When considering potentially conflicting marks and comparing
their respective goods and/or services, it is not simply a matter
of comparing the technical similarities and differences;
it is also important to consider the consumer and the
degree to which the goods and/or services are
In a recent Federal Court decision, Solahart Industries Pty
Ltd v Solar Shop Pty Ltd  FCA 700, Solahart was
successful in establishing that use of SOLARHUT constituted an
infringement of trade mark registrations consisting of the word
SOLAHART. The Court held that SOLAHART and SOLARHUT were
deceptively similar primarily due to the aural similarity of the
marks, and that the respective goods were "goods of the same
description" for the purposes of the Trade Marks Act
1995. Solar Hut used the SOLARHUT mark in respect of photovoltaic
solar cells (solar panels) that generate electricity, and
Solahart's registrations for SOLAHART covered solar hot
water heating systems.
One of the interesting aspects about the case is the
Court's analysis of the overlap between the goods. The
Court considered the similarities between the goods such as the
fact that both sets of products bring about a reduction in a
household's use of electricity, both involve roof mounting
of solar collectors, and both utilise radiation coming from the
sun. The Court also considered the differences between the goods
such as the purpose of the goods, i.e. one is a hot water heater
installed by a plumber, the other an electricity generator
installed by an electrician.
The court accepted that the mechanisms involved in both sets of
devices is different at a technical level, but that this was
unlikely to be of much relevance to the average consumer who wants
to reduce their electricity bill and is simply faced with a choice
between the purchase of a solar powered hot water system, on the
one hand, and a solar powered electrical generator on the other. On
this basis, the Court found that solar hot water heating systems
were "goods of the same description" as photovoltaic
solar cells (solar panels) because consumers would choose between
two substitute products, which meant that there is likely to be
competition between the two products.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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