In Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd ([2024 FCAFC 156), the Full Federal Court of Australia has issued a decision which has important practical implications in relation to pursuing an application for registration, and in considering the difference between registering a trademark in plain script or in a stylised form.
Deceptive similarity
Deceptive similarity is a key issue in Australian trademarks law, as it is essential to determining whether there is a conflict between a mark used or registered and another trademark. The difference in the rights granted by registering a trademark as a plain word or as a stylised representation is not often considered. However, the issue arose in this case.
The plain word trademark, MERCATO, had been registered for various goods as well as retail and wholesale services in Class 35, and food and drink services in Class 43. The mark depicted in Figure 1 had been registered for similar Class 35 services and the mark depicted in Figure 2 was registered for similar Class 43 services:
In assessing whether MERCATO was infringed by use of MERCATO CENTRALE, the primary judge gave weight to the proposition that, in the English language, adjectives do not follow nouns. Partly on that basis, her Honour concluded that MERCATO and MERCATO CENTRALE were not deceptively similar.
The Full Court disagreed with this assessment and noted that:
- there are many examples in ordinary English of adjectives following nouns (eg, “letters patent”, “body politic” and “body corporate”);
- it is a matter of common knowledge that descriptive adjectives may follow nouns in sub-brands (eg, Coke Zero, Pepsi Maxand MacBook Pro); and
- the fact that adjectives typically precede nouns in English does not mean that ordinary English speakers will not follow when an adjective comes after a noun, where the context otherwise clarifies the intended meaning.
Accordingly, the Full Court concluded that MERCATO and MERCATO CENTRALE were deceptively similar.
However, the MERCATO registration was found to be invalid and, therefore, there was no infringement arising from use of MERCATO CENTRALE.
As the registrations for the marks depicted in Figure 1 and Figure 2 were not invalidated, it was necessary to consider whether either of those marks are deceptively similar to MERCATO CENTRALE.
On these issues, the Full Court determined that they are not deceptively similar, noting as follows:
- In respect of the mark in Figure 1, “[t]he monopoly it secures is not a monopoly over the plain word ‘mercato’. Rather, it secures a monopoly over that word as rendered in the fancy script depicted on the Register”. In light of that stylised representation and the fact that MERCATO CENTRALE was not used in any similar typeface, it was considered not deceptively similar to the registered mark.
- The mark in Figure 2 was also not infringed because “[a]n essential and central feature of the Red Man Logo is the red man it contains”.
Separately, the Full Court expressed the view that the plain word mark registration for MERCATO would not be infringed by use of the following mark:
Representations false in material particulars
In order to obtain registration for the plain word MERCATO, Caporaso had filed a declaration evidencing its use of that trademark. That declaration contained a number of false statements regarding the applicant’s historical use of the trademark.
The primary judge determined that this should not invalidate the registration because the evidence of use was not needed for the mark to be accepted. This is because the examiner should have considered the mark to be inherently registrable as a foreign language work with no ordinary signification to the general public in Australia. Therefore, the primary judge took the view that the representations were not false “in material particulars”.
The Full Court took a different view, stating that the purpose of the relevant provision in the Trademarks Act “is to deter misrepresentations of facts relevant to obtaining acceptance of a trademark, not misrepresentations of facts which are not relevant on a proper application of Sections 33(1) and 41(1)” and that “it is concerned with representations that are false in a way that was material to the decision to accept the application for registration”.
Consequently, the Full Court determined that, as the representations were (rightly or wrongly) material to the examiner’s decision to accept the application, they were sufficient to invalidate the registration. The court also decided that there was no good justification for exercising its discretion not to cancel the registration.
Key takeaways
The decision is significant in that it:
- highlights the need for applicants to be careful and honest in their representations when pursuing an application, and particularly when submitting a declaration concerning use in support of an application; and
- highlights the difference between a registration for a mark in plain script and a stylised representation.
The decision indicates the advantages obtained by registering a trademark in plain script, but also raises questions as to when there will be a conflict with a trademark represented in a stylised script. Whether the difference highlighted will impact upon assessments of use in cases where a registration is challenged for non-use remains to be seen.
While registration as a plain word is typically the most desirable way in which to register a trademark, if there is use in a stylised script, or other special get-up, concurrent registration for that format may also be worthwhile.
This article first appeared in WTR in (January 2025), For more information, please go to www.worldtrademarkreview.com