be judged considering “the whole of the marks and all of their elements”.[1] This must be with reference to the marks as registered, and “in the case of a composite mark, all the elements of the mark must be considered in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other.”[2]
The protection of the trade mark registration extends only so far as the stylised mark – in this case, the stylised form of The Agency Mark. The statutory monopoly conferred by the trade mark registration is not the exclusive right to use the words, but “it is the exclusive right to use those words represented in the particular stylised form of the mark as registered”.[3]
The decision
The Court held that there was no error in the reasoning of Justice Jackman. The infringement question posed by s120(1) of the Act is an objective one based on an imaginary potential customer. Just as torts law has the “reasonable person” test, trade mark law has the “notional buyer”. As stated recently by the High Court, “the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer’s mark (as actually used).”[4]
In this case, the limits of the composite mark hindered The Agency Group’s case for infringement and the Court found that given those limits, Justice Jackman had exercised his own discretion and analysis of the mind of the “notional buyer”. The Court stated, “the task that confronted the primary judge is one of judicial estimation—a process in which minds might well differ as to both the outcome, and the evaluative findings that are steps along the way to reaching that outcome”.[5] The Court maintained that THE NORTH AGENCY was not deceptively similar to The Agency Mark, further cautioning against extensive reliance on the aural analysis of ordinary descriptive words in a particular stylised form. The Court warned that giving greater significance to the aural form would expand “the boundaries fixed by the visual form of the mark, as registered”.[6] The appeal was dismissed with costs.
Key Takeaways
The decision highlights limitations of enforcing trade marks registered in a composite form or in a particular stylised form. While a composite mark may be easier to register, especially for marks that would ordinarily be considered descriptive, the protection offered by the registration is significantly narrower. Consequently, your ability to enforce your trade mark is likely to be more difficult than a word mark.
We’re here to help
The Macpherson Kelley IP team can assist you with all aspects of trade mark law, from choosing a distinctive name or logo to obtaining trade mark registration. If everything goes south, we can also assist in infringement disputes.
Footnotes
[1] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526 (Optical 88) at [100] – [111]; Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; 268 FCR 623 (Australian Meat Group) at [78]; and Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 61 IPR 212 (Crazy Ron’s) at [100]
[2] The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203, at [18].
[3] At [56].
[4] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [29].
[5] At [70].
[6] At [104].
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Nothing went south for The North Agency
The direction has been set by the Full Federal Court in the appeal for trade mark infringement in The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203, and all signs were pointing north.
Background
In our recent article, we gave more detailed insight into the case, where The Agency Group Australia Limited (The Agency Group) sued H.A.S Real Estate (H.A.S) for trade mark infringement and misleading and deceptive conduct for their use of the brand, ‘The North Agency’, and the associated ‘N’ logo:
N Logo
The Agency Group owns the following Australian trade marks:
Registration No: 1836914, Priority Date 6 April 2017 (The Agency Mark)
Registration No: 1877216, Priority Date 2 October 2017 (Logo mark)
In the first instance, The Agency Group were unsuccessful at establishing that H.A.S.’s conduct amounted to trade mark infringement and appealed the decision to the Full Federal Court.
Appeal by The Agency Group
The Agency Group appealed the decision on three grounds confined to the trade mark issue. In particular, The Agency Group disagreed with Justice Jackman’s interpretation of the meaning of their registered marks and the proper application of the established principles on deceptive similarity under s 120(1) of the Trade Marks Act 1995 (Cth) (Act).
Composite Marks
The difficulty for the Court and the primary judge was that the Agency Group was pursuing infringement on a ‘composite mark’. A composite mark is one that is made up of words and images in a stylised form.
When considering trade mark infringement, they must be judged considering “the whole of the marks and all of their elements”.[1] This must be with reference to the marks as registered, and “in the case of a composite mark, all the elements of the mark must be considered in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other.”[2]
The protection of the trade mark registration extends only so far as the stylised mark – in this case, the stylised form of The Agency Mark. The statutory monopoly conferred by the trade mark registration is not the exclusive right to use the words, but “it is the exclusive right to use those words represented in the particular stylised form of the mark as registered”.[3]
The decision
The Court held that there was no error in the reasoning of Justice Jackman. The infringement question posed by s120(1) of the Act is an objective one based on an imaginary potential customer. Just as torts law has the “reasonable person” test, trade mark law has the “notional buyer”. As stated recently by the High Court, “the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer’s mark (as actually used).”[4]
In this case, the limits of the composite mark hindered The Agency Group’s case for infringement and the Court found that given those limits, Justice Jackman had exercised his own discretion and analysis of the mind of the “notional buyer”. The Court stated, “the task that confronted the primary judge is one of judicial estimation—a process in which minds might well differ as to both the outcome, and the evaluative findings that are steps along the way to reaching that outcome”.[5] The Court maintained that THE NORTH AGENCY was not deceptively similar to The Agency Mark, further cautioning against extensive reliance on the aural analysis of ordinary descriptive words in a particular stylised form. The Court warned that giving greater significance to the aural form would expand “the boundaries fixed by the visual form of the mark, as registered”.[6] The appeal was dismissed with costs.
Key Takeaways
The decision highlights limitations of enforcing trade marks registered in a composite form or in a particular stylised form. While a composite mark may be easier to register, especially for marks that would ordinarily be considered descriptive, the protection offered by the registration is significantly narrower. Consequently, your ability to enforce your trade mark is likely to be more difficult than a word mark.
We’re here to help
The Macpherson Kelley IP team can assist you with all aspects of trade mark law, from choosing a distinctive name or logo to obtaining trade mark registration. If everything goes south, we can also assist in infringement disputes.
Footnotes
[1] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526 (Optical 88) at [100] – [111]; Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; 268 FCR 623 (Australian Meat Group) at [78]; and Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 61 IPR 212 (Crazy Ron’s) at [100]
[2] The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203, at [18].
[3] At [56].
[4] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [29].
[5] At [70].
[6] At [104].