Overcoming Similarity Objections – Section 44

When you’re applying for a trade mark in Australia, the process may seem pretty straightforward at first, choose your name or logo, file your application, and wait for the green light from IP Australia. But then you get hit with an objection under Section 44 of the Trade Marks Act 1995.

What does section 44 say?

In lay-man terms, Section 44 exists to prevent confusion in the marketplace. It stops trade marks from being registered if they are too close in appearance or sound to an earlier mark that’s already registered (or pending registration) for similar or closely related goods or services.

There are two key triggers for rejection under Section 44:

• The marks are substantially identical or deceptively similar, and
• They’re used for similar goods or closely related services or vice versa.

If both conditions are met, and your trade mark has a later priority date than the earlier one, your application may face rejection. This holds true whether the earlier trade mark is already registered or still being examined.

What counts as “substantially identical” or “deceptively similar”?

These terms sound interchangeable, but under the law, they’re quite distinct.

• Substantially Identical- This is a stricter standard. It means the marks are nearly the same in both look and impression. They’re compared side by side, and if the essential features are so alike that they could be mistaken for each other, then they’re substantially identical.
• Deceptively Similar- Here, the comparison is more about the mental impression. Would an ordinary person who isn’t making a forensic comparison be confused or left wondering if the marks came from the same source? If yes, they’re deceptively similar.

A trade mark doesn’t have to be a twin to trigger Section 44. Even something that’s just close enough to cause a “reasonable doubt” in the mind of a consumer could be a problem.

The role of similar or closely related goods and services

It’s not just about the marks themselves. The goods and services they cover play an equally crucial role.

• Goods are considered “similar” if they have the same nature, use, and are sold through the same channels. Think “clothing” and “footwear”, i.e. not the same, but often sold together.
• “Closely related” covers those trickier overlaps between goods and services. For instance, a brand name used for coffee beans could clash with the same name used for café services. The Federal Court has confirmed that in today’s marketplace, consumers often assume a link between the product and the place it’s sold or serviced.

And if you’re operating in a space like tech, the lines can blur even further. An app offering investment tools might be closely related to financial advisory services. So yes, context matters.

International marks under regulation 4.15A

Section 44 doesn’t specifically mention international registrations, but the Trade Marks Regulations do. If your application bumps up against a Protected International Trade Mark or an International Registration Designating Australia (IRDA), Regulation 4.15A essentially applies the same rules as Section 44. So even if the conflicting trade mark is an international one, the same tests of similarity and likelihood of confusion apply.

Presumption of Registrability

Here’s some good news, i.e. Section 44 is subject to a presumption of registrability like under sec 41. That means unless the examiner is convinced, on the balance of probabilities, that a real risk of confusion exists, they shouldn’t raise a ground for rejection.

This isn’t just in theory. Courts have confirmed that a “mere possibility” of confusion isn’t enough. There needs to be a tangible risk.

Exceptions that can save your application

Now, just because your trade mark seems to fall within the ambit of Section 44 doesn’t mean all is lost. The law provides a few escape hatches-

• Honest concurrent use under section 44(3)- This allows your mark to be registered even if it’s deceptively similar to an earlier one, provided you can show both marks have been used honestly and concurrently in the market without confusion.

We’d usually compile evidence like-

• How long and where you’ve used the mark
• Sales figures and advertising spend
• Customer recognition and feedback
• Any instances, or absence, of actual confusion

This is where strong documentation becomes essential, and where our team can assist in pulling together a compelling case.

• Prior use under section 44(4)- If you used the mark before the conflicting one was filed, and you’ve continued to use it without interruption, you may be able to claim prior use. This too relies on solid evidence, and again, it must be genuinely commercial use—not just registering a domain name or printing a few business cards.
• Other Circumstances- This is a bit of a catch-all. Sometimes, acceptance is allowed where the applicant can show special circumstances that make confusion unlikely, even if the marks are similar. For example, industry practices, the way the goods are sold, or a prior agreement with the owner of the earlier trade mark.

What if both marks have the same priority date?

If your trade mark and the one it’s clashing with were filed on the same day, both applicants will be notified of the conflict, but the examiner won’t reject either one outright. The responsibility falls on the parties to resolve the issue, i.e. possibly through evidence of prior use, concurrent use, or even a letter of consent.

It’s also possible for one party to assign the mark to the other, or for both to amend their specifications to avoid overlapping.

The notional use rule

One tricky part of trade mark law is the concept of notional use. When IP Australia assesses whether there’s a likelihood of confusion, they don’t look at how you currently use the mark. Instead, they imagine every possible way you could use it within the claimed goods or services.

So, if you apply for “computer software”, they’ll consider whether your mark might clash with someone else’s mark used for any type of software, i.e. from accounting to gaming, regardless of what your app actually does.

That’s why precise drafting of your goods/services specification matters, and why we often work with clients to narrow or tailor their claims to avoid unnecessary overlap.

What should you do?

If your application is facing a Section 44 objection, or you want to avoid one before filing, here’s what we recommend-

• A proper clearance search can flag potential conflicts early. We run these all the time and can guide you on how to proceed. (pre-application requirement)
• Overly broad claims can backfire. We help tailor applications to reflect your actual use while reducing overlap.
• If you get an objection, don’t panic. There are legal arguments, and evidence options we can explore. The sooner we act, the better the chances.
• Consider consent or co-existence agreements. If the owner of the earlier mark is open to it, a simple letter of consent could be your ticket to registration.

At our firm, we specialize in navigating trade mark complexities like these so you don’t have to go it alone. Section 44 might look like a wall at first glance, but often it’s just a puzzle with multiple solutions. Whether that’s gathering honest concurrent use evidence, negotiating with other trade mark owners, or sharpening your application strategy, we’re here to back your brand.

Need help tackling a Section 44 objection or preparing your application the right way from the start? Let’s chat.