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A trade mark is a sign used to identify your goods or services and distinguish your brand from others in the marketplace. As such, applying to register your trade mark is an important step in ensuring you can take action if another business copies a feature of your brand.

IP Australia administers the application and registration process for trade marks. Therefore, suppose your trade mark application is deceptively similar or substantially identical to an existing trade mark on the trade marks register. In that case, IP Australia will raise some objections against the newer application. However, you can utilise some strategies to overcome any objections noted by IP Australia.

This article will outline what happens if you have a trade mark that conflicts with a previously filed trade mark.

Substantially Identical and Deceptively Similar Trade Marks

IP Australia implements the tests of ‘substantial identity’ and ‘deceptive similarity’ when comparing two or more trade marks. 

When determining whether the trade marks are substantially identical, they are compared side by side. Here, IP Australia analyses the importance of their similarities and differences and considers each trade mark’s essential features.

If the trade marks are found not to be substantially identical, they are then assessed for deceptive similarity. This test involves analysing whether an ordinary person would think the marks are deceptively similar based on the impression they leave.

Below is an example of trade mark comparisons using the above tests.

Trade Mark 1

Trade Mark 2

Outcome

APOTHECARY GIN

Spirits

APOTHIC

Alcoholic beverages

Not Deceptively Similar

AQUA SMILES

Dentistry, dental services

AQUA DENTAL

Dental services

Deceptively Similar

Similarity of Goods and Services

Additionally, IP Australia also considers how closely related the goods and services are between trade marks in comparison. The more closely related the goods or services are between two similarly represented marks, the more likely the later trade mark will conflict with the earlier trade mark. Conversely, two similarly represented trade marks may be individually capable of registration and co-existence in classes of goods or services that have no similarity.

Goods

The primary criteria for determining similarity between goods are as follows: 

  • the nature of the goods;
  • the respective uses of the articles; and
  • the trade channels through which the commodities are respectively bought and sold.

Services

The criteria to determine the similarity of services are also similar to those listed above regarding goods. The criteria are as follows:

  • the nature and characteristic of the services;
  • the origin of the services;
  • the purpose of the services;
  • whether the services are usually provided by the same business or person;
  • whether the services are provided from the same sources, in the same area or district, during the same season or concerning the same related goods or services and to the same class or classes of customers; and
  • whether the services are regarded as the same by those who provide them.

However, this is not an exclusive criterion as other factors may be considered when comparing goods and services between trade marks. 

When examining similarities between ‘closely related’ goods or services, IP Australia generally considers what the ordinary consumer perceives and expects. This includes taking into account a generic understanding of the goods or services provided and the relevant marketplace setting. Specifically, IP Australia may consider the: 

  • circumstances in which you will use the trade marks;
  • circumstances in which the goods or services will be bought and sold;
  • character of the consumers of the goods and services.

Despite sharing similarities in representation, it is equally possible for two or more trade marks to co-exist on the register. IP Australia considers a variety of factors and external considerations when reviewing trade mark applications as summarised above.

Does My Mark Conflict With a Pre-Existing Trade Mark?

Before selecting the final representation of your trade mark, it is important to conduct a preliminary review of IP Australia’s database for any similar trade marks. A lawyer or trade mark attorney can assist with this step.

Once you have searched, you can determine the similarity of the trade marks by:

  • judging both brand names or logos by their look and their sound;
  • comparing the similarity of the industries they are in;
  • considering the kind of customer who would likely buy those goods or services; 
  • considering the surrounding circumstances in which you will sell the goods or services. 

When considering the above circumstances, if you determine that there will be confusion surrounding the origin of the goods or services in the public’s mind, IP Australia might determine the trade marks as too similar.

It is important that you do not just search for identical trade marks. This is a common mistake. For example, suppose you intended to use ‘BLACKWALL CONSTRUCTION’ as your business name. In that case, you should search for ‘BLACKWALL’ on its own, and any other similar visual and phonetic variations, instead of only searching for ‘BLACKWALL CONSTRUCTION’ as a whole. 

How Can You Prove That Your Trade Mark Is Not Too Similar?

If your trade mark is deceptively similar or substantially identical to one or more other trade marks, you can overcome the objection in certain circumstances.

Here, you may need to show IP Australia that your trade mark: 

  • existed before the conflicting trade mark; or
  • honestly and concurrently operated alongside the conflicting mark without any issues. 

To prove your prior use of the mark, you can provide evidence that you have used your trade mark at a date earlier than the filing date of the conflicting trade mark. To prove honest concurrent use, you can provide evidence that you honestly created your trade mark without knowing the conflicting trade mark. Furthermore, you can prove that your trade mark has been used concurrently alongside the conflicting trade mark with no instances of public confusion.

In addition to the above strategies, you may also be able to use one of the below options to overcome an objection if you cannot provide enough evidence to support your claim. This includes:

  1. amending your goods and or services so that they no longer conflict;
  2. seeking consent to co-exist with the owner of the conflicting trade mark; or
  3. applying to remove the conflicting mark on the basis that it has not been used in Australia for the goods and services listed in the registration.

It is important to remember that all of the strategies mentioned above carry some risks, and you should be mindful of this. It would be prudent to seek advice from a lawyer or trade mark attorney to gain advice on the best approach.

Key Takeaways

Overcoming objections against your trade mark can be a difficult and time-consuming process. If you are considering applying for a trade mark, it is worthwhile running some pre-filing searches and determining any risks associated. A brief pre-filing risk assessment can be conducted by searching IP Australia’s database or seeking assistance from a lawyer or trade mark attorney to do this on your behalf.

If you need help with trade mark registration, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions

When will a trade mark be insufficiently unique for registration?

When assessing uniqueness, IP Australia will consider whether two trade marks are substantially identical or deceptively similar. They use various criteria to determine this.

What evidence can I provide if my trade mark is deemed identical or similar to an existing trade mark?

You can show evidence that your trade mark existed before the conflicting trade mark, or that you are an honest concurrent user.

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