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 substitutable.
In a recent Federal Court decision, Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] 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.
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