6. Factors to consider when comparing trade marks

Date Published

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 page 279, line 30:

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: “ Rysta” case, 60 RPC 87; “ Cyllin” case, 64 RPC 119; “ Diasil” case, 64 RPC 125; “ Kleenoff” case, 51 RPC 129 and “ Ucolite” case, 48 RPC 477.

However, the findings of the above cases should be considered in the light of modern marketing methods. The Hearing Officer in Giorgio Armani S.p.A v Tiawan Yamani, 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 word trade marks, device trade marks or composite trade marks are similar to trade marks which are already registered, 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, while bearing this doctrine in mind, it must be remembered that the House of Lords, also in the “ Rysta” case, pointed out that this factor must not be too strongly emphasised. The words of Lord Greene MR at page 105 are:

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 the “ Alkaseltzer” case, 67 RPC 113 and 209; Jafferjee v. Scarlett, 57 CLR 115; the “Peanut” case, 80 CLR 65 and Lever Bros v. Abrams (Sunlight), 8 CLR 609.

6.3 The 'idea' of the trade mark

Although the two trade marks under consideration may contain many differences, a reason for rejection under section 44 could apply if they did in fact convey the same idea. (See Jafferjee v. Scarlett, [1937] HCA 36; (1937) 57 CLR 115). 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 engendered rather than by the specific features of the trade marks, use of the trade marks may lead to confusion. Grounds for rejection may then exist under section 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 (1999) 42 IPR 552).  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, which includes references to both the Sports Café and Cooper Engineering decisions – see 210 and 211.

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 assessment should be undertaken to establish the general overall impression that exists when comparing trade marks.

The Telstra Corporation v Phone Directories Company decision supports this at 212:

But the short point relevant to this case is that the commonality of idea is part of the process of determining if the marks look or sound alike

A review of the relevant authorities has been given in a Federal Court judgment by Wilcox J in Dial An Angel Pty Ltd v Sagitaur Services Systems Pty Ltd (1990) AIPC 90-687. In this infringement case it was 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. (See also de Cordova v Vick Chemical Co,. (“VapoRub” case) (1951) 68 RPC 103, Jafferjee v. Scarlett, (1937) 57 CLR 115; Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited (“ Rainmaster” and “Rain King”) (1952) 86 CLR 536).

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 Enoch’s Application, (1947) 64 RPC 119, VIVICILLIN : CYLLIN and Darwin’s Application, (1946) 63 RPC 1, MOREX : 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: BAREFOOT RADLER. In this case the trade marks were considered to be deceptively similar.

Decisions that have come from the Registrar include:

Marks being compared

Decision

Reasons/Quote

Eau De Cologne’s Application (1990)17 IPR 540

MY MELODY DREAMS

VS

MY MELODY

Deceptively Similar

Reasons for this decision include that the impression created is that ‘goods bearing the trade marks are different products in the same product range from the one trade source’ at 542.

Re Application by Coles Myer Ltd (1993) 26 IPR 577

BRATS

VS

BONZA BRATS

Deceptively Similar

Reasons for this decision include that the word BONZA is a widely known colloquialism which acts solely as a qualifier of the word BRATS in the trade mark BONZA BRATS at 579.

Jockey International, Inc v Darren Wilkinson [2010] ATMO 22

JOCKEY

VS

THROTTLE JOCKEY

Sufficiently Different

Reasons for this decision include that ‘THROTTLE JOCKEY gave rise to an entirely different connotation, construction and interpretation than the word JOCKEY’ at 39.

Chris Kingsley v David Scott [2011] ATMO 20

REBELLION

VS

SOUL REBELLION

Sufficiently Different

Reasons for this decision include that 'SOUL REBELLION has an ordinary dictionary meaning which is unlikely to be confused or associated with the word  REBELLION by itself' at 15.

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 convey significantly different impressions.

A finding of deceptive similarity in wholly contained trade marks is not automatic and may depend on a number of factors. These include:

  • The extent to which the shared element has retained its identity as an essential feature of the trade marks (See: Bulova Accutron Trade Mark [1969] RPC 102 (Ch D).

  • 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.

  • 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 (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: 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.

  • 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)

  • When both the common element and additional element are distinctive – each case will turn on its own facts. See BAREFOOT:BAREFOOT RADLER. E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 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?)


6.5 Marks with a degree of notoriety or familiarity (the Metro case)

The reputation and notoriety of a trade mark generally should not be considered for the purposes of section 44. The relevance of reputation and notoriety considerations to section 44 has been considered by the court a number of times. Guidance can be taken from the cases discussed below.

In Registrar of Trade Marks v Woolworths Limited, (Metro) 45 IPR 411, the marks under comparison were several marks consisting of the word "Metro" and an application filed by Woolworths Ltd consisting of the words "Woolworths Metro". The case was decided on its particular circumstances, Justice French agreeing with the primary judge that:

Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the marks from the viewer's perception of them. For in the end the question of resemblance is about how the mark is to be perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without recognition of its notorious familiarity to consumers.

In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539, the Full Federal Court when considering deceptive similarity in the context of infringement suggested that no new principle was involved and the earlier binding authorities still apply. Considerations of notoriety may be relevant as an element of imperfect recollection, such that a truly notorious mark is less likely to be wrongly recalled. This highlights the exceptionally narrow application of the proposition.

In Pfizer Products Inc v Karam [2006] FCA 1663 Gyles J stated at [50]:

I am by no means satisfied that it is appropriate to take reputation into account for the purposes of the comparison relevant for s 44 … Section 60 brings in reputation. I am not persuaded that what was said by French J in Woolworths at [61] is sufficient to alter the test for s 44. There is support for the use of reputation in connection with infringement … It is not clear that, if correct, this is to be imported into s 44.

In Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207; 268 FCR 623 the Full Federal Court stated:

The limited proposition which the Court accepted Woolworths stood for was not that reputation is relevant generally to deceptive similarity.  That is what was being rejected.  It was a proposition that deceptive similarity from imperfect recollection might be countered by showing the well-known nature of the registered mark and the lessened likelihood of imperfect recollection.

The Metro decision has therefore not been interpreted by subsequent decisions as authority for the proposition that reputation is relevant generally to deceptive similarity.

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. The remarks of Farwell J in the “ Erectiko” case, 52 RPC 136 at p. 153, apply in this regard:

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.

See also the comment of Astbury J. in the “Regimental” case, 35 RPC 185, p 195:

A distinctive invented or fancy word has a much wider scope for colourable imitation than a word primarily descriptive.

The above may not necessarily apply to a comparison between short invented words. For example, in the “Jendi” decision, the delegate commented:

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.

(Opposition by FENDI PAOLA & S.LLE S.a.S to the registration of Trade Mark 473729)

6.7 The descriptiveness of the trade mark

In many trade marks, the trade mark or part of the trade mark indicates the goods or types of goods which are covered by the trade mark. The presence of disclaimed material in a trade mark should not be discounted when comparing trade marks. However, non-distinctive matter (whether disclaimed or not) is less likely to be taken as an indication of the origin of the goods or services, and it is therefore usually appropriate to pay less attention to it than to the distinctive feature(s), when comparing marks.

The fact that trade marks contain an element of descriptiveness or disclaimed matter, however, does not affect the question of deception or confusion. In the “Kleenoff” case, 51 RPC 129 at p. 144, Maugham J. stated:

My view is that the test of infringement where the mark has a descriptive element is the same as the test where it has no descriptive element except so far as the descriptive element is itself common to the trade.

See also the remarks of Sargant LJ in the “Ustikon” case, (1927) 44 RPC 412 at p. 425:

And though it may be urged that this (confusion) would be at least partly due to the adoption by the Plaintiff of a mark to describe a quality of the goods which is common to both sets of goods, I do not think that this common element sufficiently explains or justifies the similarity in name.

To some extent a descriptive tinge may limit a proprietor's rights; see in this regard the observations of Maugham J in the “Ucolite” case, (1931) 48 RPC 477 at p 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.

Decisions that have come from the Courts or Registrar include:

Marks being compared

Decision

Reasons/Quote

Empire brands Pty Ltd [2010] ATMO 129

KATHMANDU QUICK DRY

&

VS

 &

 & 

Deceptively Similar

Reasons for this decision include:

Despite the presence of the word KATHMANDU in the cited trade marks and the presence of devices in the applicant’s trade marks, these differences do not outweigh the similarity between them. This similarity comes from a shared identity (reflected in look, sound and commonality of idea) deriving from the words QUICK DRY…. the fact that the public would likely identify the applicant’s trade marks by reference to the same very prominent words which it would also use to identify the cited trade marks means that they are certainly deceptively similar. For the purposes of section 44, this finding exists quite separately from the indisputable observation that the words common to all four trade marks have rather more than a ‘tinge’ of descriptiveness about them at 21.

Mount Everest Mineral Water Limited [2012] ATMO 65


(1374645)

VS


(1220980)

Sufficiently Different

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.

REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559


VS

Sufficiently Different


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.

VS

Deceptively Similar

[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.

VS

&

​​​​​​​

Deceptively Similar

[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.

6.8 Type of customer

As was pointed out in Crook's Trade Mark, (1914) 31 RPC 79 at page 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) 58 CLR 641 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.

6.9 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 the “Diasil” case, (1947) 64 RPC 125, may be applicable. In the "Diasil" case the marks under comparison were "Diasil" in respect of 'sulphadiazine' a pharmaceutical preparation available only on prescription, and the mark "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.

Unless special circumstances relating to control in the sale of goods are shown to exist, the principles applied in the “Andramine” case, AOJP Vol 31, No 36, p 2218 should be maintained. For further guidance in the consideration of this aspect of comparison, see Pears Ltd v. The Pearson Soap Co. Ltd, 37 CLR 340; Lever Bros v. Abrams, 8 CLR 609; Jafferjee v. Scarlett, 57 CLR 115.

6.10 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 and whether there is a reason for rejection under section 44. This applies whether the trade marks being compared are both rendered in Roman characters or in the letters or characters of any system of writing, such as Arabic or Chinese.

The visual or aural comparisons described in, for example, Pianotist Co's Application (23 RPC 774) should be made, together with considerations as to the nature of the goods or services specified and the way in which they are marketed. Most importantly, an assessment should be made of the likelihood that the ordinary purchasers of the goods or services will understand the meaning 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 examples.

  • If the goods are mass marketed, for example, clothing or foodstuffs, the purchase may be made largely on the basis of visual selection. The trade mark may be part of packaging which displays other similar textual material and the purchaser may be part of the general monolingual Australian public. In such a case the meaning of the respective trade marks would be irrelevant, so the main tests would be visual and phonetic (if verbalisation of the trade mark is possible). In so far as Arabic and Asian characters are concerned consumers who are not literate in these languages would be expected to pay particular attention to the graphics involved.   

  • Newspapers, books and similar publications, or professional services, such as medical or legal services, for which a trade mark comprised wholly of a non-English language is to be used, are unlikely to be purchased by the general Australian public. They will be targeted towards a particular sector familiar with that language. The meaning of the word or words comprising the trade mark must therefore be taken into account, as well as the visual and phonetic similarities. If the meanings are quite different, it is much less likely that visual or phonetic similarities will lead to deception.

  • 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 Romanised phonetic equivalent, where both would be seen as reference to the same words, it may lead to deception or confusion.


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 equivalent of a non-English language trade mark will not be cited as the basis for rejecting an application under section 44. For example, RED MAN will not be cited against ROUGE HOMME or the Chinese or Arabic characters meaning “red man”.

6.11 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 section 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 v. Scarlett ([1937] HCA 36; (1937) 57 CLR 115), 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’.