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Substantially Identical and Deceptively Similar Trade Marks

Your trade mark application can be refused on the basis of prior registrations for the same or similar goods or services. Prior registrations may act as a barrier to registration of your trade mark because the earlier mark is the same or similar to your mark.

The Trade Marks Act 1995 (Cth) provides that a trade mark must be rejected where a trade mark is substantially identical with, or deceptively similar to, a prior registration in respect of similar goods or services.

Substantial identity and deceptive similarity are two distinct concepts.

Substantial Identity: Comparison of marks side by side

The marks are compared “side by side” noting their similarities and differences with both visual and aural aspects relevant to assess whether the marks are substantially identical.

Deceptive Similarity: Factors when comparing

Deceptive similarity does not turn on the comparison of the marks side by side but rather on the consumer perception and the likelihood of confusion. The fundamental elements when considering deceptive similarity are the nature of the trade mark and the type of goods or services for which registration is sought.

In Shell Co of Australia Limited v Esso Standard Oil (Australia) (1961) 109 CLR 407, Windeyer J stated the considerations for determining whether two trade marks are deceptively similar:

The issue is not abstract similarity, but deceptive similarity. Therefore, the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark 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].

Whether two trade marks are deceptively similar is a question of fact to be determined in the circumstances of each case. The courts have developed various principles and rules of comparison to provide some guidance based on the overall impression left by the marks and then the reasonable consumers “imperfect recollection”.

The basic guidelines for comparison is a consideration of the appearance and sound of the words, the nature of the goods, the kind of customer, and all the surrounding circumstances.

It must be considered whether the average consumer would confuse the trade marks in question, not when compared side by side, but based on the ideas conveyed by those marks and an imperfect recollection of them. Factors that can be considered include sound and appearance, imperfect recollection, the “idea” of the mark, marks which contain another mark and the descriptiveness of the mark.

In each case, the nature of the trade mark will determine the criteria which will be most appropriate to determine whether the marks are deceptively similar. In considering deceptive similarity, we can also consider visual and aural similarities, and the importance of the first syllable.

The beginning of the words being considered is important. Sargant J in the “Tripcastroid” case observed that:

But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

It is necessary to show a real tangible danger of deception or confusion.

Prior Use

A trade mark applicant may request that a rejection be withdrawn against the trade mark on the basis that the applicant is a “prior continuous user”. The Trade Marks Act 1995 (Cth) makes provisions for registration of an applicant’s trade mark based on prior continuous use before the priority date of the earlier mark provided the applicant has continuously used that trade mark at least up until the priority date of their own application.

Take-away points

  • Your trade mark application may be rejected if it is the same or similar to an earlier trade mark application or registration
  • The rejection may be based on substantial identity because your trade mark is identical to another trade mark for goods or services of the same description
  •  The rejection may be based on deceptive similarity because the trade mark is so similar to another that public confusion is likely to arise if both trade marks are applied in relation to similar or closely related goods or services
  • Trade marks may in certain circumstances be accepted which would otherwise be rejected
  • You may be able to overcome this rejection by supplying evidence of continuous prior use of the trade mark

Lara Alexandra, Legal Assistant and Trade Mark Administrator

We are a team of trade mark attorney and IP specialists based on Gold Coast and Sydney. If you have any questions about trade mark and brand protection, contact us on 1300 77 66 14


Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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