3. Identical trade marksUp one level
11Section 25(1)(a) of the Act states:
The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if … it is identical to a trade mark (trade mark B) belonging to a different owner and that is registered, or has priority under section 34 or section 36, -
(i) in respect of the same goods or services; or
The purpose of section 25(1)(a) of the Act is to prevent the registration of a trade mark that is identical to another registered or pending trade mark that has earlier priority for the same or similar goods or services. When assessing whether there are any potential citations under section 25(1)(a) of the Act, an examiner must consider:
- Whether there is an identical mark belonging to somebody else that is registered, or that is the subject of an application with earlier priority;
- Whether the identical mark is in respect of the same goods or services as the mark under examination
- Whether the identical mark is in respect of the similar goods or services as the mark under examination.
Where the examiner considers that the criteria in section 25(1)(a) of the Act apply, they should raise the trade marks concerned as a citation against the application.
In determining whether a trade mark is identical to another mark the following comments from the European Court of Justice, in its judgement in the LTJ Diffusion SA v Sadas Vertbaudet SA case (C-291/00) decision is of assistance:
A sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by the average consumer.
When considering whether the goods or services are the same, a citation may be raised under section 25(1)(a) of the Act where:
- The entire specification of the identical mark is the same as that of the application under examination;
- The specification of the identical mark overlaps with the specification of the application under examination.
For example, application A has been filed in class 5 in respect of “pharmaceutical preparations; pharmaceuticals for the treatment of asthma”. A search of the IPONZ database reveals an identical trade mark that is registered in respect of “pharmaceuticals for the treatment of coronary artery disease”.
The “pharmaceutical preparations” part of application A’s specification would include “pharmaceuticals for the treatment of coronary artery disease”, and in that respect application A is in respect of the same goods as the identical registered trade mark. The identical registered trade mark should therefore be raised as a citation against application A under section 25(1)(a) of the Act.
The specifications should cover identical goods and services and the meanings should not be stretched to cover all eventualities.12