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  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  2 NZLR 1 at  – ). 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
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  NZIPOTM 21), the New Zealand Intellectual Property Office had to compare the trademarks:
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.
Baldwins Intellectual PropertyLevel 15, HSBC House, 1 Queen St, Auckland 1010, New ZealandTel: +64 9 373 3137Fax: +64 9 373 firstname.lastname@example.org
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