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A trade mark is a point of difference for your business. Customers will come to associate your trade mark with the goods or services your business provides. So, you must invest time in developing a distinctive one. Creating a distinct trade mark will depend on your business’ circumstances. To help, this article will explain whether you can use a hyphen to create a distinct trade mark in New Zealand.

Why Should You Register a Trade Mark?

To best protect your trade mark, you should register it with the Intellectual Property Office of New Zealand (IPONZ). You can possess a trade mark without registering it, and indicate your unregistered rights with the ™ symbol. However, if someone tries to copy your trade mark, you have fewer options, and it is more difficult to prove your ownership rights.

For instance, if you attempt to use a hyphen to differentiate your unregistered trade mark from an existing registered one, if a court deems your trade marks to be similar, the registered trade mark owner will likely have stronger rights. As a result, registration is a good idea to best protect your interests.

Trade Mark Registration and Examination

Trade mark registration in New Zealand is a relatively straightforward process, but not one you should take lightly. Briefly, it involves:

  • defining the various elements of your trade mark;
  • conducting a trade mark search;
  • determining the goods or services that your trade mark applies to;
  • categorising those goods or services into their respective classes;
  • listing an owner for your trade mark;
  • paying the relevant registration fees; and 
  • submitting your application through IPONZ’s online portal.

If an identical or ‘confusingly similar’ trade mark already exists, then IPONZ is far less likely to approve your application. Therefore, trade mark distinguishability is a quality you should aim for in your trade mark.

Note that your trade mark protection only extends to the goods or services you register it under.

Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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When Are Two Trade Marks Confusingly Similar?

As part of their evaluation criteria, IPONZ will consider if your trade mark is ‘confusingly similar’ to one that already exists in respect of similar goods or services. What this means will depend on your situation. Generally, if a trade mark is likely to deceive or confuse consumers due to the existence of another similar trade mark, then IPONZ will not approve your registration. Different factors play into this, which the table below outlines.

Comparing Trade Marks as a Whole

When comparing your trade mark and another, you need to consider whether as a whole they are similar. 

Customer Recall

Customers do not have perfect memory, and will remember trade marks by their general impression rather than their exact nature. So, this is an influential factor when comparing trade marks.

General Idea of Your Trade Mark

Consider also what your trade mark portrays, and whether that is the same general idea or conceptual impression as another. For instance, words that sound similar but have different meanings may have different general ideas.

Look and Sound

The look and sound of two similar trade marks play a large role in distinguishing between them. Examples include the visual effect your trade mark has or how they sound if people purchase your goods over the telephone.

Trade Channels

You must also consider the overlap of the goods or services provided by the two trade mark owners. If your two businesses sell the same goods to the same customers, customers will be more likely to confuse the two.

As a result, consider the above factors when assessing whether your trade mark is distinguishable from other existing trade marks.

Is Adding a Hyphen Enough to Distinguish my Trade Mark?

Following the above specifications, you need to consider these factors when determining whether adding a hyphen to your trade mark is enough to distinguish it from another existing trade mark. In most cases, adding only a hyphen to a trade mark that is already similar to another likely will not make the trade marks sufficiently distinguishable from one another.

For instance, “ThinkMate” and “Think-Mate” both sound the same, and at a quick glance, look quite similar as well.

However, there may be cases where adding a hyphen could be distinctive if you do it combined with other changes. Where adding a hyphen creates a new and unique word, this may be enough. For instance, “EYES”, and “E-YES” could have different meanings, given the difference in pronunciation and conceptual impression. A visual difference in your typeface may help as well, if the other trade mark is limited to a stylised form. However, this is a complex and extremely context-dependent area, so it would be wise to engage the assistance of a trade mark specialist to best serve your interests.

Key Takeaways

When assessing the distinguishability of your trade mark, you need to consider whether it would be confusingly similar to another one that already exists. In most cases, adding a hyphen on its own would not add enough to differentiate your trade mark from another similar one. However, this would depend on how you added the hyphen, amongst other differences. 

If you need help with your trade mark distinguishability, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a kind of intellectual property protection. It protects signs that identify your business and the goods or services it provides. Common examples include your business’ name or logo.

What does confusingly similar mean?

Confusingly similar is a standard for comparing the similarities between two trade marks. If one trade mark’s existence is likely to deceive or confuse customers, then it may be too confusingly similar for registration.

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