In Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42 the Full Court of the Federal Court has reversed the primary Judge’s order dismissing an allegation of trade mark infringement.
Star Partners Pty Ltd carried on a real estate franchise business in New South Wales under the name "Starr Partners", and registered the trade mark STARR Partners & star device. Dev Prem Pty Ltd carried on business as a real estate agent in certain northern suburbs of Brisbane in Queensland, using the unregistered trade mark Star Realty & star device.
Both of the trade marks included a partial star device, and their respective uses of the words STARR and STAR both had the initial letter "S" larger than the other letters of the words used.
The primary Judge said that the test for deceptive similarity is "one of impression based on recollection: … which will be an imperfect recollection, measured against a standard of side by side comparison". He held that the visual and aural differences between the two marks were too great for there to be a real and tangible danger of deception or confusion. In reaching this conclusion, he gave weight to the differences between the words STAR and STARR, differences between the words Partners and Realty, and differences in colouring. Accordingly, he found that the marks were not deceptively similar and that there was no trade mark infringement. Star Partners Pty Ltd appealed the decision.
The Full Federal Court agreed with the primary Judge that a side by side comparison of trade marks had some role to play in the test of deceptive similarity. However, the Full Court held that his Honour erred in giving too much prominence to such a comparison at the expense of considerations such as imperfect recollection.
The Full Court decided that the essential features of both marks were the star device, its close relationship with the initial capital letter "S" of the first word in each mark, and the idea or concept of a "star". It found that Star Partners Pty Limited had taken advantage of the association between the family name "Starr" and the idea of a star, resulting in attention being drawn away from the double "r" ending of "Starr" as signifying a family name.
The Full Court decided that the inessential features of the marks were the words "Partners" and "Realty" respectively, that such words were non-distinctive in the context of real estate services, and that they would be readily dismissed by the hypothetical observer.
Appellate courts are reluctant to overturn the views of primary judges on matters of impression, since those judges have the benefit of hearing all relevant evidence. However, in this case, the appellate court believed that there had been a clear error of law and allowed the appeal.
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