Key Concepts

Capable of Distinguising

A registrable trade mark needs to be something that other traders may not wish to use in the normal course of trade. Invented words such as “Coca-Cola” and words that do not describe what the trade mark will be used on such as "Apple“ for computers are examples of types of trade marks that are unlikely to be used in the normal course of trade and are therefore more likely to be registrable. A combination of words and unique symbols/logos can also increase the

Sustaintially Identical

A trade mark will be substantially identical to another trade mark based on a side by side comparison of the marks, noting similarities and differences. The importance of any observed similarities and differences are assessed while taking into account the total impression of resemblance or dissimilarity that comes from the comparison.

Examples of substantially identical marks include:

• BUBBLE UP was found to be substantially identical to UP
• CHOC CHILL was found to be substantially identical to CHILL

Deceptively Similar

A trade mark will be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. To determine if two marks are deceptively similar, you need to consider the goods to which they are to be applied, the nature and kind of customer who would be likely to buy those goods and all the surrounding circumstances.

Examples of deceptively similar marks include:

• SKYPAL was found to be deceptively similar to SKYPOL
• BAREFOOT RADLER was found to be deceptively similar to BAREFOOT

Renewals

The initial period of registration for a trade mark is ten years from the filing date of the application. A trade mark registration can be renewed up to 12 months before or six months after the expiry date. Official fees apply if the registration is renewed after the expiry date. A trade mark registration may be renewed every ten years.