MARS NEW ZEALAND LIMITED V HEINZ WATTIE'S LIMITED HC WN CIV-2011-485-002089

MARS NEW ZEALAND LIMITED V HEINZ WATTIE'S LIMITED HC WN CIV-2011-485-002089 [30 March 2012]IN THE HIGH COURT OF NEW ZEALANDWELLINGTON REGISTRYCIV-2011-485-002089[2012] NZHC 591UNDER the Trade Marks Act 2002IN THE MATTER OF an appeal from the decision of J Walden,Assistant Commissioner of Trade Marksdated 14 September 2011ANDIN THE MATTER OF Trade Mark Application Number 780858 inClass 31BETWEEN MARS NEW ZEALAND LIMITEDAppellantAND HEINZ WATTIE'S LIMITEDRespondentHearing: 21 March 2012Counsel: E C Gray and R A O'Brien for AppellantN J Robb for RespondentJudgment: 30 March 2012In accordance with r 11.5 I direct the Registrar to endorse this judgment with the delivery time of 3.30pm on the 30th day of March 2012.RESERVED JUDGMENT OF COLLINS JTABLE OF CONTENTSIntroduction .................................................................................................................................. [1]Background ................................................................................................................................... [2]Key legislative provisions ............................................................................................................. [8]The evidence .................................................................................................................................. [9]Appellant's registered trade marks .......................................................................................... [10]Respondent's trade marks ........................................................................................................ [11]Ms Curtis' evidence ................................................................................................................. [13]The Assistant Commissioner's decision .................................................................................... [17]Section 17(1)(a) of the Act ....................................................................................................... [18]Section 17(1)(b) of the Act ....................................................................................................... [39]Section 25(1)(c) of the Act ....................................................................................................... [40]Summary of appellant's case on appeal .................................................................................... [41]Section 17(1)(a) of the Act ....................................................................................................... [41]Section 17(1)(b) of the Act ....................................................................................................... [42]Section 25(1)(c) of the Act ....................................................................................................... [43]Summary of respondent's case on appeal ................................................................................ [44]Section 17(1)(a) of the Act ....................................................................................................... [44]Section 17(1)(b) of the Act ....................................................................................................... [49]Section 25(1)(c) of the Act ....................................................................................................... [51]Determining an appeal under the Act ....................................................................................... [52]Analysis ....................................................................................................................................... [55]Nutri – Plus ................................................................................................................................. [56]Section 17(1)(a) of the Act ....................................................................................................... [57]Does the "ADVANCED DOG NUTRITION" element of the CHAMP trade mark have areputation in the relevant market? ........................................................................................... [58]Do the words "ADVANCED DOG NUTRITION" have any trade mark significance? ...... [64]How do the appellant's and respondent's trade marks compare? ......................................... [66]Visual image of the trade marks................................................................................................ [68]Sound of the trade marks........................................................................................................... [69]Idea of the trade marks .............................................................................................................. [70]What is the likelihood of confusion if the appellant's trade mark is allowed? ...................... [72]Section 17(1)(b) of the Act ....................................................................................................... [76]Section 25(1)(c) of the Act ....................................................................................................... [81]Conclusion ................................................................................................................................... [87]Introduction[1] The appellant appeals a decision of an Assistant Commissioner of Trade Marks (Assistant Commissioner) dated 14 September 2011 (the decision). Thedecision upheld the respondent's opposition to the appellant's trade mark registration application for "ADVANCE ADVANCED PET NUTRITION" (the application).Background[2] Both the appellant and respondent are significant companies which produce a wide range of human and pet food products. Most relevantly to this case, both parties manufacture dog food.[3] On 6 December 2007 the appellant made the application.[4] The application sought to register the trade mark under Class 31 of the ninth edition of the International Trade Mark Classification System, adopted as part of the Nice Agreement.1 That system classifies trade marks in 45 categories of goods and services. Class 31 of the International Classification covers:agriculture, horticulture and forestry products, grains and seeds; live animals, birds and fish; cuttlefish bone, bones for dogs, edible chews for animals, products for animal litter; fresh fruits and vegetables; foodstuffs and beverages for animals, birds and fish and additives for such foodstuffs and beverages.[5] The application was accepted on 11 May 2009 and advertised in the Intellectual Property Office Journal on 29 May 2009.[6] On 31 August 2009, the respondent filed a notice of opposition to the application. The notice of opposition was amended on 24 March 2010. The basis ofopposition was the respondent's concern that the application sought to register atrade mark which the respondent believes is similar to its unregistered trade marks:1 Trade Marks Regulations 2003, reg 3.and ADVANCED DOG NUTRITION.[7] Both parties filed evidence. The respondent's evidence before the AssistantCommissioner was primarily contained in a statutory declaration from Ms Curtis dated 22 April 2010. Ms Curtis is the New Zealand Product Manager of the respondent. The evidence which the appellant produced to the Assistant Commissioner was in the form of a declaration from Mr Scott, solicitor for the appellant, dated 22 December 2010.Key legislative provisions[8] The application was opposed on three grounds. The grounds of appeal relied upon the following provisions in the Trade Marks Act 2002 (the Act):(1) Section 17(1)(a) which provides:The Commissioner must not register as a trade mark or part of a trade mark any matter –(a) the use of which would be likely to deceive or cause confusion; ...(2) Section 17(1)(b) which provides:The Commissioner must not register as a trade mark or part of a trade mark any matter–(b) the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court; ...(3) Section 25(1)(c) which provides:The Commissioner must not register as a trade mark (trade mark A) in respect of any goods or services if–(c) it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand (trade mark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or anyother goods or services if the use of trade mark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trade mark D, and would be likely to prejudice the interests of the owner.The evidence[9] The evidence before the Assistant Commissioner and which was relied upon in this Court pursuant to s 172(2) of the Act can be explained under the following headings:(1) Appellant's registered trade marks(2) Respondent's trade marks(3) Ms Curtis' evidence.Appellant's registered trade marks[10] As at the date it filed the application (6 December 2007),2 the appellant had the following Class 31 trade mark registrations:2 The relevant date for determining the parties' rights in relation to the notice of opposition is thedate of the application: see Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR50 (CA) at 61.Respondent's trade marks[11] As at 6 December 2007 the respondent had 19 trade marks on the Register containing the word CHAMP with additional words, described during the hearing as"tag lines", beneath the word CHAMP. In all instances the word "ADVANCED"appears in the tag line. Thus, by way of example, Ms Curtis' declaration annexed a series of the respondent's trade marks.NUMBER REGISTERED TRADE MARKS284591 ADVANCE302386608208627771[12] Ms Curtis' declaration also annexed examples of the respondent'strade mark.3Ms Curtis' evidence[13] In her declaration Ms Curtis explained the respondent is part of the world- wide H J Heinz Group of Companies. The respondent employs approximately 1900 staff.[14] Ms Curtis explained that the respondent has manufactured and distributed dog food under the trade mark since at least 1998. She explained that the respondent had invested significant sums of money and resources into promoting this brand. In particular, it had invested in television, print media, promotions to retailers and product packaging of the trade mark.[15] Ms Curtis explained that the respondent had acquired a 10.7 per cent share of the market by 2004 through use of the trade mark.[16] Ms Curtis also provided a copy of two television advertisements of therespondent's CHAMP DOG BISCUIT AND CHAMP DOG KIBBLE products that were aired between September 2004 and April 2005.3 The trade marks reproduced in paragraphs [11] and [12] are device or figurative marks (seeKerly's Law of Trade Marks and Trade Names (15th ed, Sweet and Maxwell, London, 2011) atpara 8-084). For convenience all marks are referred to as either trade marks or marks in thisjudgment.The Assistant Commissioner's decision[17] It is convenient to analyse the Assistant Commissioner's decision in threesteps, each of which corresponds with the three legislative provisions which are relied upon by the appellant in pursuing its appeal.Section 17(1)(a) of the Act[18] In her decision the Assistant Commissioner stated the issue arising under s 17(1)(a) of the Act in the following way:4Having regard to the reputation acquired [for the opponent's marks:CHAMP ADVANCED DOG NUTRITION and ADVANCED DOG NUTRITION], is the Court satisfied that [the opposed mark: ADVANCE ADVANCED PET NUTRITION], if used in a normal and fair manner inconnection with [the appellant's goods], will not be reasonably likely to cause deception and confusion amongst a substantial number of persons. (emphasis added by the Assistant Commissioner)[19] The legal principles incorporated in the issue as stated by the Assistant Commissioner are well established. In Smith Hayden & Co Ltd's ApplicationEvershed J (as he then was) said:5Having regard to the reputation acquired by [the opponent's mark], is theCourt satisfied that the mark applied for, if used in a normal and fair manner ... will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.That approach was endorsed by the Court of Appeal in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd.6[20] The Assistant Commissioner proceeded to state:7The question is whether "a substantial number of persons" in the relevantmarket is likely to be deceived or confused by the use of the opposed mark. (emphasis added by Assistant Commissioner)4 Mars New Zealand Ltd v Heinz Wattie's Ltd [2011] NZIPOTM 29 at [12].5 Smith Hayden & Co Ltd's Application (1945) 63 RPC 97 at 101.6 Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 57.7 At [16].[21] In stating this question the Assistant Commissioner relied upon Pioneer Hi- Bred Corn Co:8(9) The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck. Terms such as "a number of persons" (Jellinek's Application),9 "a substantial number of persons" (Smith Hayden & Co Ltd's Application),10 "any considerable section of the public" (New Zealand Breweries Ltd vHeineken's Bier Browerij Maatschappij NV),11 and "any significant number of such purchasers" (Polaroid Corporation v Hannaford & Burton Ltd)12 have been used (emphasis added by Assistant Commissioner).[22] The Assistant Commissioner recited the differences between "deception" and "confusion" set out in Pioneer Hi-Bred Corn Co:13"Deceived" implies the creation of an incorrect belief or mental impression and causing "confusion" may go further than perplexing or mixing up the minds of the purchasing public (New Zealand Breweries Ltd v Heineken's Bier Browerij Maatschappij NV14). Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark may come from some other source and confused to being caused to wonder whether that might not be the case.[23] The Assistant Commissioner then observed that before the respondent had the onus of establishing that the opposed mark offended s 17(1)(a) of the Act, the respondent had first to establish that, at the relevant date, there was an awareness, in the relevant market, of the respondent's marks.15[24] The Assistant Commissioner then decided that, on the evidence before her, the respondent had established that at the relevant date, its trade marks:8 At 62.9 Jellinek's Application (1946) 63 RPC 59 (Ch).10 Smith Hayden & Co Ltd's Application (1945) 63 RPC 97.11 New Zealand Breweries Ltd v Heineken's Bier Browerij Maatschappij NV [1964] NZLR 115(CA).12 Polaroid Corp v Hannaford & Burton Ltd [1975] 1 NZLR 566 (CA).13 At 62.14 New Zealand Breweries Ltd v Heineken's Bier Browerij Maatschappij NV [1964] NZLR 115(CA) at 141.15 Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 63.andwere likely to have been well known in the relevant market in relation to dog food products.[25] Six factors were relied upon by the Assistant Commissioner when reaching this conclusion. They can be succinctly summarised:(1) Factor One[26] The evidence from Ms Curtis showed use of the trade marks on the labels of cans of dog food, dog food rolls, packaging of dog biscuits and packaging of dog kibble from 1998 to 6 December 2007.(2) Factor Two[27] Before the relevant date the respondent had advertised its CHAMP dog food products on television, print media, direct mail campaigns, presentations to retailers, in-store promotions, supermarket fliers and in-product packaging by using the two trade marks referred to in [24] above.(3) Factor Three[28] In 2004 the respondent's CHAMP dog food products were the number four leading brand in the dog food market.(4) Factor Four[29] The respondent's CHAMP dog food products were sold through a number of major retailers in New Zealand.(5) Factor Five[30] The respondent's CHAMP dog food products were sold throughout New Zealand through a wide range of smaller retail outlets.(6) Factor Six[31] The respondent's confidential sales figures of its CHAMP dog food products for 2004 to 2007 inclusive were substantial.[32] The Assistant Commissioner then undertook an overall comparative test by following the guidance set out in New Zealand Breweries Ltd v Heineken's BierBrowerij Maatschappij NV:161. You must take the two words and judge them both by their look and by their sound; 2. You must consider the goods to which they are to be applied and the nature and kind of customer who is likely to buy those goods; and 3. You must consider all the surrounding circumstances and what is likely to happen if each of the marks is used in a normal way as a trade mark for the goods of the respective owners of the marks: In re Pianotist Co's Application.17[33] The Assistant Commissioner noted that she had to consider the actual use ofthe respondent's marks and referred to Anheuser-Busch Inc v Budweiser Budvar National Corporation.18[34] She recognised that in considering the respondent's marks and the appellant'smarks she ultimately had to focus upon the totality of each mark and not undertake a"side by side" comparison. She also acknowledged that she had to allow for16 At 139.17 In re Pianotist Co's Application (1906) 23 RPC 774 at 777.18 Anheuser-Busch Inc v Budweiser Budvar National Corporation [2003] 1 NZLR 472 (CA) at [30].imperfect recollection, citing De Cordova v Vick Chemical Co where the Judicial Committee of the Privy Council said:19The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. (emphasis in original).[35] The Assistant Commissioner considered that:20"ADVANCED PET NUTRITION" in the [appellant's] mark is visually,aurally, but more importantly, conceptually similar to "ADVANCED DOG NUTRITION" which is a distinct and essential feature of the [respondent's]mark.The Assistant Commissioner considered that:21"DOG" in the [appellant's] mark could easily be recalled as "PET" becauseof the conceptual overlap between dogs being pets, and the fact that both words, which have three letters, are located immediately before"NUTRITION" – the last word in the marks.[36] In considering whether or not there is similarity between the respondent'sgoods and the appellant's goods the Assistant Commissioner had regard to thefollowing passage in British Sugar plc v James Robertson & Sons Ltd:22... I think the following factors must be relevant in considering whether or not there is or is not similarity:(a) The respective uses of the respective goods or services;(b) The respective users of the respective goods or services;(c) The physical nature of the goods or acts of service;(d) The respective trade channels through which the goods or services reach the market;19 De Cordova v Vick Chemical Co (1951) 63 RPC 103 (PC) at 106.20 At [26].21 Ibid.22 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 282 at 296 – 297 (endorsed by theHigh Court in Intellectual Reserve Inc v Sintes HC Auckland CIV-2007-404-2610, 13 December2007).(e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;(f) The extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.[37] Taking all of the British Sugar criteria together, the Assistant Commissionerconcluded that the appellant and respondent's goods that may be covered by the appellant's approved mark are the same as, or similar to, the goods covered by the respondent's marks.[38] The Assistant Commissioner accordingly concluded:23... that it is likely that a substantial number of persons in the relevant market will be caused to wonder (at the lowest end of the confusion spectrum) if there is a connection in a trade between the [appellant's] goods and the [respondent's].Section 17(1)(b) of the Act[39] Having concluded that the s 17(1)(a) aspect of the opposition was established, the Assistant Commissioner considered that it was not necessary for her to consider the challenge based on s 17(1)(b) of the Act.Section 25(1)(c) of the Act[40] In concluding that the respondent should also succeed on its s 25(1)(c) ground of opposition, the Assistant Commissioner:(1) reiterated her earlier finding that the respondent's marks were likelyto have been well known in the relevant market in relation to dog food products;23 At [34].(2) reiterated her earlier finding that the appellant's trade mark is similar to the respondent's device CHAMP DOG NUTRITION mark;(3) reiterated her earlier finding that the appellant's goods that might be covered by its mark are the same as or similar to the respondent'sgoods; and(4) concluded, citing Intellectual Reserve Inc v Sintes,24 that if the appellant were to use the opposed mark, it was likely that a substantial number of persons in the relevant market would be confused and that this was a form of prejudice.Summary of appellant's case on appealSection 17(1)(a) of the Act[41] Before this Court, the appellant submitted:(1) The trade mark "ADVANCE ADVANCED PET NUTRITION" is distinctive and inherently registrable as a trade mark;(2) It had prior registrations for the "ADVANCE" word and related trade marks;(3) Where a party has a prior trade mark registration for a brand (such as"ADVANCE"), it will also be entitled to registration for that brand combined with descriptive elements (such as ADVANCED PET NUTRITION). This is because deception or confusion cannot arise from the addition of descriptive elements – as consumers will recognise the well-established brand and associate the goods with that trader;24 Intellectual Reserve Inc v Sintes HC Auckland CIV-2007-404-2610, 13 December 2007.(4) While CHAMP is a well known brand, CHAMP ADVANCED DOG NUTRITION is not. The "ADVANCED DOG NUTRITION"element is purely descriptive and seldom used. In all the instances the tag line is used, it is always used in association with CHAMP and is used in much smaller text;(5) The descriptive words "ADVANCED DOG NUTRITION" do not have any trade mark significance;(6) CHAMP ADVANCED DOG NUTRITION cannot be confusinglysimilar to "ADVANCE ADVANCED PET NUTRITION".Section 17(1)(b) of the Act[42] It is the appellant's case that the threshold for opposition to a trade mark setout in s 17(1)(b) of the Act is higher than that required by s 17(1)(a) of the Act. Accordingly, the appellant takes the view that if the respondent failed to establishthat use of the "ADVANCE ADVANCED PET NUTRITION" trade mark wouldcause confusion or that the "ADVANCED DOG NUTRITION" element of the respondent's mark had a reputation in the relevant market then it would beunnecessary for this Court to address the s 17(1)(b) grounds of opposition.Section 25(1)(c) of the Act[43] The appellant's case in relation to the third ground of appeal is:(1) The Assistant Commissioner incorrectly found that the tag line"ADVANCED DOG NUTRITION" is well known in New Zealand,independently of the reputation of CHAMP;(2) The Assistant Commissioner wrongly concluded that the"ADVANCE ADVANCED PET NUTRITION" trade mark isvisually, aurally and conceptually similar to the respondent'sunregistered marks;(3) The Assistant Commissioner wrongly concluded that the appellant'suse of its trade mark will prejudice the respondent;(4) For s 25(1)(c) to be engaged the respondent's marks must be identicalor similar. As the marks are not similar, the Assistant Commissioner was wrong in relation to her findings under s 25(1)(c) of the Act.Summary of respondent's case on appealSection 17(1)(a) of the Act[44] The respondent submitted in this Court that by virtue of the respondent'swide use of the trade mark there is an awareness of that trade mark among consumers, and that awareness extends to the words"ADVANCED DOG NUTRITION". The respondent says those words cannot beignored or dismissed as not being part of the trade mark or part of what consumerswill know about the respondent's brand.[45] The respondent believes that when the nature of the goods sold by the parties, how they are sold, who purchases them, the similarities of the goods, and the similarities in the trade marks are all considered, then confusion is likely.[46] The respondent submits that a consumer, having heard of or seen therespondent's brand, may incorrectly recall the words "ADVANCED DOG NUTRITION" and confuse it with the appellant's product.[47] To the extent that the appellant uses its trade mark on goods other than dog food, then, the respondent says that consumers are likely to think the appellant's product is an extension of the respondent's product range.[48] For these reasons, the respondent says that the Assistant Commissioner correctly identified the relevant legal principles and applied them appropriately to the facts of this case.Section 17(1)(b) of the Act[49] The respondent submits that if it does not succeed under s 17(1)(a) of the Act then its grounds of opposition under s 17(1)(b) cannot succeed:... as the threshold for passing off in breach of the Fair Trading Act is higher than for the deception or confusion limb of s 17(1)(a) of the Act.[50] Conversely, the respondent advises the Court that if its s 17(1)(a) ground of opposition is made out then s 17(1)(b) need not be considered.Section 25(1)(c) of the Act[51] The respondent's case in relation to the s 25(1)(c) aspect of this case is:(1) The appellant's trade mark is similar to at least one of the marks ofthe respondent which is well known, or that an essential element ofthe appellant's trade mark is similar to the mark of the respondentwhich is well known;(2) The appellant's goods and services are the same as or similar to thegoods and services of the respondent;(3) The appellant's use of its trade mark could be taken as indicating aconnection in the course of trade with the respondent's product;(4) The appellant's use of its trade mark is likely to prejudice the interestsof the respondent in that consumers are likely to be confused into thinking that the appellant's product is connected to the respondent'sproduct.Determining an appeal under the Act[52] An appeal of this nature is conducted as a rehearing pursuant to s 173 of the Act and r 20.18 of the High Court Rules. The Court is not bound to accept the Assistant Commissioner's findings of fact and is entitled to exercise any power ordiscretion available to the Assistant Commissioner at first instance. The Court must exercise its own judgement but, where appropriate, the Court may give weight to the expressions of opinion of the Assistant Commissioner.[53] In Austin, Nichols & Co Inc v Stichting Lodestar, the Supreme Court said that when considering a general appeal the High Court is required to:25... come to its own view on the merits. The weight it gives to the decision of the Commissioner is a matter of judgment [sic]. If the High Court is of a different view from the Commissioner and is, therefore, of opinion that theCommissioner's decision is wrong, it must act on its own view.[54] The Court went on to say:26Those exercising general rights of appeal are entitled to judgment in accordance with the opinion of the appellate court, even where that opinion is an assessment of fact and degree and entails a value judgment [sic]. If theappellate court's opinion is different from the conclusion of the tribunal appealed from, then the decision under appeal is wrong in the only sense that matters, even if it was a conclusion on which minds might reasonably differ. In such circumstances it is an error for the High Court to defer to the lowerCourt's assessment of the acceptability and weight to be accorded to theevidence, rather than forming its own opinion.In the present appeal there was no basis for caution in differing from the assessment of the tribunal appealed from. The case entailed no question of credibility. It turned on a judgment [sic] of fact and degree, not the exercise of discretion entrusted to the tribunal. We are of the view that the Court of Appeal was not correct to suggest that, because the decision turned on a value judgment [sic] apparently open to the Assistant Commissioner, "theHigh Court Judge ought not to have embarked on a reconsideration of the issue without considering, and giving weight to, the AssistantCommissioner's conclusion". The High Court Judge was obliged to reconsider the issue. He was entitled to use the reasons of the Assistant Commissioner to assist him in reaching his own conclusion, but the weight he placed on them was a matter for him.25 Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [3].26 At [16]-[17].Analysis[55] I agree with and adopt the Assistant Commissioner's analysis of the relevantlegal principles which I have set out in [18] to [36] above.Nutri – Plus[56] Before addressing the four questions posed above it is convenient to dispose of the NUTRI – PLUS issues at this juncture. The Assistant Commissioner held the respondent had established that its trade mark was well known in the dog food product industry. I do not doubt that. However, I alsodo not believe the status of the respondent's device helps resolve the issues raised by this appeal.Section 17(1)(a) of the Act[57] I will address the issues raised under the s 17(1)(a) ground of appeal by answering the following questions:(1) Does the "ADVANCED DOG NUTRITION" element of theCHAMP trade mark have a reputation in the relevant market?(2) Do the words "ADVANCED DOG NUTRITION" have any trademark significance?(3) How do the appellant's and respondent's trade marks compare?(4) What is the likelihood of confusion if the appellant's trade mark isallowed?Does the "ADVANCED DOG NUTRITION" element of the CHAMP trade mark have a reputation in the relevant market?[58] I agree with the respondent and the Assistant Commissioner that the correctapproach is to compare the reputation of the respondent's trade marks and a fair andnatural use of the appellant's trade marks in relation to the goods and services of theappellant.27[59] The evidence from Ms Curtis amply demonstrates that the respondent has a well established reputation amongst a substantial number of persons in the relevant market for its CHAMP brand. Ms Curtis' evidence on this issue can be summarisedsuccinctly:(1) At the relevant date the respondent had multiple brand names using the word CHAMP in large bold and dominant letters. The brands identified by Ms Curtis includedCHAMPADVANCED DOG NUTRITION KibbleCHAMPADVANCED DOG NUTRITION BiscuitsCHAMPADVANCED DOG NUTRITION Puppy RollCHAMPNUTRI-PLUSADVANCED DOG NUTRITION(2) At the relevant date the respondent's CHAMP dog food products were sold throughout New Zealand in three major retail chains:27 Anheuser-Busch Inc v Budweiser Budvar National Corp [2003] 1 NZLR 472 (CA).(a) Progressive Enterprises Ltd;(b) Foodstuffs (NZ) Ltd;(c) The Warehouse (NZ) Ltd(3) At the relevant time the respondent had undertaken extensive advertising of its brand. Those advertisements and promotion campaigns included:(a) television advertisements;(b) print media advertisements;(c) promotional literature;(d) packaging.(4) The revenue the respondent received from its CHAMP productions was, at the relevant date, substantial;(5) The respondent had, at the relevant date, acquired 10.7 per cent of the market share of sales of dog food products.[60] However, what the evidence from Ms Curtis fails to establish is that thewords "ADVANCED DOG NUTRITION" form part of the reputation that therespondent had acquired for its product in the relevant market, at the relevant date. This point can be expressed using the language of Richardson J in Pioneer Hi-Bred Corn Co in the following way. The evidence does not establish that at the relevanttime there was "an awareness" or "cognisance" or "knowledge" on the part of the market of the words "ADVANCED DOG NUTRITION" used in the respondent'sCHAMP devices. This is hardly surprising. An examination of the advertising and promotional material presented by Ms Curtis reveals the following:(1) The word CHAMP takes up nearly all the respondent's trade mark.The word CHAMP is in large text in the centre of the trade mark.The appellant has advised the Court that the words "ADVANCED DOG NUTRITION" take up under six per cent of the trade mark and are in a much smaller less defined font. The respondent does notdispute the appellant's calculations. From my own observations it is apparent that the words "ADVANCED DOG NUTRITION" are a very insignificant part of the respondent's device. In some instancesthe words are barely visible. It was telling that in the respondent'stelevision advertisements there was no reference to the words"ADVANCED DOG NUTRITION" although no doubt the words inquestion were probably on the product labels in the advertisements. They were, however, far from noticeable.(2) The respondent's own trade description material refers only toCHAMP or CHAMP NUTRI-PLUS. The words "ADVANCED DOG NUTRITION" do not appear in the text of the respondent'strade presentations for:(a) CHAMP product and packed design upgrade;(b) "Launch of CHAMP senior Lo Cal Dog Roll 2.6kg";(c) "Launch of CHAMP Puppy Roll 1kg";(d) "Launch of new CHAMP 1.15kg and 680g Puppy and Seniorsize stage variety";(e) "CHAMP NUTRI-PLUS Kibble Launch";(f) "CHAMP NUTRI-PLUS Biscuits Re-Launch";(g) "CHAMP DRY DOG FOOD";(h) "CHAMP NUTRI-PLUS Adult Chicken with Vegetables1.5kg, 3kg, and 6.5kg sizes";(i) "CHAMP NUTRI-PLUS Adult with Beef";(j) "CHAMP NUTRI-PLUS Puppy with Lamb".The words "ADVANCED DOG NUTRITION" do appear on the CHAMP deviceat the foot of the respondent's promotional power point images, but it is clear the respondent's emphasis was on its "CHAMP" or "CHAMP NUTRI-PLUS" devices.[61] The evidence from Ms Curtis establishes that the words "ADVANCED DOG NUTRITION" were used as a descriptive term. On their face, and in the context of the respondent's device as a whole, the words "ADVANCED DOG NUTRITION" were the respondent's way of conveying to consumers the nutritional value of itsproduct.[62] It is also of significance that on all packaging the respondent places thesymbol next to "CHAMP" and the symbol is used for "NUTRI-PLUS". Nosymbol is used for "ADVANCED DOG NUTRITION". The respondent had 19 trade mark registrations including the word "CHAMP" but no registrations for or which included the words:(a) "Advanced Dog Nutrition"; or(b) "Dog Nutrition"; or(c) "Advanced".[63] In summary, the principal reasons why I have concluded that the Assistant Commissioner erred when she found that the trade mark as a whole is well known are:(1) The words "ADVANCED DOG NUTRITION" are insignificantrelative to the size of the CHAMP text in the device. The words"ADVANCED DOG NUTRITION" are so comparatively small thatthey are unlikely to be noticed by persons in the relevant market.(2) The words "ADVANCED DOG NUTRITION" are descriptive.(3) There was no evidence to support the Assistant Commissioner's findings that the words "ADVANCED DOG NUTRITION" haveindependent significance.Do the words "ADVANCED DOG NUTRITION" have any trade marksignificance?[64] The purpose of a trade mark is to distinguish "... the goods or services of 1 person from those of another person".28[65] There was no evidence before the Assistant Commissioner to allow her to conclude that the words "ADVANCED DOG NUTRITION" had ceased to bedescriptive and had taken on a trade mark meaning. In this regard, I adopt the language of Jacob J in British Sugar plc v James Robertson & Sons Ltd where his Honour said:29Mere evidence of use of a highly descriptive or laudatory word will not suffice, without more, to prove that it is distinctive of one particular trader –is taken by the public as a badge of trade origin.28 Section 5 of the Act defines trade mark in the following way:trade mark –(a) means any sign capable of–(i) being represented graphically; and(ii) distinguishing the goods or services of 1 person from those of another person; and(b) includes,–...29 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (Ch) at 286.How do the appellant's and respondent's trade marks compare?[66] In comparing the parties' respective marks I have:(1) refrained from making a "side by side" comparison (as eschewed inDe Cordova v Vick Chemical Co);(2) examined the respective devices as a whole;(3) recognised that, in a case like this, imperfect recollection by consumers and others in the market should be taken into account. Trade marks may be remembered by general impression or by theirsignificant features rather than by a "photographic recollection" ofevery detail of the marks (De Cordova v Vick Chemical Co);(4) recognised that the appellant's and respondent's goods are similar toif not identical to each other;(5) proceeded on the basis of a fair and natural use by the appellant of the trade mark on the goods and services identified in the application.[67] In undertaking my comparisons of the marks I have focused upon:(1) the visual appearance of the marks;(2) the sound of the marks; and(3) the idea behind the marks.Visual image of the trade marks[68] I agree with the appellant that by far the most striking feature of therespondent's mark is the CHAMP device with the imprint or silhouette of a jumpingdog in the letter "P". The respondent's device comprises far more than a word mark.It is a distinctive brand based upon the stylised bold CHAMP. There is nomeaningful visual comparison that can be made between the respondent's mark and a fair and natural use of the appellant's mark.Sound of the trade marks[69] The sound of the marks is not of great significance in this case. However, I agree with the appellant that when potential customers speak about the respondent'sbrand they will speak about CHAMP. They are highly unlikely to refer to"CHAMP ADVANCED DOG NUTRITION". The evidence of the respondent'stelevision commercials reinforces this point. In those commercials the actorsreferred to "... new Nutri-Plus dog biscuits with real meat". There is no reference to "ADVANCED DOG NUTRITION" and the respondent's own aural presentations is of its "CHAMP" products.Idea of the trade marks[70] The dominant and unique element in the respondent's mark is the word "CHAMP". It is a derivative of the word "Champion" and is used in this context torefer to an outstanding or triumphant dog.[71] By comparison, the appellant's trade mark relies upon "ADVANCE"presented as a noun in conjunction with the word "ADVANCED", which is commonly used as an adjective. The combination of these two words in this way does not make grammatical sense. Indeed, the appellant volunteered that thecombination of "ADVANCE ADVANCED" is illogical. However, I believe the ideabehind the appellant's mark is to convey that its product is progressive. That concept is different from the idea behind the respondent's CHAMP brand.What is the likelihood of confusion if the appellant's trade mark is allowed?[72] As noted by Richardson J in Pioneer Hi-Bred Corn Co30 it is not sufficient that a single person in the market is likely to be deceived or confused. Nor is it30 At 62.necessary that all persons in the market are likely to be deceived or confused. A balance has to be struck. Terms such as "a number of persons",31 "a substantial number of persons",32 "any considerable section of the public"33 and "any significant number of such persons"34 have been used.[73] The notional average consumer to which the goods are directed are deemed to be reasonably well informed and reasonably objective and circumspect.35[74] The visual, aural and conceptual differences between the appellant's and the respondent's marks are such that it is highly unlikely there will be any confusion inthe minds of those in the relevant market place. Nor is there any likelihood of anyone in the market place being deceived.[75] I add in relation to this ground of appeal that in my respectful view the Assistant Commissioner did not give sufficient consideration to the appellant's rightsin its registered ADVANCE trade mark. It is not necessary to say more on this point because of the way the substantive issues raised by the s 17(1)(a) appeal have been dealt with.Section 17(1)(b) of the Act[76] The parties were in agreement that the threshold set by s 17(1)(b) of the Act is higher than that which applies to s 17(1)(a). Counsel for both parties advised the Court that my findings either way on s 17(1)(a) would render it unnecessary to consider the s 17(1)(b) grounds of appeal.[77] I have also independently considered whether or not use of the appellant'strade mark would be contrary to New Zealand law or would otherwise be disentitled to protection in any court in New Zealand.31 Jellinek's Application (1946) 4 RPC 49 (Ch).32 Smith Hayden & Co Ltd's Application [1946] 63 RPC 97 (Ch).33 New Zealand Breweries Ltd v Heineken's Bier Browerij Maatschappij NV [1964] NZLR 115(CA).34 Polaroid Corp v Hannaford & Burton Ltd [1975] 1 NZLR 566 (CA).35 Lloyd Schuhfabrik Meyer & Co Ltd GmbH v Klijsen Handel BV [2000] FSR 77 (ECJ).[78] The "contrary to law" grounds of opposition to registration contained in s 17(1)(b) of the Act could potentially provide an opponent with a wide range of grounds upon which to challenge a registration. A number of statutory provisions could conceivably be called in aid such as the Fair Trading Act 1986 or the Copyright Act 1994. In addition, the tort action of passing off could be invoked.[79] The "otherwise being disentitled to protection in any court" portion ofs 17(1)(b) appears to have been introduced as a "catch all" although it is difficult toidentify what may be caught by this additional ground of objection that is notencompassed by the "contrary to law" basis of objection.[80] In this case I have considered whether or not there could be any grounds for suggesting the application should be declined on the basis that it offends any statute or principle of the common law. I cannot identify any concerns of this nature.Similarly, I cannot identify any basis upon which the appellant's trade mark would "otherwise be disentitled to protection in any court". It follows that I cannot identify any basis for objection under s 17(1)(b) of the Act.Section 25(1)(c) of the Act[81] The issues regarding s 25(1)(c) are:(1) is the appellant's trade mark identical or similar to one or more of themarks of the respondent, or is an essential element of the appellant'strade mark identical or similar to that which is well known?(2) are the appellant's goods the same as or similar to the appellant'sgoods?(3) would use of the appellant's goods using its trade mark be taken asindicating a connection in the course of trade with the respondent'sgoods?(4) if the answer to questions (1) and (2) or (3) is yes, would use of theappellant's trade mark be likely to prejudice the interests of therespondent?[82] In Intellectual Reserve Inc v Sintes Winkelmann J, citing Automobile Club DeL'Quest v South Pacific Tyres New Zealand Ltd,36 said that the threshold for establishing that a mark is well known is similar to the level of reputation required to establish a passing off action.37 In this case, counsel for both parties suggested that references to establishing a passing off action risked begging the essential question which is whether a mark is well known. There are some similarities between a passing off action and the assessment of whether or not a mark is well known. However, what is primarily required by s 25(1)(c) is an assessment of the relevant facts and an exercise of judgement when addressing the four questions posed in paragraph [81] of this judgment.[83] In the present case I have answered the first question posed in relation to s 25(1)(c) in favour of the appellant. That is to say, I have concluded that theappellant's trade mark is not identical or similar to one or more of the marks of therespondent, nor is an essential element of the appellant's trade mark identical or similar to that of the respondent's which is well known.[84] I have also concluded that the appellant's goods are the same as or similar to the respondent's goods.[85] I have also concluded that if the appellant uses its trade mark in a fair and natural way then there is little likelihood of there being any connection in the courseof trade between the appellant's and respondent's products.[86] If it had been necessary for me to do so, I would also have concluded that there is no likelihood of prejudice to the respondent by the appellant using its trade mark in a fair and natural way. The only potential prejudice suggested by the36 Automobile Club De L'Quest v South Pacific Tyres New Zealand Ltd (2006) 70 IRP 639 at 646.37 Intellectual Reserve Inc v Sintes HC Auckland CIV-2007-404-2610, 13 December 2007.respondent was that of confusion. I have concluded that there is no realistic risk of confusion arising in this case.Conclusion[87] The appeal is allowed. The appellant is entitled to registration of Trade Mark Application 780858.[88] The order as to costs made by the Assistant Commissioner is set aside. I make no order for costs in relation to the hearing before the Assistant Commissioner, primarily because the appellant did not appear before her or make submissions to her. I do however award costs to the appellant in this Court for one counsel on a 2B scale.____________________D B Collins JSolicitors:Simpson Grierson, Auckland for AppellantA J Park Law, Wellington for Respondent