2. Deception or confusion

The question of whether something is likely to deceive or cause confusion was discussed in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, a NZ Court of Appeal decision. Richardson J held at page 438 that the question is not one of “hypothetical possibilities” but is concerned with “practical business probabilities”. Although the court’s consideration was in relation to section 16 of the Trade Marks Act 1953, the wording of that section mirrors the current wording of section 17(1)(a) of the Act.

The relevant considerations were set out by Richardson J at pages 422 to 423 of the Pioneer Hi-Bred case² and can be summarised as follows in relation to the current Act:

1. The onus is on the applicant for registration of the trade mark to establish that the proposed mark does not offend against section 17 of the Act and that onus is discharged on the balance of probabilities.³
2. Any evidence as to likelihood of deception or confusion must relate to the position at the date of the application for registration.
3. The concern is with the possible future use of the mark in respect of the goods and/or services specified in the application.
4. Section 17 of the Act is not concerned with the particular mode of presentation of the goods and/or services adopted or proposed by the applicant but with the use of the mark in any manner which may be regarded as a fair and proper use of it.⁴
5. In considering the likelihood of deception or confusion all the surrounding circumstances have to be taken into consideration, including the circumstances in which the applicant’s mark may be used, the market in which the goods and/or services may be bought and sold and the character or those involved in that market.
6. It is use of the mark in New Zealand that has to be considered and association of a similar mark with another trader in overseas countries or market is irrelevant, except in so far as it bears on the likelihood of deception or confusion in the New Zealand market.
7. It is in relation to commercial dealings with the goods and/or services that the question of deception or confusion has to be considered, and the persons whose states of mind are material are the prospective or potential purchasers of the goods and/or services of the kind to which the applicant may apply the mark and others involved in the purchase transactions.
8. Confusion and deception have different meanings. Haslam J considered their separate meanings in the New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115 (the Heineken case), at 142 where he stated:

9. The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck.
10. Where goods and/or services are sold or may be sold for the general public for consumption or domestic use, the examiner is entitled to take into account the examiners own experience and reactions as a member of the public when considering whether buyers would be likely to be deceived or confused by use of a trade mark. But where goods and/or services are of a kind not normally sold to the public at large, but are ordinarily sold and expected to be sold in a specialist market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential.⁵

Footnotes

² Affirmed more recently in Pacific Blue Airlines Pty Ltd v Air New Zealand Ltd (Assistant Commissioner Hastie, T27/2005, 26 September 2005), Carabao Tawandang Company Ltd v Red Bull GmbH (unreported, Wellington High Court, CIV 2005-485-1975, 31 August 2006) and Telecom IP Ltd v Beta Telecom Ltd (unreported, Wellington High Court, CIV 2004-485-2789, 27 September 2006)

³ See Polaroid Corporation v Hannaford & Burton Ltd [1975] 1 NZLR 566

⁴ See Smith Hayden & Co Ltd’s Application (1945) 63 RPC 97, affirmed by the Privy Council in Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 at 18

⁵ GE Trade Mark [1973] RPC 297 at page 321.

Where a trade mark as a whole is capable of distinguishing, a term within the trade mark describing particular goods or services will not necessarily trigger a concern under section 17(1)(a) of the Act as long as the goods or services described are covered in the specification. The presumption is that the applicant will only use the mark on the relevant goods or services.

However, where the specification does not include the particular goods or services, examiners should raise a concern under section 17(1)(a) of the Act on the grounds that if the mark were used for goods and services other than those named within the mark this might deceive or cause confusion as to the nature of the goods or services to which the mark were applied. For example:

A trade mark indicating a particular characteristic of the goods or services will not necessarily trigger a concern under section 17(1)(a) of the Act. The presumption is that the applicant will only use the mark on goods or services that have that particular characteristic or else the applicant will fall foul of other legislation such as the Fair Trading Act 1986.

However, where the goods or services do not cover the particular characteristic, examiners should raise a concern under section 17(1)(a) of the Act on the grounds that if the mark were used on goods and services other than those with that characteristic this might deceive or cause confusion as to the particular characteristic of the goods or services to which the mark were applied. For example:

A trade mark indicating a geographical name will not necessarily trigger a concern under section 17(1)(a) of the Act. The presumption is that the applicant will only use the mark on goods or services that have the connection with that geographical name or else the applicant will fall foul of other labeling legislation such as the Fair Trading Act 1986.

However, where the examiner is faced with information demonstrating that the geographical reference is clearly inaccurate, such that consumers might believe that the goods or services originate from that geographical place, and where it is clear that the goods or services in respect of which the application has been made do not actually originate from that geographical place, examiners should raise a concern under section 17(1)(a) of the Act.

A trade mark that includes the words “Product of New Zealand” on a mark to be used in relation to shoes would not be cause for a concern under section 17(1)(a) of the Act at examination stage unless the specification referred to “shoes from Italy” or evidence of use was filed showing that the shoes were manufactured or produced in a country other than New Zealand. For example:

Where a trade mark consists of or contains the name or representation of a famous person⁶ or the name of a well-known organisation, ⁷ the connection may imply sponsorship, patronage, permission or approval of the goods or services to which the trade mark is applied. If the applicant for registration or owner of a registered trade mark is not the appropriate person or controlling organisation, consumers might be misled into purchasing the goods or services because they believe that they have been sponsored, endorsed or licensed by that person or organisation.

Where it is not clear that the goods or services in respect of which the application has been made have been so sponsored, endorsed or licensed, a concern should be raised under section 17(1)(a) of the Act.

For example, connections of this kind would exist between “Peter Jackson” and entertainment services, or “Sir Edmund Hilary” and mountaineering equipment. Where the application is filed by the famous person to which the mark refers, or it is clear from other available information that the applicant has permission to file for the mark, no objection will be raised. However, if the examiner is not satisfied that the relevant relationship exists between the applicant and the famous name referred to, a concern should be raised under section 17(1)(a) of the Act.

Where the person or organisation is only well known in relation to a particular area of activity, the connection between the mark and the person or organisation may be less apparent. In such cases the examiner should carefully consider the relationship between the goods or services in the specification and the area of reputation of the person or organisation that appears in the trade mark. Each case must be considered on its merits.

The name of the person or organisation may be so well known that the ordinary consumer will associate the trade mark with the person or organisation concerned regardless of the goods or services in respect of which the application has been made. In such a case, a concern will be raised under section 17(1)(a) of the Act on the grounds that use of the mark is likely to deceive or cause confusion.

For example, connections of this kind would exist between the “World Trade Organisation” and any goods and/or services.

It should be noted, however, that the inclusion of the name of a well-known person need not always cause deception or confusion. For example, the use of the name “The Wright Brothers” in relation to aircraft transport services would be more likely to be regarded as a reference to a bygone era rather than a suggestion that there is any endorsement of, or input by, the Wright Brothers or their descendants. However, if research indicates that the commercialisation of a deceased person’s name or image is being controlled by their estate or another authorized body, then a concern may be raised under section 17 of the Act.

Footnotes

⁶ See also the Practice Guidelines on Names and Representations of Persons and the Practice Guidelines on Representations of the Royal Family. 

⁷ See also the Practice Guidelines on Flags Armorial Bearings, State Emblems and Similar.

Plant varieties are a type of intellectual property and are protected under the Plant Variety Rights Act 1987.

The grant of Plant Variety Rights for a new plant variety gives the holder the exclusive right to produce for sale and to sell reproductive material of that plant variety. In the case of vegetatively-propagated fruit, ornamental and vegetable varieties, the grant of Plant Variety Rights gives the holder the additional exclusive right to propagate the protected variety for the purpose of the commercial production of fruit, flowers or other products of that variety. A grant of Plant Variety Rights lasts for 23 years in the case of woody plants or their rootstock, and 20 years in every other case.

Where Plant Variety Rights have been granted, the plant variety concerned will be identified by a “denomination”. A plant variety denomination serves to distinguish plants of a particular variety from plants of other varieties. Section 2 of the Plant Variety Rights Act 1987 defines “denomination” as follows:

Therefore, a plant variety denomination serves to distinguish plants of a particular variety from plants of other varieties even after the Plant Variety Rights grant in question has expired.

A trade mark that is the same as or similar to a plant variety denomination, in respect of plants or plant material, is likely to make consumers believe that the goods on which the trade mark is used belong to the plant variety that the denomination denotes. Consumers are likely to be deceived or confused if this were not the case.

An examiner should raise a concern under section 17(1)(a) of the Act where:

• The mark consists of or contains the denomination pertaining to a plant variety in respect of which a grant was made under the Plant Variety Rights Act 1987;
• The grant in question is either still in force, or is no longer in force;
• The trade mark application is in class 31 in respect of plants or plant material;⁸
• The trade mark specification is not limited only to plant material that belongs to the specific plant variety that the denomination denotes; and
• The trade mark specification covers plant material that is of the same type as the plant matter that the denomination denotes.

Where the grant in question is still in force, the examiner should also raise concerns that the mark is not registrable under section 17(1)(b) of the Act, as the use of the mark would be contrary to section 17(7) and section 37(3)(b) of the Plant Variety Rights Act 1987.

To overcome an examiner’s concern under this heading, the applicant may limit the specification to plant material that belongs to the specific plant variety that the denomination denotes. However, as a plant variety denomination serves to distinguish plants of a particular variety from plants of other varieties, it is incapable of distinguishing trade origin. Should the applicant agree to limit the specification in this way, any registrability objection raised under section 18 of the Act that the mark lacks distinctive character will still remain outstanding.

Alternatively, an applicant may limit the specification so that it no longer covers the same type of plant material as the plant matter that the denomination denotes. Deception or confusion is unlikely, if the specification of the application concerned does not cover plant material that is of the same type as the plant matter that the denomination denotes.

For example, the applicant applies to register as a trade mark a plant variety denomination that denotes a type of rose, in respect of the specification “plants, including vegetables”. The applicant subsequently requests that the specification be limited to “pumpkins”. Where a trade mark is the same as or similar to a plant variety denomination in respect of a type of rose, and that trade mark is used in relation to pumpkins, consumers are unlikely to be deceived or confused into believing that the pumpkins belong to the plant variety that the plant variety denomination denotes (being a type of rose).

Footnote

⁸ Plant material includes all parts of the plant, including seeds, fruits, flowers, vegetables and vegetative matter.

In the 1950s the World Health Organisation (WHO) developed a programme for identifying each pharmaceutical substance by a unique, universally available generic name to be known as an International Non-Proprietary Name (INN).

The WHO advises New Zealand and other member states of recommended INN’s. Notification is accompanied by a request that the name be recognised as the INN for the particular substance, and that member states take all steps necessary to prevent the acquisition of proprietary rights in the name, including prohibiting the registration of the name as a trade mark.

A trade mark that is the same as, or confusingly similar to, an INN in respect of pharmaceutical substances or similar goods is likely to make consumers believe that the goods are, or contain, the pharmaceutical substance identified by the INN. Similarly, a trade mark that is the same as or confusingly similar to an INN, in respect of services related to pharmaceutical substances, is likely to make consumers believe that the services relate to the pharmaceutical substance identified by the INN. Consumers are likely to be deceived or confused if this were not the case.

An examiner should raise a concern under section 17(1)(a) of the Act where:

• The mark is the same as, or confusingly similar to, an INN; and
• The trade mark application is in respect of pharmaceutical substances, similar goods, and/or services related to pharmaceutical substances; and
• The trade mark specification is not limited to (as appropriate):
  • the pharmaceutical substance identified by the INN;
  • goods that contain the pharmaceutical substance identified by the INN; and/or
  • services related to the pharmaceutical substance identified by the INN.

To overcome an examiner’s concern under this heading, the applicant may limit the goods or services to accord with the INN. However, as an INN serves to distinguish a particular pharmaceutical substance from other pharmaceutical substances, it is incapable of distinguishing trade origin. Should the applicant agree to limit the specification in this way, any registrability objection raised under section 18 of the Act that the mark lacks distinctive character will still remain outstanding.

The International Standards Organisation (ISO) advises New Zealand and other member states of the generic names for pesticides and agrochemicals. Notification is accompanied by a request that the name be recognised as the generic name for the particular substance.

A trade mark that is the same as, or confusingly similar to, a generic name for a pesticide or agrochemical in respect of those goods or similar goods, is likely to make consumers believe that the goods are, or contain, the pesticide or agrochemical that the generic name denotes. Similarly, a trade mark that is the same as or confusingly similar to a generic name for a pesticide or agrochemical, in respect of services related to pesticides or agrochemicals, is likely to make consumers believe that the services relate to the pesticide or agrochemical that the generic name denotes. Consumers are likely to be deceived or confused if this were not the case.

An examiner should raise a concern under section 17(1)(a) of the Act where:

• The mark is the same as, or confusingly similar to, a generic name for a pesticide or agrochemical; and
• The trade mark application is in respect of pesticides or agrochemicals, similar goods, and/or services related to pesticides or agrochemicals; and
• The trade mark specification is not limited to the pesticide or agrochemical that the generic name denotes, goods that contain the pesticide or agrochemical that the generic name denotes, and/or services related to the pesticide or agrochemical that the generic name denotes (as appropriate).

To overcome an examiner’s concern under this heading, the applicant may limit the specification to accord to the generic name for the pesticide or agrochemical. However, as the generic name for a pesticide or agrochemical serves to distinguish a particular pesticide or agrochemical from another pesticide or agrochemical, it is incapable of distinguishing trade origin. Should the applicant agree to limit the specification in this way, any registrability objection raised under section 18 of the Act that the mark lacks distinctive character will still remain outstanding.