The Song Remains the Same – Music Awards Rebrand Found to Acquire Distinctiveness from Prior Mark

In Recorded Music New Zealand Limited [2023] NZIPOTM 39 the applicant was allowed to rely on its reputation in a conceptually equivalent registered mark to establish acquired distinctiveness for its otherwise non-distinctive mark.

On 31st July 2020 the applicant applied for AOTEAROA MUSIC AWARDS in goods classes 9, 16 and 25 and services classes 35 and 41. From 1965 -– 2019 the applicant had used the trade mark NEW ZEALAND MUSIC AWARDS in relation to its annual awards ceremony and related goods and services.  In 2016 it achieved registration of that mark on the basis of acquired distinctiveness, by filing evidence of its use and reputation in the mark.  From 2020 the applicant rebranded as AOTEAROA MUSIC AWARDS to promote Te Reo Māori and to recognise the contribution of Māori to music in New Zealand.

Throughout the examination process the examiner maintained that the mark lacked inherent distinctiveness. As the rebrand occurred around the time the application was filed the applicant was unable to rely upon distinctiveness acquired through use of AOTEAROA MUSIC AWARDS. During examination the applicant argued that its application had nonetheless acquired distinctiveness under the “any other circumstances” limb of section 18(2) on the basis that the mark is conceptually equivalent to NEW ZEALAND MUSIC AWARDS, which has an established reputation and is registered in relation to the same goods and services as the application. The examiner rejected that contention, holding that the respective marks are visually and phonetically different and convey different meanings since the first word is in different languages.  The examiner therefore refused to take into account the evidence of use which enabled registration of the earlier mark. The examiner considered some New Zealand cases where registration was allowed under the “any other circumstances” provision in section 18(2), but held that the qualifying circumstances in those cases were not relevant or analogous to the applicant’s case.

The Assistant Commissioner disagreed with the Examiner and allowed the appeal finding that AOTEAROA MUSIC AWARDS is conceptually equivalent to NEW ZEALAND MUSIC AWARDS and that the reputation of the latter can be attributed to the former. The Assistant Commissioner agreed with the applicant’s pleading that no-one would seek to use AOTEAROA MUSIC AWARDS as a trade mark in relation to the relevant goods or services without the intention of exploiting the applicant’s reputation in its registered NEW ZEALAND MUSIC AWARDS trade mark. It was also noted that it was not clear why the examiner considered the two marks were conceptually different given that the examiner acknowledged the interchangeability of ‘New Zealand’ and ‘Aotearoa’ being well-known throughout New Zealand.

This case serves to further elucidate the circumstances which may be relied on by an applicant to achieve registration of an otherwise non-distinctive trade mark under section 18(2).  Other (non-limiting) circumstances that can be relied on include the following:

• Where goods or services could on a reasonable basis be said to be fairly closely allied to the pre-existing fields of the applicant’s activities;
• Where the mark is another in a distinctive family of marks to which distinctiveness will already attach;
• Where the mark forms part of a well-known business name but has been used only in a limited context as a trade mark;
• Where subsequent events assist in establishing the essential quality at the time of registration.

Authors: Quinn Miller and Sally Paterson

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