Trade Mark Due Diligence in Establishing New Businesses

When starting a new business, a key consideration is branding and the use of a mark. This is not to be confused with a business or company name which are legally very different. It is important when creating a mark, that you not only conduct due diligence to determine whether it will infringe an existing mark but that you consider registering your mark.

What is a Trade Mark?

The Trade Marks Act 1995 (Cth) (“the Act”) defines a trade mark as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.[1] A sign includes “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”.[2] While there are many criteria that a mark must meet in order to reach registrability status, this article focuses on similarity of marks.

Substantially Identical or Deceptively Similar

The Act stipulates that a trade mark application will be rejected if is it substantially identical or deceptively similar to an already registered trade mark (or an applied for mark pending registration) in connection with goods or services that are similar or goods that are closely related to services and vice versa.[3]

Similar Goods and Services

In Jellinek’s Application,[4] it was proposed by Romer J that the following factors should be examined when determining whether goods (or services) are similar:

  • The nature of the goods;
  • The respective uses of the articles; and
  • The trade channels through which the commodities are respectively bought and sold.

The examiner may need to consider other factors including but not limited to the characteristics of goods or services, the origin of goods or services, whether the goods or services are usually produced or provide by one and the same manufacturer or business.[5] For a comprehensive list of factors, contact our team.

Closely Related Goods and Services

What will be determined as closely related goods and services is a subjective consideration for the courts. Generally speaking, there must a “some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as ‘closely related’”.[6]

Substantially identical or deceptively similar

For a determination that a mark is substantially identical to another, the two marks will be compared side by side with the essential features and total impression from the comparison contemplated.[7]

On the other hand, the Act says a trade mark is taken to be “deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.[8] This issue has been widely considered in case law with Windeyer J determining in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd that “… 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 television exhibitions”. Therefore, the side by side test is not utilised but instead the impression that the marks bear[9] to someone with imperfect recollection.[10] Further, there must be a “real tangible danger” of deception or confusion.[11]

Expert advice should be sought in ascertaining whether marks are substantially identical or deceptively similar.

Unregistered Marks

Although IP Australia will look to existing registered trade marks and pending applications to determine rejections under section 44 of the Act, a person may file an opposition to a trade mark application on the basis that, among many other things, the opposer had a prior use of a similar trade mark[12] or because of a well-known similar Australian mark.[13]

Therefore, is imperative that a person undertaking a new business venture conducts sufficient due diligence which includes a search of registered and pending trade marks as well as a general search for unregistered marks.

Registration of a Trade Mark

Once due diligence has been conducted, registration should be considered. Registration of a mark in Australia provides the owner with proprietary rights in this country and entitles it to restrict the use of the trade mark, or a confusingly similar trade mark, in association with similar goods or services. Although Australia does not operate on a first to file principal, it is still recommended that a trade mark be registered and done so as soon as possible. There are many rules surrounding what can and cannot be registered and it is important to seek specialist advice on this issue.

If you require advice or assistance with your mark, contact the experienced team at Miller Sockhill Lawyers on 07 5444 4750 and one of our friendly team members can answer any questions you might have.

The content of this article is current at the date of publishing and is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.


[1] Trade Marks Act 1995 (Cth) section 17.

[2] Trade Marks Act 1995 (Cth) section 6.

[3] Trade Marks Act 1995 (Cth) section 44(1)-(2).

[4] Jellinek’s Application (1946) 63 RPC 59 at 70.

[5] Beck, Koller & Company (England) Limited’s Application (“Plio”) (1947) 64 RPC 76 at page 78.

[6] Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at 37.

[7] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415.

[8] Trade Marks Act 1995 (Cth) section 10.

[9] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182.

[10]Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641. See also Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1.

[11] Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at 43.

[12] Trade Marks Act 1995 (Cth) section 58A.

[13] Trade Marks Act 1995 (Cth) section 60.