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Intellectual property rights protect the expression of your business’ ideas. These rights can be crucial for protecting your branding and how your business markets itself. But, you will run into issues if parts of your branding are similar to your competitors, especially when it comes to trade marks. Therefore, this article will explain whether trade marks can protect names that sound the same in New Zealand.

What Can Be a Trade Mark?

A trade mark is an intellectual property right that can protect various aspects of your brand. It serves as a “badge of origin”, linking the goods and/or services you provide to your business. Often, it is how customers will identify you.

Following that, trade marks can include:

  • words;
  • phrases;
  • symbols;
  • colours;
  • shapes;
  • sounds;
  • smells; or
  • a combination of these.

Therefore, you may have trade mark rights in different branding aspects related to your business, such as your business name or logo.

If you are a contractor or professional working in an individual capacity, you may use your name as part of your branding. If your name is unique and uncommon, you may have trade mark rights if you use it in your branding, but this can vary.

Trade mark rights can either be unregistered or registered. However, you have more legal protection, and these rights are stronger, when you have registered trade mark rights.

Similar Trade Marks and Registration

In New Zealand, you can apply for registered trade mark rights with the Intellectual Property Office of New Zealand (IPONZ). You can submit an application for your chosen trade mark, and this submission goes through IPONZ’s examination process. 

For instance, IPONZ will not approve your application if your trade mark is confusingly similar to one someone else has registered for the same goods/services. They also will not approve your trade mark if it is not distinctive enough.

If you meet their criteria, they will approve your trade mark, and once registered, you gain the following benefits:

  • the exclusive right to use and profit from your trade mark throughout New Zealand;
  • the ability to pursue third parties for trade mark infringement;
  • deter other parties from registering similar or identical trade marks to yours; and
  • an official record of your trade mark on the public trade marks register.

A key part of trade mark registration is that trade marks that are identical or similar and cover the same or similar goods/services cannot co-exist on the official register. That means that competitors cannot register trade marks similar to yours, and you cannot register a trade mark similar to one that already exists.

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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Can Two Registered Trade Marks Sound the Same?

As established, trade marks cannot be confusingly similar. These would be trade marks that:

  • are visually or conceptually similar, or that sound similar;
  • cover the same or similar goods/services; and
  • would be likely to confuse customers looking to buy those goods/services.

What this means can vary greatly and depends on your unique context. When evaluating whether two trade marks would confuse customers, IPONZ considers the following:

  • the imperfect recall of customers, who are unlikely to deeply analyse the branding of goods they buy;
  • the circumstances that you would use the trade marks in, such as a visual or audio format;
  • the market and trade channels that both trade marks apply to;
  • how similar the trade marks are on the whole;
  • the ideas behind the trade marks; and
  • the look and sound of both marks.

If your trade mark sounds similar to one that already exists, there is great potential for your customers to be confused. This fact would be significant if customers would only come across your name trade mark in an audio format, such as over the phone. 

For instance, compare “BREATH-RIGHT” and “BREATH-RITE”. There is only a slight difference between how you spell both, and they sound the same. Therefore, it would not be surprising if customers confused the two. 

Following this, unless there were some other major distinguishing factor, it would be unlikely that you could register a trade mark for a name that sounds the same as another trade mark. 

Distinctive Trade Marks in Different Goods and Services

However, note that the following only applies to trade marks that protect the same or similar goods or services. If your trade mark covers completely different areas, you may still be able to register it. However, this is extremely context-dependent. If the other trade mark is so well-known and famous in New Zealand, you likely will not be able to register your trade mark. Be sure to conduct an appropriate trade mark search to see what already exists in your market.

Key Takeaways

Trade mark rights are crucial because they protect the distinctive parts of your brand that make your business stand out. The law protects this distinctiveness, and it is a key part of trade mark registration. Therefore, IPONZ is unlikely to register trade marks that sound the same, because they may confuse customers.

If you need help with your trade mark, 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 an intellectual property right that refers to a mark or sign that distinguishes your business from others. This usually forms a part of your branding, such as your business name or logo.

Can I register a trade mark that sounds the same as another?

You cannot register a trade mark that is confusingly similar to one that already exists. If your trade mark sounds the same and is used in a similar field, it may deceive or confuse your customers. Therefore, it would be unlikely that you could register a trade mark that sounds the same as another.

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