When is Close, Too Close?

Trade mark assessment can be incredibly subjective. IP Australia’s views can and do change over time, and assessment can even vary depending on the views of your specific trade mark examiner.

Take a look at some interesting examples below:

Table 1: Examples of ‘too similar’ trade marksSome of the marks listed in Table 1 have been extracted from Davison, Mark and Horak, Ian,Shanahan’s Australian Law of Trade Marks and Passing Off, fifth edition, Thompson Reuters, Pyrmont, 2012, pp. 1034–83. Others are taken from recent decisions.

Table 2: Examples of ‘not too similar trade marksSections of Table 2 have been extracted from Davison and Horak, Shanahan’s Australian Law of Trade Marks and Passing Off, pp. 1034–83.

Seeing double: Businesses using the same trade mark

Even though as a general rule, the purpose of registration is to give you exclusive rights over a particular brand, there are situations where completely different businesses will use the same trade mark for completely different goods or services. Examples are the word ‘Dove’ which is used by two different companies as a brand name for both chocolate and for soap.

Other times the situation can arise where two similar brands are used, but for the same goods or services. This can happen, and when it does it unintentionally creates consumer confusion.