Under section 32(1) of the Trade Marks Act 2002, a “person claiming to be the owner of a trade mark” may apply for the registration of a trade mark.
By applying for registration of the opposed mark, the applicant is effectively claiming that, at the relevant date, it was the owner inNew Zealandof that trade mark for its goods or services.
The test for determining whether marks are substantially identical is set out in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1). Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody (2), per Latham C.J. (3), and Ex parte O’Sullivan; Re Craig (4), per Jordan C.J. (5), where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, …”
In Sanyang Industry Co. Ltd v The North Face Apparel Corp  NZIPOTM 3 (26 January 2012) the Commissioner found that the Opponent’s evidence established use of a composite trade mark before the relevant date:
This mark was to be compared side by side with the applicant’s mark:
Then “their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and that total impression of resemblance or dissimilarity that emerges from the comparison”.
The Commissioner found:
- the opponent’s marks consist of two essential features: (1) the device; and (2) the words “SUMMIT SERIES”;
- the position of “SUMMIT SERIES” helps to anchor the device above it so that the device must be viewed from a particular perspective;
- “SUMMIT SERIES” gives the device context by implying that the centre of the device is a summit; and
- the incomplete circle of which the summit forms the centre may give the impression of a highly stylised “S”, which might stand for either or both of “SUMMIT” and “SERIES”.
On the other hand, the Commissioner considered “that the opposed mark appears to be three dimensional and reminiscent of a badge for a vehicle”. In particular, it was noted that the opposed mark is enclosed within a completed circle, and consists of different shading, which gives a metallic, and therefore industrial, appearance to the mark. Finally, the Commissioner concluded that the central part of the opposed mark does not look like a summit.
Thus, notwithstanding the identical nature of the relative device elements (albeit that the applicant’s mark is turned 45 degrees compared with the Opponent’s device mark) the Commissioner found “that the most significant and obvious difference between the opponent’s marks and the opposed mark is that the opposed mark does not contain the words “SUMMIT SERIES”, which are an essential feature of the opponent’s marks”.
The writer would have been more interested in the Commissioner’s view on the similarity of the two device components which appear to be identical and hopes that this is the finding that the Commissioner would have come to had the Opponent been able to establish use of the device component on its own without the additional words “SUMMIT SERIES” before the relevant date.