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Deceptive Similarity of

Trademarks

The following recent decisions provide an indication of those trade marks the Trade Marks Office and the Courts have held to be deceptively similar or not deceptively similar: . dilute or damage brand reputation. which are also applied by Examiners at IP Australia in assessing deceptive similarity.unauthorized use of a deceptively similar trade mark forms the basis of an infringement action COMPARISON OF TRADE MARKS Case law in relation to trade mark infringement has developed certain 'rules of comparison' and underlying tests. or allow competitors to 'free-ride' off another trader's established reputation. Trade marks that are too similar may confuse consumers into purchasing unwanted brands.Deceptive Similarity of Trademarks 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. When does the investigation of deceptively similar trademarks arise? The question of whether two trademarks are deceptively similar may be a key issue at a number of points during the life of a trade mark:  When choosing a new trade mark  When searching availability of a trade mark for use and registration  When prosecuting a trade mark application. an application may be refused if a deceptively similar trade mark is already registered or applied for  During opposition the registration of a trade mark may be opposed by the owner of a deceptively similar trade mark who has used their trade mark before the applicant  Infringement .

Deceptively similar trade marks Not deceptively similar trade marks .

pharmaceuticals or expensive products.The tests applied in the above examples: Visual comparison Visual impression is important where products are displayed on shelves. because the marks create very different impressions and are unlikely to be confused for each other or viewed as belonging . particularly where there is little or no staff intervention during the sales transaction. regard may be had to the following: The degree of similarity For example. the majority of the word is the same. However the trademarks ENOVA and EUNOVA were considered dissimilar because the critical placement of the letter "U" creates fundamental visual and phonetic differences. For this reason the VEGETA trade mark was not considered deceptively similar to ARGETA. This is based on the presumption that consumers may have an imperfect recollection of a trade mark and therefore confuse it with another if it is usually too close. closer visual similarity may be tolerated as there is a reduced likelihood of confusion between two products occurring. middle and end of word trade marks It is generally held that the beginning of a word trade mark is the most prominent and memorable for the purpose of usually differentiating between trademarks.g. The trade marks TIFFANY & CO and TIFFANY KOURY were allowed to co-exist in the market and on the Trade Marks Register. HAFT was refused registration in the face of TAFT. The initial overall impression and then recollection of the trade marks The trade marks must be considered in their entirety. Comparison of the beginning. e. require close inspection of the brand. In comparing the appearance of trademarks. because the trade marks differ only in their initial letters. In circumstances where the nature of the products.

whereas.to a family of "TIFFANY" trademarks i. Shared element There are cases where trademarks which share a feature may suggest to customers that they are in some way related. of the Opponent's Trade Mark. VITA FRESH. For example the unique device element and fancy script contained in the trade mark . and on the face of it an inherently distinctive feature. VITAFRUIT and VITAVEG have been allowed to co-exist on the Register and in the food and beverage market on the basis that the descriptive or laudatory words such as PLUS. for example suggesting a new version or an extension of a previously existing product range. FRESH.e. TIFFANY & CO creates the impression of a company or commercial entity. enhancing the visual differences. FRUIT and VEG added something to the word VITA per se. the Applicant is effectively seeking to adopt an essential feature. The Registrar refused registration of the trade mark POSH PUPPY in the face of HUSH PUPPIES because “whether consciously or not. there are numerous registrations co-existing in Australia featuring the word VITA for food and beverages. For example. However. It therefore follows that trademarks such as VITA PLUS. namely the element PUPPIES (or PUPPY)". TIFFANY KOURY is a female name. The way the mark is presented A mark may be more easily differentiated if it is presented in a stylized get-up or logo. the Courts and the Trade Marks Office recognize that where a shared element between trademarks is either a common or non-distinctive element. it is necessary to pay more attention to the parts of the trade marks being compared that are not common.

Phonetic comparison A phonetic comparison of trademarks is important to avoid confusion in relation to television and radio advertising. notwithstanding the marks shared the element "DYNA-". and goods ordered over the telephone.Was sufficient to determine the trade mark not to be deceptively similar to CITIFINANCIAL. Consideration must be given to the tendency for people to slur the endings of words. The DYNASPEC and DYNAPAC trade marks were considered sufficiently different. While the trade marks FERRARI SHOP and DIANA FERRARI share the word "Ferrari". refers to a shop. the interpretation of a particular device may render the trade mark not deceptively similar. In this case CRAZY RON was not considered deceptively similar to a composite picture mark of which the words CRAZY JOHN was only one of several prominent elements. As the Full Court Federal Court of Australia noted in Crazy Ron's 17. In Sports Café Ltd v Registrar of Trade Marks 18. The Registrar decided that the suffices 'SPEC' and 'PAC' were phonetically distinct. over-the-counter purchases. The 'idea' conveyed by each trade mark If trademarks convey different ideas this should reduce the risk of confusion. while FERRARI SHOP. the overall impression of each trade mark were considered different as. so that even though words may be deceptively similar. abbreviate words. different considerations apply to a word mark and a mark that includes a distinctive device. and weight given to strong syllables in words. DIANA FERARI is the name of a person. the Court decided that following trade marks were deceptively similar: .

In the "HUGGIE" MUMMY/HUGGIES case the fact the products were toddler clothing and toys. By contrast. For this reason TIFFANY KOURY was not considered too close to TIFFANY & CO for luxury clothing and accessories. which affords closer scrutiny of the brands. It is this test which led the Office to conclude that HAFT and TAFT may be easily confused. Nature of the products and services Generally the cheaper the product being sold. which are likely to be bought quickly on a recurrent basis led to the decision that customers would rely on the essential brand "HUGGIE" as a product identifier and "HUGGIE" MUMMY was therefore deceptively similar to HUGGIES. . speciality or expensive items are not likely to be purchased hastily or without due consideration. For example. hair care products are not always purchased carefully. three out of four words of the marks are the same. and ultimately the Court decided that it was beyond doubt that both marks expressed the idea of sports. the greater the risk of a purchaser being confused by similarities between the trademarks. so consumers might make a purchase based on initial impression and without detailed inspection of the brand. and likely to involve considered inspection of the trade marks.While the additional word "CIRCUIT" is emphasized in the device mark.

CASE .

Therefore. The IPAB used the test of “an unwary purchaser with average intelligence and imperfect recollection” to show that phonetically similar marks are likely to cause confusion among such purchasers. Against this order. the IPAB held that AMUL was a well-known mark and the registration of a deceptively similar mark ought not to have been allowed. since the respondents did not appear before the IPAB to prove the use of the mark IMUL since 2001 and give reasons for adopting the same. 1999. the appellant appealed to the IPAB (Circuit Bench. the IPAB held that a statement showing increase in sales turnover (by way of affidavit) was no ground to grant registration of a trademark that was deceptively similar to AMUL’s trademark. refusal of registration would cause unnecessary inconvenience and damage to the respondents. except for the first letter ‘A’ and ‘I’. It was held that the mark (IMUL) was phonetically similar to AMUL. however. Despite notice. Kaira District Co-Operative Milk Producers’ Union Limited (appellant) opposed registration of the trademark. The decision was based on the fact that the respondent had been using this mark since 2001 and its turnover had increased continuously since then. 1281174) under class 29 (milk goods and other dairy products) of the Trademarks Act. According to the registrar. . The registrar. Therefore.Ichhamati Co-operative Milk Producers’ Union Limited filed an application for registration of the mark ‘IMUL’ (depicted in a triangular shape) (Application No. it was contended that the public now associated ‘AMUL’ with the appellant’s products. the order was set aside. 34 of 2013) After perusing several cases. By virtue of its long. Kolkata). in the past. continuous and extensive use of the trademark. The order of the IPAB (No. The opposition was based on the ground that the appellant was carrying on a wellestablished business of manufacturing. found that the respondent’s adoption of the mark IMUL was honest and was not deceptively similar. Also. After the advertisement of this application. marketing and exporting milk products under the name AMUL since 1955. Moreover. The IPAB decided the matter in favor of AMUL ex parte. in restraining others from using its registered trademark. the respondents did not appear before the IPAB nor did they file counter statements. the respondent’s adoption of the mark IMUL would cause confusion among the public and in the trade as it was deceptively similar to the appellant’s trademark. case law showed that AMUL had become a household name and the appellant had been successful.