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A Fowl Idea - Conceptually Similar Marks

20 Jun 2007

When two competing products have different brand names, consumers can tell them apart easily. But what happens when brand names suggest the same idea? How critical is the underlying concept of a brand? Will consumers be confused seeing conceptually similar brands sitting side-by-side on the shelf?

The Court of Appeal considered these questions recently in the long running dispute between the makers of WILD TURKEY bourbon and WILD GEESE whiskey.

A bird is a bird is a bird?
Austin, Nicols & Co Inc, the owner of the well-known WILD TURKEY bourbon brand, opposed the registration of the WILD GEESE trade mark for alcoholic drinks. They argued the WILD GEESE trade mark was too similar to their WILD TURKEY mark and this likeness would confuse consumers.

Similar marks are not allowed
Once a trade mark has been registered, competitors are not allowed to register a mark that is confusingly similar. To assess whether two competitors’ marks are similar in this way, an overall comparison of the look, sound and idea of the marks must be made.

In the WILD TURKEY/WILD GEESE dispute the decision turned on how much emphasis should be placed on conceptual similarity between the two marks.

The first and second shots
Initially, the Assistant Commissioner of Trade Marks found that even though the marks WILD TURKEY and WILD GEESE both used the name of a bird, this was not necessarily confusing. The visual and phonetic differences were enough to satisfy the Assistant Commissioner the two marks were not similar enough to cause confusion. WILD GEESE was accepted for registration as a trade mark.

Austin Nicols appealed the decision to the High Court. The High Court overturned the Assistant Commissioner’s decision.

The High Court decided the idea of the mark is crucial. In this case, both marks conveyed the same idea – that of a wild hunted game bird. If both marks were registered as trade marks they said, then consumers were likely to be confused about the trade source of the products.

Appeal to our highest Court
Having had their trade mark application rejected by the High Court, Stichting Lodestar, who owned the WILD GEESE trade mark, appealed to the Court of Appeal. Unfortunately for Austin Nicols, the Court of Appeal agreed with the Assistant Commissioner and allowed WILD GEESE to be registered.

The Court of Appeal decided the High Court gave undue weight to the general conceptual similarities between WILD TURKEY and WILD GEESE. The Court of Appeal did not think that the concept of a bird was a dominant factor.  Specifically, the Court thought that the concept of a “wild hunted game bird” was broad and ill-defined and therefore not a strong one when comparing the marks. 

The Court of Appeal gave greater weight to the differences in spelling and sound between the words “TURKEY” and “GEESE”. Clearly these two words are spelt and pronounced differently. The Court decided that if the marks were used for liquor products that were sold in New Zealand in bottled form in liquor outlets, or as single drinks in bars, then there was unlikely to be any confusion.

The Court of Appeal’s decision makes it clear that a single element of similarity does not cancel all other factors that go into the comparison of two trade marks.  

Practical considerations for choosing brands
With increasing competition between FMCG brands, it is important to make sure your brand is not too similar – either conceptually or otherwise – to your competitors’ brands.

Always conduct a trade mark search before using or registering a mark.  The search should be of both registered trade marks and those used in the marketplace.   It also needs to go beyond a comparison of words and extend to a comparison of the underlying idea. 

A search will help prevent situations where you must stop using a trade mark because it is too similar conceptually, visually or phonetically to another trade mark. You can face significant marketing and packaging costs that cannot be recovered if you find yourself in this situation.

Chose a brand that encompasses an idea that is irrelevant to the products you market.  For example, avoid a mark like GOLDEN LOCKS for hair care products.  Case law indicates that where two marks evoke the same idea, it is unlikely the marks will be found to be similar if they use words that simply describe the products on which they are used.

Finally, when adopting a brand, think beyond its visual impact.  The brand must also represent a strong and clear concept. Not only will it be easier for consumers to remember the product, but the chances of preventing a competitor coming into the market with a similar brand will be higher.

Amanda Griffiths
Associate, A J Park Auckland
amanda.griffiths@ajpark.com
DDI +64 9 353 8152

An edited version of this article was published in FMCG magazine July 2007