4. Similar trade marks

Section 25(1)(b) of the Act provides that:

The purpose of section 25(1)(b) of the Act is to prevent the registration of a trade mark that is similar to another registered or pending trade mark that has earlier priority¹³ for the same or similar goods or services, where use of the applicant’s trade mark is likely to deceive or confuse.

When assessing whether there are any potential citations under section 25(1)(b) of the Act, an examiner must consider whether:

• there is a similar mark belonging to a different owner that is registered, or the subject of an application with earlier priority;
• the mark is in respect of the same or similar goods or services as the mark under examination; and
• in light of the similarity of the marks and the similarity of the goods and services, use of the mark under examination is likely to deceive or confuse.
  

Where the criteria in section 25(1)(b) of the Act are considered to apply, the examiner should raise the trade marks concerned as citations against the application.

When considering raising a citation, the examiner must consider the similarity of the mark under examination against any marks that are potential citations. The examiner must consider whether the marks are sufficiently similar that a citation should be raised under either section 25(1)(b) of the Act.

Case law provides well-established guidelines for comparing trade marks in order to determine whether they are sufficiently similar for citation purposes. The overriding principles for comparison of trade marks are set out in Re Pianotist Co’s Application (1906) 23 RPC 774 at 777:

These principles have evolved into five basic guidelines that can be applied in respect of all trade marks:

1. The marks should be compared as a whole.
2. Imperfect recall must be taken into account.
3. The idea of the mark is important.
4. The look and sound of the mark must be considered.
5. The trade channels of the respective goods and/or services must be taken into account.

Footnote

¹³ It follows from section 34(4) that references to section 34 anywhere in the Act should be read as references to section 34 or section 36. Section 25(1)(b) thus prohibits the registration of a trade mark if it is similar to a trade mark that belongs to a different owner and that has priority, under either section 34 or section 36, in respect of the same or similar goods or services, where use of the trade mark under examination is likely to deceive or confuse.