Jafferjee v Scarlett [1937] HCA 36

Jafferjee v Scarlett [1937] HCA 36

Given the real and substantial similarities in the idea and general impression of the marks, and the lack of convincing evidence that public deception will not occur (especially in relevant markets), the doubts must be resolved against registration; the applicant has not discharged the onus to exclude likelihood of deception.

Parties
Appellant/opponent: Abdulhusein Jafferjee; Respondent/applicant: Victor Alexander Scarlett
Jurisdiction
Australia
Procedural Posture
Appeal From Registrar of Trade Marks (opposition Proceedings) / Judgment by High Court
Outcome
Appeal allowed.
Legal Topics
Trade Marks, Likelihood of Deception, Onus of Proof, Appeal From Registrar, Similarity of Trade Marks
Intellectual Property Trade Marks Likelihood of Deception Onus of Proof Appeal From Registrar Similarity of Trade Marks

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Parties

Abdulhusein Jafferjee

Appellant/opponent

Victor Alexander Scarlett

Respondent/applicant

Procedural Posture

Appeal From Registrar of Trade Marks (opposition Proceedings) / Judgment by High Court

Legal Issues

  1. 1 Whether the trade mark applied for by Scarlett so nearly resembles Jafferjee's registered trade mark as to be likely to deceive under sections 25 and 114 of the Trade Marks Act 1905-1934.
  2. 2 Whether the onus is on the applicant to show that registration would not likely deceive or cause confusion.
  3. 3 Whether the likelihood of deception in foreign markets should be considered.

Ratio Decidendi

Given the real and substantial similarities in the idea and general impression of the marks, and the lack of convincing evidence that public deception will not occur (especially in relevant markets), the doubts must be resolved against registration; the applicant has not discharged the onus to exclude likelihood of deception.

Court Disposition

Appeal allowed.

Orders

  • Application for registration of trade mark dismissed.
  • Appellant awarded costs.