26.5. Similarity of trade marks

Date Published

Subject to the consideration of the goods or services, the existence of grounds for rejection under section 44 will depend on whether the trade marks under consideration are “substantially identical” or “deceptively similar”. It must be assumed that the trade marks will be used normally and fairly in respect of all the goods or services for which they are registered or for which registration is being sought. Once it has been decided that there is a nexus of similarity between the goods and services claimed, the question of whether or not to cite will depend on the similarity of the trade marks.

5.1 Substantial identity and deceptive similarity

It is sometimes difficult to provide firm rules to determine when or when not to cite a trade mark on the basis of its similarity to a trade mark with an earlier priority date.  It comes down to a question of whether one trade mark is so similar to another that public confusion is likely to arise if both trade marks are applied by different persons in relation to similar goods or similar services or closely related goods and services. By its nature, this must be a matter of subjective judgement. Nevertheless, over the years the courts have laid down certain principles which serve as very useful guidelines.

When comparing trade marks under section 44, two questions must be considered:

  • are the trade marks substantially identical?

  • are the trade marks deceptively similar?

The question of whether trade marks are substantially identical or deceptively similar are independent of each other, and are judged in different ways. The tests for determining substantial identity and deceptive similarity are set out by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.....On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

Thus, if the trade marks are not identical, then consideration should be given as to whether they are substantially identical. The trade marks are compared side by side, noting their similarities and differences. The importance of these should be assessed; taking into account the essential features of the earlier trade mark and the total impression of resemblance or dissimilarity that comes from the comparison.

Essential features are the elements which form the identity of the trade mark.

“Dominant cognitive cues” is an analogous term, as explained in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [51]:

There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.

If in a side by side comparison the essential features of the compared marks create a total impression of resemblance they are considered to be substantially identical.

If the trade marks are not substantially identical, the consideration should now be whether they are deceptively similar. When considering whether trade marks are deceptively similar, the trade marks are not compared side by side. The test now is the impression left by the marks. The comparison is a general recollection or impression, bearing in mind that the impression is to be taken in the context of the ordinary purchaser of the goods or services.

5.2 Comparison of word trade marks

The principles governing the comparison of word trade marks are succinctly stated by Mr Justice Parker in the Pianotist Co.'s Application to register the word “ Neola”, registration of which was opposed by the proprietors of the trade mark “ Pianola” (23 RPC 774). At page 777 he said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.

These are the basic guidelines for comparison of word trade marks, which call for consideration of appearance and sound of the words, the nature of the goods and the kind of customer, and finally all the surrounding circumstances. Depending on the particular trade marks which are being compared, any of the guidelines in the following section may also apply. A number of early Australian cases have provided further principles specifically in respect of comparison of word trade marks, see “ Mulsol” case, 41 CLR 475; “ Dettol” case, 70 CLR 84; “ Rainmaster” case, 86 CLR 536; “Minties” case, 40 CLR 43; “ Ditrene” case, 78 CLR 601 and the “ Cesarine” case, 58 CLR 641.

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