Trade mark registration is an important part of growing your business. A trade mark is a sign you can use to identify your goods or services and distinguish them from others in the market. When registering your trade mark, your brand name or logo will be assessed by IP Australia before it is accepted. IP Australia will reject trade mark applications if they are substantially identical or deceptively similar to a pre-existing trade mark. If your trade mark is rejected on this basis, there are strategies and solutions to overcome the objection. This article will explore what rejection means and what options may be available to you.

Substantially Identical and Deceptively Similar

Substantial identity and deceptive similarity are legal tests used by IP Australia. They use them when comparing two similar trade marks within the same industry.

When testing if two marks are substantially Identical, they are compared side by side. Here, IP Australia analyses the importance of their similarities and differences and essential features.

If the trade marks are not substantially identical, they are then assessed for deceptive similarity. The test for whether marks are deceptively similar is 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 test.

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

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

Before selecting your trade mark, it is important to search the trade mark register for similar brands in your industry. A lawyer or trade mark attorney can assist with this step.

Once you have conducted a search, you can determine the similarity of the 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 the goods or services will be sold. 

When considering the above circumstances, if you determine that there will be confusion surrounding the origin of the goods or services in the minds of the public, the marks will likely be too similar.

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

In certain circumstances, you can overcome objections that your trade mark is deceptively similar or substantially identical to another. Here, you need to show that your trade mark: 

  • existed prior to the conflicting 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 mark.

To prove honest concurrent use, you can provide evidence that you created your mark honestly without knowledge of the conflicting mark. Further, you can prove that your mark has been used concurrently alongside the conflicting mark with no instances of public confusion.

In addition, you may also be able to use one of the below strategies to overcome an objection if you are unable to 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 mark; or
  3. applying to remove the conflicting mark for non-use.

These strategies carry risk, and you should treat them with caution.

Key Takeaways

Overcoming an adverse trade mark report can often be a difficult and time-consuming process. If you are considering trade mark registration, you need to ensure that it does not conflict with an existing mark. You can do so by searching the trade mark register and then making any changes to your mark to ensure it does not conflict with another. If you have any questions about gaining assistance on doing so, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

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