Annex A1 - Citing multiple names

Date Published

As with any conflict between marks, citations in respect of this scenario will depend on the likelihood of the two trade marks being confused within the relevant market.  The tests for citation requires that there be a real tangible danger of confusion occurring if the two trade marks are used in relation to similar or closely related goods/services.  

To assist in making this decision, examiners need to consider the following:

  • the relative commonness of the surname (SFAS hits appropriate here)

  • the relative commonness of the given name

  • the goods or services in respect of which the trade marks are to be used – are they common mass produced items available in multiple outlets everywhere or are they an extremely specialised market?

  • any other considerations normally used when deciding section 44 matters


The following table sets out an appropriate approach:

Trade Mark 1

Trade Mark 2

Goods/services claim

Action and Reasons

Smith

John Smith

Commonplace goods/services.  Large market, easily accessed goods or services

Generally no need for citation.  
“Smith” is a very common surname and consumers are likely to expect similar goods and services of a commonplace variety to be available under the name “Smith” provided there are differences in the marks. Changes in given names involving these sorts of marks are likely to enable marks to co-exist in the market place without causing deception and confusion.

Smith

John Smith

Very specialised goods/services

e.g. manufacture of nuclear submarines

Citation likely to be appropriate.  
The market is more specialised and there is less expectation of multiple owners in such a market. Presence of a well known given name will not be significant enough to erode relevance of “Smith” and consequently there is more likelihood of deception and confusion occurring.

Brook

Michelle Brook

Commonplace goods/services. Large market, easily accessed goods or services

Generally no need for citation.  
Although “Brook” is not nearly as common as “Smith” it is still a fairly well known surname and similar principles apply.  There is little real, tangible danger of confusion between these two marks when used on commonplace goods.  However the situation may need to be reconsidered if the goods are more specialised.

Abercrombie

David Abercrombie

Commonplace goods/services. Large market, easily accessed goods or services

Citation likely to be appropriate.
“Abercrombie” is an unusual surname and therefore more memorable and distinctive than a commonplace one.  In this environment the addition of the common, given name does not change the identity of the marks sufficiently to prevent the probability of deception and confusion occurring in the marketplace.



Citations when one mark consists of a given name, and the other the name of a person incorporating the given name

Whilst it is common to identify a person or a person’s business by their surname it is not as common to use a person’s given name in the same way. Therefore a given name does not operate as a personal identifier in the same way as a surname. When comparing one trade mark consisting of a given name and the other a person’s full name incorporating that given name a real and tangible danger of confusion is less likely to occur between the trade marks.

In Tiffany and Company v Tiffany C Koury [2009] ATMO 68 the Hearing Officer considered a number of registered trade marks owned by Tiffany and Company all of which included the word 'Tiffany' as a common element and compared them with the applicant’s trade mark ‘Tiffany Koury’. The Hearing Officer found that although the word ‘Tiffany’ is a common element in all of the trade marks, when viewed as wholes the trade marks created very different impressions. The impression created by the ‘Tiffany’ marks was that of a surname or a female first name. Although ‘Tiffany’ is an identifiable word in the ‘Tiffany Koury’ mark it was not highlighted or presented in such a way that it would be seen as a dominant or memorable element of the mark.  It thus does not retain a trade mark identity within the mark but rather it presents as a female first name. The word Koury being an uncommon surname in Australia is likely to be the more memorable element. The combination ‘Tiffany Koury’ was found to be sufficiently different from the Tiffany and Company trade marks.

Notwithstanding the above, in very rare circumstances confusion may be considered likely when the first name is extremely unusual, has no other known meaning, such as an invented first name, and/or the surname has an additional meaning which is not memorable in relation to the goods/services. For example Zenon vs Zenon Butcher for Class 35 Retail of prepared meat products.




Citations when one mark consists of a given name and the other consist of multiple given names

When comparing a trade consisting of a given name and a trade mark that consists of two or more given names a real and tangible danger of confusion is less likely to occur between trade marks.

In making this decision examiners should consider:

  • The relative commonness of the given name;
  • The goods and/or services the trade mark will be used on, and the marketplace in which the goods or services are traded;li>
  • Placement or representation of the name in the trade mark;
  • Any other factors relevant to a decision of deceptive similarity.


In limited circumstances confusion may be considered likely when the given name between the marks is extremely unusual, rare, or otherwise memorable, such as an invented given name.

The following table includes examples using the above approach:

Trade Mark 1

Trade Mark 2

Goods/services claim

Action and Reasons

MARK

LUCA AND MARK

Commonplace goods/services

No Section 44

MARK is a very common given name. The additional name, LUCA, is the first word and more distinct element in the second trade mark. When used in relation to commonplace goods and/or services there is relatively little danger of confusion between the two trade marks.

CAMILLA

CAMILLA AND MARK

Commonplace goods/services

No Section 44

Although less common than MARK, CAMILLA is still a relatively common given name. The inclusion of the additional name MARK and use of the trade marks in relation to commonplace goods and services is sufficient to mitigate the danger of confusion between the two trade marks.

IVY

OLIVE AND IVY

Commonplace goods/services

No Section 44

Both IVY and OLIVE are relatively common given names. IVY and OLIVE also have additional meanings as types of plants. Having regard to the placement of IVY within the second trade mark, its relative commonness as a given name and the additional meaning inherent in the word, there is little danger of confusion between the trade marks.

SANDRINE

SANDRINE AND LOLA

Commonplace goods/services

Section 44 appropriate

SANDRINE is a relatively unusual name. In addition, SANDRINE is placed at the front of the second trade mark. Although the second trade mark contains the additional word LOLA, there is still likely to be a tangible danger of confusion between the trade marks.