Section 24 of the Trade Marks Act (Chapter 385) is the conflict provision — the reason a clearance search matters before you adopt a mark.
Section 24(1)
Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods or goods of the same description — unless the date of registration of the first-mentioned trade mark is, or will be, earlier than that of the second.
Four elements have to line up before the bar applies.
- Another person’s mark. Your own earlier registration is not an obstacle — though the Registrar may require the two to be entered as associated trade marks under section 28.
- Registered or applied for. A pending application counts. A search of the Register alone can therefore miss a conflict that surfaces months later.
- Same goods, or goods of the same description. Not merely the same class. And because “goods” includes services, where goods fall to be compared with services the expression is read as “closely related to”.
- Substantially identical, or deceptively similar. Two different tests — see below.
Substantially identical, and deceptively similar
| Substantially identical | Deceptively similar | |
|---|---|---|
| Source | Not defined; the ordinary meaning | Defined in section 1(3) |
| Test | The two marks compared side by side, noting similarities and differences and the importance of each | Whether the mark so nearly resembles the other as to be likely to deceive or cause confusion |
| Point of view | Direct visual and aural comparison of the marks themselves | The imperfect recollection of an ordinary purchaser of those goods |
| Reach | Narrow — near-identity | Wide — the usual battleground |
A trade mark is deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.
Look — shape, layout, device, colour where claimed under section 18. Sound — how the marks are spoken, which matters in a market where goods are asked for by name. Idea or meaning — two different words conveying the same idea can still deceive. The essential feature — a common dominant element weighs more heavily than differences in the surrounding matter. And the goods and the market — the more casual the purchase, the more readily confusion arises.
“Goods of the same description”
This is broader than identity of goods and narrower than the whole class. The usual considerations are the nature and composition of the goods, their use or purpose, and the trade channels through which they reach the public — whether they are made by the same kind of business, sold in the same kind of shop, to the same kind of buyer.
Section 22 requires registration within a prescribed class, but the classes are an administrative convenience. A conflict can arise across classes if the goods are of the same description, and two items in the same class may not be of the same description at all.
The date exception, and section 24(2)
The bar does not apply where your date of registration is, or will be, the earlier. Under section 45, the date of registration is the date the application was lodged. So the order of filing, not the order of grant, decides priority.
The Registrar may defer acceptance of the application for the earlier-dated mark until the later-dated mark has been registered.
Two further provisions can put a mark in the way of yours even though it is not currently on the Register:
- Section 63 — a mark removed for non-renewal is, for 12 months, deemed to be still registered for the purpose of another person’s application, unless it is shown there was no use in good faith in the two years before expiry, or that no deception or confusion would be likely.
- Section 106 — transitional applicants were given priority over other applicants for substantially identical or deceptively similar marks for the same goods or goods of the same description.
If the Registrar cites an earlier mark
- Test the citation. Are the goods really of the same description? Is the resemblance close enough for the imperfect-recollection test? Is the cited mark still in force?
- Narrow the goods. A specification confined to goods that are not of the same description may take the conflict away.
- Accept conditions or limitations. Under section 33(1) the Registrar may accept subject to limitations — as to mode of use, area within the country, or export goods.
- Rely on section 26. Honest concurrent use, or other special circumstances, allows the Registrar to permit registration of conflicting marks by more than one proprietor, subject to conditions. Section 26(2) protects a continuous prior user outright.
- Attack the earlier mark. If it has not been used for three years, apply under section 14; if it is wrongly on the Register, apply under section 13.
- Seek consent. A written consent from the earlier proprietor does not bind the Registrar, but it is a substantial factor in the section 26 discretion.
- Or change the mark — before, not after, you have invested in it. Note that an amendment cannot substantially affect the identity of the mark applied for (s 33(3)), so a real change means a fresh application and a later date.
Section 24 is only the registry stage
Registration and infringement are separate questions. Under section 53 you can infringe by using a deceptively similar mark even if your own mark was registered — and section 49(3) provides that where two proprietors hold substantially identical or deceptively similar registered marks, neither acquires rights of exclusive use as against the other except so far as their respective rights have been defined by the Registrar or a court.
An unregistered earlier reputation can also stop you, through passing off and through section 19(a).
Sources
- Trade Marks Act (Chapter 385) — ss 1, 13, 14, 18, 19, 22, 24–26, 28, 33, 45, 49, 53, 63, 106
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.