26.1. Introduction to section 44 and regulation 4.15A

Section 44 is intended to prevent registration of trade marks if the use of the two trade marks in the market would likely lead to confusion.  

Under s 44(1) or (2), 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; OR
• 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.

The two key enquiries under s 44 are whether the respective trade marks are substantially identical or deceptively similar, and whether the respective goods/services are similar or closely related. A ground for rejection can be raised regardless of whether the earlier trade mark is registered or is subject of a pending application.  

Section 44 allows co-existence of substantially identical or deceptively similar trade marks for dissimilar or unrelated goods and services.  

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 s 44 in the rest of this Part is to be also taken as a reference to regulation 4.15A.   

The provisions of subsections 44(3) and (4) may, in certain circumstances, also permit the acceptance of trade marks which would otherwise be rejected under subsections 44(1) and (2). 

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