How to choose a brand that does not infringe a registered trade mark

10 July 2019
Posted by Tony Grujovski

“David and Goliath”, the all-too-often tag used in the media to describe large businesses taking legal action to enforce their registered trade mark rights against smaller businesses using allegedly similar branding, but they are not always wrong to do so. Recently, this tag was used to describe a dispute initiated by IKEA, a well-known retailer of ready-to-assemble furniture, against STYLKEA, an Australian business specialising in selling products to enhance or transform ready-to-assemble furniture. The dispute appears to have been resolved after the owner of the STYLKEA trade mark voluntarily withdrew her trade mark application.

This case highlights the importance of selecting a brand that does not potentially infringe an existing trade mark registration, so you avoid your own David and Goliath battle!

How do you infringe a registered trade mark in Australia?

In Australia, if you adopt a trade mark which is:

– used a trade mark (ie. as branding for your goods and services);
– identical, “substantially identical” or “deceptively similar” to a registered trade mark; and
– used in relation to goods and services which are identical or sufficiently similar to the goods and services protected by the registered trade mark,

you will generally be infringing the legal rights of the owner of the registered trade mark.

If the registered owner learns about your business using an infringing trade mark, you could end up being on the receiving end of a nasty letter of demand from the registered owner. Dealing with the dispute ends up being an unwanted distraction from running your business and can become expensive. You may potentially need to rebrand your business to remove any use of the infringing trade mark, and pay compensation to the registered owner for infringement of their trade mark rights, to avoid the dispute heading to court. This can all be avoided by carefully selecting your brand and obtaining legal advice on whether you can register your brand as a trade mark before you start using it.

How do you determine if your brand is too similar to a registered trade mark?

The legal test for determining if two trade marks are “substantially identical” is narrower compared to being “deceptively similar”, the latter test involving an abstract comparison of the trade marks. Deciding whether one trade mark is “deceptively similar” to another is a highly complex and subjective legal test – there are often no guaranteed outcomes and therefore obtaining legal advice from a trade mark lawyer is strongly recommended.

From the many Australian cases that have compared two trade marks for deceptive similarity, there are some overall principles you can follow in selecting a brand that is less likely to infringe a registered trade mark that you are aware of:

– Avoid incorporating the distinctive or essential element of a registered trade mark (which is typically its non-descriptive and non-generic elements) in your trade mark. Even if you add other letters, words or graphics to your trade mark, this may not be enough to remove the overall similarity with the registered trade mark.

– Avoid adopting the same idea or concept of a registered trade mark in creating your brand (in addition to other visual or aural similarities). RAIN MASTER and RAIN KING is a famous example of two trade marks that were considered deceptively similar partially based on sharing the same idea or concept (both marks conveying the idea of being a ruler of rain).

– Do not assume that adopting the features of a registered trade mark being words that describe the goods and services offered by the registered owner, or are commonly used in the trade that the registered owner is a member, are off limits. Even if a trade mark containing such words is registered, it does not mean the actual scope of legal protection given to the registered owner includes use of those words in isolation from the other words or graphical elements forming part of the registered trade mark.

– Consider the goods and services that you will be offering to consumers using your brand. For example, if you will be using your brand to market and sell low-priced goods where consumers would not pay particular attention to differences in branding in making their purchasing selection, the greater the difference which your brand needs to have to any registered trade mark for those goods to avoid being considered deceptively similar.

Even if you follow the above principles in selecting your brand, you could still be infringing a registered trade mark that you do not know about. As the old saying goes – ignorance of the law (or registered trade marks) is not an excuse! This is why obtaining professional availability searches from a trade mark lawyer or attorney is invaluable as part of your brand development process, as they can advise on whether your desired brand could be deceptively similar to, and infringe, a registered trade mark.

How can we help?

Unfortunately, there are no hard-and-fast rules in determining if your brand is “deceptively similar” and infringing a registered trade mark in Australia. At Studio Legal, we offer a range of trade mark clearance searching and registration services for Australia and internationally. If you need advice on choosing or protecting your brand, please give us a call on 03 9521 2128, or email us at hello@studiolegal.com.au.

DISCLAIMER

The information in this article is of a general nature. It does not constitute formal legal advice, and should not be relied on as such. Please see the full disclaimer in our website terms. Please contact Studio Legal if you are seeking advice about a specific legal matter.