[caption id="attachment_317" align="alignright" width="150"]
By Jacqui Symonds[/caption]
A key requirement for the registration of a trade mark is that it does not conflict with an earlier trade mark on the Register. Under Australian law, a trade mark application must be rejected if the mark is substantially identical with, or ‘deceptively similar’ to a trade mark that has already been registered, or is pending, for similar or closely related goods and services.
A trade mark is judged 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.[i]
However, exactly how the Trade Marks Office interprets these criteria is sophisticated and specific – this article explores a number of recent case studies to provide the most up to date and clear picture of how the Office is making its judgements on these questions.
When considering new trade mark applications there are two issues of prime importance,
- the nature of the trade mark itself and;
- the type of goods or services for which registration is sought.
The cases below explore how these two factors combine in different and sometimes unexpected ways to determine whether two trade marks are deceptively similar or not.
Cases where the marks are deceptively similar
Ceramiche Caesar S.p.A. v Caesarstone Sdot-Yam Ltd  ATMO 83 (“the CAESAR case”)
Applied for Mark Prior Trade Mark
The Applicant in this case initially filed its application for the CAESERSTONE logo, or ‘device mark’, (depicted above) for various goods in class 19 including tiles, flooring, and floor coverings. During the examination process, the existing CAESAR mark (pictured above) was cited against the application, as it was suggested that the new mark was deceptively similar to it. The CAESAR mark is registered in class 19 for ceramic tiles for indoor and outdoor use.
After a number of examination reports, the Examiner accepted the CAESARSTONE application in class 19 for goods including floor coverings not in the nature of tiles, and flooring not in the nature of tiles. The application was also accepted in classes 35 and 37 for wholesale, retail services, installation, maintenance and repair services in relation to tiles and flooring. Ceramiche Caesar S.p.A., the owner of the above CAESAR registration (the Opponent),
opposed the registration of the mark as deceptively similar to its own.
The case law in Australia on the issue of deceptive similarity is well established. In Australian Woollen Mills Ltd v FS Walton and Company Ltd[ii]
, it was stated that, when assessing deceptive similarity, “the marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.”
When applying this test to the above CAESARSTONE and CAESAR trade marks, the Hearing Officer found that the memorable and essential feature of both trade marks was the word CAESAR. This finding was made based on the Hearing Officer’s view that the word STONE lacked “originality” for the designated goods, and the first part of the mark is the most important for the purposes of distinction[iii]
. He did not consider the device element in the Applicant’s CAESARSTONE mark (the swirl shape on its left) to be a distinguishing feature. The Hearing Officer therefore concluded that the trade marks were deceptively similar.
However, a mere finding of deceptive similarity is not sufficient to ensure that a trade mark application is rejected. The second requirement for the application to be rejected is that the respective goods and services must be similar or closely related.
The Hearing Officer first looked at the goods. Goods are considered similar if they are the same, or if they are of the same description.[iv]
Australian case law in this area can be summarised by the comments in the old case of Jellinek’s Application[v]
, where the Judge, Romer J, stated that the question of whether or not goods were similar was to be answered by determining the nature, use and trade channels of the specific goods.
The Applicant provided lengthy submissions on the differences between its goods, which they considered were “slabs”, and the Opponent’s tiles. However, the Hearing Officer was not convinced by these arguments. He stated that whilst some of the Applicant’s goods in class 19 have been qualified as being “not in the nature of tiles”, this does not change the fact that the Applicant’s goods are flooring. Whilst the exact nature of the flooring may differ, both parties’ goods are likely to be purchased by the same customers through the same trade channels. The Hearing Officer also noted that the actual nature of the Applicant’s current restricted use of the trade mark for very specific types of flooring was not relevant, as the decision must be based on what the Applicant could do in the future if registration is obtained, i.e. the full scope of the listed goods and services in the application should be considered.
Moving on to the classes of services the Applicant’s applied for - wholesale, retail services, installation, maintenance and repair services in relation to tiles and flooring, the Hearing Officer noted that the evidence of both parties established that tiles are often marketed to consumers via showrooms. In his view, this indicated that the retail and display of the goods and their manufacture are intertwined. With regard to the installation, maintenance and repair of tiles, the Hearing Officer noted that whilst specialised tilers or builders are often needed to install and maintain such goods, the provision of those services are ancillary to tiles themselves and one would likely cease to exist without the other. On this basis, the Hearing Officer found that the Opponent’s ceramic tiles were closely related to the Applicant’s retail, wholesale, installation, maintenance and repair services for those goods.
The Opponent was therefore successful in this ground of opposition and the trade mark was refused registration. The Applicant has appealed this decision.[vi]
Cases where the marks are not deceptively similar
Case 1: Health Boutique Pty Ltd v Boom Ideas Pty Ltd  ATMO 104 (“the SKINNY TEA case”)
Applied for Mark Prior three Trade Marks
The Applicant’s application for the SKINNY TEA TIME device (depicted above) was accepted in class 5 for tea and tea products for medicinal purposes and class 30 for tea and tea products. Health Boutique Pty Ltd (the Opponent) opposed the registration of the mark on the basis that it was deceptively similar to the earlier filed SkinnyTEA, SKINNYME ACAI TEA, and SkinnyMe Tea trade marks (depicted above). Neither party disputed that the goods of the application and the prior marks were similar.
The Opponent submitted that each trade mark was comprised of the same elements i.e. the words SKINNY and TEA, and that the device element (the heart shaped symbol) in the Applicant’s mark was weak and therefore not sufficient to distinguish it from the prior marks. The Opponent also submitted that the expression SKINNY TEA is not descriptive of the goods as a means to ensure the decision wasn’t skewed by an undue focus on the device element.
The Applicant submitted that SKINNY TEA is descriptive of the goods, and provided Internet search results showing other traders using the term in relation to tea products. The Applicant submitted that, in their view, the expression SKINNY TEA is descriptive of the goods and so it could not form the distinctive aspect of the marks. As such, they suggested the visual device element (the heart shaped symbol) in its mark was the key feature and was enough to differentiate it from the existing marks.
The Hearing Officer agreed with the Applicant. She noted that, whilst the impressions of the trade marks must be considered, the effect of descriptiveness must also be taken into account. In this regard, the Hearing Officer referred to an earlier High Court decision, Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd[vii]
in which it was stated that:
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business … The risk of confusion must be accepted; to do otherwise is to give one who appropriates to himself descriptive words an unfair monopoly in those words
Ultimately, the Hearing Officer decided that the trade marks were not deceptively similar. Given that the term SKINNY TEA describes the nature of the goods, the Hearing Officer believed the additional elements in the Applicant’s mark, namely the stylised font and the device element, were sufficient to distinguish it from the prior marks. In her view, these features give the Applicant’s mark a visual and conceptual impression which is distinct from the prior marks, each of which is distinguished by their own additional elements (or common ownership).
Case 2: Under Armour, Inc v Anthony James Adaimy  ATMO 98 (“the ARMOUR case”)
Applied for mark Prior Trade Mark
The Applicant’s application for ARMOUR MOUTHGUARDS was accepted in class 9 for mouthguards. Under Armour, Inc (the Opponent) opposed the registration of the mark on the basis that it was deceptively similar to its own registered mark UNDER ARMOUR, also in class 9 for mouthguards.
There was no doubt that both marks were for use in relation to the same goods, so the key question on this case was whether or not the trade marks were deceptively similar.
The Opponent submitted that the trade marks were deceptively similar as the distinctive element of the Applicant’s mark is the word ARMOUR, and the addition of the word UNDER in the Opponent’s mark was not sufficient to distinguish the two trade marks. Whilst the Hearing Officer agreed that more weight should be given to the word ARMOUR in the Applicant’s mark, the word MOUTHGUARDS could not be entirely discounted as trade marks must be considered as a whole.
The Hearing Officer was not convinced that ARMOUR was the dominant element of the Opponent’s UNDER ARMOUR trade mark as the expression UNDER ARMOUR conveys the impression of a protective layer that is worn beneath something. She also noted that the word UNDER has no particular meaning in relation to the goods and, given the important protective nature of the goods, consumers are likely to carefully consider their purchase – and therefore be more likely to identify more subtle differences between brands. In light of this, the Hearing Officer found that ARMOUR MOUTHGUARDS was not deceptively similar to UNDER ARMOUR. The Opponent has appealed the decision.
Deceptively similar marks but goods not considered similar
Case 1: Texas Instruments Incorporated  ATMO 80 (“the DLP case”)
Applied for mark Prior Trade Mark
This was an ex parte
hearing (ie, one involving only the Applicant and the Hearing Officer appointed by the Trade Marks Office to assess the application) that primarily focussed on the differences in the nature and trade channels of the Applicant’s goods and the goods of the cited mark.
During examination of the trade mark application, the Examiner raised the DLP mark in objection to the Applicant’s mark. The Examiner contended that DLP was the essential element of the Applicant’s mark, and as DLP was the only element of the cited mark, the trade marks were deceptively similar.
The Applicant filed its application in class 9 in respect of “Electronic circuits for projectors, namely, micromirror chipsets for projectors”. The Examiner held that these goods were similar to the “Apparatus and instruments for supplying, conducting, branching, transforming, accumulating, regulating and controlling electric current; electrical fittings and wiring accessories for housing, commercial, office and institutional buildings and for industrial and domestic installations and equipment” of the previous DLP mark.
The Applicant submitted that the goods were not similar, as the goods of the cited mark were directed to common apparatus for wiring homes and buildings, and as such were likely to be sold in hardware stores. In contrast, the Applicant’s goods are highly specialised chipsets which are installed in televisions or movie projectors. In light of the differences in the nature of the goods, the Applicant submitted that the trade channels – the route through which customers purchase the goods - were very different and as such, there was no risk of deception and confusion in the marketplace.
The Hearing Officer agreed with the Applicant and overturned the Examiner’s decision, allowing the mark to proceed to acceptance. In making this decision, the Hearing Officer did acknowledge that “electronic circuits” fell within the scope of the goods of the cited mark. However, he stated that looking at the nature of the respective goods was not sufficient on its own. It was necessary to go further and consider the uses for the Applicant’s electronic circuits, and the trade channels for the goods. Given the very specific nature of the goods, the Hearing Officer was comfortable that the trade channels for these goods were very different to those of the cited mark. The goods of the Applicant’s mark were therefore not considered similar to those of the cited mark.
Case 2: Symbion Pty Ltd  ATMO 86 (“the HYDRA case”)
Applied for mark Prior Trade Mark
This was another ex parte hearing which focussed on the similarity of the goods of two trade marks. The Applicant applied for registration of HYDRAPLUS in class 5 for goods initially including pharmaceutical preparations, vitamins and vitamin preparations, and electrolyte preparations.
During examination, the Examiner cited the HYDRA trade mark against the HYDRAPLUS Application. The cited mark is registered in class 5 for pharmaceutical preparations and substances and medicated confectionery, all for relief and treatment of sore throats and mouth and throat infections.
Given that the cited mark is wholly encompassed in the Applicant’s mark and the term “PLUS” is commonly used to indicate goods that have additional ingredients or are of a high quality, the Examiner had contended that the trade marks HYDRAPLUS and HYDRA were deceptively similar.
Therefore, the next question to consider was “are the goods similar?”. It was clear that the Applicant’s goods, as filed, were broad enough to include the goods of the previous mark. However, during examination, the Applicant proposed to amend the goods to “Vitamins and vitamin preparations; multi-vitamin drinks; electrolyte preparations; electrolyte replacement beverages for medical purposes, all the foregoing being for the treatment of dehydration.” The Applicant submitted that the goods, as amended, were not similar to the goods of the cited mark. The Examiner disagreed.
At the hearing which followed, the Hearing Officer found that the trade channels for the respective goods were the same, and the nature of the goods was similar. This is because both goods are types of medication that are likely to be purchased over the counter at a pharmacy or in a supermarket.
However, when applying “sensible business judgement”, the Hearing Officer found that the purpose of the respective goods was completely different and that this was sufficient to prevent deception and confusion in the marketplace. In her view, it was highly unlikely that a consumer suffering from dehydration would seek out a product for the relief of a sore throat, and vice versa. Even if a consumer was to seek both types of products, the Hearing Office believed they would be unlikely to conclude that the HYRDAPLUS and HYDRA goods originated from the same trader. The Hearing Officer therefore decided that the respective goods were not similar and directed that the application was to proceed to acceptance in relation to the amended goods.
As indicated by the above cases, the question of whether or not two trade marks conflict is a complex one and the answer depends on a number of factors including a comparison of the marks and the similarity of the goods and services. In order to minimise the risk of infringement, opposition, or facing serious problems during examination of your new trade mark, we recommend conducting pre-filing searches to identify potential conflicts. Our registered Trade Mark Attorneys can conduct these searches and provide strategic advice on the results.
For more information about trade mark and other intellectual property protection contact us at firstname.lastname@example.org
or phone +61 (07) 3011 2200. You can follow all of our news updates at www.linkedin.com/company/fisher-adams-kelly
Section 10 of the Trade Marks Act 1995 (Cth)
[iii] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264
Section 14 of the Trade Marks Act 1995 (Cth)
(1946) 1A IPR 393; 63 RPC 59
Together with the decision for the CAESERSTONE word mark in (2015) ATMO 12