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According to whom? Deceptive Similarity in Australian Trade Marks

If you have made an application for a new trade mark in Australia, it is possible that the application will be objected to during the examination process. Don’t panic. There is a good chance a registered trade mark attorney can offer their assistance.

There are several possible reasons for this that will vary depending on the details of the case. But the most common reason for a trade mark application to be rejected is that it is deceptively similar to another existing mark. It is also the most common reason for a mark to be objected to or revoked later in its life.

For something to be deceptively similar it follows logically that someone should have been deceived. The Trade Marks Act 1994 states that a trade mark is considered 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.’ But the trade mark hasn’t been granted, and may not have ever been used – so who is this deceived or confused person?

Clearly, it isn’t you – the applicant – or your attorney. Is it the trade mark Examiner? Or maybe a Judge? Is it the opinion of a randomly selected person off the street? In some ways, it is each of these. During examination, it is up to the Examiner to make the decision. Should the case somehow end up in court, a Judge will give their opinion. These officials will not decide based on their own reaction to the mark: they will try to take the point of view of an abstract, representative person. Although the official is not taking the view of any particular individual, they will also not be taking the view of a random person. The official will be making their decision based on the perspective of a theoretical, constructed, ‘ordinary’ person who is based on a set of legal facts and precedents stemming back more than a century.

A foundational statement in this characterisation is usually cited from Crook’s Trademark (1914). In determining that a trade mark of the word ‘Swankie’ as applied to detergents would not cause confusion in comparison to similar products bearing the registered mark ‘Swan’, Justice Joyce quotes Justice Romer: “It can hardly be a bar to the admission of a mark that ‘unusually stupid people, fools or idiots, may be deceived.’” So, at the very least, there is a lower bound on the capacities of the constructed person in question.

Moving to 1937, Australian Woollen Mills Ltd v F. S. Walton & Co Ltd sets the contemporary standard:

“The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men (sic) considered in the mass affords the standard.”

Thus the ‘ordinary person’ is neither particularly astute nor particularly foolish. Very importantly, we learn that the setting of the use of the trade mark is considered. This aspect was reinforced by the 1999 case, Registrar of Trade Marks V Woolworths Ltd. This includes the mark itself, the nature of the transactions involving the goods and/or services the mark represents, as well as the ‘character of the probable acquirer’. That is because the goods and/or services associated with a trade mark vary from mark to mark, so too does the consumer of said goods and/or services. Someone shopping for expensive electronics is likely to pay more attention to their purchase – including to the trade marks involved – due to the expenses involved, compared to a prospective purchaser of, for example, fresh produce.

These are legal questions that your trade mark attorney will help you to navigate, and the perspective arrived at by an Examiner or Judge may not be one you agree with – but it will be one you may have to live with. Forewarned is forearmed: consider the above during your brainstorming sessions for your next product launch. Who is the typical consumer of your new product? There is a lot to consider when proposing a new trade mark and how it will best represent your product, your brand, and you. But don’t forget that the trade mark is utilised by a consumer, and it needs to be clearly communicated. If you have any questions about this or any other topics related to trade marks, please don’t hesitate to contact one of our Australian trade mark attorneys.