When a picture can be considered deceptively similar to a word

The Trade Marks Office has taken a sword to the hopes of applicants wanting to register device trade marks which are perceived to match existing registered word marks in its decision on the SAMURAI WARRIOR (device) submitted for registration by Teraglow Pty Ltd.

IP Australia repeatedly rejected the SAMURAI WARRIOR mark at examination stage under s 44(1) of the Trade Marks Act 1995 (Cth), citing prior registered word mark SAMURAI, owned by Globeride Inc.

Both marks were claimed for identical class 28 goods.

At its hearing, Teraglow submitted that the examiner had incorrectly applied the principle in Jaferjee v Scarlett – which established that two marks, in a side-by-side comparison, may exhibit various differences but convey the same idea and therefore be deceptively similar.

Teraglow argued that in order for the Jafferjee principle to apply, the SAMURAI WARRIOR mark and the SAMURAI mark must bear a visual resemblance. Only if that criterion was satisfied could the ‘idea of the mark’ inform the consideration of whether the marks are deceptively similar. Teraglow then went on to argue that because the SAMURAI WARRIOR mark is a device, and the SAMURAI mark is merely a word, they cannot visually resemble each other, and therefore could not be deceptively similar.

Ultimately, the ATMO found that contrary to Teraglow’s assertions, it was not an ‘impermissible extension’ of the Jafferjee principle to find that a word and its pictorial equivalent are deceptively similar.

For Teraglow, that meant the SAMURAI WARRIOR device was refused registration by the Trade Marks Office.

This decision highlights the need to think carefully about the possible similarities between any device mark and prior registered word marks. If the device mark ‘bears the hallmarks’ of the word mark, it is likely it will not be accepted for registration.

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By: Chris Round and Allison Wallace

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