2. Presumption of registrability and the application of section 44

Date Published

A presumption of registrability applies to section 44 of the Act. In line with this philosophy, citations should be carefully considered before they are raised as a ground for rejection. A ground for rejection should only be raised if the examiner is satisfied on the balance of probabilities that a ground exists. If the examiner is not satisfied that the goods or services are similar or closely related, this should be decided in the applicant’s favour. Similarly, in comparing the trade marks a critical approach should be adopted in reaching the conclusion that they are substantially identical or deceptively similar. This does not represent a significant change in the approach previously taken in examination under section 33 of the repealed Act except that the onus of proof is no longer on the applicant. Examiners should therefore only raise a citation where there is a clear nexus of similarity between the goods or services claimed and they have good reason to believe that deception or confusion is likely if the marks in question are used by the different proprietors in relation to those goods or services.

In Registrar of Trade Marks v Woolworths Limited 45 IPR 411 ("Metro"), Justice French reinforced this view pointing out that the position now is that the Registrar needs to be satisfied that there is a reasonable likelihood of deception or confusion before denying acceptance of an application.

French J referred to the tests set out in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592, where Kitto J set out a number of propositions often used to assess the likelihood of deception or confusion. French J found that the propositions can be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show that a real tangible danger of deception and confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods and services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of goods and services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.