5. Well known trade marks

Section 25(1)(c) 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, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand (trade mark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trade mark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trade mark D, and would be likely to prejudice the interests of the owner.

The purpose of section 25(1)(c) of the Act is to prevent the registration of a trade mark where that trade mark, or an essential element of that trade mark, is identical or similar to, or a translation of, a trade mark that is well-known in New Zealand for the same, similar or (in certain situations) other goods or services.

Section 25(1)(c) of the Act gives greater protection to well-known trade marks than previously conferred in sections 17(2) and 17(4) of the Trade Marks Act 1953 (the 1953 Act). Section 17(2) of the 1953 Act only prohibited registration of a trade mark for goods if there was a trade mark belonging to a different owner that was well-known in New Zealand for goods. Section 17(4) of the 1953 Act only prohibited registration of a trade mark for services if there was a trade mark belonging to a different owner that was well-known in New Zealand for services. Moreover, under sections 17(2) and 17(4) of the 1953 Act, the Commissioner could only refuse to register a trade mark if, in light of the existence of the well-known trade mark, its use would be likely to deceive or cause confusion.

There are no such limitations in section 25(1)(c) of the Act.

The well-known trade mark that is referred to in section 25(1)(c) of the Act need not be registered. Indeed, IPONZ need never have received an application in respect of the well-known trade mark. A common law trade mark³⁸ may be considered a “trade mark that is well known in New Zealand” under section 25(1)(c) of the Act.

When assessing whether section 25(1)(c) of the Act applies, an examiner must consider whether the mark under examination, or an essential element of that mark, is identical to, similar to, or a translation of, a well-known New Zealand trade mark in respect of the same or similar goods or services as those in the application under examination.

Alternatively, an examiner must consider whether the mark under examination, or an essential element of that mark, is identical to, similar to, or a translation of, a well-known New Zealand trade mark in respect of goods or services that are not similar if use of the mark under examination would be:

1. taken as indicating a connection in the course of trade between the goods or services in the specification and the owner of the well-known trade mark, and
2. likely to prejudice the interests of the owner of the well-known trade mark.

Where the criteria in section 25(1)(c) of the Act are considered to apply, the examiner should raise the mark that is considered to be “well known in New Zealand” as a citation against the application. The examiner must also provide reasons to support his/her opinion that the cited mark was “well known in New Zealand” as at the date of application of the mark under examination. Because of this, rejections under section 25(1)(c) of the Act will be uncommon and be left to the proprietor of the well-known mark to prove reputation.

Footnote

³⁸ A common law trade mark is a mark that is not registered but has established distinctiveness through use in the market place.