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If you have a trade mark that brings considerable value to your business, then you should consider registering it. But what happens when you submit your application to register your trade mark to the Intellectual Property Office of New Zealand (IPONZ), and you find that they have not approved it because a trade mark similar to yours already exists? You do have a few options available to you, but there are a few conditions that you need to meet before you can use them. This article will explain what it means when a trade mark is identical or similar to an existing trade mark and what you can do to establish that yours is not.

When Are Trade Marks Identical or Similar?

IPONZ will not register a trade mark that is identical or similar to one already existing if it covers the same or similar goods or services. This is because it will create confusion in the market, and the owner of the already registered trade mark has the exclusive right to use that trade mark. So how does a trade mark examiner decide if a trade mark is identical or similar?

Identical Marks

Two trade marks are identical when they give the overall impression of being the same when you compare them side by side. All elements of the sign or logo are the same, or if there are any differences, they are so insignificant that the average consumer would not notice.

For example, you could not rely on one aspect of your logo being different if the logo as a whole looks the same as the previously registered trade mark.

This concept also applies to what classes of similar goods and services are covered by the relevant trade mark application and registration. IPONZ considers whether the relevant goods or services are the same or overlap, on top of whether the marks look the same.

Similar Marks

If your trade mark is not identical to the earlier registered one, then IPONZ will consider whether it is confusingly or deceptively similar. Your mark would be deceptively similar if it causes customers to incorrectly believe that it is the same trade mark as the existing one. On the other hand, it would be confusingly similar if the general public were unsure whether your businesses were the same.

How Do I Know if My Mark Conflicts With a Pre-Existing Mark?

If someone else has already applied to register their trade mark, they have priority over your application that you have filed later. Therefore, you should check if your trade mark would conflict with another existing one by searching for it on the public trade marks register. An IP specialist can also help you search for similar logos or phrases. Accordingly, when comparing two trade marks to determine whether they are similar, these factors are important:

  • whether the marks are similar when they are both considered as a whole;
  • the imperfect recall of consumers;
  • whether the overall ideas or concepts of both marks are similar;
  • the similarity of the industries you use them in;
  • the kind of customer likely to buy the goods or services covered by the registration and application;
  • how both the marks look and sound; and
  • where both businesses conduct trade.

How Can I Prove That My Mark is Not Similar?

If IPONZ rejects your initial trade mark application, they will issue a compliance report detailing why they did so. If this is because a similar trade mark already exists, they will tell you so and potentially offer suggestions for what you can do.

In some cases, you may be able to prove that your trade mark is sufficiently distinguishable from the cited mark that it can be registered. For instance, you could do this by establishing that you have been using your trade mark in good faith at the same time as the conflicting mark without any confusion.

You need to provide evidence of this in the form of a statutory declaration or affidavit. This evidence could include:

  • the date you began using your trade mark;
  • how widely you use it;
  • supporting declarations from others in the industry that your trade mark is distinct;
  • survey evidence;
  • an explanation of how you came up with the mark;
  • a declaration that to your knowledge there has been no confusion between the two marks; and
  • any other helpful information.

If you cannot prove this or provide such evidence, you will have difficulty getting your application approved. Other options include:

  • obtaining consent of the registered trade mark owner to use your trade mark;
  • filing a claim of non-use against the cited mark if it is not used for three years; or
  • changing your trade mark to remove the similarities.

Key Takeaways

IPONZ will not approve your trade mark registration if your mark is deceptively or confusingly similar to a mark that someone else has already registered. But, if you can prove that it is distinguishable from the cited mark and that there have been no issues while you have already been using that trade mark, then you may still be able to register. If you would like more information or help with your trade mark registration, contact LegalVision’s IP lawyers on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a sign that represents your business, that distinguishes it from other parties in the market. Your business name, logo, or slogan could be a trade mark.

Do I need to register a trade mark?

You do not necessarily need to register your trade mark, but it is a good idea. Registration gives you the exclusive right to use that trade mark, and you can prevent others from doing so if you wish.

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