When selecting a new business name or product name, it is essential to ensure that the name you want to use is available and not likely to infringe upon other traders’ existing legal rights.
A trade mark clearance search is the best way to determine this. This article will discuss what sort of trade mark clearance searches you should carry out and what you should look for.
Find out what’s out there with a trade mark register search.
An excellent place to start is with searches of the Australian Trade Mark Search online register, which IP Australia maintains.
This online register lets you search for Australian trade mark applications and registrations. If you plan to use your new trade mark overseas, you should also search the trade mark registers in your key overseas markets.
Searches of the online register should first identify any existing trade mark applications or registrations for trade marks that are the same as your preferred trade mark (in relation to similar products or services).
If it’s not in a trade mark register, am I safe to use it?
Unfortunately, no – and your searches shouldn’t stop there! An earlier trade mark can conflict with yours not only if it is the same as, but also if it is similar to, your preferred trade mark. This can include variations of the trade mark in terms of spelling, the inclusion of additional words, trade marks that look or even sound similar. And yes, even trade marks with a similar concept or idea can cross the line.
How similar is too similar?
The specific tests for a conflicting trade mark differ from country to country, as is interpretation. In Australia, the applicable test is whether the two trade marks are ‘substantially identical’ (higher threshold) or ‘deceptively similar’ (lower threshold).
The essence of the test for ‘deceptively similar’ is whether the trade marks are likely to be confused based on a reasonable consumer’s imperfect recollection. It’s important to note that this is not based on a side-by-side comparison of the trade marks. Below are some examples of trade marks that are too similar by the Australian Trade Marks Office or the Courts in Australia:
| First Trade Mark | Second Trade Mark | Goods and Services |
| REVOLVO | VOLVO | motor vehicle bearings |
| SOUL BOARDWALK | SOUL | property services |
| computer software | ||
| EMOJI | computer services and online network services | |
| AQUA DENTAL | dental services | |
| PINQ | cosmetics | |
| skincare products | ||
| NUTRA LIFE | dietary supplements | |
| skin preparation products | ||
| SCREENTECH | electronic displays |
Yes – you should Google it. Internet searches can reveal more than a trade mark register may.
Not all businesses will have their trade marks registered with IP Australia. However, they may still have common law rights with their unregistered trade marks. This can potentially cause problems if you adopt a trade mark that is too similar. As a result, in addition to searches of an online trade mark register, you should also conduct general internet searches to see whether anyone uses a trade mark in Australia that is ‘substantially identical’ or ‘deceptively similar’ to your preferred trade mark.
What can happen if my trade mark is too similar?
There are several risks to using a trade mark which is too similar to an existing trade mark, including:
- IP Australia might raise the existing trade mark as a citation against your trade mark application at the examination stage;
- If your trade mark application passes the examination stage, the owner of the existing trade mark might oppose the registration of your trade mark (see our article on What is a Trade Mark Notice of Intention to Oppose and How Do I Respond?) and
- If your trade mark is registered, it might be vulnerable to removal (which will make it difficult to enforce against other traders), and
- The owner of the existing trade mark might send you a letter of demand (or even commence legal proceedings) alleging that you have infringed their legal rights.
Key takeaways
A great trade mark for your business or product can be a fantastic marketing tool. However, if your trade mark is too similar to an existing trade mark that someone else is already using, that can cause serious legal problems down the road.
Therefore, carrying out trade mark clearance searches is essential as a first step. Having an experienced trade mark attorney or lawyer conduct these clearance searches is the best way to ensure that all relevant trade marks are considered and the appropriate comparison tests are undertaken.
Actuate IP has a team of intellectual property experts who can assist with Trade Mark Searches, Filing & Prosecution. If you require assistance, you can contact our team at (03) 9098 0713 or info@actuateip.com.au, and our friendly staff will make sure you are directed to the best person to assist you with your matter.
FAQs
What trade mark searches should I carry out?
You should conduct searches of the IP Australia Australian Trade Mark Search online register and general internet searches. You should look for any trade marks that are the same or similar to your preferred trade mark (in relation to similar products or services).
How can I monitor trade marks in my brand portfolio?
To monitor trade marks in your portfolio, you can set up a watch service through our IP monitoring service, or use tools like IP Australia’s database. This helps to identify any new trade marks that may be substantially identical or deceptively similar to your registered marks. Ongoing monitoring can prevent trade mark infringement and maintain control over your brand. Legal advisors or a trade mark attorney can assist in creating a thorough strategy for monitoring.
What is a similar trade mark?
A similar trade mark is one that, when compared to an existing composite mark, leaves a total impression on potential buyers that could confuse them. This confusion may occur if the marks are phonetically similar or used for particular goods in the same particular class.
What is a comparable trade mark?
A comparable trade mark closely resembles another in its usual manner of use, targeting similar goods or particular classes. Courts assess these marks by the impression left on ordinary people, often considering the full court’s following principles on how ordinary people behave.
How do I know if my trade mark is too similar to an existing trade mark?
In Australia, the test to be applied is whether the two trade marks are ‘substantially identical’ or ‘deceptively similar’. The essence of the test for ‘deceptively similar’ is whether the trade marks are likely to be confused based on a reasonable consumer’s imperfect recollection, and significantly this is not based on a side-by-side comparison of the trade marks.
Is ‘deceptive similarity’ the same as just looking similar?
No, ‘deceptive similarity’ in trade mark law goes beyond just a visual resemblance. Under the Trade Marks Act, a mark is considered ‘deceptively similar’ if it creates an overall impression that could confuse or deceive an ordinary person, even if the marks are not identical. When assessing deceptive similarity, courts consider phonetic similarities, the impression left on the minds of ordinary people, and whether the marks are applied to similar goods or services. A side-by-side comparison is not always required, as the imperfect recollection of an ordinary person is considered.
What is the difference between substantially identical and deceptively similar?
The terms substantially identical and deceptively similar are distinct in Australian trade mark law. Substantial identity refers to almost the same marks, whereas deceptive similarity involves the likelihood that two marks could be confused. A mark that is substantially identical to another will almost always be considered infringing, while deceptively similar marks may or may not infringe, depending on the overall impression they leave on the minds of ordinary people.
Can you trademark a similar word?
Yes, you can trademark a similar word, but its acceptability depends on whether it’s considered deceptively similar to an existing mark. A hearing officer may reject phonetically similar marks for the same particular goods, especially if the total impression causes confusion.
What is an example of deceptive similarity?
A good example of deceptive similarity would be two composite marks. The total impression they create leads potential buyers to mistakenly believe they originate from the same company, mainly if the marks are used for the same particular goods or services.
What is an example of a deceptive trademark?
An example of a deceptive trademark would mimic the usual manner of a well-known brand’s mark, such as changing a letter or sound but still leaving a phonetically similar impression. Due to habitual caution, the mark could mislead potential buyers.
What is meant by identical or deceptively similar with a well-known trademark?
Marks that are substantially identical or deceptively similar to a well-known trade mark could confuse potential buyers, mainly when used in a particular class of goods. Courts, including the high court, consider the impression such marks leave on an ordinary person.
I’ve been served with a trade mark infringement notice; what do I do?
If you’ve been served with a trade mark infringement notice, consult a trade mark attorney immediately. You may need to assess whether your mark is substantially identical or deceptively similar to the opponent’s trade mark and whether it applies to the same goods and services. Legal action might follow if the allegedly infringing mark is used in the same class as the registered trade mark, such as a case in the Federal Court. Your attorney can help determine if you have grounds to defend the infringement or negotiate with the other trade mark holder.
Someone else has copied my trade mark, what do I do?
If someone has copied your trade mark, the first step is to confirm whether their mark is deceptively similar or substantially identical to your registered trade mark. You can issue a trade mark infringement notice, requesting they cease use. If they refuse, legal action may be necessary. A trade mark attorney can assist you in this process, including filing a claim in court to protect your intellectual property.
What do I do if someone is infringing my trade mark?
If someone infringes your registered trade mark, contact a trade mark attorney to explore your options, which could include sending a cease-and-desist letter or pursuing a trade mark infringement lawsuit in the Federal Court. You will need to prove that the infringing mark is either substantially identical or deceptively similar to your mark, particularly in the same class of goods and services.
What is Section 120 of the Trade Marks Act?
Section 120 of the Trade Marks Act defines trade mark infringement. It outlines how a mark identical or deceptively similar to a registered mark can lead to infringement if used for particular goods or services in the same class, as assessed by a primary judge.
What if my trade mark and brand have existed for a long time, but someone else registers a trade mark before I do?
Even if your brand has been in use longer, if someone else has a registered mark before you, they may have exclusive rights under trade mark law. However, you can challenge their earlier registration if you can prove that your mark was used in commerce first or that their registration was made in bad faith. Case law such as Allergan Australia Pty Ltd and Pham Global Pty Ltd shows how courts evaluate such matters.
What happens if another brand or trade mark holder has registered the trade mark I want to use but isn’t using it?
If another holder has a registered trade mark but isn’t using it, you may be able to apply for the removal of their mark due to non-use. Under Australian trade mark law, if a trade mark has not been used for three years, you can file an application for its cancellation. Federal Court decisions have removed marks for failure to use in the ordinary course of business.
How can early trade mark registration help my brand?
Early registration of a trade mark secures your legal rights and prevents others from registering a similar trade mark. It allows you to defend your mark against infringement and ensures your brand is protected under the Trade Marks Act. Companies like Care IP Holdings Pty Ltd and Pham Global Pty Ltd show how early registration helps secure brand identity.
I want to keep a trademark, but something similar already exists. Can I reach an agreement with the current trademark owner?
Yes, it’s possible to negotiate with the current trade mark owner. Many businesses enter into co-existence agreements, allowing both parties to use deceptively similar or substantially identical marks under specific terms. Consulting with a trade mark attorney can help you draft an agreement that avoids potential litigation.
Can I have a trade mark that is similar to another, without it being seen as deceptive?
In some cases, you can register a new trade mark similar to another if there is no likelihood of confusion. This is often assessed based on factors like goods and services, the impression left, and particular classes. If the marks are not considered deceptively similar for the same goods or services, it may be permissible to coexist.
Can a trade mark attorney help me if my trade mark application has been rejected?
Yes, a trade mark attorney can assist you if your trade mark application is rejected. They can advise on why the mark was rejected (e.g., it might be deemed deceptively similar to an existing mark) and help appeal the decision before the hearing officer. In cases like Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, Federal Court decisions show the importance of legal guidance in overcoming objections to trade mark registration.
What is a common law claim for trade mark infringement?
A common law claim for a similar trade mark typically involves a passing off action when the mark is not registered. Under common law, passing off protects the reputation and goodwill a business has established in its trade mark, even if the mark is not officially registered. To succeed, the claimant must prove:
- Reputation and Goodwill: The business has built a recognisable reputation associated with the mark.
- Misrepresentation: The defendant’s use of a similar trade mark misleads or confuses the public, implying a connection with the claimant’s business.
- Damage: The deceptively similar mark harms the claimant’s business, such as by causing loss of customers or dilution of reputation.
Even though the trade mark is not registered, this common law protection can prevent another business from unfairly benefiting from the goodwill of an established brand through a similar mark.