29.1. Trade marks likely to deceive or cause confusion

Section 43 of the Act reads as follows:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The application of section 43 is, by the wording of the section, mandatory. There is, therefore, no discretion to accept a trade mark that is caught by the provisions of this section. However for a trade mark to be caught by these provisions it is necessary for a decision maker to be clearly satisfied that use of the trade mark for the specified goods and / or services would be likely to deceive or cause confusion.

If the trade mark, or some part of the trade mark, contains a connotation that would be likely to deceive or confuse consumers within the relevant market, then a ground for rejection should be raised.

​​​​​​​1.1 Geographical indications for wine

For details of examination practice relating to class 33 applications see Part 32B.

• Part 32B - Examination of Trade Marks for Wines (in class 33)

1.2​​​​​​​ Plant variety names

If a trade mark contains or consists of word/s which connote a particular plant variety or other plant name, and is applied to plants or plant materials of the same or a closely related genus, it is likely to deceive or cause confusion as to the true nature of those plants or plant materials and a ground for rejection under section 43 of the Act will be appropriate.

For details of practice in examination of applications for registration of trade marks covering plants and/or plant materials in class 31 see Part 32A.

• Part 32A - Examination of Trade Marks for Plants (in class 31)​​​​​​​