New Zealand Case Law: Decisions & Judgments

Topic

Likelihood of confusion

Legal area

Court

14 Jul 2020

DR AUGUST WOLFF GMBH & CO. KG ARZNEIMITTEL v COMBE INTERNATIONAL LTD [2020] NZHC 1679

Citation

[2020] NZHC 1679
Court

High Court

The Court found Combe had an established reputation in VAGISIL in New Zealand. On s 17(1)(a) the Court (differing from the Assistant Commissioner) concluded, by a narrow margin, that Combe's consistent use of a prominent stylised V device materially reduced the risk of deception or confusion from VAGISAN when assessed against Combe's actual use, so s 17(1)(a) was not made out. However, on s 25(1)(b), applying a fair and notional comparison (which sets aside Combe's device use), the Court agreed the word mark VAGISAN is similar to VAGISIL for the same or similar goods and that use is likely to…
30 Sept 2019

COMITE INTERNATIONAL OLYMPIQUE v TEMPTING BRANDS NETHERLANDS B.V. [2019] NZHC 2476

Citation

[2019] NZHC 2476
Court

High Court

The Assistant Commissioner's findings were correct and not shown to be wrong on rehearing: IOC failed to establish sufficient reputation or use in New Zealand as at 22 June 2015 to engage s17(1)(a); IOC failed to prove the higher threshold required under s17(1)(b) (passing off or Fair Trading Act breaches); there was insufficient evidence to infer bad faith by TBN under s17(2); and IOC did not establish prior use or proprietorship in New Zealand under s32. Appeal dismissed.
26 Sept 2019

ENERGY BEVERAGES LLC v PROLIFE FOODS LIMITED [2019] NZHC 1691

Citation

[2019] NZHC 1691
Court

High Court

The Court upheld the Assistant Commissioner's finding that Energy Beverages failed to prove sufficient awareness of its MOTHER-formative marks in New Zealand at the filing dates (evidence was hearsay, undated, or post-dated and lacked NZ sales/advertising data). Even assuming reputation, the marks (overall impressions) and most goods are not similar: only beverages overlapped but the visual, aural and conceptual differences (MOTHER vs MOTHER EARTH with prominent device/taglines and different market positioning and trade channels) mean no likelihood of deception or confusion. Therefore the Com…
1 Jul 2019

PHARMAZEN LIMITED v ANAGENIX IP LIMITED [2019] NZHC 1520

Citation

[2019] NZHC 1520
Court

High Court

Applying the notional fair-use test of s25(1)(b) the Court concluded the goods are similar, the marks are similar in visual and aural impression (notably sharing the prefix 'ACT-' and overall sound), and a significant number of persons would likely be deceived or confused by ActiPhen; absence of Anagenix's current New Zealand sales is irrelevant to the s25(1)(b) inquiry though relevant to s17(1)(a); accordingly the Commissioner's decision to refuse registration under s25(1)(b) was upheld and the appeal dismissed.
26 Nov 2018

ECOPRO CLEANING SERVICES LIMITED v ECOPRO LIMITED [2018] NZHC 3075

Citation

[2018] NZHC 3075
Court

High Court

The court found the applicant established passing off and a breach of s 9 FTA because the applicant had distinctive goodwill in the name 'Ecopro', the respondents used the same name in the same market creating a real risk of consumer confusion and likely damage, and therefore a permanent prohibitory injunction was warranted restraining respondents from using 'Ecopro' or 'Ecopro NZ' (or substantially similar names) in the marketing and operation of their business; mandatory orders compelling change of company name or transfer of online assets were not granted as they were unnecessary given ava…
24 Sept 2018

AUSTRALASIAN CONFERENCE ASSOCIATION LIMITED v A LITTLE BIT OF BRITAIN LIMITED [2018] NZHC 2501

Citation

[2018] NZHC 2501
Court

High Court

Weetabix is not 'identical' to Weet-Bix (different spelling and aural form) but is similar; use of the Weetabix sign on packaging is likely to deceive or confuse ordinary New Zealand consumers for the purposes of s135 (border protection) and, on balance, use in the course of trade by LBB is likely to deceive or confuse for the purposes of s89; Customs lawfully detained the goods and lawfully granted the limited retroactive extension; the ® symbol on Weetabix packaging is not misleading under the FTA; appropriate remedies are destruction of detained cartons and a conditional permanent injuncti…
7 Aug 2018

SEA WORLD LLC v SEA WORLD MANAGEMENT PTY LTD [2018] NZHC 1995

Citation

[2018] NZHC 1995
Court

High Court

The Assistant Commissioner erred by treating Sea World US reputation as confined to stylised logos and by overstating that stylistic differences avoided confusion; market awareness of the words 'SEA WORLD' engaged s16. However, given clear geographic separation of services (United States v Commonwealth of Australia) and the way consumers plan travel, no material s16 confusion arises when full circumstances are considered; both parties’ marks are registrable provided specifications are geographically limited to their respective jurisdictions.
20 Nov 2017

MAN TRUCK & BUS AG v SHAANXI HEAVY-DUTY AUTOMOBILE CO. LTD [2017] NZHC 2821

Citation

[2017] NZHC 2821
Court

High Court

Once MAN established reputation in New Zealand the onus shifted to Shaanxi to prove on the balance of probabilities that use of SHACMAN would not be likely to deceive or cause confusion; Shaanxi failed to provide probative evidence, particularly from the relevant specialist market, and the Assistant Commissioner erred by over-emphasising mark dissimilarity, therefore registration had to be refused and the appeal allowed.
29 Sept 2017

MONSTER ENERGY COMPANY v OX GROUP GLOBAL PTY LIMITED [2017] NZHC 2393

Citation

[2017] NZHC 2393
Court

High Court

The Court upheld the Assistant Commissioner's approach: assessing marks as a whole, the stylised prominent OX element produces a dominant and visually/aurally distinct impression from UNLEASH THE BEAST!, the conceptual overlap is abstract and insufficient to cause confusion among a substantial number of consumers for identical goods, and evidence did not displace the presumption that Ox intended to use the OX mark at the filing date; accordingly the appeal is dismissed and registration stands.
27 Mar 2017

OMEGA SA (OMEGA AG) (OMEGA LIMITED) V GURU DENIM INC [2017] NZCA 81

Citation

[2017] NZCA 81
Court

Court of Appeal

Although Omega proved a reputation in its combined word-and-symbol mark, it did not establish that the Guru mark would cause a reasonable likelihood of deception or confusion: the Guru mark and Omega symbol differ materially in orientation, overall shape, line thickness and detail such that, applying the Smith Hayden notional-use test and considering the relevant market of quality watch purchasers, no substantial number of persons would be confused; failure under s 17(1)(a) is fatal to Omega's ss 17(1)(b) and 25(1)(b)/(c) objections; appeal dismissed.