s 44 – identical etc trade marks

Section 44 of the TMA provides a basis for rejection of a mark that is substantially identical with or deceptively similar to another mark on the Register in relation to the same or similar goods or services.  Exceptions are provided for honest concurrent use and for continuous prior use.

Sub-section (1) of s 44 relates to trade mark applications in respect of goods, and sub-section (2) to those in respect of services.

The phrase “deceptively similar” is defined in s 10 of the TMA.  See discussion of “deceptively similarhere.

The phrase “substantially identical” is not defined in the TMA.  The test to be applied was set out  by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 as follows:

[The marks] 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 that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question cf fact: see Fraser Henleins Pty Ltd v. Cody (1945) 70 CLR 100 , per Latham C.J. at pp 114, 115 , and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. at p 298 , where the meaning of the expression was considered.

For a discussion of similar or closely related goods or services, see here.

As stated above, sub-sections (1) and (2) of s 44 are subject to sub-sections (3) and (4) which are the exceptions  provided for prior use and honest concurrent use.

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