New Zealand: Similarity of Trade Marks under New Zealand and EU Law – Similar or Not?
Thursday 16th May 2019
The element of similarity of two conflicting marks is one of the core elements in trade mark law. It becomes relevant whenever two trade marks collide - may it be during the application process, in opposition and cancellation, or during infringement proceedings.
While both New Zealand and EU Trade Mark 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 trade marks to be 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 trade marks in comparison, a trade mark 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 .
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 . Whether an element holds an independently distinctive role within a trade mark has to be determined based on all circumstances of the case (i.e. for incorporating a third party trade mark into a new composite mark together with a well-known trade mark or a trade name).
The New Zealand approach – essential features
The essential features test focusses on whether there are elements within the trade marks at comparison that stand out in the recollection by the relevant consumer when comparing the marks.  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 in within a trade mark are displayed significantly larger than the rest). Therefore, the most memorable element within a trade mark 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  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. 
In the second decision, the New Zealand Intellectual Property Office had to compare the trade marks
MONSTER ENERGY 
and found that the element “MONSTER” within the two marks was not an essential element and the trade marks therefore not similar. 
Therefore, despite appearing quite alike both legal systems can lead to completely different outcomes. This should be kept in mind when trade mark related conflicts cover more than one jurisdiction.
This article was written by Niklas Fels, first published in ManagingIP
 Medion AG v Thompson Reuters v Media Sales Germany and Austria GmbH  ETMR 13 (ECJ).
 Sexwax Inc v Zoggs International Ltd  2 NZLR 1 at  – .
 decision of 18/12/2018, case T-274/17.
 Ibid at paras 69, 71.
 PARAMOUNT PICTURES CORPORATION v MONSTER ENERGY COMPANY  NZIPOTM 21.
 Ibid at 38.