Trade mark coverage

How much of a change avoids infringement?

Trade marks are registered in relation to selected goods and/or services. A trade mark registration is infringed by the unauthorised use of a trade mark if:

  1. the trade mark is deceptively similar to the registered trade mark; and
  2. the unauthorised use is in relation to goods/services that are the same as and/or similar to the goods/services of the registration.

Both 1 and 2 must be assessed from the point of view of the ordinary purchaser of the goods and/or services, and marks must be compared based on an ‘imperfect recollection’ of the marks rather than a side-by-side comparison.

Two marks are considered deceptively similar if a reasonable person would be likely to be deceived.

Courts have held that a reasonable person is likely to be deceived even if the deception amounts only to being ’caused to wonder’ whether the product/service is provided by the owner of the registered mark.