Deceptive Similarity Under Section 44: The Imperfect Recollection Doctrine

When IP Australia examines a trade mark application, one of the most common grounds for rejection is a conflict with an existing mark under Section 44 of the Trade Marks Act 1995. An application must be rejected if the mark is substantially identical with, or deceptively similar to, an earlier mark registered (or applied for) in respect of similar goods or closely related services. While “substantially identical” involves a side-by-side comparison, the more frequently applied test is deceptive similarity, which relies on the doctrine of imperfect recollection.

The Legal Framework

Section 10 of the Act defines a deceptively similar mark as one that “so nearly resembles” the earlier mark “that it is likely to deceive or cause confusion.” The comparison involves two distinct tests, established by Windeyer J in the landmark High Court decision Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407:

Substantial Identity: Side-by-Side

For substantial identity, the marks are compared side by side. Similarities and differences are noted, and their importance is assessed by reference to the essential features of the registered mark and the total impression of resemblance or dissimilarity. This is a relatively mechanical comparison focused on the visual and structural elements of the marks as they appear on paper.

Deceptive Similarity: Imperfect Recollection

For deceptive similarity, the approach is fundamentally different. As the High Court established in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641, the marks should not be compared side by side. Instead, the assessment considers the impression or recollection that the earlier mark would leave in the mind of a person of ordinary intelligence and memory, and whether the later mark would be likely to be confused with that imperfect recollection.

The rationale is straightforward: consumers do not carry a photographic memory of every brand they have encountered. They retain a general impression, and it is this imperfect, faded recollection against which the competing mark must be tested. As Lord Radcliffe observed in De Cordova v Vick Chemical Co, the human eye is not an accurate recorder of visual detail, and marks are remembered by general impression or by some significant detail rather than by photographic recollection of the whole.

What the Test Considers

In applying the imperfect recollection test, IP Australia and the courts assess several factors:

• Look and sound: The visual appearance and phonetic qualities of the marks when spoken, including the possibility of slurred pronunciation, distortion in telephone conversations, and syllabic structure.
• Idea of the mark: Whether the two marks convey the same conceptual idea, even if their visual or phonetic elements differ. If both marks communicate the same underlying concept, confusion may arise despite surface differences.
• Essential features: The dominant or striking elements of each mark, and whether elements that distinguish the marks are likely to be remembered or forgotten by consumers.
• Non-distinctive elements: Descriptive or generic words within composite marks are given less weight, as consumers are less likely to retain these elements in their imperfect recollection.
• Context of purchase: The type of goods, the care taken by purchasers, and the environment in which the goods are bought. Fast-moving consumer goods purchased with little deliberation attract a higher risk of confusion than specialised products purchased with care.

The Protox v Botox Clarification (2023)

The High Court’s 2023 decision in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (the PROTOX v BOTOX case) made an important clarification: reputation is not relevant to the assessment of deceptive similarity under Section 120(1) of the Act, and by extension under Section 44. The court emphatically rejected any principle that the fame or well-known nature of the earlier mark should be taken into account. The test focuses solely on the notional buyer’s imperfect recollection of the mark as registered, not on the mark’s reputation in the marketplace.

This is a significant departure from the approach in the United States, United Kingdom, and European Union, where the strength or acquired distinctiveness of the earlier mark typically enhances its scope of protection. In Australia, the comparison is conducted on a strictly mark-versus-mark basis.

Real and Tangible Danger

Deceptive similarity requires more than a theoretical possibility of confusion. The courts and IP Australia require a real and tangible danger of deception or confusion — not a mere risk that someone, somewhere, might conceivably be misled. This threshold ensures that the test is grounded in practical marketplace realities rather than speculative scenarios.

Responding to a Section 44 Objection

When an examiner raises a Section 44 objection, the applicant may respond by:

• Arguing the marks are not deceptively similar: Demonstrating that the visual, phonetic, and conceptual differences between the marks are sufficient to prevent confusion in a consumer’s imperfect recollection.
• Challenging the similarity of goods or services: Arguing that the goods or services covered by the earlier mark are not sufficiently similar or closely related to those in the application.
• Filing evidence of honest concurrent use under Section 44(3)(a), or seeking a letter of consent from the owner of the earlier mark under Section 44(3)(b).

Key Takeaway

Deceptive similarity in Australia is not assessed by placing two marks side by side and cataloguing differences. It is assessed through the lens of imperfect recollection: would a consumer, carrying only a general impression of the earlier mark in their memory, be likely to be confused by the later mark? Following the 2023 Protox v Botox decision, this assessment is conducted without reference to reputation, making the inherent features of the marks themselves the decisive factor.