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Deconstructing deceptive similarity

Date: 01 February 2010
Author: Larissa Wayne
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Understanding how the Australian Trade Marks Office and the Courts assess "deceptive similarity" can ease the important process of choosing, using and protecting trade marks for the Australian market.


Key points

  • What is deceptive similarity?
  • Recent decisions that illustrate the tests for deceptive similarity
  • How do the tests applied by the Courts and the Trade Marks Office impact the choice, use and registration of a trade mark

 

For the purposes of the Trade Marks Act 1995 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 confusion1. Trade marks that are too similar may confuse consumers into purchasing unwanted brands, dilute or damage brand reputation, or allow competitors to 'free-ride' off another trader's established reputation.


When does the investigation of deceptively similar trade marks arise?


The question of whether two trade marks 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 for2
  • 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 applicant3
  • Infringement - unauthorised use of a deceptively similar trade mark forms the basis of an infringement action4

 

COMPARISON OF TRADE MARKS

 

Case law in relation to trade mark infringement has developed certain 'rules of comparison' and underlying tests, which are also applied by Examiners at IP Australia in assessing deceptive similarity. 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:


Deceptively similar trade marks

 


 


Not deceptively similar trade marks



 
 
The tests applied in the above examples:


Visual comparison


Visual impression is important where products are displayed on shelves, particularly where there is little or no staff intervention during the sales transaction. In circumstances where the nature of the products, e.g. pharmaceuticals or expensive 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. In comparing the appearance of trade marks, regard may be had to the following:


The degree of similarity


For example, HAFT was refused registration in the face of TAFT, because the trade marks differ only in their initial letters, the majority of the word is the same.


However the trade marks ENOVA and EUNOVA16 were considered dissimilar because the critical placement of the letter "U" creates fundamental visual and phonetic differences.


Comparison of the beginning, 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 trade marks. For this reason the VEGETA trade mark was not considered deceptively similar to ARGETA.


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 TIFFANY & CO and TIFFANY KOURY were allowed to co-exist in the market and on the Trade Marks Register, because the marks create very different impressions and are unlikely to be confused for each other or viewed as belonging to a family of "TIFFANY" trade marks i.e. TIFFANY & CO creates the impression of a company or commercial entity, whereas, TIFFANY KOURY is a female name.


Shared element


There are cases where trade marks which share a feature may suggest to customers that they are in some way related, for example suggesting a new version or an extension of a previously existing product range.


The Registrar refused registration of the trade mark POSH PUPPY in the face of HUSH PUPPIES because "whether consciously or not, the Applicant is effectively seeking to adopt an essential feature, and on the face of it an inherently distinctive feature, of the Opponent's Trade Mark, namely the element PUPPIES (or PUPPY)".


However, the Courts and the Trade Marks Office recognise that where a shared element between trade marks 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.


For example, there are numerous registrations co-existing in Australia featuring the word VITA for food and beverages. It therefore follows that trade marks such as VITA PLUS, VITA FRESH, 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, FRESH, FRUIT and VEG added something to the word VITA per se.


The way the mark is presented


A mark may be more easily differentiated if it is presented in a stylised get-up or logo, enhancing the visual differences.


For example the unique device element and fancy script contained in the trade mark

 


was sufficient to determine the trade mark not to be deceptively similar to CITIFINANCIAL.

 

As the Full Court Federal Court of Australia noted in Crazy Ron's17, different 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. 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.



Phonetic comparison


A phonetic comparison of trade marks is important to avoid confusion in relation to television and radio advertising, over-the-counter purchases, and goods ordered over the telephone. Consideration 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 DYNASPEC and DYNAPAC trade marks were considered sufficiently different, notwithstanding the marks shared the element "DYNA-". The Registrar decided that the suffices 'SPEC' and 'PAC' were phonetically distinct.


The 'idea' conveyed by each trade mark


If trade marks convey different ideas this should reduce the risk of confusion. While the trade marks FERRARI SHOP and DIANA FERRARI share the word "ferrari", the overall impression of each trade mark were considered different as, DIANA FERARI is the name of a person, while FERRARI SHOP, refers to a shop.


In Sports Café Ltd v Registrar of Trade Marks18, the Court decided that following trade marks were deceptively similar:

 


While the additional word "CIRCUIT" is emphasised in the device mark, 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.


Nature of the products and services


Generally the cheaper the product being sold, the greater the risk of a purchaser being confused by similarities between the trade marks. For example, 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. It is this test which led the Office to conclude that HAFT and TAFT may be easily confused.


In the "HUGGIE" MUMMY/HUGGIES 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 "HUGGIE" as a product identifier and "HUGGIE" MUMMY was therefore deceptively similar to HUGGIES.


By contrast, speciality or expensive items are not likely to be purchased hastily or without due consideration, and likely to involve considered inspection of the trade marks. 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.


Type of customer


The type of customer will be directly related to the nature of the products being purchased. For example specialist goods are sought, purchased and sold by experts with technical knowledge in the field, therefore, greater care is likely to be exercised in relation to purchase decisions. On the other hand, there is greater risk of confusion when goods and services are sold to children, people in a hurry or impulse buyers.


Your Trade Mark Attorney will be able to provide guidance in relation to the registrability of a trade mark and highlight any potential infringement issues.


For further information please email: Joanne Martin, Gail Hill or David Franklin

 

1 Section 10 Trade Marks Act 1995 (Cth) ("TMA")
2 Section 44 TMA
3 Sections 44 and 57 TMA
4 Sections 120, 124 TMA
5 Hans Schwarzkopf & Henkel GmbH & Co KG v Tars international Limited [2008] ATMO 72 (18 August 2008)
6 Kimberley-Clark Worldwide, Inc v Goulimis [2008] FCA 1415 (16 September 2008)
7 British American Tobacco Australia Services Ltd v NV Sumatra Tobacco Trading Company [2008] ATMO 68 (31 July 2008)
8 Wolverine World Wide, Inc v Khoda Ali Ahmed [2008] ATMO 93 927 November 2008)
9 La Chemise Lacoste v Crocodile International Pte Ltd [2008] 90
10 Podravka Prehrambena Industrija d.d v Droga Kolinska Zivilska Industrija d.d [2008] ATMO 74 (21 August 2008)
11 Diana Ferrari (Australia) Pty Ltd v Ferrari SpA [2008] ATMO 73 (19 August 2008)
12 As above
13 Dynapac International Adtiebolag v Kobelco Construction Machinery Co, Ltd [2008] ATMO 59 (7 July 2008)
14 Tiffany and Company v Tiffany C Koury [2009] ATMO 68 (31 August 2009)
15 Citigroup Inc v Lou Pozzebon [2009] ATMO 4 (19 January 2009)
16 Beecham Group Plc v ADM Kao LLC [2009] ATMO 61 (10 August 2009)
17 [2004] FCAFC 196
18 [1998] FCA 1614


This Newsletter is for the general information of our clients. Its contents are not a complete statement of the law on any subject. Professional advice should be sought before any course of action is pursued.

 
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