When Trade Marks Are Too Close for Comfort

When Trade Marks Are Too Close for Comfort

Trade marks are the foundation of brand identity, but what happens when one trade mark comes too close to another? As an IP law firm, we get asked that all the time.

Australian courts and the Trade Marks Office at IP Australia (https://www.ipaustralia.gov.au/trade-marks )are regularly called on to consider the fine line between similarity and distinction.

We find that outcomes can hinge on subtle factors like consumer perception, market overlap, and the dominant features of a mark.

Here we take you through four recent cases that illustrate how these decisions can play out in practice.

MOTHERSKY vs. MOTHER: A Battle of Beverages

This case, decided by the Full Court of the Federal Court of Australia in 2023, involved Energy Beverages. The dispute was between the owner of the MOTHER trade mark for energy drinks, and Cantarella Bros, who sought to register MOTHERSKY for coffee products.

Energy Beverages argued that “MOTHER” was a distinctive mark that would dominate consumer impressions of MOTHERSKY.

Despite coffee and energy drinks targeting different markets, the court found that trade channels often overlap.

Coffee is sold in cafes, convenience stores, and supermarkets—many of the same places energy drinks are sold.

This created a risk of consumer confusion and the court decided that MOTHERSKY was deceptively similar to MOTHER saying that “MOTHER” was the dominant part of MOTHERSKY. As the judge in the case said – A notional consumer with imperfect recollection is the ultimate judge in trade mark disputes, notional meaning that what the consumer would think is all important.

PROTOX vs. BOTOX

In a decision by the High Court of Australia in 2023, Allergan, the owner of the BOTOX trade mark for injectable pharmaceuticals, took on Self Care, which marketed an anti-wrinkle cream under the name PROTOX saying it was an “instant Botox® alternative.”

Allergan argued that PROTOX leveraged the reputation of BOTOX to confuse consumers into associating the two.

The Court said no as the two marks differed in appearance and sound.

PROTOX was distinctively branded, and the packaging included disclaimers like “instant Botox® alternative,” clarifying its purpose as a cream and not an injectable.

PROTOX was not deceptively similar to BOTOX.

To read the case click here: https://jade.io/j/?a=outline&id=968604

THE NORTH AGENCY vs. THE AGENCY

In 2024 the Federal Court of Australia, examined a dispute between The Agency Group, owner of THE AGENCY trade mark for real estate services, and H.A.S. Real Estate, which used THE NORTH AGENCY.

The Agency Group contended that THE NORTH AGENCY would confuse consumers due to the similarity of the core term “AGENCY.” To read about the THE NORTH AGENCY go here https://thenorthagency.com.au/ and The Agency go here https://theagency.com.au/office/10/gold-coast.

However, the court focused on the descriptive nature of “agency” within the real estate sector and the significance of “NORTH” in distinguishing the two marks.

The term “NORTH” was prominently featured and pointed to a geographical focus.

The court decided that THE NORTH AGENCY was different enough to THE AGENCY. The addition of “NORTH” created a clear distinction and the word “agency” as generic.

KATIE PERRY vs. KATY PERRY

In 2024 Australian fashion designer Katie Perry (Katie Jane Taylor) brought a case against the internationally renowned pop star Katy Perry (real name Katheryn Hudson) over the use of the name on clothing and merchandise.

Katie Perry held a registered trade mark for clothing under her name. Meanwhile, Katy Perry sold merchandise—including clothing—under her stage name.

Katie Perry argued that Katy Perry’s use of the name on clothing infringed her trade mark and caused confusion among consumers.

The Full Federal Court found Katy Perry’s use of the name on clothing deceptively similar to Katie Perry’s trade mark.

While the singer Katy Perry is famous, this did not exempt her from trade mark obligations in Australia. For more about this go here: https://www.abc.net.au/news/2024-11-22/katy-perry-wins-appeal-trademark-battle-sydney-label-katie-perry/104633950

These cases demonstrate that trade mark disputes are rarely clear-cut. Courts evaluate factors such as:

1. The distinctiveness of the marks.
2. The overlap in goods or services.
3. The context in which the marks are used.
4. How the marks are perceived by a notional consumer with imperfect recollection.

The outcomes are often case-specific, making expert legal advice invaluable.

Key Takeaways for Businesses

• Conduct a Thorough Search.
• Before launching a new brand or product, investigate existing trade marks to avoid conflicts.
• Emphasise Differentiation.
• Ensure your trade mark is visually, phonetically, and contextually distinct from others in your field.
• Consult Professionals.
• Seek expert guidance to assess the risks of trade mark similarity and navigate disputes.

At Sharon Givoni Consulting, we help businesses protect their brands with our motto Legal Ease, not Legalese®.

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Please note the above article is general in nature and does not constitute legal advice.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.