Intellectual Property & TechnologyLaw

Registered Trademarks – The Test for Similarity

By 19 August, 2020 No Comments

A case of apples and oranges…or pears?

What is a trademark?

‘Badges’ or ‘labels’ assigned to a brand, assist consumers in distinguishing suppliers of competing goods and services from each other. Consumers make associations between a business’ trademark and its reputation and brand image, which influence consumer choice and incite market competition between businesses. All trademarks registered are recorded on the Australian Trademark Register and are protected by the rights enshrined in the Trademarks Act 1995 (Cth) and common law.

The Test for Similarity

By registering your trademark, you obtain exclusive rights to use the trademark and automatic rights of action against those seeking to infringe on those rights. By virtue of section 44 of the Trade Marks Act 1995 (Cth), anyone with a registered trademark has the right to oppose the acceptance of a trademark application where it is either:

  • ‘substantially identical’; or
  • ‘deceptively similar’.

The question of whether trademarks are ‘substantially identical’ or ‘deceptively similar’ are independent questions that require different applications.

‘Substantially Identical’

Multinational technology giant ‘Apple’ has recently challenged an application made by meal preparation company, ‘Prepear’ for the registration of a ‘pear logo’ as a trademark.

In considering whether a trademark is ‘substantially identical’ to another, the marks must be compared side-by-side with a view to determining their similarities and differences. It is important to consider the total impression of resemblance that results from the comparison. It is clear from the comparison of Apple’s infamous Apple Logo and Prepear’s Pear Logo, that the trademarks are not ‘substantially identical’ in appearance.

‘Deceptively Similar’

Where trademarks are not identical, it is still possible for the trademark to be rejected on the grounds that they are ‘deceptively similar’. Unlike the previous test, determining ‘deceptive similarity’ does not require a side-by-side comparison. When assessing ‘deceptive similarity’, it is important to consider the essential features of each trademark, the overall impression of resemblance between the trademarks, and whether the other trademark is likely to deceive or cause confusion. Deception or confusion may arise in regard to the character of goods and services provided, the intended use of the goods and services, or even the connection in the mind of consumers with particular organisations.

Apple has recently filed a Notice of Opposition (Notice) for trademark registration against Prepear on the basis that Prepear’s use of a “minimalistic fruit design with a right angled-leaf’, closely resembles Apple’s infamous Apple Logo and creates a similar commercial impression” that is likely to confuse consumers. In the Notice filed with the court, Apple argues that given Prepear’s services relate to computer software, healthcare and nutrition, a meal preparation app is a venture that Apple might conceivably consider pursuing. Apple has also pointed out, that it is not inconceivable that such a venture would occur, as it has several health and nutritional-related apps and services in existence already.

Prepear’s co-owners have publicly stated that they will defend the Notice and will “fight for the right to keep our logo” despite Apple’s history of protecting its well-renowned logo in the past.

Key Takeaways

In our competitive market, a trademark is a valuable asset and an important component of business success.

If you need assistance or advice regarding protecting your trade mark or intellectual property, please reach out to Aaron McDonald at | (08) 6188 3340.