Rotary case sheds light on similarity

Wednesday 23rd April 2008

It looks different so where’s the confusion?

A judgment in the unsuccessful trade mark opposition brought by Rotary International (RI) against Carl Bird, proprietor of the trade mark Rotary Engine, has issued.

Mr Bird sought to register the mark Rotary Engine in relation to clothing in class 25. He declared that the Rotary Engine trade mark was used in relation to clothing for 15 to 25 year olds interested in cars with Rotary Engines. A purchaser of Rotary Engine clothing would be unlikely to purchase or wear goods upon which the rotary name was applied as it was associated with an older age group.

In turn, RI argued that it has a substantial reputation in New Zealand based upon the spill-over reputation form its international activities, a long established presence and substantial number of Rotary clubs and members in New Zealand. It licenses third parties to use the Rotary name on a wide variety of goods, including clothing, and has registered the mark in several classes in New Zealand.

While RI was able to establish that it has a substantial reputation in New Zealand, the opposition was dismissed on the basis that the respective trade marks are visually, phonetically and conceptually dissimilar. The trade channels were also noted to be dissimilar and the Hearings

Officer stated that consumers of the applicant’s goods were more likely, when seeing the mark Rotary Engine, to think of a rotary engine and not the name of the opponent’s organization.

The market for goods bearing the Rotary Engine mark, would not, in the Hearing Officer’s opinion, be deceived into believing that the applicant was in any way connected with the opponent. Therefore, it would be unlikely to deceive or confuse a substantial number of relevant consumers.

A substantial reputation associated with a trade mark by itself would seem insufficient to cause likelihood of deception or confusion with another mark. There must also be sufficient similarity between the respective marks.



This commentary was published in Managing Intellectual Property - September 2006.

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