A number of provisions of the Trade Marks Act refer to the concept of “substantially affecting the identity” of a mark. These provisions relate to whether use of an amended mark counts as use of the mark as registered; whether a pending application is “substantially identical” to a prior mark; whether amendment can be made to the representation of a mark after publication; and whether a mark infringes an earlier “substantially identical” mark. The concept is also relevant when considering ownership of a mark, which in Australia is determined by the first person to use that mark (or use a mark with alterations or additions that do not substantially affect its identity.)
For many years the test of what was “substantially identical”, and what were “changes that do not substantially affect the identity of the mark”, were determined on the basis of a side-by-side comparison. Relatively minor differences were considered to prevent the marks from being “substantially identical” (although they could still be “deceptively similar”). However, the decisions of the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd and Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd suggest that quite significant differences between marks could exist, and they would still be considered “substantially identical”. These differences include the addition of graphic elements and even additional distinctive words.
This change to the interpretation of “substantially identical” has flowed through to the Trade Marks Office, which apparently is now allowing amendment of plain word marks by adding graphic elements and stylised lettering to form a logo. This has implications for non-use removal applications where the mark as used is a variation of the mark as registered, as well as oppositions where an opponent may claim ownership of a pending mark on the basis of having used a different mark where the differences do not substantially affect the identity of the mark.
This change may be perceived as good for trade mark owners, because it potentially expands the scope of what is considered to be their trade mark. However, it also creates much more uncertainty as to how far a trade mark can be altered until it is no longer “substantially identical” to a registered or common law mark. In time we will no doubt receive more Federal Court rulings to help define the new boundaries of what is “substantially identical”. Until then, extra care must be taken when considering adopting a new mark to ensure it does not infringe a prior right.