Deceptive Similarity of Trademarks
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. Trade marks that are too similar may confuse consumers into purchasing unwanted brands, dilute or damage brand reputation, or allow competitors to 'free-ride' o another trader's established reputation. 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
•
!hen choosing a new trade mark
•
!hen searching availability of a trade mark for use and registration
•
•
•
!hen prosecuting a trade mark application, an application may be refused if a deceptively similar trade mark is already registered or applied for "uring 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 #nfringement - unauthori$ed use of a deceptively similar trade mark forms the basis of an infringement action
COMPARSO! O" TRAD# MAR$S
%ase law in relation to trade mark infringement has developed certain 'rules of comparison' and underlying tests, which are also applied by &aminers at #( Australia in assessing deceptive similarity. The following recent decisions provide an indication of those trade marks the Trade )arks *+ce and the %ourts have held to be deceptively similar or not deceptively similar
Deceptively similar trade marks
!ot deceptively similar trade marks
The tests applied in the a%ove e&les' (is)al comparison
isual impression is important where products are displayed on shelves, particularly where there is little or no sta intervention during the sales transaction. #n circumstances where the nature of the products, e.g. pharmaceuticals or epensive products, require close inspection of the brand, closer visual similarity may be tolerated as there is a reduced likelihood of confusion between two products occurring. #n comparing the appearance of trademarks, regard may be had to the following The degree of similarity
or eample, AT was refused registration in the face of TAT, because the trade marks dier only in their initial letters, the ma/ority of the word is the same. owever the trademarks &0*A and &10*A were considered dissimilar because the critical placement of the letter 212 creates fundamental visual and phonetic dierences. Comparison of the %eginning* middle and end of +ord trade marks
#t is generally held that the beginning of a word trade mark is the most prominent and memorable for the purpose of usually dierentiating between trademarks. or this reason the &3&TA trade mark was not considered deceptively similar to A43&TA. The initial overall impression and then recollection of the trade marks
The trade marks must be considered in their entirety. 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. The trade marks T#A05 6 %* and T#A05 7*145 were allowed to co-eist in the market and on the Trade )arks 4egister, because the marks create very dierent impressions and are unlikely to be confused for each other or viewed as belonging
to a family of 2T#A052 trademarks i.e. T#A05 6 %* creates the impression of a company or commercial entity, whereas, T#A05 7*145 is a female name.
Shared element
There are cases where trademarks which share a feature may suggest to customers that they are in some way related, for eample suggesting a new version or an etension of a previously eisting product range. The 4egistrar refused registration of the trade mark (*8 (1((5 in the face of 18 (1((#&8 because “whether consciously or not, the Applicant is efectively seeking to adopt an essential eature, and on the ace o it an inherently distinctive eature, o the Opponent's Trade Mark, namely the element PPP!"# $or PPP%&( owever, the %ourts and the Trade )arks *+ce recogni$e 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. or eample, there are numerous registrations co-eisting in Australia featuring the word #TA for food and beverages. #t therefore follows that trademarks su ch as #TA (918, #TA 4&8, #TA41#T and #TA&3 have been allowed to co-eist on the 4egister and in the food and beverage market on the basis that the descriptive or laudatory words such as (918, 4&8, 41#T and &3 added something to the word #TA per se. The +ay the mark is presented
A mark may be more easily dierentiated if it is presented in a styli$ed get-up or logo, enhancing the visual dierences. or eample the unique device element and fancy script contained in the trade mark
!as su+cient to determine the trade mark not to be deceptively similar to %#T##0A0%#A9.
As the ull %ourt ederal %ourt of Australia noted in %ra$y 4on's :;, dierent considerations apply to a word mark and a mark that includes a distinctive device, so that even though words may be deceptively similar, the interpretation of a particular device may render the trade mark not deceptively similar. #n this case %4A<5 4*0 was not considered deceptively similar to a composite picture mark of which the words %4A<5 =*0 was only one of several prominent elements.
Phonetic comparison
A phonetic comparison of trademarks is important to avoid confusion in relation to television and radio advertising, over-the-counter purchases, and goods ordered over the telephone. %onsideration must be given to the tendency for people to slur the endings of words, abbreviate words, and weight given to strong syllables in words. The "50A8(&% and "50A(A% trade marks were considered su+ciently dierent, notwithstanding the marks shared the element 2"50A-2. The 4egistrar decided that the su+ces '8(&%' and '(A%' were phonetically distinct. The ,idea, conveyed %y each trade mark
#f trademarks convey dierent ideas this should reduce the risk of confusion. !hile the trade marks &44A4# 8*( and "#A0A &44A4# share the word 2errari2, the overall impression of each trade mark were considered dierent as, "#A0A &4A4# is the name of a person, while &44A4# 8*(, refers to a shop. #n 8ports %af> 9td v 4egistrar of Trade )arks :?, the %ourt decided that following trade marks were deceptively similar
!hile the additional word 2%#4%1#T2 is emphasi$ed in the device mark, three out of four words of the marks are the same, and ultimately the %ourt decided that it was beyond doubt that both marks epressed the idea of sports. !at)re of the prod)cts and services
3enerally the cheaper the product being sold, the greater the risk of a purchaser being confused by similarities between the trademarks. or eample, hair care products are not always purchased carefully, so consumers might make a purchase based on initial impression and without detailed inspection of the brand. #t is this test which led the *+ce to conclude that AT and TAT may be easily confused. #n the 2133#&2 )1))5@133#&8 case the fact the products were toddler clothing and toys, which are likely to be bought quickly on a recurrent basis led to the decision that customers would rely on the essential brand 2133#&2 as a product identier and 2133#&2 )1))5 was therefore deceptively similar to 133#&8. By contrast, speciality or epensive items are not likely to be purchased hastily or without due consideration, and likely to involve considered inspection of the trade marks. or this reason T#A05 7*145 was not considered too close to T#A05 6 %* for luury clothing and accessories, which aords closer scrutiny of the brands.
CAS#
I c hhamat i Cooper at i v eMi l kPr oduc er s ’Uni onLi mi t edfi l edanappl i c at i onf orr egi s t r at i onoft hemar k ‘ I MUL ’( dep i c t edi nat r i angu l ars hape )( Ap pl i c at i onNo .1281174)un derc l a ss2 9( mi l kgo od sa nd ot herd ai r ypr oduc t s )o ft heT r ademar k sAc t ,1999.Af t ert headv er t i s ementoft hi sappl i c at i on,Kai r a Di s t r i c t Co Op er a t i v e Mi l k Pr o du ce r s ’Un i on L i mi t e d( a pp el l a nt )o pp os ed r e gi s t r a t i o no ft h e t r a de ma r k .Th eo pp os i t i o n wa sb as e do nt h eg r o un dt h att h ea pp el l a ntwa sc a r r y i n go n awe l l e s t a bl i s h ed b us i n es so fma nu f a c t u r i n g,ma r k e t i n ga nd e x po r t i n g mi l kp r o du c t su nd ert h en ame AMULs i n c e1 95 5.Byv i r t u eo fi t sl o ng ,c o n t i n uo usa nde x t e ns i v eu s eo ft h et r a de ma r k ,i twa s c on t e nd ed t h att h ep ub l i c no wa ss o ci a t e d‘ AMUL ’wi t ht h ea ppe l l a nt ’ sp r o du c t s .Th er e f or e ,t h e r e s po nd en t ’ sa do pt i o no ft h ema r kI MULwo ul dc a us ec o nf u s i o na mo ngt h ep ub l i can di nt h et r a de asi twasdec ept i v el ys i mi l art ot heappel l ant ’ st r ademar k . Th er eg i s t r a r ,h owe v er ,f o un dt h att h er e sp on de nt ’ sad op t i o no ft h ema r kI MULwa sh on es tan dwa s no tdec ept i v el ys i mi l ar .Thedec i s i onwasbas edont hef ac tt hatt her e sponde nthadb eenus i ngt hi s ma r ks i nc e20 01a ndi t st ur no v erhadi nc r ea sedc on t i nuo us l ys i n cet hen.Ac c or di ngt ot her egi s t r a r , r e f u s al o fr e gi s t r a t i o nwo ul dc a us eu nn ec es s ar yi n co nv e ni e nc ea ndd ama get ot h er e sp on de nt s . Agai ns tt hi sor der ,t heappel l antappeal edt ot heI PAB ( Ci r c ui tBenc h,Kol k at a) .Des pi t enot i c e,t he r e sp on de nt sdi dn ota pp ea rb e f o r et h eI PABn ordi dt he yfi l ec ou nt e rs t at e me nt s .Th eI PABd ec i d ed t h ema t t e ri nf a v oro fAMUL .Theo r d ero ft h eI PAB( No .3 4o f2 01 3) e xp a r t e Af t erper u si ngs ev er a lc as es ,t heI PABh el dt hatas t at e ments ho wi ngi nc r e as ei ns al e st u r no v er( b y wa yofa ffida vi t )wasn ogr oundt og r an tr egi s t r at i ono fat r a demar kt hatwa sdec ep t i v el ys i mi l a rt o AMUL ’ st r ademar k .I twashel dt hatt hemar k( I MUL)wasphone t i c al l ys i mi l art oAMUL,e x c ep tf ort he fi r s tl e t t er‘ A’and‘ I ’ .TheI PABus edt het es tof“ anunwar ypur c has erwi t ha ver agei nt el l i genc eand i mper f ec tr ec ol l ec t i on”t os how t hatphonet i c al l ys i mi l armar k sar el i k el yt oc aus ec onf us i onamong suchpur chaser s.Mor eover ,cas el aw showedt hatAMULhadbecomeahousehol dnameandt he appel l anthadbeens uc ces s f ul ,i nt hepas t ,i nr es t r ai ni ngot her sf r om us i ngi t sr egi s t er edt r ademar k . Al s o,s i n cet h er e sp on de nt sdi dn otap pe arb ef o r et h eI PABt op r o v et h eu seo ft hema r kI MULs i n ce 2 00 1a n dg i v er e as o n sf o ra do pt i n gt h es a me ,t h eI P ABh el dt h atAMULwa sawe l l k n o wnma r ka nd t her egi s t r at i ono fad ec ep t i v el ys i mi l arma r koughtno tt oha v ebeenal l o wed.Ther ef or e,t heo r d er wa ss eta s i d e.
