PUREBABY decision: the end of the essential feature test?

New Zealand
The decision of the hearings officer in In the matter of Trademark Application 738606 in the name of Purebaby Pty Ltd (Case T19/2008, August 4 2008) has indicated that the essential feature test, as set out in De Cordova v Vick ((1951) 68 RPC 103), may no longer be of much relevance when considering the similarity of marks.
In an earlier case, In the matter of Trademark Application 710425 in the name of Marexim Export-Import Ltd (Case T10/2007, March 17 2007), the Intellectual Property Office of New Zealand (IPONZ) had objected to the registration of the trademark ULTRA for goods in Class 11 of the Nice Classification on the grounds that the mark:
  • was confusingly similar to the earlier registered trademark ULTRALAMP for goods in Class 11; and
  • lacked distinctive character.
However, the hearings officer found that ULTRA was not similar to ULTRALAMP on the grounds that the marks looked and sounded different. She went on to say that the word 'ultralamp' would impart the idea of an extreme or excessive lamp, although adding that she was unsure what an extreme or excessive lamp might be. Despite the fact that the goods covered by both marks overlapped, the hearings officer concluded there was no likelihood of confusion or deception.
In relation to the distinctiveness objection, the hearings officer agreed with the dictionary definition of 'ultra' as going beyond what is usual or ordinary, excessive or extreme. She noted that generally speaking, the word 'ultra' was rarely used on its own, but rather as a prefix. She agreed with the applicant’s submission that the mark ULTRA conveyed a vague notion of excessiveness or extremeness, but did not make any meaningful comments about the goods. There was no discussion as to whether other traders might want to use the word 'ultra' as a prefix.
In the present case, the hearings officer reached a similar conclusion about the trademark PUREBABY/PURE BABY. On November 17 2005 Purebaby Pty Ltd filed an application for the registration of the series mark PUREBABY/PURE BABY for goods in Class 25 ("knitted and woven clothing, headgear"). IPONZ objected to the registration on the grounds that the mark was confusingly similar to the earlier registered trademark PURE for goods in Class 25. 
Following the same reasoning as in ULTRA, the hearings officer concluded that the marks looked and sounded different. Moreover, she held that the marks were dissimilar from a conceptual point of view. According to the hearings officer, the word 'purebaby' gave the idea of "a baby which is pure", whereas the word 'pure' itself gave the idea of something that is "unmixed or unadulterated with any other substance or material".
The decisions in ULTRA and PUREBABY indicate that even if a mark is wholly contained within another mark, it may still be possible to argue that the marks are not confusingly similar - at least in cases before the IPONZ.
Kate Duckworth, Baldwins, Wellington

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