Sometimes a trade mark will be used with additions or alterations that do not substantially affect its identity. If this is established the Registrar and the courts have been invested with a discretion in deciding whether the trade mark has been used. In exercising this discretion regard is to be paid to the circumstances of the particular case (s 7(1)).

When determining what constitutes additions or alterations not substantially affecting the identity of the mark, regard should be had to the authorities on the test for ‘substantially identical’ trade marks (see Part 26.5). Regard must be had to the essential elements and dominant cognitive cues of the trade mark used compared to the trade mark for which registration is sought (or for which registration is seeking to be maintained).

For example, in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, the Federal Court held that use of CHILL constituted use of CHOC CHILL in relation to flavoured milk, on the basis that CHOC was descriptive.

It is important to consider the nature of the differences and their impact upon the identity of the trade mark. See, for example, PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 at [162] in which their Honours, considering the two examples of the trade mark, determined that they were not substantially identical and that use of one could not be considered to be use of the other:

Having regard to the presentation of the two marks, including the distinctive tail on the ‘D’ of the Wicked Tail Mark and the font and block characteristics of the New Wicked Mark, we do not consider them to be substantially identical. We do not consider that intended use in respect of the New Wicked Mark equates to intended use of the Wicked Tail Mark in respect of the goods currently under consideration.

7.1 Use of a word trade mark with an illustrative device

In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15, the High Court considered the significance of use of the word BAREFOOT with a footprint device that the Court regarded as ‘an illustration of the word’. The Court held, in the circumstances of the case, that the use, in light of the provisions of s 7(1), was use of the registered trade mark (which consisted solely of the word BAREFOOT). The majority said at [69]:

The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).

However, whether use of a word trade mark with an illustrative device added to it can meet the requirements of s 7(1) will depend on the circumstances of each case. Particular regard must be had to whether such a device is an obvious illustration of the word trade mark. It is possible that a highly stylised device may not be considered use of the word trade mark.