6 - TM Precedent - TM Prosecution - S44 - Citation Objection

[INSERT DATE]
IP Australia
PO Box 200
WODEN ACT 2606
Attention: [INSERT NAME]
Dear Examiner
Applicant:
Trade Mark [INSERT] in Classes [INSERT]
Citation Objection
##
We refer to the Examination Report in respect of the Applicant’s Trade Mark. We note that
the Applicant’s Trade Mark has been objected by the IPA on the basis of Section 44.
With respect, we do not consider that the cited trade mark [INSERT MARK] referred to in the
Report and are sufficiently similar to prevent the Applicant’s Mark from registration for the
following reasons:
1. No overlap of similarity of goods/services in [Class X]
a. There is no overlap of goods and services between the Application and the
Cited Mark.
b. The [nature] / [end users] / [method of use] / [whether they are in competition
of complementary] are different.
c. The [trade and distribution channels] and where they are likely to be found in
supermarkets (for self-service consumer items) are different.
d. The [price points are different] and hence [customers are likely to pay a
higher/lower level of attention to the goods, making it likelier / less likelier to
notice differences in the goods]
2. Visual/Aural/Conceptual differences
a. There are a number of matters to consider when comparing trade marks:
b. Visual Differences. The Applicant’s Trade Mark is for the words [INSERT],
whereas the cited mark is for [INSERT]. Factors to consider include:
[Composite mark v word mark] / [number of letters] / [any descriptive
elements] / [any dominant or distinctive elements] / [how customers view the
mark: left to right, top to bottom, etc.] / [reputation of marks]
Lodestar Legal Pty Limited | ABN 99602910734

PO Box 165, Freshwater NSW 2096
www.lodestarlegal.com.au
2
c. Aural Differences. The Applicant’s Trade Mark is pronounced as [INSERT],

whereas the cited mark is [INSERT]. Factors to consider include: [number of
vowels] / [any emphasis on particular vowels] / [any descriptive elements that
are likely to be disregarded by consumers] / [how consumers say the marks,
over the phone, in person, etc.] / [for logos without text, how would
consumers describe them] / [IPA notation – International Phonetic Alphabet]
d. Conceptual Differences. The Applicant’s Trade Mark alludes to [INSERT],

whereas the cited mark makes references to [INSERT]. Factors to consider
include: [two invented words have no conceptual similarity] / [descriptive
elements] / [how the concepts are understood by different consumers in
different business fields & cultures]
3. Likelihood of Confusion
a. The Applicant is [INSERT commercial context or background of the

Applicant].
b. The Applicant currently uses the Trade Mark in respect of [INSERT]. The
Applicant offers for sale and sells its goods and services principally to
[INSERT].
4. [INSERT CASE LAW AS APPROPRIATE] As was pointed out in Crook's Trade

Mark, (1914) 31 RPC 79 at page 85, a trade mark should not be precluded from
registration because “unusually stupid people, fools or idiots would be deceived”. A
similar observation was made in Australian Woollen Mills Ltd v F. S. Walton & Co
Ltd, (1937) 58 CLR 641 at 658, where Dixon and McTiernan JJ said:
“The usual manner in which ordinary people behave must be the test of what
confusion or deception may be expected. Potential buyers of goods are not to be
credited with any high perception or habitual caution. On the other hand,
exceptional carelessness or stupidity may be disregarded. The course of
business and the way in which the particular class of goods are sold gives, it may
be said, the setting, and the habits and observation of men considered in the
mass affords the standard.”
5. The Cited Mark is used in respect of [INSERT G/S], which are services which are
different to those for which the Applicant uses the Trade Mark. The way in which the
goods covered by Cited Mark 1 are sold are also extremely different, as are the
customers which purchase goods and services under the respective trade marks.
6. In Registrar of Trade Marks v Woolworths Limited 45 IPR 411, Justice French

reinforced the view that the Registrar needs to be satisfied that there is a reasonable
likelihood of deception or confusion before denying acceptance of an application.
a. Similarly, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,

(1954) 91 CLR 592, French J stated that ‘To show that a trade mark is
deceptively similar to another it is necessary to show that a real tangible
danger of deception and confusion occurring. A mere possibility is not
sufficient.’
b. In considering whether there is a likelihood of deception or confusion all

surrounding circumstances have to be taken into consideration, including the
3
circumstances in which the marks will be used, the circumstances in which
the goods and services will be bought and sold and the character of the
probable acquirers of the goods and services.
c. With respect, in light of the matters referred to above and all surrounding
circumstances, there is no reasonable likelihood of deception or confusion
between the Applicant’s Trade Mark and the Cited Mark.
7. Registration of 3rd Party Marks

a. The Applicant notes that there are a number of prior trade mark registrations
for or containing [INSERT], which have been permitted to co-exist on the
Trade Marks Register. With respect, we consider that the Applicant’s Trade
Mark should also be permitted to co-exist on the Register with these trade
marks, including the Cited Mark.
8. Amending Goods/Service
a. In the alternative, we propose deleting the following goods/services from the
Application [INSERT G/S] in order to reduce the likelihood of confusion.
9. Cited Mark has lapsed

The Applicant notes that the registration for Cited Mark has lapsed.
##
For the above reasons, we humbly submit that there is no real prospect of a likelihood of
confusion between the Application and the Cited Mark. We kindly request the IPA to waive
the objection and allow the Application to publication.
We look forward to hearing from you.
Yours faithfully
Simone Tierney
Partner
E: [email protected]
P: +61 2 8488.1013
M: 0407 079 875
Yours faithfully
Simone Tierney
Principal
Mobile: 0407 079.875
Email: [email protected]

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[INSERT DATE]

Attention: [INSERT NAME]

1. No overlap of similarity of goods/services in [Class X]

a. There are a number of matters to consider when comparing trade marks:

Lodestar Legal Pty Limited | ABN 99602910734

c. Aural Differences. The Applicant’s Trade Mark is pronounced as [INSERT],

d. Conceptual Differences. The Applicant’s Trade Mark alludes to [INSERT],

a. The Applicant is [INSERT commercial context or background of the

4. [INSERT CASE LAW AS APPROPRIATE] As was pointed out in Crook's Trade

6. In Registrar of Trade Marks v Woolworths Limited 45 IPR 411, Justice French

a. Similarly, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,

b. In considering whether there is a likelihood of deception or confusion all

7. Registration of 3rd Party Marks

9. Cited Mark has lapsed

We look forward to hearing from you.

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