VIC Using the Same Trademark for a Different Type of Product?

Whether you are or are not may not be the point. If you market your product under that name, you’re likely to be on the end of a lawsuit from what appears to be a well resourced public company. Unless you’re prepared for the the time, effort and money to fight that, you might want to think about how invested you are in the name.

 

Whether or not the products are easily confused may not be the issue. It could come down to whether consumers may confuse your brand for the other one, thereby thinking the other Be Fresh makes your product. While different classes, and therefore a technical difference, this consideration isn't in the mind of the public.

You would probably not reasonably connect Be Fresh sanitary items and Be Fresh cafe; but you might connect Be Fresh sanitary items and Be Fresh mouthwash if they're in the same aisle in the supermarket. There are other considerations to be made, but this serves as a very basic example.

Any action would likely fall under what's called 'passing off', which is a common law action based in what is called torts. There's no act that sets out the rules, it's all caselaw precedent - which makes it rather complicated. Basically, the owner of BeFresh would need to prove that your actions have damaged their goodwill due to the public being confused between the two brands. Don't let this make you think they won't chase you, however.

 

You could be infringing the TM as notwithstanding your mouth wash is not a sanitary pad or come within the range of goods specified.

S120(2) provides that if they are similar goods, they can infringe if there is a likelihood of confusion.

I think that they could well be “similar goods” and if they are sold alongside each other, could give rise to confusion.

Plus there is potential passing off issues.