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4.3 Idea of the mark
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4.3.1 Device marks
The idea of a mark is particularly relevant for devices. In I & R Morley v Macky Logan Caldwell Ltd19 an existing mark of a wheel and wings had become known as the ‘flying wheel brand’. A later-filed mark comprising a circle with winged projections was held to have the same idea, and registration of the later mark was refused.
Footnote
19 I & R Morley v Macky Logan Caldwell Ltd [1921] NZLR 1001
4.3.2 Word marks
If two word marks have dissimilar meanings, they will be more easily distinguished. For example, the idea of the mark POLAROID (polarising light) was held to be different from the idea of the mark SOLAVOID (avoiding the sun), with the result that confusion between the two marks was thought to be unlikely.20
If one mark has a particular meaning and the other mark is an invented word they may be easily distinguished, whereas two invented words (with no known meaning) are more likely to be confused.
Footnote
20 Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 (PC)
4.3.3 Word and device marks
Where a device mark has a pronounced or immediately recognisable meaning, the device mark may be held to be confusingly similar to a word mark that has the same meaning, or vice versa. For instance, a device of a panda bear for beer would be considered prima facie confusingly similar to the word mark PANDA for beer.
