Trade mark registration protects a sign used to identify your goods or services to consumers. A trade mark can be registered if it is distinctive, does not conflict with a trade mark with earlier rights, and is not prohibited. It can be a name, image, logo, slogan, colour, smell, sound, shape (or a combination of these things) so long as it is capable of being distinctive in this manner.

If you are applying to register a trade mark, the process from application to registration (which is at least a 7 months process) may not be straightforward nor without difficulties. For example, the trade mark examiner may issue an adverse report against accepting your trade mark application if you do not meet the necessary statutory criteria. One such criteria is section 44 of the Trade Marks Act 1995, which states that a trade mark application must be rejected if it is substantially identical with, or deceptively similar to, another trade mark registered by another person.

‘Deceptively Similar’ – What Does It Mean?

A trade mark is considered deceptively similar if it is likely to deceive or cause confusion. It is an issue of impression, whether consumers looking at two marks may be led to believe that the products or services in question come from the same source. When deciding whether a trade mark is deceptively similar to another, the trade mark examiner will consider a number of issues, including how a mark appears visually, how it may sound phonetically, the type of customer, and the type of goods and services sold by the owner of the marks.

How Can An Applicant Show That The Marks Are Not Deceptively Similar?

There are certain circumstances where applications may be accepted in the face of conflicting marks. These are:

  • honest concurrent use and other circumstances; and
  • continuous use of the trade mark subject of the application.

An applicant may be able to overcome an adverse report for conflicting marks by submitting supporting evidence to the trade mark examiner demonstrating these circumstances. Depending on the type of objection, the supporting evidence required may be extensive and include evidence on the duration of use, the market it is used in, costs and other expenses incurred to use or promote the trade mark, and any income derived from the trade mark.


Overcoming an adverse trade mark report can often be a difficult and time consuming process. If you are considering trade mark registration, it can be useful engaging an intellectual property (IP) lawyer early so they can assist you throughout the whole process. An IP lawyer would be able to assist with assessing whether it is likely that your trade mark may be subject to an adverse report, perform a conflict search, and provide other services that will ease your trade mark registration process. Our team of IP lawyers have extensive experience in this area and would be happy to assist. To speak with one of our IP lawyers today, contact LegalVision on 1300 544 755.

Lachlan McKnight
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