There is often a fine line when determining if two trade marks are ‘deceptively similar’. When considering an application to register a trade mark, your business should consider other trade marks to ensure that a similar word or design is not already registered.
Two Federal Court decisions have considered the meaning of the concept ‘deceptively similar’, with differing results.
In Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 the Federal Court considered the aural similarity of the words ‘tivo’ and ‘vivo’, pronunciation of the words, the broad class of potential customers and evidence of actual consumer confusion. The Court held that the trade marks were deceptively similar and therefore in conflict.
In Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 the conflict arose in relation to the trade marks both containing the words ‘post’ and ’Australia’. The question was considered: would customers be caused to wonder whether the business of Digital Post was associated with Australia Post? The Federal Court held that the word ‘digital’, combined with the different positioning of the words ‘post’ and ‘Australia’ were sufficient to distinguish the trade marks.
The intellectual property and commercial lawyers at Matthews Folbigg Lawyers in Parramatta can provide legal advice in relation to trade marks and copyright and can handle a trade mark application for you. Contact us today.
Stephen Jenkins – stephenj@matthewsfolbigg.com.au or 9635 7966
Phillip Brophy – phillipb@matthewsfolbigg.com.au or 9635 7966
