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A trademark is a sign used to identify your products or services and distinguish your brand from others in the market. As such, applying to register your trademark is an important step in ensuring that you can take action if another company copies a feature of your trademark.
IP Australia administers the trademark application and registration process. Therefore, suppose your trademark application is deceptively similar or substantially identical to an existing trademark on the Trademark Register. In this case, IP Australia will raise objections to the new request. However, there are some strategies you can use to overcome the objections noted by IP Australia.
This article describes what happens if you have a trademark that conflicts with a previously registered trademark.
Essentially identical and deceptively similar marks
IP Australia applies the ‘substantial identity’ and ‘deceptive similarity’ tests when comparing two or more marks.
To determine whether the marks are substantially identical, they are compared side by side. Here, IP Australia analyzes the significance of their similarities and differences and considers the essential characteristics of each brand.
If the marks are found not to be substantially identical, then they are assessed for deceptive similarity. This test consists of analyzing whether an ordinary person would think that the marks are deceptively similar based on the impression they leave.
Below is an example of brand comparisons using the above tests.
Not deceptively similar
Dentistry, dental services
Similarity of goods and services
In addition, IP Australia also takes into account the degree of connection between the goods and services between the trademarks in comparison. The more the goods or services are closely related between two marks represented in a similar way, the more the later mark is likely to come into conflict with the earlier mark. Conversely, two marks represented in a similar manner may be individually registrable and coexist in classes of goods or services which are not similar.
The main criteria for determining the similarity between the products are as follows:
- the nature of the goods;
- the respective uses of the items; and
- the commercial channels through which the products are respectively bought and sold.
The criteria for determining the similarity of services are also similar to those listed above for goods. The criteria are as follows:
- the nature and characteristics of the services;
- the origin of the benefits;
- the purpose of the services;
- whether the services are generally provided by the same company or person;
- whether the services are supplied from the same sources, in the same area or district, during the same season or concerning the same goods or related services and to the same category or categories of customers; and
- if the services are considered identical by those who provide them.
However, this is not an exclusive criterion as other factors may be taken into account when comparing products and services between brands.
When considering similarities between “closely related” goods or services, IP Australia generally takes into account what the ordinary consumer perceives and expects. This includes considering a generic understanding of the goods or services provided and the relevant market context. Specifically, IP Australia may consider:
- the circumstances in which you will use the Trademarks;
- the circumstances under which the goods or services will be bought and sold;
- character of consumers of goods and services.
Despite similarities in representation, it is also possible for two or more marks to coexist in the register. IP Australia takes into account a variety of external factors and considerations when reviewing trademark applications, as summarized above.
Does my trademark conflict with a pre-existing trademark?
Before selecting the final representation of your mark, it is important to carry out a preliminary review of IP Australia’s database of all similar marks. A trademark attorney or attorney can help you with this process.
Once the search is done, you can determine the similarity of the marks by:
- judging both brand names or logos by their look and sound;
- compare the similarity of the industries in which they are found;
- taking into account the type of customer likely to purchase these goods or services;
- given the circumstances in which you will be selling the goods or services.
In considering the above circumstances, if you determine that there will be confusion around the origin of the goods or services in the mind of the public, IP Australia may determine that the marks are too similar.
It is important that you don’t just search for identical brands. This is a common mistake. For example, suppose you intend to use “BLACKWALL CONSTRUCTION” as your business name. In this case, you should search for “BLACKWALL” alone, and any other similar visual and phonetic variations, instead of just searching for “BLACKWALL CONSTRUCTION” as a whole.
How can you prove that your brand is not too similar?
If your mark is deceptively similar or substantially identical to one or more other marks, you may overcome the objection in certain circumstances.
Here you may need to show IP Australia that your brand:
- existed before the conflicting mark; Where
- operated honestly and simultaneously with the conflicting mark without any problems.
To prove your prior use of the mark, you can provide proof that you used your mark on a date prior to the filing date of the conflicting mark. To prove honest competing use, you can show that you created your mark honestly without knowing the conflicting mark. Moreover, you can prove that your mark was used simultaneously with the conflicting mark without any case of public confusion.
In addition to the strategies above, you can also use one of the options below to overcome an objection if you cannot provide enough evidence to support your claim. This includes:
- modify your goods and/or services so that they are no longer in conflict;
- request consent to coexist with the owner of the conflicting mark; Where
- request the removal of the conflicting mark on the ground that it has not been used in Australia for the goods and services listed in the registration.
It is important to remember that all of the strategies mentioned above carry risks, and you should be aware of them. It would be prudent to seek advice from a lawyer or trademark attorney for advice on the best approach.
Key points to remember
Overcoming objections against your brand can be a long and difficult process. If you are considering filing a trademark application, it is useful to do some pre-filing research and determine the associated risks. A brief pre-filing risk assessment can be carried out by searching the IP Australia database or by enlisting the assistance of a lawyer or trademark attorney to do this on your behalf.