[3.7.1] SUBSTANTIALLY IDENTICAL
The test for whether two trade marks are substantially identical is set out in Shell Co (Aust) Ltd v. Esso Standard Oil (Aust) Ltd where Windeyer J stated:
“In considering whether marks are substantially identical they should I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity”(1)
Hence the test is more difficult for an opponent to satisfy than the imperfect recollection test applied for deceptive similarity. The significance of the word “identical” is apparent when observing the application of this test by various decision makers. Generally speaking, the case law indicates that trade marks have only being found to be substantial identical under the above test when they differ only in minor differences that have little or no significance to their identity.
The following guiding principles have been developed in applying this test:
- Trade marks that are phonically identical will generally be held to be substantially identical.(2)
- Trade marks that only differ in the addition or subtraction of a space will generally be held to be substantially identical.(3)
- Trade marks that only differ between plural and singular forms will generally be held to be substantially identical.(4)
- Trade marks that differ only in a single letter may be held to be substantially identical.(5)
- Trade marks that differ only in words that are purely descriptive of the goods or services are likely to be held to be substantially identical.(6)
- Trade marks that differ only in words that are not purely descriptive of the goods or services but are nevertheless of a nature that would make no practical difference to the comparison may be held to be substantially identical.(7)
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1. Shell Co of Australia Ltd v. Esso Standard Oil (Aust) Ltd [1963] HCA 66 at paragraph 12
2. See for example Austech Ltd v. Silver Colloid Pty Ltd [2003] ATMO 53 where DENTA-PURE 5K was found to be substantially identical to DENTAPURE 5000
3. Carnival Cruise Lines Inc v. Sitmar Cruises Ltd [1994] FCA 936 at paragraph 63
4. Carnival Cruise Lines Inc v. Sitmar Cruises Ltd [1994] FCA 936 at paragraph 63
5. See for example Kendall Co. v. Mulsyn Paint & Chemicals [1963] HCA 1 at paragraph 3 regarding POLYKEN and POLYKIN (found in obiter dicta to be substantially identical); RKH Pty Ltd v. Christian Dior (1985) 6 IPR 78 at 81 regarding DIOR and DION (found substantially identical); Sportscraft Consolidated Pty Ltd v. General Sportcraft Co Ltd (1993) 27 IPR 74 at 77 regarding SPORTSCRAFT and SPORTCRAFT (found substantially identical); Daimer Industries Pty Ltd v. Kabushiki Kaisha Daimaru (1993) 27 IPR 124 at 131 regarding DAIMER and DAIMARU (found substantially identical); Mulford Plastics Pty Ltd v. 3V Partecipazioni Industriali SpA (1995) 32 IPR 557 at 560 regarding POLYVIC and POLIVIC (found substantially identical); However compare this with the hearing officers comments in Medicon EG Chirurgiemechaniker v. A.R. Medicom (Australia) Pty Ltd [2015] ATMO 106 at paragraph 34 regarding MEDICOM (stylised) and MEDICON (found not to be substantially identical) which highlights this is by no means a set rule.
6. See for example Microcom Pty Ltd v. Microcom Systems Inc [1998] ATMO 2 regarding MICROCOM and MICROCOM NETWORKING PROTOCOL (found substantially identical); see also Imax Corporation v. Vago Imports Pty Ltd [2002] ATMO 80 regarding IMAX and IMAX SPORTS (found substantially identical); see also PB Foods Ltd. v. Malanda Dairy Foods Ltd [1999] FCA 1602 regarding CHILL and CHOC CHILL (found substantially identical)
7. See Challenge Cancer Support Network Inc v. Leukaemia Foundation of Queensland [2002] ATMO 29 regarding LEUK and LEUK BEAR (found substantially identical) in relation to charitable fundraising services. Note that this decision should be treated with caution and it ought not be read to permit the determination of the question of substantial identity based on extraneous matters outside the contents of the applications/registrations being compared. So far as the hearing officer observed evidence that charitable services were “inseparable from the sale of bears” this can only be read as indicative of the insignificance of BEAR in relation to charitable fundraising services generally rather than relying merely on the actual use of the mark in the applicant’s hands, which would be an erroneous approach to the question of substantial identity.
