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4. Similar trade marks
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4.1 Marks compared as a whole
The marks should be compared in their entirety. The overall or net impression of the two marks should be considered.
This principle was clearly stated in Clarke v Sharp (1898)15 RPC 141 at 146:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.
The European Court of Justice has recently commented in Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224, that the visual, aural or conceptual similarity of the marks must be assessed by reference to:
the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components…the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role…the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
Where the marks contain one or two similar elements, but also contain other distinctive elements, this may not be considered enough to create deception or confusion. On the other hand, marks that differ from each other in only some respects may still be considered confusingly similar overall.
Each case must be considered on its merits, taking into account the following comments:
- Adding a prefix, suffix or other material (such as a house mark) to another person’s mark will usually constitute an infringement.14
- Disclaimed elements may still cause confusion and should be considered.15
- Other matter that is not distinctive (such as borders) should not be considered.
Footnotes
14 Section 162 of the Act states that the ‘registration of the owner of a trade mark shall be prima facie evidence of the validity of the original registration’.
15 Granada Trade Mark [1979] RPC 303 at 308.
4.2 Imperfect recall
The doctrine of imperfect recall should be taken into account.
The courts recognise that most people do not have a photographic recollection of the visual details of a mark, but instead remember marks by their general impression, or by some significant detail. 16 This means that when considering whether two marks are sufficiently similar for citation purposes, a detailed comparison or close examination of the marks is not appropriate. Instead it should be assumed that consumers might have an “imperfect recollection” of a mark. In Rysta Ltd’s Application (1943) 60 RPC 87 at 108, Luxmoore LJ said:
It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.
The two marks should not be compared side by side, as they will not usually be encountered in this way.17 As the European Court of Justice recently remarked in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ETMR 690, paragraph 26:
Account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.
If the two marks display some differences when compared side by side, it does not necessarily follow that a citation should not be raised.
The test concerning imperfect recollection that is generally applied is that stated in Re Sandow (1914) 31 RPC 196 at 205:
The question is not whether if a person is looking at two trade marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed trade mark in the absence of the other trade mark, and in view only of his general recollection on what the nature of the other mark was, would be liable to be deceived and to think that the trade mark before him is the same as the other, of which he has a general recollection.
Footnotes
16 De Cordova & Others v Vick Chemical Company (1951) 68 RPC 103 at 106.
17 Re Sandow (1914) 31 RPC 196 at 205; De Cordova & Others v Vick Chemical Company (1951) 68 RPC 103 at 106.
4.3 Idea of the mark
The idea suggested by a mark should also be considered, as the idea is more likely to be recalled than the precise details of the mark.18 If it appears that two marks convey an idea so similar that customers may refer to the marks by the same name, a citation should be raised.
In Jafferjee v Scarlett (1937) 57 CLR 115, the applicant’s mark, consisting of two runners breasting a tape, was refused registration due to an existing mark of two men grasping javelins. It was held that both marks conveyed the idea of male athletes with a line across the chest.
That case cited the Herschell Committee report where it stated:
Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.
Conceptual similarity will not always be sufficient to give rise to deception or confusion, however. In Sabel BV v Puma AG, Rudolph Dassler Sport [1998] RPC 199 at 224, the European Court of Justice remarked:
In circumstances such as those in point in the main proceedings, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion.
Whether or not two marks convey the same idea is a question of fact and each case must be considered on its merits. Some general points and previous examples may be helpful, however.
Footnote
18 Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 174.
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.
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:
The possibility of slurred pronunciation, which is a topic accorded some importance in reported decisions, is an ever-present likelihood in the speech of New Zealanders, as is exemplified daily in the experience of sitting at first instance. A tendency to imperfect enunciation of parts of a word extends in ordinary local speech, not only to the opening consonant, but to the clipping of vowels, and even of concluding sibilants of unaccented syllables.
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.
4.5 Trade channels of the goods and services
When considering whether two marks are confusingly similar the following should be taken into account:
- The nature of the goods and services; and
- The purchasers, or the market, for those goods and services.28
Footnote
28Brown and Grant, The Law of Intellectual Property in New Zealand, Butterworths, 1989 at pages 85-86
4.5.1 Nature of the goods and services
It is important to consider the nature of the goods and/or services and the way that those goods and/or services will be purchased. This is a practical consideration, concerned not with “hypothetical possibilities of deception or confusion but with practical business probabilities”.29 The risk of confusion must be real rather than fanciful.30
The way that potential purchasers will encounter the mark should be considered. For example, are the goods selected from a shelf in a supermarket? Are they ordered over the telephone?
As the European Court of Justice has remarked:31
It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question. In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed.
Expensive goods or services (such as electrical goods or cars) are bought less frequently and are more carefully selected, with consequent greater attention being paid to the trade marks used on those goods or services. In contrast, purchasers are likely to pay less attention to marks that are used on common products that are purchased in a hurry, such as bread and milk.
Footnotes
29 Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 76 per Richardson J (speaking of section 16)
30 Lancer Trade Mark [1987] RPC 303 at 325
31 Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ETMR 690, paragraphs 26-27
4.5.2 The purchasers or the relevant market
The nature of the potential purchaser should be taken into account. It is the ultimate purchasers who must be considered, not the retailers or sales representatives who may be more familiar with the products.
The potential purchaser will vary according to the nature of the product. If the goods are everyday items, such as groceries, the relevant market will be the general public. If the goods are of a specialist or technical nature, such as surgical implements, the relevant market will be limited to those in the trade and/or those with technical knowledge or expertise.
A trade mark should not be barred from registration because “unusually stupid people, fools or idiots would be deceived”32. Historically the “ordinary person” test has been applied, namely, the potential purchaser has been assumed to be a person using ordinary care and intelligence who has an ordinary recollection of the mark.33
More recently the European Court of Justice has held that it is “the perception of marks in the mind of the average consumer of the type of goods or services in question”34 that is decisive. The “average consumer” test is therefore the test that should now be applied. It should be noted, “the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect”.35
The risk of confusion is likely to be increased if the goods or services are purchased by children, impulse purchasers,36 or people in a hurry.37
Footnotes
32 Crook’s Trade Mark (1914) 31 RPC 79 at 85
33 Don v Burley (1916) 22 CLR 136 at 140; see discussion in Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 183
34 Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224
35 Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ETMR 690, paragraph 26; Bach and Bach Flower Remedies Trade Marks [2000] RPC 513 at 534
36 Golden Crumpet Co. Australasia v Hardings Manufacturers Pty Ltd (1987) 8 IPR 147 at 155
37 Montgomery v Thompson (1891) 8 RPC 361 at 368 (H.L.)
