The Intellectual Property of New Zealand has held that use of the MONECOR trade mark would be likely to deceive or confuse in light of a prior registration for the MONEYCORP trade mark.
TTT Moneycorp Limited owns a registration for the MONEYCORP trade mark in New Zealand for a variety of “financial services” in Class 36. It opposed registration of the MONECOR application filed by Monecor (London) Limited also covering a variety of “financial services” in class 36, “telecommunication services” relating to financial services in class 38 and “spread betting services, online publications, and educational and training services” in class 41.
TTT Moneycorp was successful in establishing that the MONECOR mark is similar to its MONEYCORP registration such that any use of MONECOR would be likely to deceive or confuse under section 25(1)(b).
The Hearing Officer determined that the Opponent’s Class 36 services were encompassed by the class 36 services covered by the MONECOR application and similar to the Class 38 and 41 services. This was on the basis that the users of the two sets of services are the same, their nature and purpose are the same and the trade channels will also generally be the same, with a particular focus on online trade.
In addition, the MONECOR and MONEYCORP marks were held to be too similar for the following reasons:
- the Opponent’s evidence showed that when verbalised, the MONEYCORP mark is often pronounced with a silent “p” which results in both marks being aurally identical.
- the aural similarity would lead to confusion because in the financial services sector references to the mark would often be by telephone.
- the letters in the MONECOR mark are all present in the MONEYCORP mark in the same order.
- the first syllable of the marks is the same.
- the marks are of similar length, consist of the same number of syllables and have the same phonetic structure.
Having regard to the notional use of both marks the Hearing Office concluded that the likely misconception would be that the services were provided by the same operator. As a result the Hearing Office refused to register the MONECOR mark on the basis that its use would be likely to deceive or confuse.