Trade Mark Disclaimers in New Zealand

After your trade mark application clears the first major hurdle, proving it is inherently distinctive under the “absolute grounds” of Section 18, it immediately faces the second, and most common, challenge, i.e. a “relative grounds” examination under Section 25 of the Trade Marks Act 2002.

The examiner at the Intellectual Property Office of New Zealand (IPONZ) will now search the register to see if your mark is too similar to an existing mark owned by another trader. This is the most frequent reason an application is blocked.

Understanding the Examiner’s Search

When we assess your mark’s registrability, we conduct our search by simulating the same rigorous process as the IPONZ examiner. The examiner is legally required to check your application against all marks that have an earlier priority date.

This “field” of prior-ranking marks includes:

• All existing registered trade marks.
• All pending applications that have an earlier filing date.
• Marks whose registrations have expired within the last 6 months, as they are still in their restoration period.

An objection is raised if a conflicting mark is found to be owned by a different owner. This itself is a technical trap. If your company files an application, but a conflicting mark is registered in the name of your overseas parent company or a different subsidiary, the examiner will raise a citation. This is especially true if the owner names are identical but the addresses are in different countries.

As your agent, we manage this proactively. We will identify this “internal” conflict and resolve it by providing the Commissioner with the necessary evidence to prove common ownership, a step that prevents an unnecessary and time-consuming objection.

The “Identical Mark” Objection (Section 25(1)(a))

The most straightforward refusal is an objection against an identical mark for the same or similar goods or services.

This is more complex than it sounds. “Identical” does not just mean a perfect copy. The legal test considers a mark identical if it “reproduces, without any modification or addition, all the elements” of the prior mark, or if it “contains differences so insignificant that they may go unnoticed by the average consumer”. Our analysis goes beyond a simple search to determine if your mark would be considered legally identical under this test.

Furthermore, “same goods or services” includes overlap. This is where a strategically drafted specification is essential. For example, if you file for the broad term “pharmaceutical preparations,” your application will be blocked by an earlier identical mark registered for the very specific “pharmaceuticals for the treatment of coronary artery disease,” because your broad term completely includes their specific one. We draft your specification to avoid these.

“Similar Marks” (Section 25(1)(b))

The most common and most complex objection is under Section 25(1)(b), i.e. your mark is similar to a prior mark for the same or similar goods, and its use is “likely to deceive or confuse”.

This is where a simple database search fails and expert legal analysis is required. To determine the risk, we must assess the “global appreciation” of the conflict, weighing the similarity of the marks against the similarity of the goods.

When we analyze your mark for conflicts, we follow the same five core principles, derived from established principles, that the IPONZ examiner will use.

We compare the marks as a whole. We must assess the “overall or net impression” of the marks, not just add up their similarities and differences. The “distinctive and dominant components” are key. It is a common mistake to think you can avoid a conflict by simply adding your “house mark” prefix or a simple suffix to a competitor’s registered mark. This will almost always result in an objection.

We Apply the “Imperfect Recall” Test. This is the most critical concept in conflict analysis. Consumers do not compare marks side-by-side in a supermarket. They rely on an “imperfect picture” or “general recollection” of a brand they have seen before. We must therefore assess the likelihood of confusion on this basis. Two marks that look different when placed next to each other may still be confusingly similar to a consumer who has an “imperfect recollection” of one of them.

We Analyze the “Idea of the Mark”. The public often remembers the concept of a mark, not its precise details. If two marks convey the same idea, they are likely to be found similar, even if they look different. This is true for device marks (e.g., two different drawings of an athlete) and for word-and-device combinations. For example, a logo of a panda bear will conflict with a prior registration for the word mark PANDA for the same goods.

We Assess Both “Look” and “Sound”. The way a mark is encountered in trade is vital. Visual Similarity (Look) is paramount for goods that are visually selected from a shelf and aural Similarity (Sound) is the key factor for products ordered verbally, such as over the telephone or in a noisy bar.

This is where our New Zealand-specific expertise is crucial. IPONZ examiners are trained to consider the “tendency of New Zealanders to clip and slur the final syllable in words” and their general “imperfect enunciation”. Two marks that may look different in writing could be deemed confusingly similar when allowing for “careless speech and slurred pronunciation” in the local market. We apply this local acoustic test to your mark.

We Consider the “Trade Channels”. We must analyze the nature of the goods and their purchasers. The “average consumer” test is applied, and this consumer is deemed “reasonably well-informed and reasonably observant”. Consumers pay less attention when buying inexpensive, everyday items like bread or milk. Therefore, the risk of confusion is higher. Conversely, consumers pay more attention when buying expensive, infrequent items like cars, making confusion less likely. We must identify the market. Is it the general public? Or is it a specialist market, such as surgeons buying “surgical implements,” who are more knowledgeable and less easily confused?

Similarity of Goods and Services

A mark being similar is only half the problem. The goods or services must also be similar. This is a practical, “business and commercial point of view” test. The classification of goods is not conclusive; similar goods can be in different classes, and dissimilar goods can be in the same class.

Our analysis considers all relevant factors, including the nature and uses of the respective goods, the respective end-users, the trade channels where they are sold, whether they are found on the same shelves in a supermarket or whether they are in competition or are “complementary” (e.g., goods and a repair service for those goods).

Our deep knowledge of IPONZ practice in this area is a key advantage. For example, in the complex area of beverages, we know that examiners consider “beer” (Class 32) and “wine” (Class 33) to be similar. However, “beer” (Class 32) and “spirits” (Class 33) are generally not considered similar. This granular, class-by-class knowledge allows us to provide highly accurate risk assessments.

The “Well-Known Mark” Shield (Section 25(1)(c))

New Zealand law provides a special, powerful protection for marks that are “well known in New Zealand”. This provision can be used to block a new application even if it is for goods or services that are not similar.

This protection is triggered if the new mark’s use would be “taken as indicating a connection” with the well-known brand and would be “likely to prejudice the interests of the owner”. This right is so strong that the well-known mark does not even need to be registered in New Zealand to be cited.

While an examiner will rarely raise this objection (they typically leave it for the mark’s owner to raise in an opposition), our pre-filing search always considers this risk. Filing a mark that could attract opposition from a major, well-known brand is a significant commercial risk that our analysis helps you avoid.

Why work with us?

A conflict check is a complex legal opinion, not a simple search. It requires a “global appreciation” of all these factors, understanding that a lesser similarity in the marks can be offset by a greater similarity in the goods, and vice versa.

Our service is to provide this comprehensive analysis before you invest in your application. We identify the risks, from identical overlaps to subtle conceptual similarities, and provide a clear strategy for moving forward. Contact us today for a free consultation.