If you have a Legal Beagle account, you can log in by entering your Email and Password.
A trademark is basically what we commonly refer to as a ‘brand,’ being the identifying symbol (or product) which distinguishes a business from its competitors. That ‘symbol’ can be any number of things, including its name, logo, or even a colour or smell. When a business registers its name or logo as a trademark, it becomes exclusively theirs and they can prevent others from using something which appears too similar. Such protection of the brand is evidenced by the use of the ® symbol.
What happens if my trademark is similar to someone else's?
Picture this: you’ve recently opened a chain of fast food restaurants and your best-selling burger, the double-beef-patty-with-cheese feast you’ve decided to call the ‘Big Snack’ is quickly becoming your most popular selling point. In fact, its success is so great, that you’ve decided to trademark its name to stop anyone else from using it! But wait – now McDonalds is breathing down your neck. They’re not happy with the name you’ve chosen for your top burger and are taking legal action to stop you from using it.
You cannot have a trademark that is ‘confusingly similar’ to another. So, in this situation, you would probably not be able to trademark the name ‘Big Snack’ because it would be easy for people to mistakenly believe it was a burger either offered by McDonalds or endorsed by McDonalds in some way. This would be allowing you to benefit from the success of another brand, perhaps to the detriment of the original owner of the brand.
If you are using a ‘brand’ or symbol which is confusingly similar to a trademarked brand, the owner of that brand can bring legal action against you. If it can be shown that you are unlawfully using a symbol which could be confused with theirs, an injunction may be granted against you. Such an injunction could state that you have to to stop using the symbol altogether, or even extend to requiring that you pay damages or reparation to the other party for any loss they suffered from your use of their trademark!
How similar can our trademarks be?
In 2011, well-known jandal brand ‘Havaianas’ tried to prevent another company from trying to trademark the ‘Cubanas’ brand. It argued there was potential for confusion in that both words end with ‘-anas,’ both brands had a Hawaiian theme, and their fonts were similar. However the High Court found that the company marketing Cubanas was not in the wrong, on the basis that the two words “both look and sound distinctively different”. More recently, Apple tried preventing a Hamilton inventor from trademarking his creation the ‘driPhone’ saying the word was too similar to its trademarked ‘iPhone.’ Again, the Courts threw this out stating the names were not similar enough to cause confusion.
These two cases show that while a trademark cannot be too similar to another, it can be fairly similar provided that there are enough distinguishing features between the two that consumers wouldn’t be confused between the two brands. Decisions made by New Zealand Courts have shown that the trademarks’ similarities must reach a high level before a company is prevented from using a trademark which could be seen as ‘similar’ to another.
So what do I do if I see someone using my trademark?
The first step to take if you see someone using your trademark (or one that’s so similar to yours that it’s indistinguishable) is to see your lawyer. Your lawyer will represent you (and protect your brand) in legal action against the person infringing your trademark. The Court can grant a number of things if it finds your trademark has been infringed upon, including awarding an interim or permanent injunction (which prohibits ongoing use of the infringing trademark), damages, an account of profits (where any money earned by the infringer through using your trademark will be awarded to you), or an order requiring removal of the offending trademark.
If you’ve invested your time and money into creating a brand to be proud of, then it deserves protection. Make sure you are vigilant about protecting your intellectual property and watch out for any would-be imposters. It's probably best not to name your burger ‘Big Snack’, ‘Chopper with Cheese’ or ‘Winger Burger’ – just to be safe!
Disclaimer: The information on this page is general information only and must not be relied on as legal advice. Legal Beagle is not a law firm or a substitute for a law firm. We are unable to provide any kind of advice, explanation, opinion, or recommendation about possible legal rights, remedies, defences, options, selection of legal documents or strategies.
Want to hear about new posts?