Trade Mark News & Information

Trademark Lawyers Australia – Federal Circuit Court – Musashi

Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025 (3 September 2014)

Successful trade mark infringement action by Nestle.

Christian infringed Nestle’s registered MUSASHI word and logo trade mark by using A-SASHI word and logo trade marks for vitamin and dietary supplements offered for sale online via the website at www.a-sashi.com and promoted on the A-SASHI Facebook page.

Christian was not represented by counsel, but argued that the A-SASHI products are directed to consumers in different market segments to Nestle’s MUSASHI products and are sold through different sales channels and at cheaper prices. However, his Honour confirmed these considerations are not relevant when considering deceptive similarity of trade marks in the context of an infringement action. Rather, the comparison called for is between any normal use of the registered trade mark comprised within the registration and that which the claimed infringer actually does in the advertisements or on the goods in respect of which there is the alleged infringement.

The judgment contains a succinct overview of relevant considerations for infringement and the comparison of trade marks.

Manousaridis J found that Christian was using the A-SASHI word and logos as trade marks and in relation to the class 5 goods covered by Nestle’s MUSASHI trade mark registrations. Also, material on the blog section of Christian’s website and Facebook page was regarded as trade mark use in relation to the instruction, education and information services in relation to human health, nutrition and dietary supplements covered by Nestle’s class 41 service mark registration for MUSASHI. Rather surprisingly, his Honour also found Christian’s dietary supplements were closely related to these class 41 registered services.

In finding the A-SASHI word and logo marks to be deceptively similar to the registered MUSASHI word and logo marks, his Honour noted:

That question is to be answered by assessing the impression persons (consumers) of ordinary intelligence and memory, who have an imperfect memory of the MUSASHI marks, are likely to gain on their being exposed to the A-SASHI marks in the actual circumstances in which the A-SASHI marks are used. If, for a number of consumers, there is a real, tangible danger that the resulting impression is likely to be deception or confusion about whether the A-SASHI products come from the same source as MUSASHI products, the A-SASHI name and logos will be held to be deceptively similar to the MUSASHI word and device marks; and Mr Christian’s use of the A-SASHI marks will have constituted infringement by him of the MUSASHI marks.

 In assessing what impressions are likely to be gained, I ignore Mr Christian’s contentions that the A-SASHI products are supplied to a market, or through a sales channel, or at prices that are different from the market in which, the sales channel through which, and the prices at which the MUSASHI products are supplied. Instead, I must take into account the “signposts” or “rules of comparison” to which I refer in paragraphs 52 and 53 of these reasons.

 I first consider the A-SASHI and MUSASHI names. There is no question they are similar. The names share a substantial and significant component – the two syllables “SASHI”. These syllables, when pronounced as one word, are aurally indistinct; they each constitute the second and third syllables of what are each three-syllable words. Further, the two syllables look the same; they are composed of the same letters.

 It is not only the similarities, however, that must be considered. The differences need to be identified and assessed. And here, the difference lies in the first syllable of each name. The first syllable of “A-SASHI” is “A-”. When pronounced alone, it is a short vowel, or at least a vowel that is shorter than the sound of “A” in “SASHI”. On the other hand, the first syllable of MUSASHI is “MU”. It consists of the consonant “m” and the vowel “u”. When “MU” is pronounced, the “u”, too, is a short vowel, or is, at any rate, shorter than the sound of “A” in “SASHI”. The first syllable of each word, therefore, when pronounced alone, gives a different sound.

 There are also visual differences between the first syllables of each word. The first syllable in “A-SASHI” is “A-”, a capital letter followed by a hyphen. The first syllable of “MUSASHI” is two letters, “MU”. The appearance of “A-”, being a letter and a hyphen, is very different from the appearance of “MU”.

 Although visual and aural differences exist in relation to the first syllable of each word, these differences must be assessed in the context of each word as a whole. The sounds of “A-” and “MU” in “A-SASHI” and “MUSASHI” respectively are dominated by the sound of “SASHI”. And, although visually the letters “A-” and “MU” are distinct from the other letters of each name, they too are dominated by the other letters of each word. If anything, the presence of a hyphen in “A-” positively draws attention to “SASHI”.

 Having regard to these features of the sounds and appearances of the words “A-SASHI” and “MUSASHI”, is there a real tangible danger that a number of consumers, upon being exposed to the A-SASHI word mark, will be confused about whether the A-SASHI products have the same source as the MUSASHI products? In my opinion, there is. That which is common to both names – “SASHI” – is a distinctive feature of both names; and the features that are not common to both names – the “A-” in “A-SASHI” and the “MU” in “MUSASHI” – are relatively minor features, whether considered aurally or visually. That means there is a real, tangible danger that a number of consumers, when exposed to the A-SASHI word mark in the context in which it is currently used, will direct their attention to the distinctive aspect of the A-SASHI mark, “SASHI”; that would cause them to recall the distinctive aspect of the MUSASHI word mark, also “SASHI”; they are unlikely to have their attention specifically drawn to the subsidiary feature of “A-SASHI”, namely the “A-” or, if their attention were to be drawn to that feature, they are unlikely to have any memory or any sufficient memory of the MUSASHI mark as would enable them with confidence to remember the different first syllable of MUSASHI, namely “MU”. It is likely, therefore, that a number of consumers would either be left with the impression that the A-SASHI word mark is the same as their memory of the MUSASHI marks or, to the extent they may notice the “A-” in A-SASHI, they would be uncertain whether their memory of “MUSASHI” also contained the “A-” in “A-SASHI”. The end result would be that a number of consumers would either be deceived or confused about whether the marketing and sale of goods in relation to which the A-SASHI marks are used have the same source as goods in relation to which the MUSASHI marks is used.

 I next consider the MUSASHI device mark and the A-SASHI logos. Here, both the first and second A-SASHI logos contain two features. The first, and dominant feature, is the name “A-SASHI”; and the second is the device itself. The MUSASHI device mark also contains two features: the name “MUSASHI” and the device itself. And, as with the A-SASHI logos, the dominant feature of the MUSASHI device mark is the name “MUSASHI”. The devices, however, are substantially different: for example, they are different shapes; the MUSASHI device has additional features, such as a circle inside the rectangle; the MUSASHI mark has three colours, whereas the A-SASHI logos have two colours; and in the MUSASHI mark, the font is straight whereas the font is diagonal in the second A-SASHI device.

 In my opinion, however, there is a real, tangible danger that a number of consumers, when exposed to the A-SASHI logos, would direct their attention to the “SASHI” part of the name “A-SASHI”. For the reasons I have discussed above, that would lead a number of consumers to recall the MUSASHI word mark. It would also lead a number of them to remember that the MUSASHI word mark was used or also used in connection with a device. But, because the MUSASHI device is dominated by the word “MUSASHI”, and that name is dominated by “SASHI”, the consumers would not be sufficiently confident to determine whether the device they recall in which the word “MUSASHI” was used is the same as the A-SASHI logos to which they are exposed. The likely result for some consumers is that they would either be deceived or confused about whether the marketing and sale of goods in relation to which the A-SASHI logos have been or are used have the same source as goods in relation to which the MUSASHI device mark is used.

Even though is Honour concluded that whether goods are supplied in a different market is not relevant to an assessment of whether trade marks are deceptively similar, he did go on to comment on this issue and considered that the A-SASHI range of products are supplied, and are intended to be supplied into a market which at least a substantial proportion of the MUSASHI range of products is and has been supplied.