4.4 Look and sound of the mark

As stated in Pianotist Co’s Application (1906) 23 RPC 774 at 777, when comparing two marks it is necessary to “judge of them by their look and by their sound”. The reason for considering both of these features is that:

• Marks may be quite different phonetically, but nevertheless be confusingly similar due to their visual similarity; or
• Marks may look quite different but sound confusingly similar.²¹

Visual similarity is more important in respect of self-service items, and where goods show the mark clearly displayed. It has been held that the question of sound in this situation “is perhaps becoming of diminishing importance”.²² Customers will clearly rely on the visual appearance of the mark when directly selecting items from a shelf or display. Note that when comparing marks visually, the size of the marks should not be taken into account, as trade mark owners are not given any size or scale limitations for the use of their marks.23

By comparison, if the relevant goods are likely to be purchased over the telephone or requested in a noisy environment such as a bar, the pronunciation of the mark will be considered the more compelling factor.²⁴ When comparing marks aurally, it is important to consider the marks in their “natural and normal pronunciation”.25 The first syllable is of considerable importance.²⁶

Another factor to take into account is the tendency of New Zealanders to clip and slur the final syllable in words. ²⁷ In New Zealand Breweries Limited v Heineken’s Bier Browerij Maatschappij N.V. [1964] NZLR 115 at 143, Haslam J remarked more generally on New Zealanders’ tendency towards slurred pronunciation:

When considering the aural similarity of two marks, allowance must therefore be made for careless speech and slurred pronunciation.

Footnotes

²¹ As noted by the European Court of Justice in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ETMR 690 at paragraph 28, “it is possible that mere aural similarity between trade marks may create a likelihood of confusion”.

²² Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 395

²³ I & R Morley v Macky Logan Caldwell [1921] NZLR 1001 at 1015 (CA); In the Matter of Speer’s Trade Mark (1887) 4 RPC 521 at 524; See also Brown and Grant, The Law of Intellectual Property in New Zealand, Butterworths, 1989 at page 82

²⁴ New Zealand Breweries Limited v Heineken’s Bier Browerij Maatschappij N.V. [1964] NZLR 115

²⁵ Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 177

²⁶ Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 at 19 (PC); London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264 at 279

²⁷ New Zealand Breweries Limited v Heineken’s Bier Browerij Maatschappij N.V. [1964] NZLR 115 at 141 per Turner J.