How close is too close to a competitor’s trademark?

When it comes to picking a business or brand name, how unique does it need to be to get approved?

After all, there are only so many words in the English language, right? Surely, there’s going to be cross over at some point.

While that is true, there are a few important considerations the Intellectual Property Office of New Zealand weighs up when assessing trademark disputes.

Lessons from “Lord of the Wings”

Let’s look at a recent trademark opposition decision from the Intellectual Property Office of New Zealand on an application for “Lord of the Wings” covering hospitality-based services, for example.

The name was knocked back by the office because, according to the hearing officer, “consumers are likely to be confused or deceived.”

But how did they come to that conclusion?

Well, there are several crucial considerations that shape trademark disputes. Let’s take a closer look at what went down and what we can learn from it.

1. Fame and recognition

This consideration asks the question – is the other trademark registered and if so, how famous is it?

Before staking claim to a brand name, it’s essential to gauge the fame and recognition of existing trademarks. This is basically step one in freedom-to-operate searching, and can reveal potential clashes and guide originality in brand selection. Testing potential brand names against existing trademarks can help you find something unique and distinct.

In the case of “Lord of the Wings”, there was obviously a trademark owner with a, well, pretty famous brand.

2. Confusion factor

This asks the question – would use of two marks confuse anyone into thinking the businesses were connected? Many trademark disputes revolve around this.

While the “Lord of the Wings” applicant wasn’t planning on making movies, the other guys had been using their brand on all sorts of stuff, including merch. So, it’s not inconceivable to think they could do something in hospitality at some point.

This highlights the importance of having a unique and clear brand that clearly shows what you’re selling or offering.

3. Similarity of trademarks and offerings

This is the crux of trademark law. Your brand gives you the right to use it in connection with the goods and services you offer, but it doesn’t mean someone else can’t use the same name for something totally different.

The point is whether consumers would mix up what you and your competitors are offering. In the case of the “Lord of the Wings”, it was too similar a trademark and up against a famous widely used pre-existing brand name.

The decision

Ultimately, the New Zealand trademark hearings officer decided that “Lord of the Wings” was just too confusing.  Even though it was limited to hospitality services, this didn’t save it since the competing mark is so well known, and the public wouldn’t be surprised if its owners moved into hospitality.

So, what’s the takeaway?

When you’re picking a new brand name, going for something original and distinctive can help you steer clear of existing competitors and build a solid asset for your business.

Need help with a trademark application or dispute?

Get in touch


Simon Murphy

Patent & Trade Mark Attorney

Simon Murphy is a Hamilton-based patent attorney with Origin IP. He has 25+ years’ experience working in IP in New Zealand and Australia. He specialises in software, electronics and ICT-related inventions and has experience in the fields of pattern-recognition software, Hall-effect transducers, search-engine optimisation systems, biometric-recognition processes, electric-fencing technology and RFID systems.

Related Posts