1

In Australia, one infringes on another's trademark if:

The sign1 is substantially identical or deceptively similar

or:

The goods or services are closely related or in the same description

or:

The trade mark is “well known”

Question

Would a company be infringing on another's trademark if it had the same business name but for one character?

Assumptions

Please assume:

  • the companies have completely different logos
  • the companies both sell assorted general-purpose products (like in a department store)
  • the difference in names is from either the omission, addition, or replacement of one character
  • the names are phonetically identical, despite the different spelling

1 I think 'Sign' means 'logo'.
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1 Answer 1

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I think you will find that "sign" here means "mark" and includes a word, a phrase, or a logo, or a combination of any of these.

Indeed section 6 of the act defines this:

"sign" includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

The main test is whether the two marks are "confusingly similar" or whether prospective customers are likely to be confused into thinking that one seller is actually the other, or into attributing to one the goodwill or reputation of the other. (This standard is much the same under US law or the laws of a good many other countries.) This is a very fact-intensive determination, and is to some extent a judgement call.

But a difference in one letter only, with little or no difference in sound, might well be sufficiently similar to cause confusion.

Note that section 10 of the law defines this:

For the purposes of this Act, a trade mark is taken to 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, and thus this might well be a case of infringement.

Note that for infringement to be found, in addition to the marks being "deceptively similar", the goods or services must also be similar or in the same category, (or goods "closely related" to protected services or vice versa) unless the mark being infringed on is "well known".

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