2. Deception or confusion

¹Section 17(1)(a) of the Act states:

The Commissioner must not register as a trade mark or part of a trade mark any matter…the use of which would be likely to deceive or cause confusion…

Pursuant to section 17(1)(a) of the Act, the Commissioner must not register any matter as a trade mark, or part of a trade mark, if the use of that matter is likely to deceive or cause confusion.

Deception or confusion is likely to occur if the trade mark or matter within the trade mark suggests that the goods or services have a specific characteristic or characteristics that the goods or services do not, in fact, have.

Consideration of section 17(1)(a) of the Act is more likely to be raised by a third party in opposition proceedings where an opponent is relying on its reputation in the same or similar trade mark than by an examiner in the course of examining the application.

When considering whether section 17(1)(a) of the Act prohibits the registration of a trade mark, examiners should focus on whether there is any real likelihood that the trade mark, or matter within the trade mark, will cause deception or confusion in the minds of consumers of the goods or services in question. It is not the examiners role to determine whether there is a hypothetical possibility that use of a trade mark is likely to deceive or cause confusion. An objection should therefore only be raised at examination stage where the trade mark or matter within the trade mark suggests that the goods or services have a specific characteristic or characteristics that the goods or services do not, in fact, have.

Examiners should ask the following questions:

• Does the mark, or matter contained within the mark, suggest some characteristic of the goods or services that those goods or services may not, in fact, have?
• Is the suggested characteristic a prominent part of the mark?
• What is the context of the suggested characteristic in the mark?
• Who is the ordinary consumer of the goods or services?
• In light of the above factors, is there a real (as opposed to a fanciful) likelihood that the ordinary consumer of the goods or services in question will believe that the goods or services have the suggested characteristic?

Footnote

¹ Practice Guideline Amendment 2007/05, Intellectual Property Office Newsletter, 1 August 2007.