New Zealand: EU and New Zealand approach to trademark similarity is subtly different

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

New Zealand: EU and New Zealand approach to trademark similarity is subtly different

The similarity of two conflicting marks is one of the fundamentals of trademark law. It becomes relevant whenever two trademarks collide, whether it is during the application process, in opposition and cancellation, or during infringement proceedings.

While both New Zealand and EU trademark law seems to provide comparable tests to determine the similarity of signs, the application of these tests can lead to different results. This applies in particular to cases where similarity arises from identical or similar elements shared by both marks. Under New Zealand law this is referred to as the essential feature test. Under EU law, dominant or independently distinctive elements in the trademarks compared can be relevant for similarity.

The EU approach – similarity through dominant or independently distinctive elements

Despite the focus on the overall impression of the trademarks in comparison, a trademark can be dominated by one or more elements. Similarity in those elements can constitute similarity according to the jurisprudence of the European Court of Justice (Medion AG v Thompson Reuters v Media Sales Germany and Austria GmbH [2006] ETMR 13 (ECJ)). An element can be considered dominant, if it is particularly distinctive in comparison to the other elements or otherwise stands out in the eyes of the relevant public (ibid).

The same principle is applied to elements that hold an independent distinctive character (ibid). Whether an element holds an independently distinctive role within a trademark has to be determined based on all circumstances of the case (i.e. for incorporating a third party trademark into a new composite mark together with a well-known trademark or a trade name).

The New Zealand approach – essential features

The essential features test focuses on whether there are elements within the trademarks under comparison that stand out in the recollection by the relevant consumer when comparing the marks (Sexwax Inc v Zoggs International Ltd [2015] 2 NZLR 1 at [38] – [41]). In other words, are there elements that are remembered more than others?

Differences in theory and practice

While not completely dissimilar, a closer look at both tests reveals differences. Both tests consider what the relevant consumer remembers, yet the EU approach also takes into account the distinctiveness of the element in question. Distinctive elements can also usually be remembered well by the public. However, the same applies to elements that might not be (particularly) distinctive but stand out in other ways (for example, some words/pictures within a trademark are displayed significantly larger than the rest). Therefore, the most memorable element within a trademark does not necessarily have to be the most distinctive.

This might lead in certain scenarios to differing results in practice. Take for example two recent decisions dating from 2018 concerning the same opposition mark:

In the first decision the European General Court (decision of 18/12/2018, case T-274/17) had to rule on an appeal concerning the opposition based on

monster1.jpg

against

monster2.jpg

The court found that the element "monster" in both marks would be at least co-dominant and found the signs to be similar on this basis (ibid at paras 69, 71).

In the second decision (PARAMOUNT PICTURES CORPORATION v MONSTER ENERGY COMPANY [2018] NZIPOTM 21), the New Zealand Intellectual Property Office had to compare the trademarks:

monster3-232.jpg

and

MONSTER ENERGY

and found that the element "MONSTER" within the two marks was not an essential element and the trademarks were therefore not similar (ibid at 38).

Therefore, despite appearing quite similar, both legal systems can lead to completely different outcomes. This should be kept in mind when trademark-related conflicts cover more than one jurisdiction.

fels.jpg

Niklas Fels


Baldwins Intellectual PropertyLevel 15, HSBC House, 1 Queen St, Auckland 1010, New ZealandTel: +64 9 373 3137Fax: +64 9 373 2123email@baldwins.comwww.baldwins.com

more from across site and SHARED ros bottom lb

More from across our site

The insensitive reaction to a UK politician crying on TV proves we have a long way to go before we can say we are tackling workplace wellbeing
Adrian Percer says he was impressed by the firm’s work on billion-dollar cases as well as its culture
In our latest interview with women IP leaders, Catherine Bonner at Murgitroyd discusses technology, training, and teaching
Developments included an update in the VAR dispute between Ballinno and UEFA, the latest CMS updates, and a swathe of market moves
The LMG Life Sciences Americas Awards is thrilled to present the 2025 shortlist
A new order has brought the total security awarded to a Canadian tech company to $45 million, the highest-ever by an Indian court in an IP case
Andrew Blattman reflects on how IP practices have changed and shares his hopes for increased AI use and better performance on the stock market
The firm said major IP developments included advising on a ‘landmark’ deal involving green hydrogen production, as well as two major acquisitions
The appointments follow other recent moves in the European market as firms look to bolster their UPC offerings
Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
Gift this article