Australian Meat Group Pty Ltd v JBS Australia Pty Limited  FCAFC 207 (27 November 2018)
Successful appeal by Australian Meat Group. The Full Court overturned the finding of trade mark infringement by the primary judge, Greenwood J reported here
JBS is the owner of a registration for the AMH Logo trademark shown below dating from 20 July 1998 and covering meat and meat products in class 29.
It also owns a registration for the plain word trademark AMH dating from 4 September 2015 and covering a broad range of class 29 goods including meat and meat products.
JBS is the largest meat processing company in Australia with 80% of its meat products exported to 80 countries. It has used the AMH Logo and word marks since 1991 in relation to processed meat and meat products. It changed its name from Australia Meat Holdings Pty Limited in October 2007 and, since that time, has also used other brands for its processed meat products.
Australian Meat Group adopted its company name in March 2014 and subsequently designed the AMG Logo mark shown below. It commenced trading in in January 2015.
Australian Meat Group sells its meat products under the AMG word mark, the AMG Logo and other composite marks containing the AMG Logo, examples of which are shown below. It was not in dispute that these were signs being used as trade marks in relation to the same goods covered by the trade mark registrations owned by JBS.
When reporting the primary judgement, I expressed the view that it was curious why a significant part of the judgment concerned the reputation of the AMH word and Logo marks. Indeed, Greenwood J made a specific finding of infringement in the context of this reputation (at paragraph 279 (21)). There was also a finding (at paragraph 279 (23)) that the difference in the third letters of the respective AMH and AMG trade marks “is not a sufficiently distinguishing feature of the two marks when AMH has been used in the same market for so long”. However, it is now quite settled that, in infringement proceedings, reputation is a relevant consideration in assessing the nature of imperfect recollection of a registered mark, where the mark, or perhaps an important element of it, “is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services”. His Honour did not assess the reputation of the AMH word and Logo marks to be at this level of notoriety, so the enquiry ought to have been confined to a comparison of the trade marks as used by AMG with the registered AMH word and Logo marks by attributing a notional use to these registered marks.
This was a ground of appeal which the Full Court considered separately and confirmed that reputation is not relevant to deceptive similarity unless the registered mark is well-known, giving rise to a lessened likelihood of imperfect recollection.
The primary judge compared the respective marks from an incorrect starting point based on the reputation of the AMH mark resulting in error when considering infringement under s120(1). This focus on reputation shifted attention from other features of the AMH Logo mark and other features of the various AMG Logo marks. When considered in their entirety, the respective logo marks are quite different. Hence, the Full Court found that none of the AMG Logo marks used by Australian Meat Group are deceptively similar to the registered AMH Logo mark.
The Full Court also found that the AMG word mark is not deceptively similar to the registered AMH Logo mark.
The Full Court then turned to consider whether any of the AMG Logo marks used by Australian Meat Group are deceptively similar to the registered AMH word mark and found in the negative. The presence of the name Australian Meat Group was significant and helped to distinguish the various AMG Logo marks from the AMH word mark.
Finally, the Full Court compared the AMG word mark with the registered AMH word mark and noted this was the high point of the JBS case for trade mark infringement. It observed that the world of commerce is conditioned to the use acronyms and this impacts upon the scope of the monopoly afforded by trade mark registration of an acronym. The Full Court commented “the pool of acronyms and initialisms is more limited than the reservoir of words from which they are sourced. This is particularly so where one of the letters of the acronym or initialism is derived from a commonly-used geographic indicator, such as Australia.” There was no dispute that the letters “AM” in the acronym AMH would be understood in the Australian meat industry as an obvious contraction of ‘Australian meat’. The evidence was that, in the Australian meat industry, acronyms incorporating the letters “AM” are common. This affects the significance and weight to be given to the element “AM” in each of the competing marks. The Full Court concluded that “the primary judge placed too much significance on the “AM” component of the AMH word mark and the AMG word mark when concluding that they were deceptively similar marks, particularly in discounting the significance to be attached to the distinguishing last letters “H” and “G” respectively. Further, each mark must be compared as a whole. When this is done, there is an undeniable difference between the AMH word mark and the AMG word mark both visually and when described verbally as initialisms. When these considerations are coupled with an appreciation that the trade in question is characterised by the discernment and the inquiring minds of the traders concerned, and that the purchases in question are of some significance in terms of volume and value, we are not persuaded that, in use, the AMG word mark is deceptively similar to the AMH word mark. The primary judge erred in reaching the opposite conclusion. This error was the product of his Honour’s reliance on the strong reputation he found in the AMH acronym.”