Deceptive Similarity of

Trademarks

Deceptive Similarity of Trademarks

A trade mark is taken 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. Trade
marks that are too similar may confuse consumers into purchasing unwanted
brands, dilute or damage brand reputation, or allow competitors to 'free-ride' off
another trader's established reputation.
When does the investigation of deceptively similar trademarks arise?
The question of whether two trademarks are deceptively similar may be a key issue
at a number of points during the life of a trade mark:

When choosing a new trade mark

When searching availability of a trade mark for use and registration

When prosecuting a trade mark application, an application may be refused if

a deceptively similar trade mark is already registered or applied for

During opposition the registration of a trade mark may be opposed by the

owner of a deceptively similar trade mark who has used their trade mark
before the applicant

Infringement - unauthorized use of a deceptively similar trade mark forms the

basis of an infringement action

COMPARISON OF TRADE MARKS

Case law in relation to trade mark infringement has developed certain 'rules of
comparison' and underlying tests, which are also applied by Examiners at IP
Australia in assessing deceptive similarity. The following recent decisions provide an
indication of those trade marks the Trade Marks Office and the Courts have held to
be deceptively similar or not deceptively similar:

Deceptively similar trade marks

Not deceptively similar trade marks

The tests applied in the above examples:

Visual comparison
Visual impression is important where products are displayed on shelves, particularly
where there is little or no staff intervention during the sales transaction. In
circumstances where the nature of the products, e.g. pharmaceuticals or expensive
products, require close inspection of the brand, closer visual similarity may be
tolerated as there is a reduced likelihood of confusion between two products
occurring. In comparing the appearance of trademarks, regard may be had to the
following:
The degree of similarity
For example, HAFT was refused registration in the face of TAFT, because the trade
marks differ only in their initial letters, the majority of the word is the same.
However the trademarks ENOVA and EUNOVA were considered dissimilar because
the critical placement of the letter "U" creates fundamental visual and phonetic
differences.
Comparison of the beginning, middle and end of word trade marks
It is generally held that the beginning of a word trade mark is the most prominent
and memorable for the purpose of usually differentiating between trademarks. For
this reason the VEGETA trade mark was not considered deceptively similar to
ARGETA.
The initial overall impression and then recollection of the trade marks
The trade marks must be considered in their entirety. This is based on the
presumption that consumers may have an imperfect recollection of a trade mark
and therefore confuse it with another if it is usually too close.
The trade marks TIFFANY & CO and TIFFANY KOURY were allowed to co-exist in the
market and on the Trade Marks Register, because the marks create very different
impressions and are unlikely to be confused for each other or viewed as belonging

to a family of "TIFFANY" trademarks i.e. TIFFANY & CO creates the impression of a

company or commercial entity, whereas, TIFFANY KOURY is a female name.

Shared element
There are cases where trademarks which share a feature may suggest to customers
that they are in some way related, for example suggesting a new version or an
extension of a previously existing product range.
The Registrar refused registration of the trade mark POSH PUPPY in the face of
HUSH PUPPIES because whether consciously or not, the Applicant is effectively
seeking to adopt an essential feature, and on the face of it an inherently distinctive
feature, of the Opponent's Trade Mark, namely the element PUPPIES (or PUPPY)".
However, the Courts and the Trade Marks Office recognize that where a shared
element between trademarks is either a common or non-distinctive element, it is
necessary to pay more attention to the parts of the trade marks being compared
that are not common.
For example, there are numerous registrations co-existing in Australia featuring the
word VITA for food and beverages. It therefore follows that trademarks such as VITA
PLUS, VITA FRESH, VITAFRUIT and VITAVEG have been allowed to co-exist on the
Register and in the food and beverage market on the basis that the descriptive or
laudatory words such as PLUS, FRESH, FRUIT and VEG added something to the word
VITA per se.
The way the mark is presented
A mark may be more easily differentiated if it is presented in a stylized get-up or
logo, enhancing the visual differences.
For example the unique device element and fancy script contained in the trade
mark

Was sufficient to determine the trade mark not to be deceptively similar to

CITIFINANCIAL.

As the Full Court Federal Court of Australia noted in Crazy Ron's 17, different
considerations apply to a word mark and a mark that includes a distinctive device,
so that even though words may be deceptively similar, the interpretation of a
particular device may render the trade mark not deceptively similar. In this case
CRAZY RON was not considered deceptively similar to a composite picture mark of
which the words CRAZY JOHN was only one of several prominent elements.

Phonetic comparison
A phonetic comparison of trademarks is important to avoid confusion in relation to
television and radio advertising, over-the-counter purchases, and goods ordered
over the telephone. Consideration must be given to the tendency for people to slur
the endings of words, abbreviate words, and weight given to strong syllables in
words.
The DYNASPEC and DYNAPAC trade marks were considered sufficiently different,
notwithstanding the marks shared the element "DYNA-". The Registrar decided that
the suffices 'SPEC' and 'PAC' were phonetically distinct.
The 'idea' conveyed by each trade mark
If trademarks convey different ideas this should reduce the risk of confusion. While
the trade marks FERRARI SHOP and DIANA FERRARI share the word "Ferrari", the
overall impression of each trade mark were considered different as, DIANA FERARI is
the name of a person, while FERRARI SHOP, refers to a shop.
In Sports Caf Ltd v Registrar of Trade Marks 18, the Court decided that following
trade marks were deceptively similar:

While the additional word "CIRCUIT" is emphasized in the device mark, three out of
four words of the marks are the same, and ultimately the Court decided that it was
beyond doubt that both marks expressed the idea of sports.
Nature of the products and services
Generally the cheaper the product being sold, the greater the risk of a purchaser
being confused by similarities between the trademarks. For example, hair care
products are not always purchased carefully, so consumers might make a purchase
based on initial impression and without detailed inspection of the brand. It is this
test which led the Office to conclude that HAFT and TAFT may be easily confused.
In the "HUGGIE" MUMMY/HUGGIES case the fact the products were toddler clothing
and toys, which are likely to be bought quickly on a recurrent basis led to the
decision that customers would rely on the essential brand "HUGGIE" as a product
identifier and "HUGGIE" MUMMY was therefore deceptively similar to HUGGIES.
By contrast, speciality or expensive items are not likely to be purchased hastily or
without due consideration, and likely to involve considered inspection of the trade
marks. For this reason TIFFANY KOURY was not considered too close to TIFFANY &
CO for luxury clothing and accessories, which affords closer scrutiny of the brands.

CASE

Ichhamati Co-operative Milk Producers Union Limited filed an application for registration of the mark
IMUL (depicted in a triangular shape) (Application No. 1281174) under class 29 (milk goods and
other dairy products) of the Trademarks Act, 1999. After the advertisement of this application, Kaira
District Co-Operative Milk Producers Union Limited (appellant) opposed registration of the
trademark. The opposition was based on the ground that the appellant was carrying on a wellestablished business of manufacturing, marketing and exporting milk products under the name
AMUL since 1955. By virtue of its long, continuous and extensive use of the trademark, it was
contended that the public now associated AMUL with the appellants products. Therefore, the
respondents adoption of the mark IMUL would cause confusion among the public and in the trade
as it was deceptively similar to the appellants trademark.
The registrar, however, found that the respondents adoption of the mark IMUL was honest and was
not deceptively similar. The decision was based on the fact that the respondent had been using this
mark since 2001 and its turnover had increased continuously since then. According to the registrar,
refusal of registration would cause unnecessary inconvenience and damage to the respondents.
Against this order, the appellant appealed to the IPAB (Circuit Bench, Kolkata). Despite notice, the
respondents did not appear before the IPAB nor did they file counter statements. The IPAB decided
the matter in favor of AMUL ex parte. The order of the IPAB (No. 34 of 2013)
After perusing several cases, the IPAB held that a statement showing increase in sales turnover (by
way of affidavit) was no ground to grant registration of a trademark that was deceptively similar to
AMULs trademark. It was held that the mark (IMUL) was phonetically similar to AMUL, except for the
first letter A and I. The IPAB used the test of an unwary purchaser with average intelligence and
imperfect recollection to show that phonetically similar marks are likely to cause confusion among
such purchasers. Moreover, case law showed that AMUL had become a household name and the
appellant had been successful, in the past, in restraining others from using its registered trademark.
Also, since the respondents did not appear before the IPAB to prove the use of the mark IMUL since
2001 and give reasons for adopting the same, the IPAB held that AMUL was a well-known mark and
the registration of a deceptively similar mark ought not to have been allowed. Therefore, the order
was set aside.