[3.7.2] DECEPTIVELY SIMILAR
The test for deceptive similarity is one of imperfect recollection. As explained by Windeyer J in Shell Co (Aust) Ltd v. Esso Standard Oil (Aust) Ltd:(1)
“On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are now not to be looked at side by side. The issue is no abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the defendant’s…” [use of its similar mark].
This test is therefore simpler to satisfy than the test for substantial identity.
There are three fundamental principles which must always be followed when applying the test:
(1). The trade marks ought to be consider as wholes rather than broken into their parts.(2)
(2). The comparison of the two trade marks ought not take place in isolation of considering the goods or services for which registration is sought.
Namely, when assessing the likelihood of confusion one must take into account the type of goods or services that would be purchased in addition to taking into account the similarities between the two trade marks. Deceptive similarity is more likely to occur when the trade marks concern goods or services purchased quickly rather than goods that consumers may take longer to purchase.(3)
(3). Both aural and visual similarities are relevant. Even with trade marks consisting of both words and graphic elements (“composite trade marks”), consumers will often refer to the words only. Therefore deceptive similarity may result when the words are aurally similar even if the graphic elements are dissimilar.(4)
The following further guiding principles may also be of assistance:
(1). Trade marks that both convey a common idea may be more likely to be deceptively similar. However they must look or sound alike before the fact that they convey the same idea can be relevant.(5)
(2). Elements of the trade marks that are common in the trade and therefore less likely to be striking to the consumer are to be given little weight when considering whether two trade marks over all are deceptively similar.(6)
(3). Elements of composite trade marks that are prominent and occupy a dominant position within the overall mark may be regarded as “essential features” of the mark. Deceptively similarity is more likely when such “essential features” have been reproduced.(7)