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Deceptively Similar Trade Marks and the Trade Mark Opposition Process

What happens if someone is trying to register a trade mark that is too similar to your own?  How can you prove that it is similar?  What are your rights and how can you enforce them?

Trade Mark Protection

A trade mark is a sign used, or intended to be used by a trader to distinguish their goods or services in the course of trade from goods or services provided by other traders.  Businesses are able to register their trade mark for legal protection.  Trade mark protection gives the owner exclusive legal rights to use that trade mark, and allows the owner to take action against other businesses using the same or misleadingly similar trade mark/s.

Trade Marks Act 1995

The Trade Marks Act 1995 (Cth) (‘Trade Marks Act’) section 57 gives a third party the right to oppose the registration of a trade mark on a number of grounds.  One of those grounds is that the trade mark is substantially identical with, or deceptively similar to your trade mark.

If you find that a third party or a competitor has applied for a mark similar to your own, it is important that you exercise your right to oppose.  If your opposition is successful, the trade mark will not proceed to registration.

Zara v Zary

Recently the right to oppose registration of a trade mark was exercised by international clothing giant ‘Zara‘.  Zara filed an intention to oppose the trade mark registration of a children’s book character named ‘Zary‘.  Sydney author Kay Andrews filed a trade mark application to register the name in September 2016, but was then threatened with legal action by the global fashion giant unless it was changed.

The author released a statement claiming that there seems to be no basis for the opposition by Zara given ‘there is no comparison with the name or the product’.  Further, the author claims that Zary is being used in a completely different industry to Zara, with the latter related to clothing and the former being a children’s self-help book.  The author intends to register the trade mark for a wide of range products including toys, puzzles, cartoons and audiobooks, but not clothing.  

In-N-Out v Down N’ Out

In another case, California based In-N-Out Burgers Inc. commenced Federal Court proceedings against Hashtag Burgers, who operate the popular Down N’ Out burgers located in Ryde and Sydney CBD.  It claims that the use of the Down N’ Out is too similar to its own store name and that customers are associating this with the American fast food chain.  They are claiming misleading and deceptive conduct where Down N’ Out operates in a similar manner in marketing American styled burgers.

The Australian store has argued that In-N-Out do not have any interests to be protected as the American fast food chain does not operate within Australia.  With this said, In-N-Out’s recent Australian pop stores may be enough to suffice.  In 2016, the In-N-Out pop up store in Surry Hills saw customers lining up for hours with pre-orders selling out 30 minutes before the store even opened.  It looked like the food chain was finally making a permanent move down under, though much to the dismay of many burger lovers it is claimed that the real reason for the pop store was to establish an Australian presence.  By doing so, In-N-Out was making efforts to protect its trade mark in creating a ‘substantial reputation’ here.  

In establishing an Australian presence, the Plaintiff in these proceedings (In-N-Out) is relying on section 60 of the Trade Marks Act, which allows the registration of a trade mark to be opposed where another trade mark in respect of those goods or services has acquired a reputation in Australia.  As a result of this reputation, the use of the trade mark being applied for would thus deemed likely to deceive or cause confusion for consumers.  The central question in this case will be whether Down N’ Out is deceptively similar enough to In-N-Out that it would cause deception and confusion.  

Deceptively Similar 

Both of these cases centre on the issue of whether one trade mark is too similar to another.  But what makes marks deceptively similar?

The Trade Marks Act section 10 provides that a trade mark is taken to be seen as ‘deceptively similar’ if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.  Thus, the mark needs to be more than just merely similar, it must be ‘deceptively similar’.  

Previous case law provides an indication that the courts may lean towards the judgment made in Eau De Cologne’s Application (1990)17 IPR 540 where ‘My Melody Dreams’ and ‘My Melody’ were found to be deceptively similar on the grounds that the ‘goods bearing the trademarks are different products in the same product range from the one trade source’ (at 542).  

In the In-N-Out v Down N’ Out example, both marks are used in respect of the same products, and Down N’ Out markets its products as ‘American Style Burgers’.  On the other hand, in the case of Zara and Zary, the marks are in respect of unrelated goods and services.  Both matters are still pending and Coleman Greig Lawyers will continue to monitor these cases.  However, the decision in each will ultimately depend on the evidence relied upon by both parties.

Key lessons:

  • Invest in due diligence before launching a new brand;  
  • Conduct regular searches on your brand to identify any potential infringement or opposition issues;
  • In some cases, you may wish to engage a watching service to help you identify marks that you may look to oppose;
  • If you are concerned about a third party’s mark, consult a lawyer as soon as possible to identify and exercise any rights that you may have in respect of such use.

How we can help:

Our Intellectual Property team can assist you by conducting due diligence to ensure that you are not infringing on anyone’s trade mark rights.  We are also able to provide assistance if you believe that a mark is infringing on your own registered trade mark.

Should you require any advice on your Intellectual Property Licensing Agreements, please don’t hesitate to get in touch with Coleman Greig’s Intellectual Property and Brand Protection team today.


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