A trade mark is defined under the Trade Mark Act 1995 (Cth) as a “sign” used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from those provided by any other person.  A “sign” may include letters, words, images, colours or a combination thereof.

If a person uses a sign that is “substantially identical” or “deceptively similar” to a mark that is already registered, under section 120 of the Act, this would be regarded as infringement.  

Substantially identical:  

In determining whether a mark is “substantially identical” to another mark, the marks will be compared side-by-side to evaluate their essential features and any similarities or differences. The similarities and differences between the words, the fonts, colours and logos would be compared together with any additional components which may distinguish one from the other.   

Deceptively Similar: 

In determining whether marks are “deceptively similar”, the overall impression given by one mark with the memory of the impression left by the other mark will be evaluated.   It is not only the mark that is examined, but other aspects, including:

 (a) the class of goods or services;

(b) the nature and use of the goods or services;

(c) how the goods or services are presented or disseminated to consumers;

(d) whether the same market would be interested in the goods or services;

(e) whether they would appear in the same circumstances.

Even though the class of goods may be the same, and the products or services accessed by consumers may relate to a similar category, the category within the class might be very different and attract a different audience. The question is whether the sign confused or is likely to confuse consumers into thinking that the goods or services that contain the sign, originated from the owner of the registered mark. However if the two marks have different audiences there can be no confusion. It is the totality of all of the features including the market which will be assessed. 

Conclusion:

It may be very costly if you are accused of infringing a trade mark or if your mark is infringed. 

If you require any advice on your trade mark, or advice on any other intellectual property matter, please do not hesitate to contact us, by clicking on the button below.