Under section 43 of the Trade Marks Act 1995 (Cth), trade marks will be rejected if they are likely to deceive or cause confusion. This article will step you through why an examiner may reject your trade mark application on these grounds.

A misleading or deceptive connotation

If we break section 43 down into parts, it becomes apparent that a trade mark will be considered deceptive or confusing in two instances:

  1. When it suggests a connotation, and
  2. When it contains a sign that is likely to deceive or confuse.

In addressing the former, it is important to note that the Act does not define the term “connotation.” Consequently, it is to be given its ordinary dictionary meaning.

In layman terms, a connotation will be said to arise when a trade mark, as a whole or in part, conveys a secondary meaning or an associated meaning to a thing, person or place.

For a connotation to warrant rejection, it must be obvious, direct, immediate and arise within the trade mark itself. It cannot arise by comparison to another mark. A mere possibility of confusion or suggestion that deception might occur is insufficient.

Ultimately, what must be established is that the mark would deceive or confuse an ordinary person/consumer.

Examples of when a trade mark may be deemed to be deceptive or confusing include:

  • when the trade mark suggests an endorsement, licence or approval of a person, which has not been granted,
  • when the trade mark uses a phone word and/or phone number of which the applicant is not the registered owner,
  • when the trade mark lists a domain name of which the applicant is not the owner, and
  • when the trade mark makes reference to a radio call signal or station frequency of which the applicant is not the owner and/or licensee.

A misleading or deceptive sign forming part of the trade mark

More often than not, trade marks contain descriptive materials, references to the geographical origin of the goods and alike.

By way of background, it is important to keep in mind that trade marks are registered under classes of goods and/or services. A trade mark will give its owner coverage in respect of the items forming part of the specification and associated items, but no others.

Accordingly, a trade mark that purports to refer to goods and/or services that are not covered by its specification will be deemed to be misleading and confusing to consumers. For example, registering the word EASYOFF for dishwashing liquid is covered by Class 3. You cannot then put on the label of your products, ‘EASYOFF makeup remover’ because your mark is unregistered for cosmetics.

There is, however, nothing to stop you from advertising EASYOFF makeup remover if you register the term for cosmetic products. Even though you have not specifically itemised the product in the trade mark’s description, it is a cosmetic product. As such, it will fall within the ambit of its specification.

Conclusion

If you would like to know more about deceptive and confusing trade marks, the likelihood of your mark proceeding to registration or simply want more information regarding the same, please get in touch! Our trade mark lawyers would be delighted to assist you and answer any queries that you may have.

Vanja Simic

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