White SW Computer Law
Intellectual Property, Information Technology & Telecommunications Lawyers
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White SW Computer Law Intellectual Property, Information Technology & Telecommunications Newsletter - August 2006

Registration of a Trade Mark - Is your trade mark too similar?

As part of the process when applying for the registration of a trade mark, if your trade mark is accepted for registration, the details of the application will be advertised in the Official Journal of Trade Marks. For 3 months after the details are advertised, other parties may oppose the registration of your trade mark. If no opposition is filed against your application, or if opposition is unsuccessful, your trade mark will be registered when you pay the registration fee.

If you are the owner of a registered trade mark, as part of your intellectual property protection strategy, it is prudent to monitor the trade mark applications published in the Official Journal of Trade Marks for trade marks being registered by other parties that are similar to your own trade marks.

If you believe that a trade mark is similar to your own registered trade mark, and the goods and services covered by the application are the same or related to the goods and services for which your trade mark(s) was registered, you should consider filing a Notice of Opposition.

If you file a Notice of Opposition, within three months you must provide the materials upon which you seek to rely as to why the trade mark should not be registered after which, the Trade Mark Applicant has three months to respond to those materials.

A recent example of a successful opposition to trade mark registration involved the opposition by Intel Corporation (“Intel”) to registration of trade mark application INTELEC ENGINEERING.

Intelec Engineering Pty Ltd (“Intelec”) filed an application to register the trade mark INTELEC ENGINEERING for the following goods and services

Class 9: Custom software applications and device drivers, automatic test programs, electronic circuit boards, integrated circuit memories, operating systems programs, custom analogue and digital circuits

Class 16: Instructional and teaching material including operating manuals and course notes

Class 35: Project management; requests for tender; tender development; tender evaluation and design and product validation

Class 42: Analogue and digital circuit design; circuit board analysis to determine suitability for automatic test; printed circuit board design with optimisation for electromagnetic compatibility (EMC) and noise minimisation; configuration management of equipment and documentation; development and implementation of equipment support plans detailing scheduled and corrective maintenance; research and evaluation of new hardware and software

Intel filed evidence showing that it is the owner in Australia of a number of trade marks either wholly comprising or prominently featuring the trade mark INTEL and which are extremely well-known in relation to the IT industry in general and personal computers in particular.

Intel’s evidence also included information that Intel was originally founded to build semiconductor memory products, and was named INTEL almost from the outset - this being a coined word drawn from the words “integrated” and “electronics” and today, it is the world's largest semiconductor manufacturer employing over 80,000 people in offices and facilities worldwide.

Evidence was also supplied that the INTEL trade mark was ranked sixth in the list of the top 100 brands.

Intelec’s evidence stated that the trade mark “Intelec Engineering” was selected as an abbreviation of “Intelligent Electrical Engineering” and that the company provides engineering, technical and administrative services in the IT and/or electronic warfare area, to the Royal Australian Navy and that it is regional agent for a range of automatic test equipment in the IT or electronic warfare area, which it has sold to the Royal Australian Navy.

The trade marks used by Intelec include the words “Intelec Engineering”, but incorporated those words into a logo and therefore were different to the trade mark in the application, which was merely for the words “Intelec Engineering” and did not include any graphical elements. The logo forms of the trade mark also featured the word “INTELEC” in a prominent way and this was also not included in the trade mark application.

The delegate hearing the matter considered that these alterations or additions to the mark applied for substantially affected the identity of the trade mark and therefore Intelec’s evidence did not reveal any use of the trade mark as was shown in their application for registration.

Further, Intel has a number of registered trade marks that pre-date Intelec’s trade mark application. Many of these trade marks have the word INTEL as the dominant or main component.

Further, the delegate held that the trade mark INTEL is well-known and the trade mark INTELEC ENGINEERING, is neither well-known nor associated with a particular person. It was also held that the additional letters “EC” and word ENGINEERING within the trade mark INTELEC ENGINEERING do not aid in distinguishing that trade mark from Intel’s trade marks as the immediate impact and impression of the trade mark INTELEC ENGINEERING is that it is the equivalent of the word INTEL with “EC” and descriptive word ENGINEERING added.

Although the delegate considered that due to the specialty and likely expense of the goods and services supplied by Intelec, it would be unlikely for someone to purchase goods, or order services from Intelec under the belief that the goods or services are those of Intel, it was held that it is inescapable that the use of the trade mark INTELEC ENGINEERING would, at least, confuse.

Based upon the evidence provided, Intel established that:

  • its trade mark is notorious
  • Intelec’s trade mark INTELEC ENGINEERING is deceptively similar to Intel’s trade marks
  • use of the trade mark INTELEC ENGINEERING is likely to confuse if used for the full range of goods and services specified in Intelec’s trade mark application.

As a result of these findings, the delegate refused to register Intelec’s trade mark INTELEC ENGINEERING and ordered that Intelec pay the Intel’s costs.

Lessons to be learnt:

  • Before you choose a product name or company / business name, do a trade mark search and avoid using names that are the same as or similar to registered trade marks
  • If you apply for trade mark registration, make sure the application features the trade mark in the form in which it is actually used

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