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4.3 Idea of the mark

The idea suggested by a mark should also be considered, as the idea is more likely to be recalled than the precise details of the mark.¹⁸ If it appears that two marks convey an idea so similar that customers may refer to the marks by the same name, a citation should be raised.

In Jafferjee v Scarlett (1937) 57 CLR 115, the applicant’s mark, consisting of two runners breasting a tape, was refused registration due to an existing mark of two men grasping javelins. It was held that both marks conveyed the idea of male athletes with a line across the chest.

That case cited the Herschell Committee report where it stated:

Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

Conceptual similarity will not always be sufficient to give rise to deception or confusion, however. In Sabel BV v Puma AG, Rudolph Dassler Sport [1998] RPC 199 at 224, the European Court of Justice remarked:

In circumstances such as those in point in the main proceedings, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion.

Whether or not two marks convey the same idea is a question of fact and each case must be considered on its merits. Some general points and previous examples may be helpful, however.

Footnote

¹⁸ Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 174.

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4.3 Idea of the mark

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