7. Deception or confusion

In addition to assessing the similarity of the marks and the similarity of the goods or services, section 25(1)(b) requires examiners to consider whether the use of the mark under examination is likely to deceive or confuse.

The deception or confusion referred to in section 25(1)(b) is deception or confusion as to the origin of the goods or services in question. The European Court of Justice has defined the likelihood of confusion as “the risk that the public might believe that the goods or services in question come from the same undertaking, or … from economically-linked undertakings”.⁴⁶

Confusion and deception have different meanings. Haslam J considered their separate meanings in New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij N.V [1964] NZLR 115 at 142:

The meaning of “deceive” for present purposes may perhaps be regarded as equivalent to “mislead”, with the implication of creating an incorrect belief or mental impression. Causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public.

Richardson J concurred with this statement in Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 62where he said:

“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public (New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115, 142). Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

Richardson J went on to say that:

The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck. Terms such as “a number of persons” (Jellinek’s Application), “a substantial number of persons” (Smith Hayden & Co Ltd’s Application), “any considerable section of the public” (New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV) and “any significant number of such purchasers” (Polaroid Corporation v Hannaford & Burton Ltd) have been used. As Cooke J put it in his judgment in this case:

“The varying terminology in the judgments is a reminder that it is not always necessary that large numbers of people should be, or should probably be, of the state of mind in question: rather it is a question of the significance of the numbers in relation to the market for the particular goods” ([1975] 2 NZLR 422, 429).

When considering whether use of the applicant’s trade mark is likely to “deceive or confuse”, examiners must hence consider whether the applicant’s use of the mark is likely to do one or both of the following with regards to a substantial or significant number of persons:

1. “Deceive”, namely:

• Create an incorrect belief or mental impression regarding the origin of the goods/services;
• Mislead into thinking that the goods/services come from some other source.

• Perplex or mix up the minds of the purchasing public regarding the origin of the goods/services;
• Cause the purchasing public to wonder whether the goods/services come from some other source.

The test to be applied is that originally formulated by Evershed J in Re Smith Hayden & Co (1946) 63 RPC 97 at 101and subsequently approved by the Privy Council in Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 at 18 namely:

Assuming use by [the owner of the cited mark] of its trade mark [X] in a normal and fair manner for [the goods or services in the specification of the cited mark], is the [Court or Commissioner] satisfied that there would be a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant’s trade mark [Y] was used in a normal and fair manner for [the goods or services in the specification of the application under consideration]?

As should be clear from the above test, it must be assumed that the applicant’s mark and the cited mark(s) will be used normally and fairly in respect of all of the goods or services in their respective specifications.⁴⁷

As far as the likelihood of confusion is concerned, the European Court of Justice has remarked, “the likelihood of confusion must … be appreciated globally, taking into account all factors relevant to the circumstances of the case”.⁴⁸

The degree of similarity of the marks and the degree of similarity of the goods/services must be considered when assessing the likelihood of deception or confusion. A lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.⁴⁹

The distinctiveness of the respective marks may also be a relevant consideration. It has been held that “the more distinctive the earlier mark, the greater will be the likelihood of confusion”. ⁵⁰ In a subsequent case the European Court of Justice commented that “marks with a highly distinctive character, either per se or because of the reputation they possess …, enjoy broader protection than marks with a less distinctive character”.⁵¹

Footnotes

⁴⁶ Canon Kabushiki Kaisha v MGM Inc. [1999] RPC 117 at 133

⁴⁷ This has been referred to as the need to consider the normal and fair “notional use” of the applicant’s mark and the cited mark(s); see Brown and Grant, The Law Of Intellectual Property in New Zealand, Butterworths, 1989, at page 72

⁴⁸ Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224

⁴⁹ Canon Kabushiki Kaisha v MGM Inc. [1999] RPC 117 at 132

⁵⁰ Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224

⁵¹ Canon Kabushiki Kaisha v MGM Inc. [1999] RPC 117 at 132