One of the most common questions in trade mark cases is whether two trade marks are sufficiently similar that there would be a likelihood of deception or confusion between them. The legal rules are very well established, and most cases turn on their specific facts.
The law establishes that the comparison of two marks is carried out by considering each of the marks “as a whole”, taking into account the look and sound of each mark, as well as any particular idea it conveys, and allowing for imperfect recollection. The comparison must take into account the nature and kind of consumer, and all the surrounding circumstances.
The Court of Appeal was called upon to apply the rules in Sexwax Incorporated v Zoggs International Ltd. The trade marks were to be used on clothing, and the marks in question were the device mark below, and the word mark ZOGGS.
Sexwax could not establish a sufficient reputation in either the words “SEX WAX” or the name “MR ZOGS” alone to rely on. All they had to compare with the word ZOGGS was the logo shown above.
This is a “composite” trade mark – it includes many features that may be considered to be individually distinctive. These include the word “MR ZOGS”, the words “SEX WAX”, and the oval shape with a bar across it. The mark also includes other, less distinctive features, such as the words “ORIGINAL”, “NEVER SPOILS” and “THE BEST FOR YOUR STICK” , the stars and other wavy lines. The logo was originally used on containers of wax for surf-boards (aka “sticks”), with use having now spread to other goods for surfers, including clothing.
Deception or confusion may arise by the use, not just of the whole of a mark or logo, but by using one or more of its essential features. Moreover, identification of an essential feature will depend partly on the Court or Tribunal’s own judgment and partly on the nature of the available evidence, particularly with regard to the goods in question.
The Court of Appeal considered that the words “MR ZOGS” are an essential component of the composite logo. They found MR ZOGS is clearly featured on the trade mark and is a significant part of the reputation generated from the mark itself.
Assessing the composite logo mark in its entirety requires reference to the MR ZOGS element inside the mark as one of its essential features. The evidence supported a conclusion that the composite logo could be recognised or remembered by reference to the MR ZOGS element.
The Court of Appeal ordered the ZOGGS application to be rejected, because of the risk of confusion with the composite logo mark.
Zoggs tried to appeal the decision to the Supreme Court. However, leave to appeal was not granted, because the Supreme Court did not consider that the Court of Appeal’s focus on what was a prominent feature of the mark raised an arguable point of principle.
This case was decided in the context of whether the ZOGGS mark was allowed to be registered for clothing. However, the legal test for infringement of a registered trade mark is the same. This emphasises the potential usefulness of protecting a composite mark.
The best form of protection for most trade marks is one or more registration for the important words. However, for various reasons the words alone may not always be eligible for registration. Registering a composite logo can still protect the essential elements. After you have established a reputation through use, the individual elements may be able to be registered separately.
If you use your various trade mark elements together in a consistent manner, registering your composite mark as well as your individual elements can provide an extra level of protection.
Take home points:
- Composite trade marks can effectively protect their essential elements.
- If your word trade marks are borderline for protection, consider protecting the logo or stylised form you use.
- If you have been using your composite mark for some time, the individual essential elements may have a protectable reputation of their own.
  NZCA 311
 Ibid, paragraph 
 Ibid, paragraph