26.6. Factors to consider when comparing trade marks

The following principles have been developed over many years from the case law and decisions of the Registrar. In each case, the nature of the trade marks will determine the criteria which will be most appropriate to determine whether they are deceptively similar.
 

6.1 Sound as well as appearance to be considered

In determining the resemblance between two trade marks, the possibility of slurred pronunciation, distortion of sound in telephone or other conversations and the syllabic structure of words must be taken into account. On the question of the “sound” of a trade mark, reference can be made to the words of Sargant LJ in the “ Tripcastroid” case, London Lubricants (1920) Limited's Application (1924) 42 RPC 264 at 279:

The only similarity in the word “ Tripcastroid” to “ Castrol” is in the letters composing the centre of the new word. The termination of the new word is different. Though I agree that, if it were the only difference, having regard to the termination of words, that might not alone be sufficient distinction. 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.

This highlights the importance of the beginnings of the words being compared. In this regard see also: 

Aristoc Limited v Rysta Limited(1943) 60 RPC 87 (Rysta), where the words RYSTA and ARISTOC were held not to be deceptively similar;  

Enoch’s Application (1947) 64 RPC 119 (‘Cyllin’)where it was held VIVICILLIN and CYLLIN were not deceptively similar; 

 Bayer’s Application (1947) 64 RPC 125 where DIASIL and ALASIL were held to be not deceptively similar;  

Magdalena Securities (1931) 48 RPC 477 (Ucolite)where it was held UCOLITE and COALITE were deceptively similar. 

Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) [2017] FCA 60 where it was held that CLIPSAL and CLIPSO were deceptively similar;  

Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8 (‘Vagisil’) where it was held that VAGISAN and VAGISIL were deceptively similar;

However, the findings of the above cases should be considered in the light of contemporary marketing methods. The Hearing Officer in Giorgio Armani S.p.A v Tiawan Yamani (1989); 17 IPR 92 decided that:

...the opponents case...must fail because, in relation to the goods in question here, I regard the visual impact of the marks, which is very different, to be of more importance than any aural similarity. The commercial reality today is that articles of clothing are simply not purchased over the counter on a verbal request but are carefully selected by a potential customer from a rack in a shop and very carefully inspected and compared with similar articles
 

6.2 Imperfect recollection

In considering whether trade marks are deceptively similar, the House of Lords in the “ Rysta” case discussed the doctrine of imperfect recollection and the importance of first impression (1943) 60 RPC 87 at page 108:

The answer to the question of whether the sound of one word resembles too nearly the sound of another...must nearly always depend on the first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants.

However, the House of Lords, also pointed out in Rysta that this factor must not be too strongly emphasised. Lord Greene MR at 105:

The doctrine of imperfect recollection must not be carried too far. In considering its application not only must the class of person likely to be affected be considered, but no more than ordinary possibilities of bad elocution, careless hearing or defective memory ought to be assumed.

In this regard see also: 

 Broadhead’s Application , (1950) 67 RPC 113 (‘Alkaseltzer’) where it was held that ALKA-SELTZER and ALKA-VESCENT were similar when used in relation to seltzer water;  and 

In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193 where it was held that IN-N-OUT BURGER was similar to DOWN/D#WN N’ OUT. This decision was upheld on appeal. 
 

6.3 The 'idea' of the trade mark

Although the two trade marks under consideration may contain many differences, a ground for rejection under section 44 could apply if they did in fact convey the same idea. (See Jafferjee v Scarlett [1937] HCA 36(‘Jafferjee’). Some trade marks which have features in common are seen to be different when viewed side by side. However, if the same idea is engendered by both trade marks and it is thought that some purchasers are likely to remember the trade marks by the idea rather than by the specific visual or aural features of the trade marks, use of the trade marks may lead to confusion. Grounds for rejection may then exist under s 44 on the basis of deceptive similarity of the trade marks. 

When considering a ground for rejection based on the trade marks conveying a similar idea, the sound and/or look of the trade marks should be taken into account (Sports Café Ltd v Registrar of Trade Marks [1998] FCA 1614 (‘Sports Café’)).  This however does not mean that the idea that trade marks convey are only taken into account once visual or aural similarity is established, nor that visual and aural features do not need to be strongly considered if trade marks do in fact convey the same idea or concept. This is discussed in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) FCAFC 156 (Yellow), which includes references to both the Sports Café and Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited  [1952] HCA 15 (Rainmaster) decisions – see 210 and 211. In Yellow at the court said at [212]: 

The takeaway from this case is that the commonality of idea is part of the process of determining if the marks look or sound alike 

The idea that a trade mark evokes is an important factor to consider when establishing the visual and aural features a consumer is likely to pay attention to and recollect. A holistic visual, aural, and conceptual assessment should be undertaken to establish the general overall impression that exists when comparing trade marks. 

In Dial An Angel Pty Ltd v Sagitaur Services Systems Pty Ltd [1990] FCA 312, Wilcox J held that while the words DIAL-AN-ANGEL and GUARDIAN ANGEL were not deceptively similar, the associated logos which each contained a representation of an angel with children, although different in detail, were considered to be deceptively similar as a result of “the idea of the mark” and the similar impression created by them. 

 and DIAL-AN-ANGEL versus GUARDIAN ANGEL and 

 See also: 

De Cordova v Vick Chemical Co,. (“VapoRub” case) (1951) 68 RPC 103 in which VAPORUB was held to be similar to KARSOTE VAPOUR RUB;   

Rainmaster where RAINMASTER was held to be sufficiently different to RAIN KING. 

 

6.4 Marks which contain another trade mark

Over the years a great deal of case law has been delivered on the registrability of these trade marks. The most famous court cases include Cyllin comparing VIVICILLIN and CYLLIN and Darwin’s Application, (1946) 63 RPC 1, comparing MOREX and REX. In both the above cases the marks were allowed to coexist. More recent cases include E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 (‘Barefoot Radler’), comparing BAREFOOT and BAREFOOT RADLER. In this case the trade marks were considered to be deceptively similar. 

In general, if one trade mark incorporates the essential distinguishing or memorable feature of another trade mark then confusion may still be likely despite the existence of other material in the trade marks.  However, consideration must be given in circumstances where because of additional or different material, the trade marks as a whole create sufficiently different impressions. Also, it is important that a single word or element is not too readily characterised as an essential feature (Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 (at [100])) (Crazy Ron’s).  

When considering the similarity of two trade marks, where one mark is wholly contained within the other, the following factors are relevant: 

• The extent to which the shared element has retained its identity as an essential feature of the trade marks (Bulova Accutron Trade Mark [1969] RPC 102). In Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44 at [167-171], the court held that MOTHER and MOTHERSKY were deceptively similar, considering that one trade mark is wholly incorporated into the other, MOTHER does not lose its identity as part of MOTHERSKY, and MOTHERSKY as a whole does not have a well understood meaning. 

• The distinctiveness of the common element/s and the distinctiveness of additional element/s. If the additional element changes the idea of the trade mark, this may point towards a finding that the marks are not deceptively similar. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328 (at [239] JAZZ CORNER HOTEL and CORNER HOTEL were considered not to be deceptively similar).  

• The nature of the additional element(s) – if the additional element(s) is/are particularly distinctive and sufficiently alter the impression of the mark as a whole then the marks will most likely not be deceptively similar, even though they share a common element. And vice versa – if the additional element has a low level of distinctiveness then the marks are more likely to be deceptively similar ( Application by Coles Myer Ltd, (1993) 26 IPR 577, comparing BRATS and BONZA BRATS). 

• The meaning behind the trade marks – where an additional element changes the meaning of the trade mark or the concept behind it then the trade marks are less likely to be deceptively similar  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078 at [177] to [200] the court held that in the trade mark WICKED SISTER, neither WICKED nor SISTER were the clear essential feature of the mark, and as a whole, WICKED SISTER was not deceptively similar to WICKED in slightly stylised form. 

• The placement, within the trade mark, of the common and non-distinctive elements, including size of text and any other elements may provide a different context and consequently alter the overall impression of the trade mark. See REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 in which the following trade marks were compared

   

• When both the common element and additional element are distinctive – each case will turn on its own facts. See Barefoot Radler at 63 per Flick J. 

• Consideration must be given to the surrounding context of the goods and services, such as methods of sale and common trade techniques. Are customers purchasing goods by name? How are the goods presented? Who are the consumers? (general or specialist?)​​​​​​​. 

Decisions of the Registrar also provide some guidance: 

6.5 Reputation or notoriety of a mark 

An enquiry under s 44 should not take into account reputation in any element of either trade mark under comparison. The assessment of whether two marks are deceptively similar is confined to a comparison of their particulars and the uses to which the marks might be properly put. In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (Protox) [2023] HCA 8 the High Court said [at 36]:   

In support of those contentions, the amicae principally relied on three authorities that considered the issue of reputation – Registrar of Trade Marks v Woolworths Ltd, CA Henschke & Co v Rosemount Estates Pty Ltd and Australian Meat Group Pty Ltd v JBS Australia Pty Ltd – and from which a "principle" that reputation is relevant where it lessens the risk of "imperfect recollection" in the assessment of deceptive similarity under s 120(1) of the TM Act was said to be drawn. It will be necessary to consider each of these authorities below because, as will be explained, all forms of any socalled principle should be rejected. Reputation should not be taken into account when assessing deceptive similarity under s 120(1). That conclusion is compelled by the structure and purpose of, and the fundamental principles underpinning, the TM Act. (emphasis in original)  

Sections 44 and 120(1) of the Trade Marks Act 1995 (Cth) involve the same inquiry for assessment of deceptive similarity (being the one provided by the High Court in Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51). As such, while the decision in Protox was made in the context of s 120, the reasoning is applicable to s 44.   

Previously, the Federal Court in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (Woolworths) held that where an element of a trade mark had a degree of notoriety or familiarity, this may be relevant to determining whether it was deceptively similar with another trade mark. The rationale for this principle being that the presence of an element with a very high degree of notoriety, such as was enjoyed by Woolworths for retail services, reduces the potential for imperfect recollection. This was explicitly rejected by the High Court’s findings in Protox, and is no longer the law.  

Further, since the decision in Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156 [133] it is settled that the onus on a party seeking to assert deceptive similarity under s 44 for the purposes of opposition (or cancellation) is the same ordinary balance of probabilities as a plaintiff seeking to assert the same under s 120. Such commonality to approaching deceptive similarity only further emphasises that, regardless of the views held at the time of Woolworths, the principles relating to deceptive similarity must applied consistently to s 44, as they are applied to s 120.  

The consistent interpretation of deceptive similarity in the context of s 44 and s 120 is also supported by the principle of statutory construction that ‘cognate expressions in a statue should be given the same meaning unless context requires a different result’ (Kline v Official Secretary to the Governor-General [2013] HCA 52 [32]).   

6.6 Considering invented words

There is a much greater possibility of deception and confusion between words which are not in common use in the language. In  William Bailey (Birmingham) Ltd.’s Appln. (1935) 52 RPC 136, Farwell J said at [153]: 

No doubt in the case of a fancy or invented word, a word which is not in use in the English language, the possibility of confusion is very much greater. A fancy word is more easily carried in mind and is more easily carried in mind in connection with some particular goods and it may well be that in the case of a fancy word there is much more chance of confusion and therefore less evidence may be required to establish the probability of confusion in the case of a fancy word than in the case of a word in the English language. 

This decision was cited with approval by Murphy J in Nexans S.A. v Nex 1 Technologies Co. Ltd [2012] FCA 180 at [31].  

Similarities in invented words must be considered in context. For example, smaller in differences in short invented words may create more significant differences in overall impression, particularly where that difference occurs at the beginning of the mark.  : For instance, in Opposition by FENDI PAOLA & S.LLE S.a.S to the registration of Trade Mark 473729 [1993] ATMO 26, Hearing Officer Farquhar said, in assessing trade marks JENDI against an earlier registration for FENDI:   

It was found in London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264 that the beginning of words is accentuated in comparison with the end of the word so that 'the first syllable of a word is, as a rule, far the most important for the purpose of distinction'. This was supported in "Fif" Trade Mark [1979] RPC 355 and also the finding in "Mem" Trade Mark [1965] RPC 347. In both of these cases, it must be noted, one of the conflicting marks had some meaning. The comments in London Lubricants supra are most applicable to polysyllabic words and I consider they are pertinent here. It is not necessary to pronounce a word to impress it on the memory. The form of the word will be noted and the beginning of the word will be what is impressed on the mind. There are two possibilities with these marks. It is likely the final 'i' will be overlooked as an insignificant ending, leaving in the memory the words FEND and JEND. I believe consumers would be unlikely to confuse these two. Alternatively if the last syllable is noted it is still unlikely that the two would be confused. 

6.7 The descriptiveness of the trade mark

It is generally appropriate to pay less attention to non-distinctive matter when comparing marks. This is because non-distinctive matter is less likely to be taken as an indication of the origin of the goods or services, and consumers are therefore unlikely to be confused by the presence of similar, non-distinctive, matter in two or more trade marks. In Rainmaster the High Court had to consider whether the mark RAIN KING, registered in respect of ‘spray nozzles, sprinklers and their parts’, should block an application for the mark RAINMASTER for similar goods. In concluding that there was no reasonable likelihood of deception between the marks, the Court said at [3]: 

A purchaser of spray nozzles and sprinklers…would not be likely to pay any attention to the presence of a common word like rain in the combination. That prefix already appears in other trademarks for goods of the same description sold on the Australian market such as Rainwell, Rainmaker, Rain Queen, and Rainbow. The learned registrar was right in holding that the only similarity between the two marks is the common prefix ‘Rain’ and that this similarity is not sufficient to create a reasonable likelihood of deception when the remaining portions of the marks are so different.  

In Ucolite, Maugham J said at [486]: 

I think it is true to say that when a registered trade mark...has a descriptive tinge the Courts are rather averse to allowing that fact to tend to become a kind of monopoly in respect to the descriptive character of the word. 

The trade mark system is not intended to focus exclusively on eliminating all risk of consumer confusion, irrespective of the needs of other traders. A decision maker may have no choice but to tolerate some risk of confusion if a trader has chosen to build a business around a descriptive term and a later trader wishes to use that descriptive term in relation to its own business. This is to be seen in the decision of the High Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11, dealing with the statutory consumer protection regime: 

The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words…” (at p. 229 per Stephen J). 

Hearing Officers have applied this principle in numerous decisions under the Trade Marks Act 1995 (Cth): for example, LexiMed Pty Ltd v Lex Medicus Pty Ltd [2013] ATMO 63; Cars on Demand IP Pty Ltd v Cars on Demand Ltd [2014] ATMO 87; Combined Communications Pty Ltd v Combined Communication Solutions Pty Ltd [2014] ATMO 117; Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd [2015] ATMO 28; Australian Ezy Tax Systems Pty Ltd v Ezy Tax Solutions Pty Ltd [2016] ATMO 62; Taronga Conservation Society Australia v Sydney Zoo Pty Ltd [2017] ATMO 155; Ng v Aussie Dazzling Life Pty Ltd [2018] ATMO 136; Capital Safety Group EMEA v Classic Supplies Pty Ltd [2019] ATMO 10. 

It must, however, be stressed that this does not mean that descriptive matter is to be excluded when marks are being compared. As Hearing Officer Wilson noted in Australian Ezy Tax Systems Pty Ltd v Ezy Tax Solutions Pty Ltd [2016] ATMO 62 at [22]: 

“A descriptive element within a trade mark may be to some extent discounted in a comparison (or to paraphrase Hornsby, a certain risk of confusion due to the presence of that element may be accepted), but those descriptive elements cannot be entirely ignored in the overall comparison.” 

The consequence is that whether the common presence of descriptive matter will lead to a finding that the marks are deceptively similar will depend on the facts of the case at hand. Conclusions will vary depending on the precise marks at issue and the goods or services in question.  

6.8 Descriptive words in composite marks

he question of what weight should be given to the common presence of non-distinctive words when assessing deceptive similarity often arises in cases involving composite marks. As explained in Part 22.26, composite marks that consist of a distinctive device and a non-distinctive word will generally be prima facie distinctive and registrable. The presence of the device will mean that consumers will immediately understand the mark to be a badge of origin and it is unlikely that other traders will need to use any such particular word-device combination. However, difficult questions can arise when word-device combinations are being compared with later marks that include the same non-distinctive word combined with a notably different device or with other distinctive matter. 

The correct approach in such a case is to focus on the comparison of the marks as a whole. As the Full Federal Court warned in Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 (‘Crazy Ron’s) at [100]: 

some caution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different. 

However, as the Full Federal Court noted in the same case at [100], ‘everything depends on the particular circumstances of the case’. The correct approach, as noted above, is for decision makers to proceed on the basis that descriptive words may to some extent be discounted, but must not be ignored entirely.  

Crazy Ron’s compared 

 against CRAZY RON/CRAZY RON’S and held that CRAZY JOHN was not an essential feature of the stylised trade mark. The trade marks were then not considered deceptively similar. 

The following examples provide illustrations of comparisons between compound marks featuring non-distinctive word components, showing the range of factors that have been taken into account in determining whether the marks in question were or were not deceptively similar. 

Examples

Example 1

Mount Everest Mineral Water Ltd [2012] ATMO 65

Marks being compared:​​​​​​​

Decision: Sufficiently Different

Reasons/Quote: Reasons for this decision include:

In my consideration, confusion between the Trade Mark and those cited against it might only arise if it is likely, on the balance of probabilities, that consumers of the goods will view the words HIMALAYAN…MINERAL WATER or HIMALAYAN SPRING MINERAL WATER as acting as a badge of trade origin as opposed to geographical origin of the spring water (at [28).

Example 2

The BBQ Store Pty Ltd v BBQ Factory Pty Ltd [2019] ATMO 132

Marks Being Compared:

Decision: Deceptively Similar

Reasons/Quote: Reasons for this decision include:

The flame is probably the single most memorable element of the [applicant’s] Trade Mark, yet even it is somewhat descriptive of the Goods … there is very little likelihood that the relevant consumer would recall in any detail the look of the flame. The rest of the device is a quite unremarkable black background … ‘The BBQ store’, as the phrase appears in the Trade Mark, is very descriptive of the Goods … the concept of this type of outdoor cooking implement is all that is likely to be remembered … The general impression likely to be taken away by the relevant consumer would in my estimation be of barbecue seller that uses a flame in its logo” (at [26])

“The Opponent’s Mark also includes a descriptive device—a skewer loaded with what appears to be an orange slab of meat, being licked by red flames from beneath. This device is visually distinct from the flame in the [applicant’s] Trade Marks, but conceptually they share a motif of fire. The words ‘TheBBQ Store’, are slightly differently arranged in the Opponent’s Mark. But through the lens of imperfect recollection they are visually, aurally and conceptually indistinguishable from the Trade Mark—the relevant consumer cannot be expected to note, let alone recall, that the Opponent uses a superscript ‘The’ and the Applicant a lowercase ‘store’. Even with the necessary discounts applied to this descriptive phrase, that both marks use the exact same descriptive words in precisely the same order can only add to their visual and conceptual similarity (at [27])

Example 3

Cars on Demand IP Pty Ltd v Cars on Demand Ltd [2014] ATMO 87

Marks being compared:

Decision: Sufficiently Different

Reasons/Quote: Reasons for this decision include:

I am satisfied on the evidence not only that traders in relevant Class 39 services are likely to want to use the words “cars on demand”, or “on demand”, in connection with car hire for the sake of their ordinary significance and without improper motive, but that several have already done so” (at [36])

“Since the Opposed Mark is otherwise quite different from, and readily distinguishable from, the Opponent’s Device Mark when the marks are compared as wholes, my finding, in summary, is that the Opposed Mark is not deceptively similar to the Opponent’s Device Mark (at [37])

Example 4

Combined Communications Pty Ltd v Combined Communication Solutions Pty Ltd [2014] ATMO 117

Marks being compared:

Decision: Sufficiently Different (composite logo), Deceptively Similar (plain words)

Reasons/Quote:

Reasons for this decision include:

in any comparison of the trade marks in question, the expressions ‘Combined Communications’ and ‘Combined Communication Solutions’ should be subject to very heavy discounting (at [65])

In the Opposed Word Trade Mark there is no accompanying device to aid potential purchasers in distinguishing between it and the Opponent’s Registered Trade Mark. Deception or confusion is therefore likely to arise out of the use of the Opposed Word Trade Mark (at [77])

I therefore find that the Opposed Word Trade Mark is deceptively similar to the Opponent’s Registered Trade Mark but that the Opposed Logo Trade Mark is not deceptively similar to the Opponent’s Registered Trade Mark (at [78])

Example 5

REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559; (2013) 217 FCR 327

Marks being compared:

Decision: Sufficiently different

Reasons/Quote: Reasons for this decision include:

The realestate.com.au logo has arguably three components… No component on its own is an essential feature…the placement of the device in the middle of the [realEstate1] logo is a strongly distinguishing feature. That placement has the effect of sidelining “.com.au” and projecting “realEstate1’ as the dominant element (at [232]).

Decision: Deceptively similar

Reasons/Quote: 

[This is] a situation where the highly descriptive nature of the second-level domain (“realestate”) makes a suffix such as “.com.au” essential to brand or name recognition…A real danger of confusion again arises because in the scanning process which may occur on a results page, some consumers will miss the indistinctive “I” (at [245]).

Decision: Deceptively similar

Reasons/Quote: 

[T]he essential feature of REA’s realcommercial.com.au trade mark [are the] words “realcommercial”…The same concocted words are prominent in Real Estate 1’s logo where they appear as the strongest element of the logo. Whilst there are differences in font, colour and the use and placement of the house device as well as the existence of additional features, those elements do not do enough…to avoid the real danger of deception or confusion created by the common essential feature (at [236]).

6.9 Type of customer

As was pointed out in Crook's Trade Mark, (1914) 31 RPC 79 at 85, a trade mark should not be barred from registration because “unusually stupid people, fools or idiots would be deceived”. A similar observation was made in Australian Woollen Mills Ltd v F. S. Walton & Co Ltd,  [1937] HCA 51 at 658, where Dixon and McTiernan JJ said 

The usual manner in which ordinary people 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. 
 

6.10 Type of goods and services

The nature of the goods and the market through which they will be purchased will affect the care with which purchasers will view trade marks on goods which they select. Generally the more expensive the items being considered the less likely the purchaser is to be deceived or confused by similarities between the trade marks under which they are sold. Similarly, highly technical goods would probably be purchased only by persons who would not be deceived by somewhat similar trade marks. On the other hand, goods such as soaps would be purchased by a large number of people who might well be deceived by seeing goods bearing a similar trade mark. 

The same principles would apply to services. A similar trade mark used in respect of shoe repair services provided by different enterprises is more likely to be a source of confusion than if the services were specialist medical services. 

Some pharmaceutical lines are available only on prescription, or are covered by other regulations such as Health or Food and Drugs Acts. In such cases the principles considered in  Bayer’s Application (1947) 64 RPC 125, may be applicable. In that case the marks under comparison were "Diasil" in respect of 'sulphadiazine' a pharmaceutical preparation available only on prescription, and  "Alasil" in respect of 'chemical substances prepared for use in medicine and pharmacy'. The fact that the goods covered by the mark "Diasil" were only available on a doctor's prescription was an important consideration in reaching the conclusion that the marks could co-exist on the Register. 

For further guidance in the consideration of this aspect of comparison, see: 

Vagisil where the context of the claimed goods and services was considered to determine the descriptive value of the shared VAG/VAGI element between VAGISIL and VAGISAN.  

and 

Jafferjee in which the use of trade marks stamped on flour sacks was considered to increase the likelihood of confusion.  
 

6.11 Trade marks in a language other than English

The usual tests for comparing word trade marks are applied when deciding whether words rendered in a non-English language are deceptively similar to trade marks already on the Register.  This applies whether the trade marks being compared are both rendered in Roman characters or in the letters or characters of any other system of writing, such as Chinese or Arabic. The visual, aural, and conceptual impressions of the respective trade marks must be considered in the context of the market for the goods or services.  

It must be kept in mind that Australia is a multicultural society and many languages are spoken or understood by Australian consumers. An assessment in each case should be made of the likelihood that the ordinary purchasers of the goods or services will understand the meaning and pronounciation of the non-English words constituting the trade mark. This will vary with the nature of the particular goods or services and trade marks as indicated by the following situations: 

• Visual and aural features of a foreign word will generally contribute more to the impression of a trade mark where the target audience are generally not speakers of the foreign language in question. In such cases, similarities in meaning between two marks is a less persuasive factor.  

• Similar meanings of respective trade marks under comparison may be a more persuasive factor where the target audience for the goods or services could include a significant number of speakers of a particular language. For example, the presence of an English language word and a foreign language word as the essential features of two trade marks both covering migration services, where the respective words have an identical or very similar meaning, may lead to confusion if the target audience includes many speakers of the relevant foreign language.  

• If the goods or services are very specialised and/or, expensive, considerable care would be exercised in their selection and purchase. In such circumstances even minor difference between trade marks might serve to differentiate the goods or services. 

• When comparing non-Roman characters and their transliteration (i.e. their Romanised phonetic equivalent), where both would be seen as reference to the same words, it may lead to deception or confusion. The reasons for this are that transliterations are usually phonetically similar, if not identical, to the original characters, and the meaning or impression of each would be the same to speakers of that language.

When the comparison is between a non-English language trade mark and an English language trade mark, the same principles apply. In general, except where the words are visually or aurally similar, the English translation of a non-English language trade mark will not be cited as the basis for rejecting an application under s 44. For example, RED MAN will not be cited against the French words ROUGE HOMME or the Chinese or Arabic characters meaning “red man”. 

6.12 Words and devices depicting words

A word and an equivalent pictorial representation may be found to be deceptively similar, based upon the fact that a person of normal intelligence and memory would retain and carry away the same overall impression. The examiner needs to consider the name and idea that would be associated with the particular device trade mark compared to the name and idea conveyed by the word trade mark.  A ground for rejection under s 44 will exist if when comparing the trade marks in question, the conclusion is that the name and idea conveyed are exactly the same.

In Constellation Australia Limited v Littore Family Wines Pty Ltd [2011] ATMO 47, when finding the following trade marks to be deceptively similar:

the Hearing Officer, in referencing Jafferjee, stated at 30:

The principle in [Jafferjee v. Scarlett] came down to the ‘idea of the mark’.  Whatever may be said of the competing ideas evident in the devices in Jafferjee, the only possible conclusion in the present opposition is that the idea of the applicant’s EMU device is “EMU”, precisely the same idea and name that would be associated with the opponent’s trade mark for the word EMU.

A contrary outcome can be seen in Wolter Joose on behalf of Joose Apparel Pty Ltd v Great White Shark Enterprises Inc [1999] ATMO 59 where the following trade marks were found NOT to be deceptively similar:

In that decision, the Hearing Officer states that whilst the ‘devices are definitely depictions of sharks…there is nothing to say that they are Great White Sharks’.