Beware ‘confusingly similar’ trade marks

It will be difficult to register a trade mark in Australia if it is ‘confusingly similar’ to something already registered. Likewise, you may infringe a registered trade mark by using something that is ‘confusingly similar’ to it. But, what does this actually mean?

While it’s common to use the term “confusingly similar”, the legal terms under Australian trade-mark laws are ‘substantially identical’ and ‘deceptively similar’. If the two trade marks are not identical, then they will be compared side by side, noting the similarities and differences to determine if they are substantially identical. If the trade marks are not substantially identical, then consideration will be given as to whether they are deceptively similar. Section 10 of the Trade Marks Act 1995 sets out that:

“a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.”

The same general rules could be applied when trying to determine if a trade mark is being infringed by another person’s use. Ultimately, ask yourself whether a reasonable and normal person would likely confuse the two trade marks because of their similarities (in terms of look, sound, impression, idea etc.) and the types of products or services that they are being used to identify. If the answer is yes, then there is a real chance that they would be considered “confusingly similar”.

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During government examination, examiners must consider many factors when determining the deceptive similarity of trade marks. Some of the main considerations include:

• Sound as well as appearance of a mark: e.g. words that sound similar or the same, but are spelt differently, and the possibility of slurred pronunciation or distorted sound when spoken.
• Imperfect recollection: Can a reasonable person who may be familiar with the already-registered mark recollect it in such a way that it would be confused with the newer mark?
• Idea of the mark: Two trade marks may be considered deceptively similar if they convey the same idea to the general public, even if they look or sound different.
• Marks within marks: If one trade mark incorporates the essential or identifying feature of another, then confusion may still be likely.
• Marks with a degree of fame: Where some feature of a trade mark is famous to the point of being inseparable from other features of the mark from the viewer’s perception. For example, the name Woolworths could not be assessed without recognition of its notorious familiarity to consumers (even if this was forming just one part of a trade mark).
• Invented words: An invented word is thought to ‘stick’ in a customer’s mind more easily than non-invented words and therefore there is a higher chance of confusion when an invented word is at a play.
• The descriptiveness of the mark: A lot of trade marks include descriptions of the goods/services covered by the trade mark; however, where the main portion of the mark is the same or similar to an existing trade mark, different descriptions will often not be sufficient to avoid a ‘deceptively similar’ finding.

And the list goes on. As you can see, there are many considerations that examiners must go through when deciding whether a new trade mark is deceptively similar (or confusingly similar) to an existing trade mark, and there’s a chance their opinion or conclusion of these could be subjective.

The more of these factors you believe applicable to your name, logo or other ‘sign’, the higher the chance your trade mark will be found as deceptively similar to an existing trade mark.

The main thing to keep in mind is: comprehensive trade-mark searches – carried out before you commence trading or promoting – can help determine whether existing marks are likely to be seen as deceptively similar to your own.

Have you had experience with a deceptively similar trade mark, or do you suspect a trade mark is confusingly similar to your own?