.png)
What to Do if Your Trademark is Similar to an Existing Registration?
A trademark serves to identify your goods or services and distinguish your brand in the marketplace. Registering your trademark is essential to protect your brand from imitation by others.
IP Australia's Role
IP Australia oversees the application and registration process for trademarks. If your trademark is found to be deceptively similar or substantially identical to an existing one, IP Australia will object to your application. However, you have options to address these objections.
This guide will explain the steps to take if your trademark conflicts with an already registered one.
Assessing Substantial Identity and Deceptive Similarity
IP Australia uses the tests of 'substantial identity' and 'deceptive similarity' to compare trademarks.
Substantial Identity: This involves a side-by-side comparison of trademarks, analyzing their similarities, differences, and essential features.
Deceptive Similarity: If trademarks are not substantially identical, they are assessed for deceptive similarity. This test considers whether an average person would perceive the marks as confusingly similar based on their overall impression.
Examples of Trademark Comparisons:
Pure Water (Bottled water) vs. Pure H2O (Mineral water):
Substantially identical
Both marks convey the same concept of pure water, which can mislead consumers.
FitLife Gym (Fitness services) vs. LifeFit Gym (Health club services):
Deceptively similar
The inversion of words does not sufficiently differentiate the marks, as they convey a similar meaning and are used in the same industry.
Similarity of Goods and Services
IP Australia also evaluates how closely related the goods and services are between the trademarks. The closer the relationship, the more likely there will be a conflict. Conversely, similar trademarks can coexist if they pertain to unrelated goods or services.
Criteria for Determining Similarity
For goods:
Nature of the goods
Uses of the articles
Trade channels for buying and selling the goods
For services:
Nature and characteristics of the services
Origin of the services
Purpose of the services
Usual providers of the services
Sources, areas, seasons, related goods or services, and classes of customers
Perception of services by providers
Additional Factors
IP Australia considers several factors and external circumstances, such as:
Usage context of the trademarks
Buying and selling conditions of the goods or services
Characteristics of the consumers
Despite similarities, trademarks can coexist on the register based on various considerations.
Conclusion
When facing objections from IP Australia, understanding the criteria and factors used to assess trademark similarity can help you navigate the registration process and address potential conflicts.
Got questions?
Contact us today!
Comments