Author: Adam Rollnik

Similarities, not differences, the key to “substantial identity”

The Full Court of the Federal Court recently clarified the way in which the “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical.

The clarification occurred in the context of an opposition to the registration of a trade mark pursuant to s 58 of the Trade Marks Act 1995 (Cth) (TMA).  However, the Full Court’s clarification will have broader relevance as the question of whether a mark is substantially identical to another arises in several other sections of the TMA (for example sections 44, 120 and 122).