31.3. When does a ground for rejection exist under subsection 39(2)?

Subsection 39(2) is expressed in discretionary terms, stating that the Registrar ‘may’ (not ‘must’) raise a ground for rejection. 

The circumstances the Registrar must consider in exercising the discretion are not listed. However, it is in the public interest that signs are not used in a way that may give rise to a real, tangible danger of confusion amongst the public that there exists a state of affairs or connection that does not in fact exist. As such, and taking into account the presumption of registrability, a ground for rejection will generally only be appropriate under  subsection 39(2) if a trade mark contains or consists of one or more of the signs prescribed and the presence of that sign would be likely to confuse the relevant public as to whether:

• the goods and services bearing the trade mark have a particular status given by legislation, or
• there is a connection between the applicant and the person, body, or organisation with whom the sign is associated.

For example, presence of the prescribed sign may cause a member of the public to wonder whether a trade mark or the goods upon which the trade mark appears is patented or is subject to copyright protection.  It could also suggest a false connection between the user of the trade mark and a particular organisation, person or governing body. That connection might include a direct implication of trade origin, sponsorship, patronage, permission or approval of the goods or services in respect of which the trade mark is used.

In practice, a ground for rejection will be raised if the Registrar is satisfied that use of a trade mark containing or consisting of a prescribed sign would give rise to a likelihood of confusion. However, the Registrar can also consider raising grounds for rejection in other circumstances where it may be appropriate to do so.  

3.1 In considering whether the public would be confused the following factors should be considered:

• With what person, body, organisation, etc. is the sign associated?
• With what activity is that person, body, organisation, etc. associated?
• Does that person, body, organisation, etc. produce the goods and/or services?
• Would that person, body, organisation, etc. be associated with particular goods or services because of the nature of their activities?
• Who constitutes the “public” who will purchase the goods or services to which the trade mark containing or consisting of the sign is to be applied?
• Would that “public” know of that person, body, organisation, etc. and its activities or goods and services?

After considering the above factors, another question needs to be asked:  is use of the trade mark likely to cause confusion? If the answer is “NO” (or not clearly “YES”), no ground for rejection should be raised.

3.2 If the answer to the question is clearly “YES”, further consideration may be given to the prominence of the sign in the trade mark. Could the sign be deleted without affecting the identity of the trade mark? If the answer is “YES”, the ground for rejection should be raised and the applicant advised that it may be overcome by deleting the offending part of the trade mark. For example, if the trade mark includes the © or ® symbols clearly used for the purpose of claiming trade mark registration or copyright in content, deleting the symbol will not affect the identity of the trade mark and therefore would be allowable. Consent to such an amendment would overcome the ground for rejection. Of course, if the offending word or symbol is so prominent that deleting it would affect the identity of the trade mark the ground for rejection will be maintained.

3.3 An applicant may be able to overcome a ground for rejection in terms of subsection 39(2) if they can establish they have the permission of the relevant body to use the sign in relation to the goods and/or services of the application and there is no time limit on that permission.