Claimant's Trade Mark Claims Fail; Consumer Law Claim Succeeds

OUTCOME: Allowed in Part

Federal Court of [NAME] v [COMPANY] [2023] FCA 1412 File number(s): NSD 967 of 2020

Judgment of: [NAME] of judgment: 16 November 2023

Catchwords: [NAME] – infringement – [NAME] 1995 (Cth) s 120 – deceptive similarity – consideration of intention to mislead or deceive – infringement not established. [NAME] – application for cancellation of [NAME] [NAME] registration – [NAME] 1995 (Cth) ss 44, 60 and 88 – no ground for cancellation established. [NAME] – cross-claim for removal of [NAME] [NAME] from the [NAME] for non-use – [NAME] 1995 (Cth) s 92(4)(b) – consideration of discretion under s 101(3) to permit [NAME] to remain [NAME] in respect of certain goods. [NAME] – misleading or deceptive conduct in contravention of s 18 of the [NAME] – whether representation as to comparative weight of meat [NAME] misleading or deceptive – contravention established.

Legislation: [NAME] 2010 (Cth) Schedule 2, s 18 [NAME] 1995 (Cth) ss 44, 44(1), 60, 62A, 88, 88(1)(a), 88(2)(a), 88(2)(c), 92(4), 92(4)(b), 100(1), 101(3), 120, 120(1), 120(2), 122(1)(e) Federal Court Rules 2011 (Cth) r 34.50(2)(b)

Cases cited: [NAME] Commission v [NAME] [COMPANY] [2014] FCA 634; (2014) 317 ALR 73 [NAME] Commission v [NAME] [COMPANY] [2011] FCA 1254 [COMPANY] v [NAME] [COMPANY] [1937] HCA 51; (1937) 58 CLR 641 [NAME] v [NAME] [COMPANY] [2004] HCA 60; (2004) 218 CLR 592 [NAME] v [COMPANY] [2000] HCA 12; (2000) 202 CLR 45 [COMPANY] v [COMPANY] [1952] HCA 15; (1952) 86 CLR 536 [NAME]. v [NAME] [COMPANY] [2015] FCA 1065; (2015) 115 IPR 82 [COMPANY] v [COMPANY] [1984] FCA 167; (1984) 2 FCR 82 [COMPANY] v [COMPANY] [2020] FCAFC 235; (2020) 385 ALR 514 [COMPANY] v Shin-Sun Australia [2010] HCA 13; (2010) 240 CLR 590 [COMPANY] v [NAME] [COMPANY] [1991] FCA 402; 30 FCR 326 [NAME] v [NAME] [1959] HCA 9; (1959) 101 CLR 298 [NAME]'s v [NAME] [COMPANY] [1956] HCA 41; (1956) 95 CLR 190 [COMPANY] v [NAME] Co [COMPANY] [1998] FCA 1616; (1998) 90 FCR 236 [COMPANY] v [NAME] Commission [2004] FCAFC 90; (2004) 61 IPR 420 [NAME] v [NAME] Company [COMPANY] [1989] FCA 124; (1989) 86 ALR 549 [COMPANY] v [NAME] [COMPANY] [2021] FCAFC 128; (2021) 285 FCR 598 [NAME] v DKSH Australia [COMPANY] [2011] FCAFC 98; (2011) 280 ALR 639 [COMPANY] v [NAME] [COMPANY] [2017] FCAFC 83; (2017) 251 FCR 379 [COMPANY] v [NAME] [NAME] [2009] FCA 135; (2009) 176 FCR 300 [COMPANY] v Edwards [2016] FCA 729; (2016) 338 ALR 134 Registrar of [NAME] v [COMPANY] [1999] FCA 1020; (1999) 93 FCR 365 [COMPANY] v Monster Energy Company [2019] FCA 923; (2019) 370 ALR 140 [COMPANY] v [NAME] [COMPANY] [1998] FCA 1463; (1998) 168 ALR 396 [COMPANY] v [NAME] [COMPANY] [1999] FCA 1821; (1999) 169 ALR 1 [COMPANY] v [COMPANY] (1939) 58 RPC 141 [COMPANY] v [NAME] [COMPANY] [2023] HCA 8; (2023) 408 ALR 195 [COMPANY] v [COMPANY] [2018] FCA 575; (2018) 140 IPR 1 [COMPANY] v [NAME] [COMPANY] [1954] HCA 82; (1953) 91 CLR 592 The Agency Group Australia [COMPANY] v [NAME]. [COMPANY] [2023] FCA 482 [COMPANY] v [NAME] ([COMPANY] [1963] HCA 66; (1963) 109 CLR 407 [NAME] v [NAME] [COMPANY] [2019] FCAFC 100; (2019) 143 IPR 1 [COMPANY] v Karounos [2001] FCA 1132; (2001) 113 FCR 322 [COMPANY] v [NAME] & Co [1994] FCA 163; (1994) 49 FCR 89 [COMPANY] v Reynolds [2001] FCA 261; (2001) 107 FCR 166

Division: General Division

Registry: New South Wales

National Practice Area: Intellectual Property

Sub-area: [NAME] of paragraphs: 219

Date of last submission/s: 4 May 2023

Date of hearing: 5 – 8 December 2022

Counsel for the Applicants: [redacted]

Solicitor for the Applicants: [redacted]

Counsel for the Respondent: [redacted]

Solicitor for the Respondent: [redacted]

BETWEEN: [NAME] First Applicant

[COMPANY] Applicant

AND: [COMPANY] Respondent

AND BETWEEN: [COMPANY]-Claimant

AND: [NAME]-Respondent

order made by: [NAME] OF ORDER: 16 november 2023

THE COURT ORDERS THAT:

1. The parties confer and supply to the chambers of [NAME] by 4pm on 7 December 2023 draft short minutes of order giving effect to these reasons and a proposed timetable for the resolution of any further matters for determination, including costs.

2. Insofar as the parties are unable to agree to the terms of the draft short minutes of order referred to in Order 1, the areas of disagreement be set out in [NAME]-up. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR

JUDGMENT 1 INTRODUCTION [1] 1.1 The proceedings [1] 1.2 The [NAME] [NAME] [8] 1.3 Summary of conclusions [11] 2 THE WITNESSES [13] 2.1 [NAME] [13] 2.2 [NAME] [19] 3 [NAME] [23] 3.1 Introduction [23] 3.2 Law regarding deceptive similarity [31] 3.3 The use of [NAME] and [NAME] [60] 3.4 The evidence of [NAME] [NAME] [71] 3.5 The deceptive similarity arguments [83] 3.6 Consideration of deceptive similarity [93] 3.6.1 Introduction [93] 3.6.2 [NAME] and [NAME] [95] 3.6.3 Intention [109] 3.6.4 [NAME] and [NAME] [118] 4 THE VALIDITY CHALLENGE TO THE [NAME] [NAME] [128] 4.1 Introduction [128] 4.2 The section 44 challenge [134] 4.3 The section 60 challenge [139] 4.4 The section 88 challenge [149] 4.5 Conclusion in relation to the challenge to the [NAME] registration [151] 5 CROSS CLAIM FOR REMOVAL OF [NAME] [152] 5.1 Introduction [152] 5.2 The evidence of use - [NAME] [158] 5.3 Discretion in relation to non-[NAME] goods [173] 6 THE [NAME] – "25% [NAME]" [182] 6.1 Introduction [182] 6.2 The representation made [189] 6.2.1 The submissions [189] 6.2.2 The relevant law [192] 6.2.3 Consideration of the 25% more [NAME] representation [198] 6.3 The evidence of the weight of the meat [208] 7

CONCLUSION [218]

[NAME]:

1. INTRODUCTION

1.1 The proceedings 1 This is a dispute about [NAME] [NAME], misleading or deceptive conduct and [NAME]. 2 The applicants are [COMPANY] and [COMPANY] (collectively, [NAME]). They are respectively the licensor and authorised [NAME] of the branding associated with the [NAME] chain of [NAME] which first opened in Australia in 1971 and by 2020 had over 890 outlets operating in Australia. As at 2020, [NAME] and its various affiliated franchisees and licensees operated over 35,000 [NAME[NAME] in over 100 countries and territories around the world. The [NAME] [NAME] was first sold in the United States of America in 1968 and has been sold in Australia since operations commenced here. [NAME] is the [NAME] of [NAME] [NAME] for the words [NAME] and [NAME]. 3 The respondent is [RESPONDENT]. It is a franchisee of [RESPONDENT], a United States entity, and trades under the name [NAME] and associated branding. It is a competitor of [NAME] in the [NAME] business, in Australia and worldwide, and has also operated in Australia since 1971. In early 2020, [NAME] began to sell [NAME] by reference to the names [NAME] and [NAME]. 4 [NAME] contends that: (a) [NAME] has infringed its [NAME] and [NAME] [NAME] [NAME] in breach of s 120 of the [NAME] 1995 (Cth) by using the signs [NAME] and [NAME] in relation to its [NAME]; (b) orders should be made for the removal from the [NAME] [NAME] of [NAME] [NAME] [NAME] [NAME]; and (c) [NAME] has misrepresented to [NAME] that its [NAME] [NAME] contains 25% more [NAME] than the [NAME] [NAME] (the 25% more [NAME] representation) in breach of the provisions of the [NAME] ([NAME]) (Schedule 2 of the [NAME] 2010 (Cth) ([NAME] claim). 5 [NAME] denies that it has infringed [NAME]' [NAME] [NAME] and contends that its [NAME] [NAME] should remain on the [NAME], the consequence of which is that it has a complete defence to the infringement allegation pursuant to s 122(1)(e) of the [NAME]. [NAME] contends in its cross-claim that [NAME]' [NAME] [NAME] [NAME] should be removed from the [NAME] for non-use pursuant to s 92(4)(b) of the [NAME]. It also contends that the 25% more [NAME] representation is correct and that the [NAME] claim must be dismissed. 6 A significant issue in the case is whether or not the impugned [NAME] [NAME] [NAME] are deceptively similar to the [NAME] [NAME] [NAME] as prescribed by ss 10 and 120 of the [NAME]. At the time of the hearing, one relevant issue was the extent to which the reputation is relevant to such an enquiry. That question was then pending for decision by the High Court and the parties submitted that the decision in the present case should await that decision. Judgment in [COMPANY] v [NAME] [COMPANY] [2023] HCA 8; (2023) 408 ALR 195 was later delivered and the parties have subsequently made written submissions as to its effect, which I have taken into account in these reasons. 7 By orders made on 19 March 2021, issues of loss and damage and quantum of the pecuniary relief sought were to be heard and determined after and separately from all other issues in the proceeding.

Accordingly, this judgment addresses only questions of liability.

1.2 The [NAME] [NAME] 8 [NAME] is the [NAME] of two registrations for the words [NAME], being [NAME] [NAME] 271329 and 271330, both of which were filed on 14 August 1973. The first is in respect of goods in class 29 and the second is in respect of goods in class 30. The goods relevant to the infringement case are emphasised in bold: Class 29: Meat, poultry and game, including [NAME] patties, meat extracts; preserved, dried and cooked fruits and vegetables, eggs, milk and other dairy products; edible oils and fats, preserves, pickles Class 30: [NAME]; coffee, tea, cocoa, rice, coffee substitutes; flour and preparations made from cereals; bread, biscuits; yeast, baking powder; salt, mustard, pepper, vinegar, sauces, spices 9 [NAME] is also the owner of [NAME] [NAME] No 1539657 for the words [NAME] filed on 7 February 2013 in class 30 for: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar 10 [NAME] is the [NAME] of [NAME] [NAME] No 2050899 for [NAME], filed on 14 November 2019, in respect of the following goods: Class 29: [NAME] and burgers; meat burgers; vegetable burgers; cheese burgers; [NAME] patties; meat, poultry, fish and game; meat extracts; sausages; meat products; chicken products; prepared vegetable products; chicken nuggets; fried chicken; grilled meat; sandwich fillings, being meat or cheese based; preserved, frozen, dried and cooked fruits and vegetables; potato chips; vegetable salads; fruit chips; fruit salads; pickles prepared from fruits and vegetables; potato and onion products included in this class; vegetable patties; eggs, milk and milk products including milk shakes and malted milks; beverages having a milk base; beverages made from yoghurt; fruit flavoured beverages having a milk base; preserves, pickles and relishes; jams, jellies Class 30: [NAME] and burgers (sandwich with filling); steak sandwiches and sandwiches; preparations made from bread; sandwiches containing meat including steak and [NAME]; steaks and burgers contained in bread rolls; [NAME] in buns; bread buns; foodstuffs made from cereals, corn, dough, farinaceous products, maize, oats, rice, sugar or flour; beverages made from cereals, chocolate, cocoa, coffee or tea; bread; biscuits; pastries; cakes; confectionery; prepared desserts (chocolate based); prepared desserts (confectionery); prepared desserts (pastries); flavoured toppings for desserts; salts included in this class, pepper, mustard, sauces, spices, vinegar, sauces (condiments); baking powder, yeast; salad dressings; fruit sauces, relishes; coffee, tea, cocoa, coffee substitutes; sugar; ices; sandwiches containing cheese

1.3 Summary of conclusions 11 For the reasons set out below, I have concluded that: (a) [NAME] is not deceptively similar to [NAME] within s 120 of the [NAME]; (b) [NAME] is not deceptively similar to [NAME] within s 120 of the [NAME]; (c) As a consequence of (a) and (b), [NAME] has not established that the impugned use of the [NAME] [NAME] [NAME] infringes its [NAME] [NAME] [NAME]; (d) The [NAME] [NAME] [NAME] is not liable to be removed from the [NAME] pursuant to any of ss 44, 60 or 88 of the [NAME], as a result of which [NAME] has an additional defence to the infringement allegation pursuant to s 122(1)(e) of the [NAME]; (e) The [NAME] [NAME] [NAME] is not liable to be removed from the [NAME] for non-use, save that the registration should be amended to remove the following goods: biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar; (f) [NAME] has engaged in misleading or deceptive conduct in breach of s 18 of the [NAME] by making the 25% more [NAME] representation. 12 I will make orders requiring the parties to provide short minutes of order giving effect to these reasons and addressing any residual issues, including costs.

2. THE WITNESSES

2.1 [NAME] 13 [NAME] has been [NAME] Manager of [NAME[NAME] since July 2017. He has been associated with [NAME[NAME] since 2011, when he worked as a [NAME] consultant to the company from January 2011 until November 2012. He was then appointed National Brand Manager and, in 2015, Senior Brand Manager before being appointed to his present position. 14 [NAME] provided three affidavits. In his first he gives evidence about: [NAME] business and [NAME] [NAME]; the [NAME] [NAME]; the [NAME] "two all-beef patties, special sauce, lettuce, cheese, pickles, onions – on a sesame seed bun"; the [NAME] build, being the club sandwich styled three tiered sesame seed bun with two beef patties; the [NAME] [NAME]; and [NAME] activities which led to the commencement of these proceedings. In his second affidavit he responds to the affidavit of [NAME]. In his third affidavit he provides supplementary evidence to his first affidavit in response to some objections taken to his first affidavit concerning the use by [NAME] of the [NAME] and [NAME] [NAME]. [NAME] [NAME] was cross examined. 15 [NAME[NAME] has since January 2022 been Head of Business Insights and Analytics at [NAME[NAME]. She has a Bachelor of Science degree majoring in mathematics and computer sciences and has worked in the field of data analytics since 2007. Her current role is to lead a team providing advice on sales information about the performance of [NAME] products, including providing regular reports and campaign analysis, including historical data analysis to management. Ms [NAME] explained the process of extracting data from [NAME]' records for the preparation of spreadsheets relied upon for the purpose of demonstrating use of the [NAME] [NAME]. She was not cross examined. 16 [NAME] is Systems Co-ordinator of [NAME] in Victoria, a position he has held since 2013. He commenced working for [NAME] in 1992 as an analyst in the food safety laboratory. [NAME] [NAME] was provided with a test protocol for use in the conduct of tests to weigh [NAME] and [NAME] [NAME] meat patties and conducted tests on 14 July 2021 in support of the [NAME] claim. He describes the testing that he carried out on patties acquired from 10 [NAME[NAME] and 10 [NAME[NAME] located in Melbourne and reports on the results. [NAME] [NAME] was cross examined. [NAME] [NAME] [NAME] is Team Leader at [NAME]. She holds a PhD in analytical chemistry. Dr [NAME] provided two affidavits. In her first affidavit, she gives evidence of testing that she conducted on various [NAME] and [NAME] [NAME] acquired from 20 locations in Brisbane to ascertain their weight. She reports on her results. In her second affidavit, Dr [NAME] gives evidence of further testing that she conducted on 13 June 2021 in accordance with a protocol emailed to her by the solicitors engaged by [NAME], [NAME] [RESPONDENT] [COMPANY] ([COMPANY]), and reports on the results. Dr [COUNSEL] was cross examined. 18 [COUNSEL] is a solicitor in the employ of [COMPANY]. Ms [COUNSEL] provided two affidavits. In her first affidavit, she exhibits correspondence with the solicitors representing [NAME] ([NAME]), the [NAME] [NAME] in suit, and screen shots and reproductions of the impugned advertisements released by [NAME]. In her second affidavit, she annexes the results of searches of the [NAME] for certain [NAME] [NAME]. Ms [NAME] was not cross examined.

2.2 [NAME] 19 [NAME] has since January 2015 been the Chief [NAME] of the respondent. He reports to the Chief Executive Officer of [NAME]. He gives evidence of the history of [NAME] in Australia and its position as a franchisee of [NAME]. He explains that when [NAME] commenced operations in Australia it could not adopt the name [NAME] because of [NAME] [NAME] issues with a third party and so elected to [NAME] under the [NAME] [NAME] [NAME], which had been [NAME] in Australia since 1963. He gives evidence about the [NAME] outlets in Australia and the [NAME] of the [NAME] and [NAME] [NAME]. [NAME] [NAME] was cross-examined. 20 [NAME] is a primary school teacher who had been employed at [NAME] on a casual basis from 2014 until 2016. She gives evidence about her experience of cooking [NAME] at [NAME] and aspects of nomenclature. She was not cross examined. 21 [COUNSEL] [NAME] is a solicitor in the employ of [NAME], who represent [NAME]. She exhibits the results of various [NAME] [NAME] searches and gives evidence about how various restaurants promote the sale of meat products by reference to weight. She was not cross examined. 22 [COUNSEL] [NAME] is a solicitor in the employ of [NAME]. He gives evidence of the steps he took to make online purchases of [NAME] and [NAME] [NAME] and exhibits screenshots from various websites and packaging. He was not cross examined.

3. [NAME]

3.1 Introduction 23 Although its pleaded case is broader, in closing submissions [NAME] infringement case was confined to reliance on s 120(1) of the [NAME]. 24 Section 120(1) and (2) provide (notes omitted): 120 When is a [NAME] [NAME] [NAME] infringed? (1) [NAME] infringes a [NAME] [NAME] [NAME] if the person uses as a [NAME] [NAME] a sign that is substantially identical with, or deceptively similar to, the [NAME] [NAME] in relation to goods or services in respect of which the [NAME] [NAME] is [NAME]. (2) [NAME] infringes a [NAME] [NAME] [NAME] if the person uses as a [NAME] [NAME] a sign that is substantially identical with, or deceptively similar to, the [NAME] [NAME] in relation to: (a) goods of the same description as that of goods ([NAME] goods) in respect of which the [NAME] [NAME] is [NAME]; or (b) services that are closely related to [NAME] goods; or (c) services of the same description as that of services ([NAME] services) in respect of which the [NAME] [NAME] is [NAME]; or (d) goods that are closely related to [NAME] services. However, the person is not taken to have infringed the [NAME] [NAME] if the person establishes that using the sign as the person did is not likely to deceive or cause confusion. 25 [NAME] alleges that its [NAME] [NAME] have been infringed in two ways. 26 First, it contends that [NAME]' use of the words [NAME] involves infringement of its [NAME] [NAME] [NAME] for [NAME]. In refining its case in its closing submissions, [NAME] submits that its [NAME] [NAME] [NAME] No 271330 for [NAME] for "[NAME]" in class 30 has been infringed by [NAME]' use of the [NAME] name because it is a sign that is deceptively similar to the [NAME] [NAME]. 27 Secondly, it contends that [NAME]' use of the words [NAME] involves infringement of its [NAME] [NAME] [NAME] No 1539657 for [NAME] for "edible sandwiches, meat sandwiches" in class 30 because it is a sign that is deceptively similar to the [NAME] [NAME]. 28 [NAME] pleads that [NAME] deliberately adopted the [NAME] and [NAME] [NAME] for the purpose of promoting in the mind of [NAME] a connection or affiliation between [NAME] and [NAME] [NAME] and those (respectively) marked [NAME] and [NAME]. [NAME] denies this allegation. 29 [NAME] does not dispute that its use of the impugned [NAME] is use "as a [NAME] [NAME]" in relation to the sale of [NAME] or that those goods are "goods or services in respect of which the [NAME] [NAME] is [NAME]" within s 120(1). As a consequence, the only relevant issue for determination is whether or not the impugned signs are deceptively similar to the [NAME] [NAME] [NAME]. 30 The term "deceptively similar" is defined in section 10 of the [NAME]: For the purposes of this Act, a [NAME] [NAME] is taken to be deceptively similar to [NAME] [NAME] [NAME] if it so nearly resembles that other [NAME] [NAME] that it is likely to deceive or cause confusion.

3.2 Law regarding deceptive similarity 31 In [COMPANY] v [NAME] [COMPANY] [1937] HCA 51; (1937) 58 CLR 641 at 658, [NAME] and [NAME] [NAME] described the test for deceptive similarity as follows: But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new [NAME] and title should be restrained. In deciding this question, the [NAME] ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the [NAME] or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged [NAME] or device is the same. The effect of spoken description must be considered. If a [NAME] is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary [NAME] behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight. 32 Their Honours emphasised that the determination for the court is one of estimation and evaluation (at 659): The main issue in the present case is a question never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs. 33 The summary provided by [NAME[NAME] in [COMPANY] v [NAME] (Australia) [COMPANY] [1963] HCA 66; (1963) 109 CLR 407 at 415 ([NAME]) also encapsulates the approach required by s 120(1): On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The [NAME] are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of [NAME] [NAME] law. It is between, on the one hand, the impression based on recollection of the plaintiff's [NAME] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. 34 In [RESPONDENT] v [COMPANY] [2020] FCAFC 235; (2020) 385 ALR 514 (Nicholas, [NAME] and [NAME] [NAME]), the [ADDRESS] noted at [64] that the distinction between consideration of whether one [NAME] is deceptively similar to [NAME], rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the [NAME] [NAME], when conducting the comparison. In this context, the [ADDRESS] said: …allowance must be made for the human frailty of imperfect recollection. In [NAME] v [NAME] Company [COMPANY] [1989] FCA 124; 86 ALR 549, in a passage in his judgment not affected by the proceedings on appeal, [NAME[NAME] said at 589: In determining whether MOO is deceptively similar to MOOVE, the impression based on recollection (which may be imperfect) of the [NAME] that persons of ordinary intelligence and memory would have, is compared with the impression such persons would get from MOO; the deceptiveness flows not only from the degree of similarity itself between the [NAME], but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the [NAME] [NAME] [NAME]: [COMPANY] v [COMPANY] (1963) 109 CLR 407 at 414–15; [NAME] v [NAME] N [COMPANY] [1981] 1 NSWLR 491 at 498. The latter case is also authority (at 497) for the proposition that the essential comparison in an infringement suit remains one between the [NAME] involved, and that the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit. This passage was approved by the [ADDRESS] in [NAME] v [COMPANY] [2000] FCA 1539; 52 IPR 42 (Ryan, Branson, [NAME]) at [44]. 35 In [NAME], the High Court summarised the position as follows (citations omitted): [28] The question to be asked under s 120(1) is artificial – it is an objective question based on a construct. The focus is upon the effect or impression produced on the mind of potential customers. The [NAME] posited by the test is [NAME] (or [NAME]), although having characteristics of an actual group of [NAME]. The [NAME] is understood by reference to the nature and kind of customer who would be likely to buy the goods covered by the registration. However, the [NAME] is [NAME] with no knowledge about any actual use of the [NAME] [NAME], the actual business of the owner of the [NAME] [NAME], the goods the owner produces, any acquired distinctiveness arising from the use of the [NAME] prior to filing or, as will be seen, any reputation associated with the [NAME] [NAME]. [29] The issue is not abstract similarity, but deceptive similarity. The [NAME] are not to be looked at side by side. Instead, the [NAME]'s imperfect recollection of the [NAME] [NAME] lies at the centre of the test for deceptive similarity. The test assumes that the [NAME] has an imperfect recollection of the [NAME] as [NAME]. The [NAME] is assumed to have seen the [NAME] [NAME] used in relation to the full range of goods to which the registration extends. The correct approach is to compare the impression (allowing for imperfect recollection) that the [NAME] would have of the [NAME] [NAME] (as notionally used on all of the goods covered by the registration), with the impression that the [NAME] would have of the [NAME]'s [NAME] (as actually used). As has been explained by the Full Federal Court, "[t]hat degree of artificiality can be justified on the ground that it is necessary in order to provide protection to the [NAME]'s statutory monopoly to its full extent". (Emphasis added.) 36 Deceptive similarity must be assessed on the basis of whether there is a real, tangible danger of deception or confusion occurring. It is enough if the [NAME] would entertain a reasonable doubt as to whether, due to the resemblance between the [NAME], the two products come from the same source; [COMPANY] v [NAME] [COMPANY] [1954] HCA 82; (1953) 91 CLR 592 at 595; Registrar of [NAME] v [COMPANY] [1999] FCA 1020; (1999) 93 FCR 365 at [50]; [NAME] v [COMPANY] [2000] HCA 12; (2000) 202 CLR 45 at [83]. As the High Court noted in [NAME] at [32], there must be "a real likelihood that some [NAME] will wonder or be left in doubt about whether the two sets of products… come from the same source". 37 The question of intention to deceive or cause confusion is material to the present case. In this regard, the leading authority is again the decision of [NAME] and [NAME] [NAME] in [NAME] at 657: The rule that if a [NAME] or get-up for goods is adopted for the purpose of appropriating part of the [NAME] or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a [NAME] fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. 38 As this passage makes clear, the question of whether or not an infringing use was intentional is but one factor for the court to take into account in determining whether there is a reasonable probability of deception or confusion; [NAME] [30]; [NAME] at [67] – [68]. 39 In resolving a long-standing controversy on the subject, the High Court determined in [NAME] that reputation based on actual use of the [NAME] [NAME] [NAME] should not be taken into account when assessing deceptive similarity under s 120(1); [NAME] at [3], [36], [46], [47], [51]. That conclusion was explained by reference to the fact that it is the registration of a [NAME] in respect of particular goods or services that confers monopoly rights on the [NAME], and the scope of that right is not to be varied by reference to inherently uncertain notions concerning whether or not the [NAME] of the [NAME] has developed a reputation in it, which notions were antithetical to the type of certainty that the [NAME] was designed to nurture; [NAME] [37] – [40], [48]. For that reason, the Court explained at [49] that it is impermissible to attribute to the [NAME] any familiarity with the actual use of a [NAME] [NAME] [NAME]: …The inquiry under s 120(1) is directed to avoiding deception and confusion between [NAME] [NAME], and protecting the [NAME]'s [NAME] [NAME] rights in relation to the particular goods covered by the registration. It is not concerned with and does not seek to protect "the commercial value or 'selling power' of a [NAME]" 40 However, the reasoning in [NAME] has ignited a further dispute between the parties concerning what the High Court meant in the passage at [29], as emphasised above at [35], (and elsewhere) by its reference to "actual use" on the part of the [NAME]. 41 In its supplementary submissions, [NAME] contends that the High Court made it clear that deceptive similarity for the purpose of s 120(1) infringement analysis is to be assessed in the context of the respondent's actual use of the accused [NAME], including usage of other aspects of packaging. It disputes the submission advanced by [NAME] to the effect that particular or idiosyncratic circumstances surrounding the [NAME]'s use are not relevant. By emphasizing "actual use", [NAME] submits that the High Court conveyed that idiosyncratic circumstances of a particular respondent's use are to be taken into account. [NAME] submits that the Court should now consider such matters as the presence of the [NAME] [NAME] [NAME] and livery on its restaurants. In this regard, it submits that [NAME] has the effect of expanding the inquiry beyond that envisaged in earlier authority, because not only are generalised [NAME] circumstances to be taken into account, what were previously considered to be (and [NAME] accepted were, prior to the decision in [NAME]) extraneous and irrelevant matters such as the presence of other [NAME] [NAME] used on or in relation to the goods, are now to be taken into account. It relies in this respect on the High Court's treatment of the facts in [NAME] to demonstrate how the comparison should be made. 42 For the following reasons, I am unable to accept that submission. 43 In [NAME] at [29], [33] it is apparent that the Court was referring to the actual use of the impugned [NAME] [NAME] in the sense of the use of the impugned sign alone, rather than the broader context of use. [ADDRESS] was contrasting that use in fact (of the impugned [NAME]) with the [NAME] use of the [NAME] [NAME] on goods within the class of registration. That is the comparison that has long been established by the authorities. Several matters lead me to this view. 44 First, the focal point of the High Court's consideration was on the relevance of reputation within the statutory test for deceptive similarity under s 120(1). In reaching its conclusions on that subject, the Court provided a succinct review of about a century of law on the subject of deceptive similarity, addressing briefly topics that have been the subject of detailed consideration by other Courts. It would be surprising if the Court intended to overrule or change well-established principle in the manner contended without addressing it squarely and in such short form. The better view is that it did not do so. 45 Secondly, the three cases cited in support of the proposition made in [29] were [NAME] at 415, [COMPANY] v [NAME] & Co [1994] FCA 163; (1994) 49 FCR 89 at 128 and [COMPANY] v [NAME] Co [COMPANY] [1998] FCA 1616; (1998) 90 FCR 236 at 245. Examination of those cases, and the passages cited, demonstrate the context of the reference to "actual use". 46 A passage from [NAME] ([NAME[NAME]) at 415 is set out above. That familiar case concerned a dispute between two well-known companies that sold petrol and oils about whether [NAME] had infringed [NAME]'s [NAME] [NAME] for a "humanized oil [NAME]" (described as the "[NAME] oil-[NAME] man") in a television commercial. The novelty of the case at the time arose because before that date (1961), moving images in a film had not been found to constitute [NAME] [NAME] infringement. The two short commercials displayed an animated [NAME]. [NAME[NAME] found the man not to be substantially identical with the [NAME] [NAME] [NAME] but that he was deceptively similar to it, reciting the legal test at 415 which is set out above at [33]. Significantly, in both of the impugned animations it was clear from the voiceover and the word [NAME] appearing on the animated oil [NAME] that the [NAME] was associated with [NAME], not [NAME]. Nevertheless, the comparison of the "actual use" of the [NAME] led [NAME] to the conclusion that the impugned [NAME] [NAME] was deceptively similar to [NAME]'s [NAME] [NAME]. The presence of what might be said to amount to disclaimers of any connection with [NAME] was not relevant. 47 It is in this context that reference to the comparison of the impression based on recollection of the [NAME] [NAME] [NAME] and "the impressions that such persons would get from the defendant's television exhibitions" must be understood. [RESPONDENT[NAME] was not, in referring to use of the impugned [NAME], implicitly including the application by the defendant of the word "[NAME]" in connection with the animated figure. The only "actual use" was the use of the impugned [NAME]. 48 In [NAME], [NAME], [NAME] similarly observed at 245 that it is irrelevant that the respondent may "by means other than its use of the [NAME], make it clear that there is no connection between its business and that of MID", citing the established position set out in [NAME]'s v [NAME] [COMPANY] [1956] HCA 41; (1956) 95 CLR 190 at 205 where [NAME] ([NAME] agreeing) adopted the following statement of [NAME] [NAME] [NAME] in [COMPANY] v [COMPANY] (1939) 58 RPC 141 at 161: In an infringement action, once it is found that the defendants [NAME] is used as a [NAME] [NAME], the fact that he makes it clear that the commercial origin of the goods indicated by the [NAME] [NAME] is some business other than that of the plaintiff avails him nothing, since infringement consists in using the [NAME] as a [NAME] [NAME], that is, as indicating origin. 49 In [NAME] at 128, [NAME[NAME] addressed the comparison for the purposes of deceptive similarity, noting that it must be between the [NAME] [NAME] on the one hand "and the [NAME] as used by the defendant on the other". However, this cannot be taken to refer to aspects of the defendant's use beyond the impugned [NAME] itself. The reason for this was explained by his Honour in the passage that followed at pages 128 – 129: (i) The comparison is between any normal use of the plaintiff's [NAME] comprised within the registration and that which the defendant actually does in the advertisements or on the goods in respect of which there is the [NAME] infringement, but ignoring any matter added to the allegedly infringing [NAME] [NAME]; for this reason disclaimers are to be disregarded,…(ii) However, evidence of [NAME] usage in the sense discussed above, is admissible but not so as to cut across the central importance of proposition (i)… (Emphasis added.) 50 Thirdly, the approach taken by [NAME], in my view, is contrary to a correct reading of [NAME], where the Court said at [33] (footnotes included): In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"81. In addition to the degree of similarity between the [NAME], the assessment takes account of the effect of that similarity considered in relation to the [NAME]'s actual use of the mark82, as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the [NAME] [NAME] mark83. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the [NAME] [NAME], or, as will be explained, any consideration of the reputation associated with the mark84. (Italics in original. Emboldening added.) 51 The reference in the second sentence to "actual use of the [NAME]" is again a [COMPANY] reference to the impugned [NAME] itself, not surrounding [NAME] or disclaimers. This is apparent from the first sentence which in footnote 81 refers to the passage in [NAME] v [NAME] Company [COMPANY] [1989] FCA 124; (1989) 86 ALR 549 at 589, which I have set out above at [34]. It is clear that the Court is here reciting long-established authority that the whole of the conduct of the respondent is not taken into account when considering deceptive similarity. Footnote 82 repeats the citations identified in [29] which I have reviewed in relation to the second point above. It is plain that the High Court continues to focus on the "actual use" only of the respondent's [NAME], not on the actual surrounding circumstances, which may include disclaimers or other [NAME]. The relevant "surrounding circumstances" are confined to consideration of the way in which goods of the relevant kind are typically bought and sold. 52 Fourthly, [NAME] relies on passages in the High Court's reasoning where it applies the facts. In that case the relevant question was whether PROTOX was deceptively similar to the [NAME] [NAME] [NAME]. [ADDRESS] said: [69] [NAME] was correct to submit that, as the [ADDRESS] accepted, there are visual and aural similarities between the two [NAME]. The word PROTOX uses two short consonants, "p" and "r", to make the syllable "pro", which is visually and aurally similar to "bo"; both "pro" and "bo" are "sounded through the lips together"; and the word "otox" is "distinctive and identical" between PROTOX and BOTOX and is an "identical rhyme". But, as the [ADDRESS] correctly said, "[c]onsumers would not have confused PROTOX for BOTOX". The words are sufficiently different that the [NAME], allowing for an imperfect recollection of BOTOX, would not confuse the [NAME] or the products they denote. The visual and aural similarities were just one part of the inquiry. [70] The question, then, was whether these similarities "imply an association" so that the [NAME] would be caused to wonder whether it might not be the case that the products come from the same source. The [NAME] deceptiveness was said to flow not only from the degree of similarity itself, but also from its effect considered in relation to the circumstances of the goods and the prospective [NAME] and the market covered by the monopoly – anti-wrinkle creams in class 3. It is to be assumed that the products would be sold in similar [NAME] outlets, including pharmacies, as well as through websites. The [NAME] has a recollection of the [NAME] being used on anti-wrinkle creams in class 3 in that context. The [NAME] sees the [NAME] used on a similar [NAME] – a serum which is advertised on its packaging and website to "prolong the look of Botox®". While the reputation of BOTOX cannot be considered, the relevant context includes the circumstances of the actual use of PROTOX by [NAME]. "[P]rolong the look of Botox®" may suggest that Protox is a complementary [NAME]. However, as was observed by the primary judge, "it will be the common experience of [NAME] that one [NAME]'s [NAME] can be used to enhance [NAME] [NAME]'s [NAME] without there being any suggestion of affiliation".136 In this case, the back of the packaging stated in small font that "Botox is a [NAME] trademark of [COMPANY]" and, although the assumption is that Botox is an anti-wrinkle cream, the website stated that "PROTOX has no association with any anti-wrinkle injection brand". [71] Applying the applicable principles,137 there is no real risk of confusion or deception such that the [NAME] will be caused to wonder whether it might be that the products come from the same source. What is required is a "real, tangible danger" of confusion or deception occurring.138 As explained, the [NAME] are sufficiently distinctive such that there is no real danger that the [NAME] would confuse the [NAME] or products. The similarities between the [NAME], considered in the circumstances, are not such that the [NAME] nevertheless is likely to wonder whether the products come from the same [NAME] source. That conclusion is reinforced by the fact that the [NAME] was "almost always used in proximity to the [NAME]" and that there was "no evidence of actual confusion". 54 [NAME] relies on these paragraphs to support the contention that [NAME] should be read to endorse the concept that in considering deceptive similarity under s 120(1) it is relevant to take into account disclaimers and other features of the packaging of the defendant's use. I do not consider that, taken in the context of the whole of the judgment, this is the correct conclusion. 55 The analysis at [69] is consistent with the statements of principle to which the Court earlier referred and adopted, the Court noting that the correct approach was to consider the [NAME] use of BOTOX against the actual use of the [NAME]. Paragraph [70] includes parts that might suggest that the Court took into account factors that went beyond a comparison of the [NAME] and had regard to extraneous features of the packaging. However, [71] commences with the statement that the Court is applying the "applicable principles", cross-referencing (as footnote 137 identifies) to [26] – [33] which endorse the long-established principles identified above. In those circumstances, it appears to me that the relevant reasoning on the facts is to be found in third and fourth sentences of [71] as follows: …As explained, the [NAME] are sufficiently distinctive such that there is no real danger that the [NAME] would confuse the [NAME] or products. The similarities between the [NAME], considered in the circumstances, are not such that the [NAME] nevertheless is likely to wonder whether the products come from the same [NAME] source…. 56 That conclusion picks up the comparison of the [NAME] identified in [69]. Having reached that conclusion, the statement that the conclusion is "reinforced" by the proximity of the impugned use to the [NAME] may be regarded as obiter dicta, the legal conclusion having already been provided to the effect that regardless of the presence of the [NAME], the impugned [NAME] was not deceptively similar to BOTOX. To take a different view would render significant parts of the earlier reasoning in [NAME] otiose in circumstances where it is apparent that no argument before the High Court involved the contention that any of the prior cases referring to the subject were incorrectly decided, and the High Court expressly adopted those authorities. 57 To the extent that passages in [70] might be taken to indicate a broader view of context as part of the ratio decidendi, the aspects of packaging on the [NAME] [NAME] that were emphasised in that paragraph are concerned with the proximity of the impugned [NAME] to the [NAME]® [NAME]. That is not the situation in the present case, which may be distinguished from the conclusions reached in [NAME] for that reason. 58 Accordingly, I do not consider that the decision of the High Court in [NAME] leads to the conclusion for which [NAME] contends. 59 I note that in The Agency Group Australia [COMPANY] v [NAME]. [COMPANY] [2023] FCA 482, [NAME] addressed the interpretation of [NAME].

For the reasons set out above, I respectfully agree with his Honour's observations at [56] – [59].

3.3 The use of [NAME] and [NAME] 60 [NAME] accepts that since March 2020 it has promoted and offered for sale [NAME] under and by reference to the words [NAME] and at about the same time started to use the words [NAME] in relation to a different [NAME] offering. Examples of such use are set out in the evidence and appear in similar forms on the [NAME] website, in print advertising, social media platforms and television advertising:

61 The [NAME] and [NAME] [NAME] have been applied in [NAME] [NAME]. The meals offered at [NAME] outlets are comparatively low cost and service at physical outlets is swift. The [NAME] selects the meal or menu item of interest and orders it at the counter. The meal is likely to be eaten more or less immediately. 62 The evidence indicates that [NAME] has operated such restaurants in Australia since 1971 under the brand name [NAME] and that there are over 400 such restaurants in Australia. The [NAME] [NAME] are located within food courts in shopping centres, in drive-through sites which offer eat in or take away drive-through facilities, in stand-alone stores which offer sit down service only and in co-branded sites, which are located within premises that have other branding, such as [NAME] (including [NAME], [NAME] and [NAME] [NAME]). 63 An example of a food court store frontage is set out below: 64 An example of the shop frontage of a drive-through store is as follows: 65 An example of a co-branded store is as follows: 66 [NAME] products can also be purchased through the [NAME] website and app. They can also be purchased using third party apps such as Uber Eats, [NAME]. Included within the options are the [NAME] identified by reference to the words [NAME] and [NAME]. A typical version of the home page for the [NAME] website is as follows: 67 In the case of the [NAME], [NAME] apps the [NAME] must first select from a list of cuisines and restaurants and then select [NAME] as an option. An example is as follows: 68 [NAME] then click through various menu options presented. Below, on the left, is an example of what appears on the [NAME] website. On the right is an example of an available selection from a third-party app, being an [NAME] menu:

69 Various prompts are then followed to complete the transaction. Similar processes, and similar displays, appear in the various other online purchasing options available. 70 Whether a [NAME] acquires [NAME] from a [NAME] (in person) or online, they are all supplied in cooked form.

3.4 The evidence of [NAME] [NAME] 71 The evidence of [NAME] [NAME] was relied upon by [NAME] to support the case that [NAME] deliberately adopted the impugned [NAME] [NAME] for the purpose of appropriating [NAME]' reputation. 72 In his affidavit, [NAME] [NAME] gave evidence that he and those reporting to him in the [NAME] [NAME] team decided to offer a club-style sandwich – being a [NAME] with an extra layer of bread to separate two [NAME] patties – as a direct competitor [NAME] to [NAME]' [NAME], which would meet a gap in [NAME] offering. In around July 2019, he instructed [NAME], [NAME] Director, and [NAME], [NAME] [NAME] Manager, to develop a [NAME] in a trial market which was to adopt a 5", club-style sandwich form, being a 5" club [NAME] [NAME]. The [NAME] is a [NAME] sold in [NAME] outlets overseas, but not available in Australia. He gave evidence that adopting the club style made the [NAME] more distinctive within the [NAME] [NAME] range whilst the addition of two patties sandwiched between three pieces of bread mirrored other ingredients and the design of the [NAME] [NAME] offered internationally, namely cheese melted on top of the patties, lettuce, pickles, sliced onions and a new sauce called "King Sauce". 73 [NAME] [NAME] gave evidence that he did not consider that any of the [NAME] [NAME] available to [NAME] in Australia were suitable, and the name [NAME] as used elsewhere internationally was not, as he understood it, relevant in Australia where the [NAME] brand, not [NAME], is used. Instead, he considered that the name [NAME] or [NAME] would be suitable, as it would in part be a reference to the corporate branding and the name of the [NAME] founder, [NAME] and in part a flow-on from the chain of cafés that [NAME] had launched (attached to [NAME[NAME]) called [NAME], of which there are now about 246 outlets (with 200 more planned). He gave evidence of other references to "[NAME]" or "Jacks" in [COMPANY] promotional offers and internal training. 74 In his affidavit [NAME] [NAME] said: I was aware that there was an element of cheekiness in naming the [NAME] [NAME], due to the rhyming of "[NAME]" and "[NAME]" in [NAME]. I was aware that the name would likely be perceived as a deliberate taunt of [NAME]. The use of cheeky "taunts" is common in overseas markets where [NAME] and [NAME] compete… Given the well-established level of competition between [NAME] and [NAME], together with the use of distinctive branding by both outlets, the separate [NAME] channels operated by each of them, the common use of BIG and MEGA (as discussed below) together with [NAME] association with the name [NAME], I did not consider there to be any risk that [NAME] would confuse the [NAME] source of the [NAME] with the source of the [NAME]. 75 Prior to the launch of the [NAME] [NAME], [NAME] secured a [NAME] [NAME] registration for the [NAME] [NAME] [NAME]. [NAME] [NAME] noted that [NAME] did not oppose that registration. 76 In relation to the [NAME], as part of the same [COMPANY] time offering of the [NAME], [NAME] trialled a larger sized variant of the [NAME] with two larger (4oz) meat patties and a bigger (5") bun which was named [NAME]. [NAME] had previously used the word MEGA for its two products MEGA MILKSHAKES and MEGA MEALS for promotional deals. [NAME] [NAME] gave evidence that the [NAME] [NAME] was designed to provide a much bigger burger alternative to the [NAME] [NAME]. At that time, he was not aware that [NAME] had [NAME] the [NAME] [NAME] [NAME] and had never heard of a [NAME] of that name being sold or promoted by [NAME]. Indeed, he first learned of that [NAME] [NAME] when [NAME] received a letter before action from [NAME] dated 21 August 2020. 77 In cross examination, [NAME] [NAME] accepted that in adopting a club style [NAME] form, [NAME] was following a [NAME] strategy, in terms of how [NAME] intentionally competes against the [NAME] by having a type of [NAME] that is similar to the [NAME]. He gave evidence that this choice of name was part of the naming convention, following the international use of [NAME], but adapting it for the Australian market where there was no recognition of KING, but recognition of [NAME]. He resisted the proposition that the name [NAME] was chosen because of its similarity with [NAME], instead saying that it was coincidental that the names were similar (particularly in that they rhyme) and that the choice of [NAME] came about because the word [NAME] is a "property" of [NAME]. I take this to mean that as far as [NAME] is concerned, [NAME] is part of its recognised brand, which I find is plainly correct. Having said that, [NAME] [NAME] readily accepted that there are "obvious links between the two name[s], you can't move away from that", a point that he and other decision makers at [NAME] recognised. It was this that he considered gave the choice "an element of cheekiness". 78 As developed in cross examination, [NAME] [NAME] evidence was: And so the element of cheekiness was something that you were aware of at the time you were considering what to call the [NAME]?---Correct. And it was something that you took into account in naming the [NAME] [NAME], wasn't it?---Moving – as we moved forward, correct. And the cheekiness that you refer to in paragraph 40 was entirely intentional, wasn't it, [NAME] [NAME]?---I think there was – I think there – we had gone through due process and we were looking for how we could actually leverage the name. And, as I said, it was – there was obviously – we understood that there would be some – that there would be that element of cheekiness between the two names. So the element of cheekiness was deliberate in your choice, so far as you were concerned - - -?---Correct. - - - of the name [NAME], correct?---Correct. And you also intended that [NAME], seeing the name [NAME] or encountering it as the name of a [NAME], would call to mind the [NAME] because of that similarity, correct?---Correct. 79 [NAME] [NAME] did not accept that the absence of use of the apostrophe "s" at the end of [NAME] in the [NAME] [NAME] made any relevant difference, because the "naming convention" (and, I interpolate, the "leverage" mentioned in the above passage) was based on what he considered to be [NAME] "ownership" of the word "[NAME]". He resisted the proposition that [NAME] wanted to leverage off [NAME] recognition of the [NAME] brand, giving evidence that it was not his intention to do so, saying "[w]e wanted to ensure that we were trying to get [NAME] to buy the [NAME] [NAME]". [NAME] [NAME] accepted that he and those at [NAME] wanted there to be a recollection of the [NAME] brand when they saw [NAME]. 80 [NAME] [NAME] confirmed in his oral evidence that his view that there would be no [NAME] confusion as a result of the choice of [NAME] was for several reasons: that there was an established level of competition between [NAME] and [NAME]; that both businesses use distinctive branding, such as their logos and names; and the differences in the word [NAME]. 81 [NAME] [NAME] was directly challenged on the question of intention as follows: Now, [NAME] [NAME], in proceeding with the launch of the [NAME] using the name [NAME] you knew, didn't you, that there was a possibility that some [NAME] who encountered the words [NAME] as the name of [NAME] might wonder whether it came from the source as the [NAME]?---No. … In particular, you knew that there was a possibility that [NAME] of that kind, that is, [NAME] who were only occasional [NAME] of [NAME] products, and had a [COMPANY] familiarity with the [NAME], might be cause to wonder whether a [NAME] called the [NAME] came from the same source as the [NAME]?---In – I can't see how that's – how that's conceivable. And I suggest that in adopting the name [NAME], so far as you were concerned, you intended to take advantage of that possibility in using that name for a [NAME] [NAME]?---No. Incorrect. The research, as part of the discovery documents, showed that [NAME], who were – who we were actually targeting as the core target – and there's a reference there – were looking for variety, and variety and adding to our burger range would actually attract those [NAME]. 82 I consider that [NAME] [NAME] gave honest evidence and that the answers given in this passage represent his genuinely held view.

3.5 The deceptive similarity arguments 83 [NAME] submits: that there are significant visual and aural similarities between the [NAME] and [NAME]; that the "idea" conveyed by the respective [NAME] is similar with the word BIG being coupled with the name of [NAME] with the latter being strong and colloquial or familiar names leading to the idea being that it is a large burger, perhaps personified or referable to [NAME], citing [COMPANY] v [COMPANY] [1952] HCA 15; (1952) 86 CLR 536 at 539; and that the "surrounding circumstances" which are relevant are that the goods are ready-to-eat and relatively low-priced food and that this increases the prospect that [NAME] will not subject the [NAME] to detailed analysis and may be caused to wonder as to their origin by reason of their imperfect recollection. [NAME] submits that there is at least a real, tangible danger of confusion, or of [NAME] being caused to wonder whether it might not be the case that the two products come from the same source, in the surrounding circumstances that the authorities permit to be taken into account in the infringement analysis, emphasising that the authorities do not permit consideration to be taken of [NAME]' use of its [NAME] house [NAME] and other distinguishing indicia. 84 [NAME] submits that the question of deceptive similarity of [NAME] when compared to [NAME] should be determined in a manner analogous to the assessment of the [NAME] and [NAME] [NAME]. It submits that the visual and oral similarities are striking, with the two [NAME] again including an identical first word and otherwise being very similar phonetically and conveying a similar overall impression. 85 [NAME] submits that the evidence establishes that [NAME] deliberately chose a visually and phonetically similar [NAME] [NAME], [NAME], in respect of a "copycat" [NAME] which directly competes with its [NAME] [NAME]. It submits that this evinces an intention to adopt a significant part of the [NAME] [NAME] [NAME] to take advantage of the similarity in the minds of [NAME]. It emphasises evidence given by [NAME] [NAME] to the effect that the [NAME] [NAME] was specifically designed to target and compete with the [NAME] [NAME] and that [NAME] went to considerable lengths to provide a burger with a similar "build" and similar taste profile to the [NAME]. It submits that the choice of name was with full knowledge of the similarity of [NAME] to [NAME] and that this was deliberate, [NAME] [NAME] acknowledging that there was an "element of cheekiness" in choosing [NAME], knowing that that [NAME] could "leverage the name" and [NAME]' recollection of the [NAME] brand by using the similar name for a [NAME] [NAME]. 86 [NAME] submits that [NAME] failed to call evidence from the persons actually responsible for the decision to use the [NAME] [NAME] [NAME], as the decision to proceed with the [NAME] [NAME] (and name) was made by the board of directors of [NAME]. It submits that an inference may be drawn that evidence of [NAME] [NAME] or the other members of the board would not have assisted [NAME]; citing, inter alia, [NAME] v [NAME] [1959] HCA 9; (1959) 101 CLR 298 at 308, 312, 320-321. It submits that a similar inference may be drawn from the failure of [NAME] to call [NAME], [NAME] Director, to give evidence. 87 [NAME] submits that the suggestion that the name [NAME] was part of an established "naming convention" should be rejected, and that the evidence showed that [NAME] uses "[NAME]" in its [NAME] names and promotions, not the word [NAME] simpliciter. In this regard, [NAME] submits that the fact that the founder of [NAME] is [NAME] whose forename is "[NAME]" is irrelevant from a branding perspective. Finally, [NAME] submits that the evidence of [NAME] [NAME] in his affidavit to the effect that he did not consider there to be any risk that [NAME] would confuse the [NAME] source of the [NAME] [NAME] with the [NAME] [NAME] is not to the point, because the reason for that view included his knowledge of the well-established level of competition between the parties and the distinctive use of branding by both outlets which were the main reasons why he thought that there would be no confusion. Those matters, [NAME] submits, are irrelevant to the deceptive similarity enquiry, which depends fundamentally on a comparison between the [NAME] [NAME], without regard to such considerations. 88 [NAME] disputes that the [NAME] are visually and aurally similar and contends that aural similarities are less important in the present case where goods are bought in a manner that relies on predominantly visual cues, whether in takeaway restaurants or online. It submits that the ideas of the [NAME] differ with BIG being a classically descriptive word which is common to the [NAME] and is accordingly to be afforded less weight; citing [NAME] at 539 ([NAME], [NAME] and [NAME]) and [COMPANY] v [NAME] [COMPANY] [2017] FCAFC 83; (2017) 251 FCR 379 at [52] ([NAME], [NAME] and [NAME]). [NAME] emphasises the differences between [NAME] and [NAME] and contests that the idea of each [NAME] is similar and points to differences between the "look" of each [NAME]. 89 [NAME] submits that as [NAME] can only purchase products from a dedicated site, whether physical or online, the context tells away from the likelihood of deception or confusion. [NAME] submits, relying on aspects of [NAME] to which I have referred, that there is no likelihood that a [NAME] would be caused to wonder whether the goods sold in an [NAME] outlet by reference to [NAME] would come from the same source as a [NAME] because of the consistent use of the [NAME] branding. [NAME] submits that it is artificial to approach the question of likelihood of deception and confusion absent consideration of the fact that the [NAME] in the present case will be used in conjunction with other [NAME] [NAME] (for instance, the [NAME] [NAME], the golden arches or other [NAME] livery on the one hand and the [NAME] [NAME] [NAME] and livery on the other) by which the different sources of food will be readily identified. The [NAME] that are the outlets of the food are "single source" places, where there is no real prospect that a [NAME] will be caused to wonder. 90 [NAME] submits that it is relevant that [NAME] has put forward no evidence of actual deception or confusion on the part of [NAME] and disputes that [NAME] has established that there was a relevant intention on the part of [NAME] in the sense contemplated in [NAME] at 657. 91 In relation to intention, [NAME] submits that [NAME] has failed to establish that the impugned [NAME] were fashioned "as an implement or weapon for the purpose of misleading customers" as required by [NAME] at 657. It submits that [NAME] has no monopoly on a particular form of [NAME] build or the tagline used and that [NAME]' decision to introduce a club-style burger was to encourage [NAME] directly to compare the [NAME] with the [NAME], not to confuse customers as to the origin of the [NAME] burger, as [NAME] [NAME] explained in his evidence. [NAME] submits that [NAME] [NAME] gave honest evidence of his view that the [NAME] [NAME] would not cause confusion, which was not challenged in cross-examination and should be accepted. It submits that even if the full get-up of [NAME[NAME], website and advertising is not relevant for the s 10 comparison, that get-up makes it clear that the source of goods is different from [NAME]. In such a circumstance in the real world, the choice of name cannot rationally have been intended to confuse or deceive, as [NAME] [NAME] evidence demonstrates. 92 In relation to the [NAME] infringement of the [NAME] [NAME] by [NAME], [NAME], like [NAME], argues that by analogy the same arguments apply as for the [NAME] and [NAME] [NAME].

3.6 Consideration of deceptive similarity

3.6.1 Introduction 93 The [NAME] [NAME] registrations for [NAME] and [NAME] relevantly concern [NAME]. In the present case, the [NAME] is [NAME] interested in acquiring a [NAME] from a [NAME], purchased in store, from a drive-through outlet, or online. In such [NAME], the [NAME] may be taken to be lower cost items that are cooked and sold for the convenience of [NAME] who are either cost conscious or short of time or both. As [NAME] [NAME] said in his evidence, the market for quick service [NAME] is driven by "convenience, taste and value". It may also be taken that because [NAME] will eat [NAME], they are likely to pay some attention to make sure that they get the right [NAME]. Unlike other relatively inexpensive items, persons consuming food will want to know what they are getting. They are not likely to be particularly careless or inattentive. The goods the subject of the registration appeal to a broad range of [NAME], from the youthful to the elderly and everyone in-between. They are general [NAME] goods. The evidence indicates that [NAME] target market is [NAME] aged between 18 to 39 years of age and includes [NAME] who prefer [NAME] products ("preferers"), those who swap between brands ("[NAME]") and those who may occasionally visit a [NAME] ("light users"). The evidence indicates that in 2020 the price of a [NAME] [NAME] was about $8 and a [NAME] was around $7. 94 The decision in [NAME] confirms that the reputation that [NAME] has garnered in its [NAME] [NAME] is irrelevant as is any reputation that [NAME] has in its [NAME] [NAME]. This is important. It means the [NAME] would not approach either of the [NAME] [NAME] with preconceptions based on their experience with either [NAME] or [NAME] or any of their branding. [NAME] must be considered afresh, shorn of knowledge of the reputation of both. There is, of course, a degree of artificiality in the approach, but that is for the good reasons set out in the case law.

3.6.2 [NAME] and [NAME] 95 I start with the [NAME] [NAME] [NAME] [NAME], considered by the [NAME] of [NAME] who has never heard of the famous chain of [NAME] called [NAME] or anything related to that chain. 96 The [NAME] [NAME] is of two words of one syllable each. The word BIG is descriptive. [NAME] unfamiliar with [NAME] and any reputation residing in it would understand the word to convey something about the [NAME] promoted for sale, namely, having regard to the relevant registration, a [NAME] that is large (big) as opposed to a small one. The word BIG may be regarded as both laudatory as well as descriptive, it being perhaps a good thing to have a larger [NAME]. One may take judicial notice that it is a common adjective. Unsurprisingly, the evidence indicates that other sellers of [NAME] and fast food deploy the word BIG in association with their [NAME] and other products from [NAME]. Examples include BIG CARL, BIG QUEENSLANDER, BIG BUNZ, [NAME]. 97 [NAME] is a one syllable word. It has a soft beginning ("m" sound) and a hard end, most likely pronounced "ack". 98 The [NAME] indicates that [NAME] may mean a prefix found in many family names of Irish or Scottish Gaelic origin, a colloquial abbreviation of "mackintosh" which is a type of raincoat, or, in a chiefly United States colloquial usage, a man ([NAME], 3rd edition, 1997). [NAME] submits that many would see the word as the familiar or colloquial abbreviation of [NAME]'s name. However, that is by no means clear. I consider it more likely that to the [NAME], "[NAME]" may be understood to be a coined or unusual forename or surname, which may be Scottish or Irish, an abbreviation of a longer name or a word conveying no particular meaning, noting that for present purposes one must ignore the reputation of [NAME] and the prospect that [NAME] would view it to be an abbreviation of "[NAME]". 99 [NAME] as a whole, it is a short, snappy, two-word [NAME], the idea of which draws attention to something that is large, namely a large "[NAME]", "[NAME]" being the name of the [NAME]. The words together would be separately pronounced and read with the strong "b" providing a point of contrast to the softer "m" of the second word. 100 Turning to the [NAME] [NAME], the word "big" will of course have the same descriptive and laudatory connotations. The word "big" will be understood to identify a characteristic of the word that follows. 101 [NAME], the word [NAME] is an easily recognised forename and would be understood as such by most [NAME]. It could also have other meanings which are unlikely to be considered. Dictionary evidence indicates that it could refer to a tool for lifting things (such as a car to repair a tyre), the name of a playing card, a game or an ensign, as in "Union [NAME]". More likely, [NAME] will consider [NAME] to be some sort of personified [NAME] that is large. 102 The word [NAME] has a strong "j" sound and finishes with a hard "ack". 103 [NAME] must be compared with [NAME]. This comparison is not side by side but based on the typical [NAME]'s imperfect recollection. As I have noted, [NAME] of [NAME] within the class of goods of [NAME] [NAME] [NAME] registration are likely to pay reasonable attention to a sign that denotes what it is that they will be eating. At a [NAME] or drive-through they may order the goods orally. Online, they will order by reference to the name and description of the [NAME], most likely by clicking on an option. 104 In so doing, in my view, the [NAME] will recognise that BIG is a descriptive and possibly laudatory term that is commonly used and likely give this lesser emphasis as a point of recollection than the word [NAME]. It is likely that the imperfect recollection of the [NAME] will call the word [NAME] to mind readily and identify it as an important and distinctive part of the [NAME]. They will do the same when they see [NAME]. Again, they are less likely to consider the word BIG as a point of distinction. They are likely to note several similarities: both contain two short monosyllabic words, both begin with BIG, both finish with an "ack" sound. 105 However, allowing for imperfect recollection, I do not think it likely that the typical [NAME] will confuse [NAME] for [NAME] or [NAME] for [NAME] or be caused to wonder whether [NAME] products sold under and by reference to [NAME] come from the same source or are affiliated with the [NAME] who sells the [NAME]. [NAME] is a very recognisable forename that will be known by most, if not all [NAME]. [NAME] is an unusual name or abbreviation. Although both are BIG, the idea conveyed by [NAME] and [NAME] is different. The words look and sound different, the "j" being quite distinctive of "m" both visually and phonetically. Whilst there is a similar rhyme to the conclusion of the two [NAME] when said aloud, there is a phonetic difference between the spoken aspect of "[NAME]" and "[NAME]". In my view, [NAME] are likely to be attuned to noticing differences in forenames ([NAME] is not [NAME] is not [NAME] is not [NAME] is not [NAME]) and they are more likely to remember the different look and sound of the words [NAME] and [NAME] as points of distinction. 106 Taken together, these matters lead me to the conclusion that [NAME] is not deceptively similar to [NAME]. 107 Further, whilst neither is likely to be determinative, I separately note that [NAME] has adduced no evidence of deception or confusion. Nor, as I note in a little detail below, am I persuaded that [NAME] has established that [NAME] selected the [NAME] [NAME] for the purpose of misleading customers. 108 In reaching this conclusion, and contrary to the submission of [NAME], I have not taken into account the use of any particular livery or [NAME] [NAME] in conjunction with the [NAME] [NAME]. For the reasons that I have set out in section 3.2 above, in my view the decision in [NAME] does not mandate that approach. If I am incorrect in that conclusion and, contrary to my view, one is obliged to take into account the fact that the [NAME] [NAME] is sold exclusively at [NAME] outlets which use [NAME] [NAME] livery and the [NAME] [NAME] [NAME], my conclusion would be further reinforced. That is because the evidence indicates that the vast preponderance of the use of the [NAME] [NAME] is in conjunction with that [NAME] livery and signage, all of which would indicate to a [NAME] that the [NAME] origin of the [NAME] being sold is [NAME].

3.6.3 Intention 109 In [NAME] at 657, the Court noted that in considering how prospective buyers will be impressed by a given word, the judgment of traders is not to be lightly rejected, and when a [NAME] fashions an implement or weapon for the purpose of misleading potential customers, they at least provide a reliable and expert opinion on the question of whether what they have done is in fact likely to deceive. The rationale for this is based on the supposition that a [NAME] will be well placed, as an expert in the field, to have an opinion as to the likely reaction of [NAME]. It will be sufficient for the [NAME] to intend to adopt some or all of a [NAME] [NAME] so that [NAME] may be caused to wonder that one is the [NAME] source of the other; [NAME] at [103], [104]. 110 In the present case, I am not persuaded that [NAME] fashioned the name [NAME] for the purpose of misleading [NAME] as required. 111 First, it is credible that [NAME] was selected for the purpose of drawing attention to the [NAME] component of [NAME], which is the widely promoted name of the respondent's business. As [NAME] [RESPONDENT] accepted, the addition of "BIG" to [NAME] was likely to lead [NAME] to draw comparisons with the [NAME], but that was a conscious comparison of one [NAME] with [NAME] from a different [NAME] source. I accept that in the process of decision-making, [NAME] [NAME] did not consider that a [NAME] would think that a [NAME] was, or may be, a [NAME] or that a [NAME] could be purchased from [NAME]. I do not consider that the absence of the apostrophe and "s" is indicative of purpose, but rather a grammatical choice. 112 Secondly, the question of whether a [NAME] fashions a weapon for the purpose of misleading potential customers is a question of fact based on the workings of the mind of the [NAME] in question. This is perhaps a rare case where both parties are able to claim a significant reputation in their businesses. [NAME] in (at least) the names [NAME] and [NAME] and [NAME] (at least) in the name [NAME]. In these circumstances, it is unrealistic to postulate the highly theoretical circumstance, of the type that [NAME] [NAME] [RESPONDENT] routinely engage, but normal [NAME] do not, where neither [NAME] has any reputation. [NAME] [NAME] view that there would be no confusion was in part because it was inconceivable to him that a [NAME] who saw an advertisement or sought to purchase a [NAME] [NAME] in a [NAME] outlet or online could miss the fact that the [NAME] origin of the [NAME] was [NAME] based on the livery of the store and/or the use of [NAME]' other [NAME] [NAME] (including the name [NAME]) and that the [NAME] origin was not the well-known [NAME], with its quite different [NAME] livery and [NAME] [NAME]. Based on the evidence in this case, that was an entirely credible view. 113 Of course, it would be unrealistic for [NAME] [NAME] to have formed any intention absent these matters. The circumstances of this case mean that the likelihood of obtaining evidence of the sort contemplated in [NAME] is low. It is not possible to postulate what [NAME] [NAME] might have thought, absent knowledge of the reputation of [NAME] and [NAME], about the impression [NAME] might have on persons with an imperfect recollection of [NAME]. While reputation is not relevant to the assessment of whether two [NAME] are deceptively similar, a [NAME]'s knowledge or perception of reputation may be relevant to the assessment of whether they had an intention to mislead or deceive in using a particular [NAME] [NAME]. Here, [NAME] [NAME] knowledge or perception led him to the view that it was inconceivable that [NAME] would be confused at all. In such circumstances, I am not prepared to draw any inferences as to what [NAME] [NAME] state of mind may have been had he not taken reputation into account. Nor, quite properly, have I been asked to do so. 114 Thirdly, the fact that [NAME] set out to compete with the [NAME] by producing a similar club sandwich style [NAME] that seeks to emulate the taste of the [NAME], including by use of a particular tagline, does not of itself aid [NAME] argument unless there was an intention to confuse [NAME] by the choice of the impugned [NAME] [NAME]. 115 Fourthly, I accept [NAME] [NAME] evidence that [NAME] was content for there to be an element of what he termed cheekiness in adopting the [NAME] name. That evidence was reflected in [NAME] internal documents, which indicated a desire on the part of [NAME] to invite the comparison. As one internal document said: It will be very hard for customers to resist the temptation to compare… The [NAME] [NAME] naming says it all and gets attention. Its cheeky [sic] and will generate trial through curiosity especially with [NAME] and lighter users generating trial. It will also generate PR as its news worthy…thus further amplifying media. 116 In other words, as [NAME] [NAME] said, [NAME] wished to compete with [NAME]' [NAME] for the sale of a similar [NAME], and the use of [NAME] was likely to draw attention to that fact for [NAME] familiar with the [NAME] [NAME]. [NAME] [NAME] use the word "big" and have other similarities as noted above. However, the desire was to compete by a choice of name that had echoes of the [NAME] name but was nonetheless recognisably different to it. I consider that the purpose was not to mislead but to invite a comparison and contrast. Other internal documents reflect that purpose. 117 Fifthly, I am not prepared to draw the inferences in accordance with the principles in [NAME] at 308, 312, 320 – 321 sought by [NAME]. [NAME] [NAME] was the Chief [NAME] of [NAME] at the time. Although the ultimate decision as to whether to proceed was up to the Board of Directors, it is apparent that it was his reasoning that led to the point of adoption of the [NAME] name upon recommendation being made to the board. Although the board of directors of [NAME] made the final decision, he was the person responsible for developing and implementing the strategy adopted by the Board. In my view, his reasoning was credible. I am not satisfied from the failure to call [NAME] [NAME] or [NAME] [NAME] that it may be inferred an alternative version of facts, namely that [NAME] selected [NAME] for the purpose of misleading potential [NAME], may be drawn.

3.6.4 [NAME] and [NAME] 118 The [NAME] [NAME] must also be considered by the [NAME] [NAME] who has never heard of [NAME]. It is of two words, the first of two syllables, the second of one. The commencement of each word provides a point of emphasis with the repeated "m" sound. 119 The word "mega" is descriptive. By its [NAME] definition (3rd ed, 1997) it may mean a prefix denoting 106 of a given unit, as in megawatt; a prefix meaning 'great' or "huge" as in megalith; or colloquially to mean "to a very great degree" as in megatrendy. It is most likely that a [NAME] would understand the word to convey the second or third of these meanings, being something about the [NAME] promoted for sale, namely, a [NAME] that is huge or giant (mega) as opposed to one that is smaller or simply large. As with "big", it may be regarded to be laudatory as well as a descriptive term. In my view, it has a common adjectival meaning, whether used as a prefix or as separate words. The evidence indicates that the word "mega" has been used by a number of sellers of [NAME] and fast food to denote their products, including MEGA BURGER, MEGA BURGERS and BELLA'S MEGA BREKKY BURGER. 120 I have described aspects of the word [NAME] above at [98]. 121 I have also reviewed the characteristics and likely meaning to be attributed to [NAME] above at [101]. 122 Taken together, the ordinary [NAME] is likely to understand [NAME] to be a huge or giant [NAME], a personified [NAME]. 123 [NAME] must be compared with [NAME]. Again, this comparison is not side by side but based on the [NAME]'s imperfect recollection having regard to the likely range of circumstances of a [NAME] sale. 124 In so doing, in my view, the [NAME] will recognise that MEGA is a descriptive and possibly laudatory term and is likely to give this lesser emphasis as a point of recollection than the word [NAME]. It is likely that the imperfect recollection of the [NAME] will call the word [NAME] to mind more readily. They will observe the words [NAME] in the [NAME] environment of an acquisition in the context of a [NAME], drive-through or online purchase. Again, they are less likely to consider the word MEGA as a point of distinction. Allowing for imperfect recollection, I do not think it likely that they will confuse [NAME] for [NAME] or [NAME] for [NAME] or be caused to wonder whether [NAME] products sold under and by reference to [NAME] come from the same source or are affiliated with the [NAME] who sells the [NAME]. As I have noted, [NAME] is a recognisable forename that will be known by most, if not all [NAME]. The words look and sound different, the "j" being quite distinctive of "m" both visually and phonetically. Whilst there is a similar sound to the conclusion of the two [NAME] when said aloud, there is a phonetic difference between the spoken aspect of [NAME] and [NAME]. Furthermore, the words [NAME] lack the repetition of the "m" sound that the words "[NAME]" provide, which provides a further point of aural difference. Whilst there are similarities, in my view, [NAME] are likely to be attuned to noticing differences in forenames and are more likely to remember the opening sound of the words [NAME] and [NAME] as points of distinction. To many, the idea conveyed by the two [NAME] will be somewhat different. If they read or heard [NAME] and imperfectly recalled the [NAME], the sense of a different name would be conveyed. 125 Whilst neither is likely to be determinative, I separately note that [NAME] has adduced no evidence of deception or confusion. In closing submissions, [NAME] did not appear to contend that [NAME] intentionally adopted the [NAME] [NAME] deliberately and knowingly for the purpose of promoting a connection between the [NAME]. To the extent that [NAME] does rely on the intention ground as pleaded, that argument does not survive [NAME] [NAME] unchallenged evidence that at the time that [NAME] selected the name for use he was unaware that [NAME] had ever sold or used the name [NAME]. No evidence otherwise suggests knowledge within [NAME] of the [NAME] [NAME]. 126 Taken together, these matters lead me to the conclusion that [NAME] is not deceptively similar to [NAME]. 127 As noted in [108] above, if I am incorrect in my analysis of [NAME] and one is obliged to take into account the whole of the actual use by [NAME] of its packaging, signage and [NAME] livery, my conclusion would be further reinforced.

4. THE VALIDITY CHALLENGE TO THE [NAME] [NAME]

4.1 Introduction 128 [NAME] relies on three grounds of cancellation of the [NAME] [NAME] pursuant to s 88(1)(a) and 88(2)(a), and in the alternative s 88(2)(c), of the [NAME]. 129 First, pursuant to s 44(1), that before the priority date for the [NAME] [NAME], [NAME]' [NAME] [NAME] had been [NAME] in respect of similar goods and the [NAME] [NAME] is deceptively similar to the [NAME] [NAME]. The outcome of this ground turns on my decision that [NAME] is not deceptively similar to [NAME], as I explain further below. 130 Secondly, pursuant to s 60, that before the priority date for the [NAME] [NAME], the [NAME] [NAME] had acquired a reputation in Australia and because of that reputation the use of the [NAME] [NAME] would be likely to deceive or cause confusion. 131 Thirdly, pursuant to s 88(1)(a) and (2)(c), because of the circumstances applying at the time of the application for rectification (being 28 August 2020), the use of the [NAME] [NAME] is likely to deceive or cause confusion. 132 [NAME] pleaded a further ground based on s 62A (application made in bad faith) in its statement of claim but indicated during the course of closing submissions that this ground was abandoned. 133 Section 88(1) provides that only an "[NAME]" or the Registrar of [NAME] may apply for an order for the rectification of the [NAME]. In its defence, [NAME] does not admit that [NAME] is relevantly [NAME]. However, because, first, [NAME] is plainly a [NAME] rival to [NAME] and, secondly, [NAME] relies on the terms of s 122(1)(e) in its defence to the infringement suit for the purpose of permitting [NAME] to rely on the impugned [NAME] in a competing market, I am satisfied that [NAME] is an [NAME]; [COMPANY] v Shin-Sun Australia [2010] HCA 13; (2010) 240 CLR 590 at [43]–[45].

4.2 The section 44 challenge 134 Section 44(1) provides: Identical etc. [NAME] [NAME] (1) Subject to subsections (3) and (4), an application for the registration of a [NAME] [NAME] (applicant's [NAME] [NAME]) in respect of goods (applicant's goods) must be rejected if: (a) the applicant's [NAME] [NAME] is substantially identical with, or deceptively similar to: (i) a [NAME] [NAME] [NAME] by [NAME] in respect of similar goods or closely related services; or (ii) a [NAME] [NAME] whose registration in respect of similar goods or closely related services is being sought by [NAME]; and (b) the priority date for the registration of the applicant's [NAME] [NAME] in respect of the applicant's goods is not earlier than the priority date for the registration of the other [NAME] [NAME] in respect of the similar goods or closely related services. 135 For present purposes, the establishment of this ground requires first that the [NAME] [NAME] be found to be deceptively similar to the [NAME] [NAME] and secondly that the [NAME] application be [NAME] in respect of similar goods to those in the [NAME] registration. In its closing submissions, [NAME] handed up a schedule indicating the goods that it contends are similar to those of its [NAME] registrations. [NAME] advances no argument to contest the second proposition or respond to the table. It confined its submission to repetition of its argument that the two [NAME] are not deceptively similar. 136 [NAME] correctly points out that when testing the question of deceptive similarity pursuant to s 44(1), the inquiry concerns the [NAME] use of the [NAME] [NAME] that may be made within the scope of the registration. In this regard it repeats its submission made in the context of the infringement debate that the particular or idiosyncratic circumstances surrounding [NAME]' use are irrelevant. I have accepted that argument in the context of the infringement question. It leads to no different result in the present context. Nor do I consider that when one considers that the [NAME] and fair use of the [NAME] [NAME] in the context of ephemera such as television or radio advertisements the outcome of the deceptive similarity question is any different. The result is that the s 44 ground has not been made out. 137 For completeness I note that the second requirement of s 44 – that the [NAME] [NAME] be [NAME] in respect of similar goods or closely related services – has been met in relation to all goods the subject of the [NAME] [NAME] with the exception of the following, which [NAME] accepts are not similar goods: Vegetable salads; fruit salads; Beverages made from cereals, chocolate, cocoa, coffee or tea, confectionery, prepared desserts (chocolate based); prepared desserts (confectionery); prepared desserts (pastries); flavoured toppings for desserts; ices. 138 Accordingly, were I to be incorrect in relation to the question of deceptive similarity, this ground would succeed in relation to all but the above products. However, for the reasons given above, [NAME]' challenge on this ground must fail.

4.3 The section 60 challenge 139 Section 60 provides: [NAME] similar to [NAME] [NAME] that has acquired a reputation in Australia The registration of a [NAME] [NAME] in respect of particular goods or services may be opposed on the ground that: (a) [NAME] [NAME] [NAME] had, before the priority date for the registration of the first-mentioned [NAME] [NAME] in respect of those goods or services, acquired a reputation in Australia; and (b) because of the reputation of that other [NAME] [NAME], the use of the first-mentioned [NAME] [NAME] would be likely to deceive or cause confusion. 140 [NAME] relies on its reputation in the [NAME] [NAME] [NAME] in respect of the goods for which they are [NAME] in classes 29 and 30 respectively. It contends that because of that reputation, a substantial number of persons seeking to acquire the goods in respect of which the [NAME] [NAME] [NAME] is [NAME] would be deceived into thinking, or would be caused to wonder, whether it might not be the case that the goods were those of [NAME] or have some connection in [NAME] with them. [NAME] emphasises that this may be particularly the case for customers characterised by [NAME] [NAME] as "light users", who infrequently purchase products of this kind, who only occasionally visit a [NAME] and who are less frequently exposed to such products and are less familiar with them than heavier users. [NAME] also relies on its submissions as to deceptive similarity in the context of s 44. 141 [NAME] does not dispute that the [NAME] [NAME] had acquired a reputation by 14 November 2019, but submits that there must be a real tangible danger of deception or confusion among a significant or substantial number of [NAME]. It submits that [NAME] purchasing [NAME] [NAME] from [NAME[NAME] would not be caused to wonder whether the [NAME] come from [NAME]. In this regard, it observes the evidence that the [NAME] has not changed over the course of 50 years of usage, either in name, build or method of operation. It submits that it is improbable that [NAME] would infer that [NAME] bearing the [NAME] [NAME] were in any way associated with it. 142 Section 60 was amended in 2006. Prior to then, it was necessary to show that the [NAME] [NAME] the subject of opposition was substantially identical or deceptively similar to the earlier [NAME] that benefitted from the reputation. That is no longer a requirement. Instead, an opponent to registration (or, as here, party seeking revocation) must demonstrate that there was [NAME] [NAME] [NAME] which had acquired a reputation amongst a significant section of the public at the priority date, such that use of the opposed [NAME] would be likely to deceive or cause confusion. 143 The question is purely one of prior reputation. Even if the conflicting [NAME] are not deceptively similar, the s 60 objection may be established if the reputation of the first [NAME] is such that use of the opposed [NAME] is likely to result in a real risk of confusion in the [NAME] [NAME] sense. That is not to say that the question of the degree of similarity between the allegedly conflicting [NAME] will be irrelevant. It is a material consideration. However, the standard set by s 60 focusses attention on the reputation of the first [NAME]; see [COMPANY] v Edwards [2016] FCA 729; (2016) 338 ALR 134 at [141] – [143] ([NAME]); [COMPANY] v Monster Energy Company [2019] FCA 923; (2019) 370 ALR 140 at [83], [84] (O'Bryan J). 144 The standard of "confusion or deception" under s 60 is the same as under s 44(1) of the [NAME], namely, it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient; Qantas Airways at [130], [145]. 145 [NAME] has acquired a reputation and goodwill in the [NAME] name in respect of [NAME]. The evidence of [NAME] [NAME] addresses that reputation. It notes that [NAME] [NAME] have been promoted and sold extensively in Australia since 1971 in association with the [NAME] [NAME] [NAME]. Samples of point of sale, print and digital material promoting the [NAME] [NAME] are in evidence, as are details of confidential sale figures and advertising spend. They lead to a picture of an enormous reputation of [NAME] in that [NAME] [NAME]. By the priority date of the [NAME] [NAME], [NAME] had been used continuously in Australia for almost 50 years without change. 146 The [NAME] person for the purposes of s 60 will be someone who is assumed to have an awareness of the [NAME] [NAME] and with the content and extent of the reputation in it; [NAME]. v [NAME] [COMPANY] [2015] FCA 1065; (2015) 115 IPR 82 at [27] ([NAME]); [COMPANY] v [COMPANY] [2018] FCA 575; (2018) 140 IPR 1 at [205] ([NAME]). 147 I have in section 3.6.2 above identified the similarities and differences between the [NAME] and the [NAME] [NAME]. In the present case, the [NAME] person, familiar with the enormous reputation of [NAME], would be likely to remember the entirety of the [NAME] [NAME] and immediately perceive the differences between it and [NAME]. I do not consider that the [NAME] would have cause to wonder whether products displayed and sold under the [NAME] [NAME] are from a common source with those displayed and sold under the [NAME] [NAME]. The differences between the [NAME] and the strong reputation attaching to the [NAME] [NAME] in relation to [NAME] makes it most unlikely that [NAME] would be likely to be confused or deceived. 148 Accordingly, the s 60 ground is not made out.

4.4 The section 88 challenge 149 Section 88 relevantly provides: Amendment or cancellation--other specified grounds (1) Subject to subsection (2) and section 89, a prescribed court may, on the application of an [NAME] or the Registrar, order that the [NAME] be rectified by: (a) cancelling the registration of a [NAME] [NAME]; or (b) removing or amending an entry wrongly made or remaining on the [NAME]; or (c) entering any condition or limitation affecting the registration of a [NAME] [NAME] that ought to be entered. (2) An application may be made on any of the following grounds, and on no other grounds: … (c) because of the circumstances applying at the time when the application for rectification is filed, the use of the [NAME] [NAME] is likely to deceive or cause confusion; … 150 [NAME] relies upon s 88(2)(c). It submits that for the same reasons as apply to the ground under s 60, the use of the [NAME] [NAME] as at the date of the commencement of the proceedings in October 2020 would be likely to deceive or cause confusion. Neither party submitted that the reputation in [NAME] by this date was in any respect materially different to the reputation that applied as at the priority date of the [NAME] [NAME]. In those circumstances, the outcome of the s 88 challenge must be the same as the outcome of the s 60 challenge.

4.5 Conclusion in relation to the challenge to the [NAME] registration 151 For the reasons set out in this section I have concluded that none of the three grounds for cancellation succeed. One consequence of this is that [NAME] has available to it a further defence to the infringement case advanced by [NAME] based on s 122(1)(e) of the [NAME]. However, having regard to my findings in relation to deceptive similarity, it is not necessary to consider this additional point.

5. CROSS CLAIM FOR REMOVAL OF [NAME]

5.1 Introduction 152 [NAME] seeks an order directing the Registrar of [NAME] to remove the [NAME] [NAME] [NAME] from the [NAME] pursuant to s 92(4)(b) of the [NAME] which relevantly provides: (4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: … (b) that the [NAME] [NAME] has remained [NAME] for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the [NAME]: (i) used the [NAME] [NAME] in Australia; or (ii) used the [NAME] [NAME] in good faith in Australia; in relation to the goods and/or services to which the application relates. 153 It will be recalled that the [NAME] [NAME] has a priority date of 7 February 2013 in respect of: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar 154 Pursuant to directions made in the conduct of the proceedings, the parties filed a statement setting out agreement on the following matters: (1) The relevant non-use period is from 27 July 2017 until 27 July 2020; (2) The [NAME] [NAME] has not been used during the non-use period in respect of the goods identified in italics above; (3) The issue before the Court is whether [NAME] has demonstrated use or authorised use of the [NAME] [NAME] in respect of [NAME] during the non-use period; (4) If it has so demonstrated use, then the relevant goods for which use will have been shown will be the goods identified in bold above; (5) If the Court determines that the [NAME] [NAME] [NAME] has been used during the non-use period in respect of the goods in bold, [NAME] accepts that the discretion under s 101(3) of the [NAME] should be favourably exercised so as to permit not only edible sandwiches and meat sandwiches, but also "pork sandwiches, fish sandwiches and chicken sandwiches" to remain on the [NAME]; (6) If the Court determines that the [NAME] [NAME] [NAME] has not been used during the non-use period in respect of the goods in bold, [NAME] contends that the discretion under s 101(3) should be exercised to permit all of goods identified in italics above to remain on the [NAME]. 155 Under s 100(1), the burden lies with the opponent (here, [NAME]) to rebut the allegation made under s 92(4). A [NAME] [NAME] is used (or intended to be used) if it is used to indicate a connection in the course of [NAME] between the goods and the person who applies it to the goods; [COMPANY] v [NAME] [COMPANY] [1991] FCA 402; (1991) 30 FCR 326 ([NAME] at 341, [NAME[NAME] at 342, [NAME] at 251); [NAME] at 424-425 (per [NAME], with whom [NAME], [NAME] J separately agreed). One instance of bona fide use of the [NAME] [NAME] will be sufficient to defeat a non-use application; see [COMPANY] v [NAME] [NAME] [2009] FCA 135; (2009) 176 FCR 300 at [126]; [COMPANY] v Reynolds [2001] FCA 261; (2001) 107 FCR 166 at [14]; [COMPANY] v Karounos [2001] FCA 1132; (2001) 113 FCR 322 at [64]. 156 The first issue is whether [NAME] has established by evidence that it has used the [NAME] [NAME] in relation to [NAME] during the non-use period. If so, then the goods within its registration of edible sandwiches and meat sandwiches will survive. 157 Although there is a separation of corporate entity between [NAME] (the owner of the [NAME] [NAME] and licensor) and [NAME[NAME] (the licensee), there is a relative unity of purpose between those entities such that evidence of use for either will suffice; [NAME] v [NAME] [COMPANY] [2019] FCAFC 100; (2019) 143 IPR 1 at [44] – [52].

5.2 The evidence of use - [NAME] 158 [NAME] [NAME] relevantly exhibited copies of emails sent within the non-use period. 159 The first is a thread dated 4 May 2018 which commences with an email from [NAME[NAME] of [NAME] to [NAME] of an organisation called [NAME], which appears to perform [NAME] services for [NAME]. Ms [NAME] said: [NAME] are going to be one of the stores coming onto the DDT Trial. They flagged the fact they currently promote Double Up via LSM on their DDT DMBs. Are you able to shoot over an example of what they currently have? 160 The term "LSM" apparently refers to "local store [NAME]", "DDT" is a reference to "digital drive-through" and "DMB" refers to "digital menu boards". [NAME] [NAME] explained in his evidence that an example of LSM is where an individual store puts a request to [NAME[NAME] to feature Double the Taste Burgers. [NAME] [NAME] gave evidence that "Double the Taste" is preapproved content that has been approved by him for use for local store [NAME] activity. 161 [NAME] [NAME] then sent an email internal to [NAME] (the address block is absent from the evidence) asking whether he could "get a screen grab of there [sic] drive thru?". [NAME] [NAME] of [NAME] responded to [NAME] [NAME] a few minutes later, saying: Attached is an example of the double the taste module on DDT its [sic] one of the most popular LSM items. 162 The image that accompanies the email is as follows: 163 It may be seen that it is an image of a menu board with the words "Double the Taste". On the left-hand side are what appear to be doubled up [NAME], the final of which appears to be a [NAME] build with four, rather than two, meat patties. Beside it are the words [NAME] with the ® symbol, denoting a [NAME] [NAME] [NAME]. There is no evidence that a copy of this image was sent to Ms [NAME]. 164 The second is an email from [NAME] of [NAME] to [NAME] [NAME] dated 1 November 2018 which says "[h]ere are [sic] a collection of screenshots of the DigCal content that has gone live this morning". Three images of digital screens follow. The words "[NAME]" appear on the tab reference with a URL that contains the numbers 0235. The evidence of Ms [NAME] indicates that this is the store code for the [NAME[NAME] owned store located in Thornleigh. 165 The images include a menu identifying [NAME] items, including a panel headed Double the Taste and including similar items to that depicted above, including a double sized [NAME] with the words [NAME] next to it. 166 The third is an email dated 8 October 2018 sent from [NAME], whose email signature indicates that she is the supervisor at the [NAME] franchised [NAME[NAME]. The email asks permission to apply Double the Taste on the digital menu board "instead of family dinner box please. It's the 5th one (very right-hand side one) at Front Counter menu board". 167 The email then lists six store locations with code numbers next to them. The code numbers match those identified by Ms [NAME] as representing store codes for each of the [NAME], [NAME], [NAME], [NAME], [NAME] and [NAME[NAME]. One of the addressees of the email can be seen from franchise agreements in evidence to be a principal of the franchisee for five of the six stores listed. 168 The attached images depict part of a menu board in situ in a [NAME] store. It includes a version of a Double the Taste panel, similar to that set out above, which includes the words [NAME]® in association with what appears to be a double sized [NAME]. 169 [NAME] [NAME] gives evidence that he recognised the artwork contained in these emails as content that he had approved as [NAME] director within his team at [NAME[NAME]. That evidence was not shaken in cross examination. 170 Furthermore, Ms [NAME] gives evidence that she has extracted figures from within the database used by [NAME] by using the search term "[NAME]". She exhibits sales figures for each of the [NAME], [NAME], [NAME], [NAME], [NAME], [NAME] for the years 2014 to 2019. They indicate that non-trivial volumes of sales (details of which are confidential) are attributed to the item responsive to that search term. 171 [NAME] made criticisms of individual aspects of the evidence that I have summarised above, none of the points made is sufficient to dispel the impression created by this evidence collectively, which is that at least for the six identified stores, [NAME] made substantial bona fide use of the [NAME] [NAME] in connection with the double sized [NAME] style [NAME] to which I have referred. 172 In the result, I conclude that [NAME] has discharged the onus upon it to establish that it has used the [NAME] [NAME] in relation to [NAME] during the non-use period with the consequence that the registration in respect of edible sandwiches and meat sandwiches may remain on the [NAME].

5.3 Discretion in relation to non-[NAME] goods 173 [NAME] submits that, despite its admitted non-use in relation to the remaining goods of its registration, being pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar, the discretion under s 101(3) should be exercised in its favour to permit the [NAME] to remain on the [NAME] in respect of those goods. [NAME] opposes that course, except in relation to pork, fish and chicken sandwiches. 174 Section 101(3) provides: 101 Determination of opposed application—general … (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the [NAME] [NAME] should not be removed from the [NAME] even if the grounds on which the application was made have been established. 175 [COMPANY] v [NAME] [COMPANY] [2021] FCAFC 128; (2021) 285 FCR 598 ([NAME] and [NAME] [NAME]), the [ADDRESS] set out the following propositions relevant to the exercise of the discretion at [153]: (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as [COMPANY] only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the [NAME]: [COMPANY] v Lodestar Anstalt [2012] FCAFC 8; (2012) 202 FCR 490 at [35] ([NAME], [NAME] and [NAME] [NAME]). (2) The scope and purpose of the [NAME] strikes a balance between various disparate interests. On the one hand there is the interest of [NAME] in recognising a [NAME] [NAME] as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. This balance was articulated by the High Court in [NAME], [NAME] v [COMPANY] [2000] HCA 12; (2000) 202 CLR 45 at [42] ([NAME], [NAME] [NAME]) and [NAME] at [30] ([NAME]) and [68] ([NAME[NAME]); see also [NAME] at [36]-[37]. (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused [NAME] [NAME] from the [NAME]. It is designed to protect the integrity of the [NAME] and in that way the interests of [NAME]. At the same time, it seeks to accommodate, where reasonable to do so, the interests of [NAME] [NAME] [NAME] owners: [NAME] at [38].

Accordingly, the Court must be positively satisfied that it is reasonable that the [NAME] [NAME] should not be removed. The onus in this respect lies on the [NAME] [NAME] owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner: [NAME] at [44]. This a reflection of the importance of the public interest in maintaining the integrity of the [NAME] ([NAME] at [38]) and so ensuring that [NAME] [NAME] that fail to comply with the conditions that underpin the entitlement to the statutory monopoly are removed from the [NAME]. (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the [NAME]: [NAME] at [41]. (5) The range of factors considered in the exercise of the discretion has included whether or not: (a) there has been abandonment of the [NAME]; (b) the [NAME] [NAME] of the [NAME] still has a residual reputation in the [NAME]; (c) there have been sales by the [NAME] of the [NAME] of the goods for which removal was sought since the relevant period ended; (d) the applicant for removal had entered the market in knowledge of the [NAME] [NAME]; (e) the [NAME] proprietors were aware of the applicant's sales under the [NAME]; see [NAME] [1982] RPC 425 (Falconer J) as followed in [NAME] v [NAME] [COMPANY] [2008] FCA 934; (2008) 77 IPR 69 ([NAME])) at [202]-[203]. (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the [NAME] [NAME] under consideration has been used by its [NAME] in respect of similar goods or closely related services: [COMPANY] v [NAME] [NAME] [2009] FCA 135; (2009) 176 FCR 300 at [173] (Bennett J); [COMPANY] v [NAME] [COMPANY] [2020] FCA 1808; (2020) 158 IPR 9 at [271] ([NAME]). 176 [NAME] submits that the discretion should be exercised in favour of the remaining goods for the following reasons: (i) many of the goods are either ingredients in the [NAME], are sold in conjunction with it or are sold separately in [NAME[NAME]; (ii) [NAME[NAME] offers additional products with its [NAME] such as part of a value meal; (iii) as a result of the fact that that [NAME] is [NAME] in respect of the remaining goods there is no "cluttering" of the [NAME]; (iv) if the [NAME] [NAME] is removed, because of the reputation that [NAME] enjoys in [NAME], a third party could not use that [NAME] without engaging in misleading or deceptive conduct or otherwise running into objections for the registration of such a [NAME] under s 44 of the [NAME] as many of the goods would be consumed together; (v) other [NAME] [NAME] registrations for [NAME], including the [NAME] registration include a similar range of goods. 177 I am satisfied that pork sandwiches, fish sandwiches and chicken sandwiches should remain on the [NAME]. Those goods would in any event fall within the description of "edible sandwiches" and are sufficiently similar to "[NAME]" – which are a type of sandwich – to warrant inclusion. [NAME] accepts that this would be so. It is also apparent that bread, which will include [NAME] buns, is sufficiently close to [NAME] to warrant inclusion as a substantial component of a [NAME]. 178 Turning to the other points raised by [NAME], I am not persuaded that the fact that some of the remaining goods might be ingredients of the [NAME] warrants the exercise of the discretion to permit them to remain. Whilst mustard, sauces, sugar and seasonings may qualify for that category, the connection between ingredients and the final cooked [NAME] available for sale is in my view remote in terms of [NAME] channels and [NAME] perception. No evidence to which my attention was drawn suggests otherwise. For the balance of the remaining goods, there is no apparent connection. 179 Next, whilst the evidence does indicate that [NAME] offers other products with its value meals, there is no suggestion that any of the remaining goods (leaving aside pork, fish and chicken sandwiches) have been, or are likely to be sold in such a collective way. The evidence indicates that the use of [NAME] is confined to occasional [COMPANY] time offerings by specific restaurants. No evidence indicates what type of further use, if any, may be contemplated or that the [NAME] will be applied in relation to any of the remaining goods. The fact that other [NAME] [NAME] registrations including [NAME] (or edible sandwiches) are for a broader range of goods cannot be of assistance to [NAME]. Whether or not they are entitled to such registrations will depend on the particular circumstances and uses for each [NAME]. 180 Nor do I accept that [NAME] enjoys any material reputation in [NAME]. The evidence of usage is ample to overcome the non-use application but falls far short of demonstrating that [NAME] would recognise a separate reputation in those words. It is possible that they will perceive a connection between the [NAME] and the [NAME], but if they did, that would be because of the reputation in [NAME]. 181 Overall, having regard to the considerations identified in [NAME], I am not persuaded that the discretion should be exercised in favour of the retention of biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar. Those goods must be removed from the [NAME].

6. THE [NAME] – "25% [NAME]"

6.1 Introduction 182 [NAME] contends that, in two television commercials, [NAME] has engaged in misleading or deceptive conduct in contravention of s 18 of the [NAME]. 183 The first television commercial (first TVC) is described by [NAME] in its closing submissions by reference to the following, with the words beneath the images forming the voiceover associated with the image displayed: 184 The second television commercial (second TVC) is described by [NAME] as follows: 185 [NAME] accepts that the description in relation to the first TVC is accurate. In relation to the second TVC, it contends that the words "25% more [NAME]" in the description of the second TVC should be located at the beginning of the second column rather than the end of the first. I have reviewed the advertisements and substantially agree with [NAME] contention, although the normal [NAME], who is not likely to be paying a lawyer's attention to the commercial, would probably regard the words as bridging the scenes. 186 As framed in closing submissions, the dispute between the parties is a narrow one. [NAME] accepts that in each of the TVCs it has made the 25% more [NAME] representation to [NAME] and members of the public. It also accepts that the unnamed comparator in the commercials is the [NAME] and that the 25% more [NAME] representation was made in [NAME] and commerce. 187 This leaves the [NAME] point in issue to be whether the 25% more [NAME] representation is misleading or deceptive or likely to mislead or deceive. In this regard, the debate turns on two questions: first whether the advertisements convey the representation to [NAME] that the [NAME] contains 25% more [NAME] by its cooked weight or its uncooked weight; and, secondly, if it is by cooked weight, whether the evidence of cooked weight adduced by [NAME] is sufficiently reliable for it to discharge its onus. If it is, then there is no dispute that the representation is false. The average cooked weight of the [NAME] beef patties coming is no more than 15% greater than the [NAME]. If uncooked weight is considered, then the evidence demonstrates that the representation is accurate, with the consequence that the [NAME] claim advanced by [NAME] must fail. 188 For the reasons set out below, I have concluded that [NAME] must succeed.

6.2 The representation made

6.2.1 The submissions 189 [NAME] submits that [NAME] of the type likely to be interested in buying [NAME] promoted in the advertisements will be affected by an intuitive sense of attraction garnered by the images and voiceover and will not be guided by any process of analytical or logical choice. They will be [NAME] who are driven mainly by convenience, taste and value for money. They will understand the relevant comparison that is being made to be between the weight of the final, ready to eat [NAME] [NAME] and the final, ready to eat, [NAME]. It submits that this is apparent from the visual imagery and the voiceover. Any doubt that may linger as to whether this is so is not resolved by a disclaimer or explanation to indicate that the comparison is made of the pre-cooked weight of the competitor's [NAME]. 190 [NAME] submits that the 25% more [NAME] representation conveys to [NAME] that a comparison is being made between the pre-cooked meat patties of the [NAME] that are being displayed and the [NAME]. In relation to the first TVC, it submits that the viewer would perceive that the meat patty displayed is not fully cooked when the circular device or stamp including those words is present on the screen and that the reference to "25% more [NAME]" is made in association with the meat patty as an ingredient, not of the cooked and assembled [NAME]. It submits that the order of the words in the voiceover confirms that meat is being described in the sense of an ingredient, the words "25% more [NAME]" referring to the raw meat patty followed by the words "flame grilled" indicating that a cooking process is to be performed on that ingredient. In relation to the second TVC, [NAME] submits that substantially the same representation is conveyed. 191 [NAME] submits that the practice in the food industry is to refer to the raw or pre-cooked weight of meat, referring to the affidavit evidence of [NAME] [NAME] and Ms [NAME]. [NAME] [NAME] gives evidence of his understanding that it is a legal requirement that meat products be sold by reference to their pre-cooked weight, because various cooking methods will affect the nett weight. Ms [NAME] exhibits extracts from menus of various restaurants to demonstrate the point. [NAME] submits that [NAME] are conditioned to understand that reference to the weight of meat patties in [NAME] in general is a reference to their pre-cooked weights.

6.2.2 The relevant law 192 Section 18 of the [NAME] provides: 18 Misleading or deceptive conduct (1) [NAME] must not, in [NAME] or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. 193 For the enquiry under s 18, it is necessary to identify the impugned conduct and then to consider whether that conduct, considered as a whole and in context, is misleading or deceptive or likely to mislead or deceive; [NAME] Commission v [NAME] [COMPANY] [2014] FCA 634; (2014) 317 ALR 73 ([NAME]) at [38] ([NAME] v [NAME]). 194 Conduct is misleading or deceptive or likely to mislead or deceive if it has the tendency to lead into error and if there is a sufficient causal link between the conduct and the error on the part of the person exposed to the conduct. The causing of confusion or questioning is insufficient; it is necessary to establish that the ordinary or reasonable [NAME] is likely to be led into error; [NAME] v [NAME] at [39]. As the [ADDRESS] (French, [NAME]) said in [COMPANY] v [NAME] [COMPANY] [1999] FCA 1821; (1999) 169 ALR 1 at 14 [51]: … The characterisation of conduct as "misleading or deceptive or likely to mislead or deceive" involves a judgment of a [NAME] cause and effect relationship between the conduct and the putative [NAME]'s state of mind. Implicit in that judgment is a selection process which can reject some causal connections, which, although theoretically open, are too tenuous or impose responsibility otherwise than in accordance with the policy of the legislation. 195 A representation is likely to mislead or deceive if it may be expected to or has a capacity or tendency to mislead or deceive. In such a case, "likelihood" means a real and not remote chance or possibility of having that effect; [COMPANY] v [COMPANY] [1984] FCA 167; (1984) 2 FCR 82 at 87 ([NAME], [NAME]). It is necessary to view the conduct as a whole and in its proper context. This may include consideration of the type of market, the manner in which such goods are sold, and the habits and characteristics of purchasers in such a market. The context will also include relevant disclaimers or explanations; [NAME] v [NAME] [COMPANY] [2004] HCA 60; (2004) 218 CLR 592 at 608 [49] ([NAME], [NAME] [NAME]). In assessing advertising material, the "dominant message" of the material will be of crucial importance; [NAME] v [NAME] at [42]. The dominant message of an advertisement may be the only one which a [NAME] takes in, and it is therefore important, as a first step, to identify that message; [NAME] Commission v [NAME] [COMPANY] [2011] FCA 1254 at [43] ([NAME]). In many cases it will be necessary to consider the class of persons to whom the representation was directed; [COMPANY] v [NAME] [COMPANY] [1998] FCA 1463; (1998) 168 ALR 396 at 362. 196 In [NAME] v [NAME] [NAME] said at [46]: Half-truths may be misleading by the insufficiency of information that permits a reasonably open but erroneous conclusion to be drawn: [NAME] v [COMPANY] (1994) 124 ALR 548 at 563; [COMPANY] v [COMPANY] (1992) 38 FCR 1 at 50. In [NAME], [NAME] referred to the valuable observations of [NAME] and [NAME] (when the latter was a member of the Industrial Court) in [COMPANY] v Sneddon (1972) AR (NSW) [NAME] at 28, as well as making pertinent and valuable observations of his own. [NAME] said the following at 50: However, as was observed by [NAME] and [NAME] in [COMPANY] v Sneddon (1972) AR (NSW) [NAME] at 28 (the context was the [NAME] Protection Act 1969 (NSW): "An advertisement published in a newspaper is not selective as to its readers. The bread is cast on very wide waters. The advertiser must be assumed to know that the readers will include the shrewd and the ingenuous, the educated and the uneducated and the experienced and inexperienced in commercial transactions. He is not entitled to assume that the reader will be able to supply for himself or (often) herself omitted facts or to resolve ambiguities. An advertisement may be misleading even though it fails to deceive more wary readers." Where the advertisement is capable of more than one meaning, the question of whether the conduct of placing the advertisement in a newspaper is misleading or deceptive conduct must be tested against each meaning which is reasonably open. This is perhaps but [NAME] way of saying that the advertisement will be misleading or likely to mislead or deceive if any reasonable interpretation of it would lead a member of the class, who can be expected to read it, into error: [NAME] v [COMPANY] (1977) 14 ALR 77 at 81 per [NAME] and cf the approach taken by [NAME[NAME] in Parkdale. 197 Where the effect contemplated is on a class of [NAME] (as in the present case), the effect of the conduct on reasonable members of the class is to be considered; [NAME] at [103] ([NAME] [NAME], [NAME] and [NAME] [NAME]). The focus of the inquiry is on whether a not insignificant number within the class have been misled or deceived or are likely to have been misled or deceived by the respondent's conduct. If reasonable members of the class would be likely to be misled, then such a finding carries with it the conclusion that a significant proportion of the class would be likely to be misled; [COMPANY] v [NAME] Commission [2004] FCAFC 90; (2004) 61 IPR 420 at [70] and [71] ([NAME] and [NAME] [NAME]). The question may be put slightly differently as whether a "not insignificant number" of "reasonable" or "ordinary" members of that class of the public would, or are likely to, be misled or deceived; [NAME] A/S v DKSH Australia [COMPANY] [2011] FCAFC 98; (2011) 280 ALR 639 ([NAME], [NAME] and [NAME] [NAME]) at [204] – [210] per [NAME[NAME].

6.2.3 Consideration of the 25% more [NAME] representation 198 The first TVC provides imagery first of a [NAME] [NAME] ready to eat with French fries and a soft drink with a dynamic flame in the background. It then cuts to a scene of meat patties in the process of being cooked over a flame grill. Centrally superimposed over a close-up of the meat is a circular "stamp" or device which includes the prominent words "25% [NAME]". The imagery is of meat patties in an advanced stage of cooking, with the meat having been darkened by a flame grill. The cooking scene concludes with the device fading and the patties being either removed or flipped by a spatula. The third scene is similar to the first, depicting a ready to eat [NAME] with fries and a soft drink with flames flickering the background. The voiceover is set out in section 6.1 above. 199 The second TVC has a similar first scene to the first TVC. The second scene is again of cooking meat, but this time shows multiple patties, one being turned by barbeque tongs. All of the patties appear to be at an advanced stage of cooking, with grill [NAME] visible. The device or stamp is set to the right-hand side and remains visible during the second scene, which shows the patties on the grill, but is not present in the final scene, which depicts a ready to serve [NAME]. The voiceover is as set out above. 200 I have in section 3.6.1 identified that the typical [NAME] of [NAME] from [NAME] will be a member of the public who is likely to make a purchase based on convenience, taste and value. The target market for [NAME] was said by [NAME] [NAME] to be [NAME] aged between 18 and 39, although no doubt the age range of those who attend [NAME] outlets is wider. As I have noted, because [NAME] will eat [NAME], they are likely to pay some attention to make sure that they get the right [NAME]. Unlike other relatively inexpensive items, persons consuming food will want to know what they are getting. They are not likely be particularly careless or inattentive. 201 Nevertheless, this is an advertisement that is likely to be viewed in circumstances other than in a [NAME] [NAME] and most likely not at the time when the viewer intends to make a purchase. It is likely that it will be forced upon the viewer, either in a commercial break during a television show or pushed via social media. It will possibly be an uninvited distraction. The viewer is unlikely to pay close attention to every aspect of it, but will form a general impression of its message, which is, simply put, that the [NAME] has 25% more Australian beef in it that the [NAME] equivalent, the [NAME]. I do not think that the [NAME] will pay much regard to the distinction between cooked and pre-cooked weight. To the extent that they do, many are likely to form an impression that it is cooked weight. That impression is supported by the images of the patties being at an advanced stage of cooking, and the concluding image of a ready to eat [NAME] meal. In my view, the message is that when you eat this meal, you will be eating 25% more [NAME] than when you eat the competitor's [NAME]. 202 In this regard, I consider that the evidence of menus and weighing regulations provided by [NAME] is tangential to the message conveyed by the whole of the advertisements themselves. It is adduced in order to demonstrate that [NAME] are somehow acclimatised to the fact that meat is sold by reference to its pre-cooked weight. However, it is the impression carried away from the commercial itself that matters. 203 I am not persuaded that viewers would consider that the commercials are to be viewed in the same way that they would consider an a la carte menu at a hotel, a number of which were exhibited. In any event, most of those menus displayed clarifying messages. For instance, [NAME] relied heavily on [NAME]' promotion of its [NAME], which promoted "…a whole quarter pound* of 100% [NAME]". But the * draws attention to a disclaimer: "*Weight before cooking". 204 Similar footnotes or disclaimers are present on many of the menus in evidence. Far from suggesting that [NAME] are generally alert to meat being promoted on the basis of pre-cooked weight, in my view, this evidence supports the proposition that most [NAME] need to be told when the weight of the meat being promoted or sold in a meal is the pre-cooked weight. An inference readily available is that [NAME] would tend to assume that, unless the disclaimer is present, it will be the post-cooked weight or that there is an element of ambiguity about whether it is pre-cooked or not, and that this is best resolved by the disclaimer. 205 I am fortified in this conclusion by the fact that, in an internal [NAME] email dated 31 January 2020, [NAME] [NAME] wrote to [NAME] [NAME] including comparative information of the cooked weight of the then proposed 5" and 4" [NAME] patties as against the [NAME], thereby suggesting that this was a metric used within [NAME]. 206 I consider the evidence of [NAME] [NAME] that some regulations require pre-cooked weight to be displayed when selling meat products to be irrelevant to the message that [NAME] would take from the impugned commercials. 207 Accordingly, I consider that a not insignificant number of reasonable [NAME] in the class likely to see the advertisements would consider that they convey the message that the cooked weight of the meat in the [NAME] being advertised is 25% greater than that of the comparator [NAME].

6.3 The evidence of the weight of the meat 208 The evidence adduced of the comparative cooked weight of the [NAME] and [NAME] meat patties was detailed and extensive. 209 Dr [NAME], who holds a PhD in analytical chemistry, gave evidence as to the steps that she took on 12 November 2020 to measure the weight of the meat patties in question which may be summarised as follows: (1) She went to six [NAME[NAME] located in Brisbane and ordered two [NAME] [NAME] from each, asking that they be supplied without the cheese and condiments. A colleague did the same for a further four restaurants; (2) On the same day, she went to five [NAME[NAME] and ordered two [NAME] [NAME] from each, asking that they be supplied without the cheese and condiments. The same colleague did the same for five further restaurants; (3) All of the acquisitions above took place between 8am and 2pm on the same day; (4) Back at the testing laboratory, the wrapping was removed and the meat patties were separated from the balance of the [NAME]; (5) The patties were weighed on an Fx-5000i calibrated balance over a period of 2 hours on the same day as the purchases between about 2pm and 3pm; (6) A spreadsheet was created setting out the weights. One sample [NAME] (sample 2 from [NAME] [NAME] 9) was supplied with condiments, which [NAME] carefully removed before weighing. 210 In her second affidavit, [NAME] gives evidence of further testing that she conducted in Brisbane in accordance with a test protocol the subject of Orders made pursuant to r 34.50(2)(b) of the Federal Court Rules 2011 (Cth). She took the following steps: (1) She and her colleague went to 10 [NAME[NAME] between them and ordered five [NAME] [NAME] at each, without the cheese and condiments; (2) She and her colleague went to 10 [NAME[NAME] and purchased five [NAME] [NAME], without the cheese and condiments; (3) All of the acquisitions were made on the same day, between 8am and 2pm; (4) Weighing of the patties took place progressively during the morning and later in the day, using a NATA accredited balance; (5) A set of spreadsheets was created recording the results of the testing and a statistical analysis of the results. 211 [NAME] [NAME], who has worked as an analyst in the food industry since 1992, also conducted testing in accordance with the same protocol that was the subject of Orders on [NAME] acquired from restaurants located in Melbourne. He gave evidence of taking the following steps: (1) He and a colleague went to 10 [NAME[NAME] and 10 [NAME[NAME] and acquired five [NAME] and [NAME] [NAME] at each, ordering them without the cheese and the condiments; (2) The acquisitions were made on 14 July 2021 between 8am and 1.30pm; (3) At about 2pm he disassembled the [NAME] and used a NATA accredited top loading balance accurate to two decimal places to weigh the patties; (4) A set of spreadsheets was created to record the results together with a statistical analysis of the results. 212 [NAME] levelled a series of criticisms at the processes described above based on evidence adduced during cross examination of Dr [NAME] and [NAME] [NAME]. It submitted that by removing the condiments and cheese, the testing had violated the integrity of the [NAME] such that it was neither a cooked [NAME] nor a cooked [NAME] [NAME] patty that was being weighed. It contended that the protocols provided no sequence in which the respondents were to be visited or timeframe between the acquisition and weighing, with the consequence that the patties were not weighed immediately after purchase. Nor was account taken for moisture loss from the patties to the bun or for moisture lost by heat dissipation over time which might have altered the results. Furthermore, the protocol did not require that after acquisition the [NAME] be refrigerated and, in fact, for all but ten of the [NAME] acquired by Dr [NAME], they were left in the car in the bags that they were purchased in until they were tested, with many sitting in the car for a number of hours before being taken to the testing laboratory. Finally, [NAME] gave evidence that the bun on the [NAME] tended to stick to the patties and bun remnants had to be removed by him with a paper towel. 213 I do not consider that any of these criticisms are likely to have a material bearing on the results recorded which, as I set out below, indicate that the cooked weight of the respective patties demonstrates that the weight of the meat in the [NAME] is far short of being 25% greater than the meat in the [NAME]. 214 If the [NAME] had been ordered with cheese and condiments, then those ingredients would in any event have had to be removed to weigh the patties. A measurement taken without the condiments is more likely to provide an accurate weight of the meat. Whilst loss of moisture either through evaporation or absorption into the bun might have had a slight bearing on the actual weight of the patties, there is no suggestion that the [NAME] patties were treated any differently to the [NAME] patties, with the consequence that it is reasonable to expect that any moisture loss is likely to have been equivalent. [NAME] [NAME] gave his opinion that the bun remnants present would be unlikely to have a material effect on the weight recorded. 215 The results are telling: [NAME] (Dr [NAME]) [NAME] (Dr [NAME]) Melbourne sample ([NAME] [NAME]) Average combined weight of [NAME] patties 64.92g 64.18g 61.98g Average combined weight of [NAME] patties 57.26g 55.86g 53.17g Difference (g) in combined weight 7.66g 8.32g 8.81g Difference (%) in combined weight 12.5% 13.9% 15.3%

216 The relevant question is whether or not it was a misrepresentation for the advertisements to tout that the [NAME] contained 25% more [NAME] than the [NAME]. The above results demonstrate, with a very considerable margin of error, that the weight difference is significantly less than 25%. [NAME] chose not to elicit any evidence in response to the testing evidence to which I have referred. 217 Accordingly, I conclude that the misrepresentation case is made out.

7.

CONCLUSION 218 I have concluded that [NAME]' [NAME] [NAME] infringement case fails, as does its challenge to the validity of the [NAME] [NAME] [NAME] [NAME]. However, [NAME] succeeds in its [NAME] claim. [NAME] has succeeded in defending the [NAME] [NAME] infringement case, but failed in its endeavour to secure the revocation of the [NAME] [NAME] [NAME] [NAME], with the exception of some goods, which must be removed from its registration. 219 I will direct that the parties confer and provide short minutes of order giving effect to these reasons, including a timetable for the resolution of any dispute as to costs and any residual issues for determination. I certify that the preceding two hundred and nineteen (219) numbered paragraphs are a true copy of the Reasons for Judgment of the [NAME].

Associate: Dated: 15 November 2023