Enable Networks has prevailed in a legal hearing relating to its 'Enable' trademark, heard by the Intellectual Property Office of New Zealand last month.
Australian business software services provider Enabling Pty objected to Christchurch City Networks, as Enable was called at the time, filing an application for 'Enable' as a trademark in March 2009. Enabling Pty owns the trademark for 'Enabling'.
In a ruling made on May 11 this year, assistant commissioner of trade marks J Walden found that Enabling had “not succeeded on any of its grounds of opposition” and directed that the 'Enable' trademark be registered.
Walden noted in the ruling: “Having regard to the goods and services covered by each mark, I consider that the relevant market for each party’s goods and services could include the same kinds of businesses.
“However, I consider that those businesses will be knowledgeable about each party’s services, given the technical nature of each party’s goods and services.”
She also noted: “I consider that the marks appear to share the same general ideas of giving a person the means or authority to do something and/or or making something possible, because the marks are both forms of the same verb, enable. However, despite the general conceptual similarity, I consider that the opposed mark and the opponent’s mark are sufficiently conceptually dissimilar because they are visually and aurally dissimilar.
“The opposed mark is a word mark, which may appear in any stylised manner, font, size, colour, medium or format.
“However, the opponent’s mark, which is a series device mark, must appear exactly in the way it has been registered.”
She also noted: “I find that the applicant [Christchurch City Networks]’s goods and services are dissimilar to the opponent [Enabling Pty]’s goods and services.
“I consider that the applicant’s goods and services appear to have a fibre optic cable network focus.
“On the other hand, the opponent’s goods and services appear to have a business systems, software development and project development and management services focus.
“I consider that the relevant market for each party’s goods and services will have no difficulty in distinguishing between the applicant’s broadband internet network and the opponent’s business systems, software development, project development and management services, which may use that network.”
Enable Networks recently won its bid to partner with the government on the Ultra Fast Broadband initiative in Canterbury and this week announced it had awarded a $260 million contract to Transfield Services to be its civil construction partner.