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In brief:

Starr Partners Pty Ltd v Dem Prem Pty Ltd [2007] FCAFC 42

This case provides a useful restatement of the finer points to consider when comparing marks for deceptive similarity. It also highlights the contextual considerations the court will use to assess the perspective of an ordinary person.

On 28 March 2007, the Full Federal Court overturned the decision of the primary judge in relation to whether two marks were deceptively similar so as to establish trade mark infringement. The case articulates the finer points the court will use to assess deceptive similarity.

In Starr Partners Pty Ltd v Dem Prem Pty Ltd (No 2) [2006] FCA 1269 (reported in IP@BDW December 2006, available at www.bdw.com under Publications), the primary judge found the visual and aural differences between the two relevant trade marks were too great for there to be deceptive similarity. The primary judge therefore found no infringement under section 120(1) of theTrade Marks Act 1995 (Cth).

Whilst the Full Court expressed hesitation in interfering with the view of a primary judge in a matter of impression, the Full Court overturned the primary judge’s decision and found the marks to be deceptively similar. The Full Court found the primary judge erred by giving too much weight to the differences revealed by a side by side comparison of the marks and insufficient weight to more unusual and memorable features.

The facts

The appellant had a real estate business in NSW and registered the stylised mark STARR PARTNERS. The registered mark contained a partial star device (with shadow) and the two words “Starr” and “Partners”.

The respondent carried on business as a real estate agent in Brisbane under the unregistered device and word mark “Star Realty”. Like the appellant’s registered mark, the respondent’s unregistered mark contained a partial star device and two words.

The primary judge held the marks were neither “substantially identical” or “deceptively similar”. On appeal, the appellant Starr Partners only challenged the primary judge’s finding on deceptive similarity.

Assessing deceptive similarity

The Full Court provided the following comments on the weight to place on the well known tests to establish deceptive similarity:

• The first step is to identify the impression produced by the registered mark considered in its entirety. More or less weight can be given to particular features of the mark as one feature can be more striking than another. However, the ultimate consideration is the mark in its entirety.
• An aural comparison will only be important if the goods or services to which the mark relates are acquired by reference to words in the mark. The Court gave the example that one might commonly hear a person say “Can I have a Coke?” but not “We need to find a new tenant, let’s call Star Realty”. Phonetic similarities between marks will not have a large role to play if words in the mark are not usually spoken.
• At first instance, the primary judge emphasised the difference between the words “PARTNERS” and “Realty”. The Full Court re‑emphasised that the likelihood of deception or confusion must be assessed in the light of the imperfection of human recollection. The Full Court held that where a trade mark includes both common and uncommon words, the uncommon words (such as “STAR” or “Starr”) will be the more memorable, and therefore significant for infringement purposes. The presence of common words (such as “PARTNERS” or “Realty”) will likely be less memorable and thus less important for assessing infringement.
• The Full Court decided that the essential feature of the two marks was the star device, its close relationship with the initial capital letter “S”, and the idea or concept of a star. The Full Court held these were unusual features in the context of a real estate business. In contrast, the Full Court held the word “Realty” was unremarkable in that context, as was the word “PARTNERS”. The Full Court decided that a reader would gloss over these words given the context in which the mark would appear, for example, advertising for a real estate business. The Full Court held that the ordinary person would likely only remember the star word and device.

The Full Court found that the primary judge erred in over-emphasising a literal and side by side comparison of the respective marks at the expense of considerations of imperfect recollection. The Full Court allowed the appeal with costs

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