26.1. Introduction to section 44 and regulation 4.15A

Under section 44, an application for a trade mark must be rejected if the applicant's trade mark is substantially identical with or deceptively similar to:

• a trade mark registered by another person in respect of similar goods or closely related services, or similar services or closely related goods;

• a trade mark whose registration is being sought by another person in respect of similar goods or closely related services or similar services or closely related goods; and

• the priority date of the applicant's trade mark is not earlier than the priority date of the other trade mark in respect of the similar goods or closely related services, or the similar services or closely related goods.

When considering applications in terms of this section there are two elements of prime importance - the nature of the trade mark and the type of goods or services for which registration is sought. In many instances a trade mark which is identical with a previously registered trade mark may be registered for goods or services of a different description. In other cases, however, trade marks which are similar only in certain respects may not be qualified for registration for the same goods or services. Under the provisions of this section it is clear that an application for an identical trade mark for identical goods or services must be rejected. However, the provisions of subsections 44(3) and (4) may, in certain circumstances, permit the acceptance of trade marks which would otherwise be rejected under subsections 44(1) and (2).

Section 44 itself makes no reference to International Registrations Designating Australia (IRDAs) or Protected International Trade Marks (PITMs). Provision for considering a PITM or IRDA as a ground for rejection against a national filed application is made under regulation 4.15A which mirrors the requirements of section 44.   When an earlier conflicting PITM or IRDA acts as a barrier to the acceptance of a national filed mark, grounds for rejection are therefore raised under regulation 4.15A.  Provision is made under subregulations 4.15A(3) and 4.15A(5) for the acceptance of trade marks which would otherwise be rejected under subregulations 4.15A(1) and 4.15A(2).  

Given the similar operation and effect of the two provisions, a reference to section 44 in the rest of this Part is to be also taken as a reference to regulation 4.15A.  

• Part 28 Honest Concurrent Use, Prior Use and Other Circumstances

A trade mark can only be raised as a citation under section 44 if:

• it is substantially identical with or deceptively similar to the trade mark being examined, and

• it covers goods which are similar, services which are similar, or goods which are closely related to services, or services closely related to goods, covered by the application being examined, and

• it has an earlier priority date or the same priority date.

As long all three criteria apply, the citation may be a registered trade mark or pending application to register a trade mark.