Are these marks similar or capable of being confused with one another?
Symbion mark Idameneo mark
The Full Federal Court decided that they were not, in the Full Federal Court decision Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd  FCAFC 164.
This case focussed on a licence term, where Idameneo was contractually prevented from using a trade mark which was ‘similar to or capable of being confused with’ any of Symbion’s trade marks.
The case of Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd  FCAFC 164 highlights the problems of using subjective terms when defining what is not permissible. A specific list of restrictions as to colours, shapes, words, fonts or configurations may provide more clarity to both parties.
In 2008, in the context of a complicated demerger and sale, Symbion entered into a licence agreement, giving Idameneo a two-year time period to use certain trade marks, but also reserved its rights via a clause 5.5 stating that:
Except as permitted by this deed, [Idameneo] must not, and must ensure that each Licensee does not, use:
(a) any Trade Mark; or
(b) any Mark similar to or capable of being confused with any of the Trade Marks…
as a trade mark, business name, domain name or otherwise anywhere in the world.”
The licence agreement was entered into on 31 October 2008. After that, Idameneo used the Idameneo mark and phased out its use of the Symbion mark. Symbion alleged that Idameneo’s continued use of the Idameneo mark from April 2010 breached Clause 5.5(b) of the licence agreement.
The primary judge agreed with Symbion, and issued an injunction restraining further use of the Idameneo mark.
However, the Full Court allowed the appeal and reversed this decision. The Full Court found that the markets for each entity’s services were distinct and specialised, the marks were distinguishable, and that there was no risk of confusion:
“…there was no evidence that the goods or services of Symbion and Idameneo would find markets in substantially common areas or among the same classes of people. To the contrary, the evidence established that each of the parties currently operated in distinct and different specialised markets. And, as we have found above, the Symbion marks, on the one hand, and the Idameneo mark, on the other, are not the same and do not closely resemble one another. Thus, although the Symbion marks had been used in the same sector as the Idameneo mark prior to the demerger in 2008 and for a time afterwards, they were always distinct and did not so closely resemble one another that there was a real risk of anyone being caused to wonder whether the respective marks identified or were associated with services that come from the same source.”
Had Clause 5.5 specifically prevented Idameneo from using the colour green, or a twisted configuration, this may have assisted Symbion in preventing use of Idameneo mark, while also providing clarity to Idameneo in adopting a brand for use post-demerger.