New Zealand Case Law: Decisions & Judgments

Topic

Descriptiveness

Legal area

Court

1 Oct 2012

ROBY TRUSTEES LIMITED V MARS NEW ZEALAND LIMITED COA CA30/2012

Citation

openlaw-3eb72f7b_810b_4267_93c0_7bc927c0c55e.pdf
Court

Court of Appeal

When assessed as whole and in context of retail sale of chilled dog roll the OPTIMIZE PRO 'Lead the Pack' device is visually and aurally distinct from Mars' OPTIMUM marks (the addition of 'PRO' and 'Lead the Pack' sufficiently differentiate the marks) and therefore its use is not likely to deceive or confuse a substantial number of consumers under s17(1)(a); related s25(1) conclusions follow.
30 Mar 2012

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

Citation

openlaw-d1571fbf_db2e_45d2_9bcc_2d1925702687.pdf
Court

High Court

The Court allowed the appeal and ordered registration of Trade Mark Application 780858 because the respondent failed to establish that the words 'ADVANCED DOG NUTRITION' had an independent reputation or trade mark significance distinct from the dominant CHAMP device, the opposed mark was not similar overall and there was no realistic likelihood of confusion or deception nor basis for objection under s17(1)(b) or s25(1)(c).
2 Nov 2011

AA INSURANCE LIMITED V AMI INSURANCE LIMITED HC WN CIV-2010-485-2427

Citation

openlaw-6e8bba28_929e_43a1_8d3f_ca6d161eaf75.pdf
Court

High Court

The Court held that the possessive adjective "MY" does not by itself render plainly descriptive or generic phrases distinctive for trade mark purposes; competitors in the insurance market would, in ordinary course and without improper motive, reasonably wish to use "my" plus descriptive product names, so the marks (except MY freeB and MY MULTI QUOTE) lack distinctive character and consist only of signs that designate characteristics of the services, contrary to s18(1)(a)-(d) of the Trade Marks Act 2002.
8 Apr 2011

COOMBE V COCA-COLA AMATIL (NZ) LIMITED HC AK CIV-2010-485-000816

Citation

openlaw-f68af05a_7690_4ce9_a8bb_dd6ae502320f.pdf
Court

High Court

WFINZ, as applied to class 32 (mineral and aerated waters including soft drinks), is an invented, oxymoronic and distinctive slogan not merely descriptive or customary in the soft drinks trade; the mark therefore met s 18 requirements and registration for class 32 was permitted.
20 Jul 2007

CADBURY LTD V EFFEM FOODS LTD CA CA274/05

Citation

openlaw-4aadca38_791b_452c_97f3_1f6ff9498666.pdf
Court

Court of Appeal

The word PURPLE is directly referential to the colour and therefore directly references the character or quality of at least some goods within the specification; it is not inherently adapted to distinguish those goods from others in the relevant market; exclusions based on the characteristic 'coloured purple' are too vague to cure this; accordingly registration is not permitted and the appeal is dismissed.

New Zealand Case Law

ROBY TRUSTEES LIMITED V MARS NEW ZEALAND LIMITED COA CA30/2012

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

AA INSURANCE LIMITED V AMI INSURANCE LIMITED HC WN CIV-2010-485-2427

COOMBE V COCA-COLA AMATIL (NZ) LIMITED HC AK CIV-2010-485-000816

CADBURY LTD V EFFEM FOODS LTD CA CA274/05