New Zealand Case Law: Decisions & Judgments

Topic

Initial interest confusion

Legal area

Court

12 Mar 2018

NATIONAL MINI STORAGE LTD v NATIONAL STORAGE LTD [2018] NZCA 45

Citation

(2018) 131 IPR 538
Court

Court of Appeal

Appeal dismissed — on the evidence NMS failed to prove a materially significant likelihood of misleading or deceptive conduct under the Fair Trading Act from NS using 'National Storage' in greater Auckland: NMS's secondary meaning is limited, consumers are likely to distinguish via the prominent 'mini' branding and SERP differentiation (ads, organic results, maps, knowledge panels), AdWords and organic data show only a small risk from imperfect recollection, and an injunction would be overbroad and disproportionate.
31 Jul 2017

NATIONAL MINI STORAGE LTD v NATIONAL STORAGE LIMITED [2017] NZHC 1775

Citation

[2017] NZHC 1775
Court

High Court

The Court refused the quia timet injunction and dismissed the claim because the plaintiff failed to prove that defendants' use of "National Storage" in Auckland was likely to mislead or deceive a substantial number of consumers or amount to passing off; the words "National" and "Storage" are descriptive, the prominent distinctive element of the plaintiff's mark is "Mini", the parties' branding and websites are visually distinct, actual confusion evidence was minimal, defendants gave enforceable online undertakings and plaintiff's prior acquiescence and delay weighed against equitable relief.
12 Feb 2014

INTERCITY GROUP (NZ) LTD v NAKEDBUS NZ LTD [2014] NZHC 124

Citation

[2014] 3 NZLR 177
Court

High Court

Purchasing keywords alone (an invisible act known only to advertiser and Google) does not meet the s 89(2) threshold of being 'used in such a manner as to render the use ... likely to be taken as being use as a trade mark'; however the appearance and content of Nakedbus's Google advertisements and the landing page featuring the words 'inter city', given New Zealand consumer recognition of 'InterCity' as a trade mark and the presentation of the ad (bolded sign, placement among organic 'InterCity' results, absence of clear disavowal), amounted to use likely to be taken as use as a trade mark an…
7 Sept 2011

THE ZONE CORPORATION LIMITED v AMERICAN EXPRESS MARKETING & DEVELOPMENT CORPORATION HC WN CIV-2011-485-1274

Citation

openlaw-73da6d0b_c506_464f_aecf_fab775dcea9c.pdf
Court

High Court

There is a serious question to be tried that defendant's use of the sign IP ZONE could infringe plaintiff's registered marks or otherwise mislead New Zealand entities; maintenance of the website from New York alone does not constitute use in New Zealand but electronic engagement or transactions with New Zealand businesses would constitute use; damages are not an adequate remedy; accordingly interim relief preventing defendant from using IP ZONE in New Zealand in relation to specified intellectual property services and from facilitating/offering those services to New Zealand entities via the w…

New Zealand Case Law

NATIONAL MINI STORAGE LTD v NATIONAL STORAGE LTD [2018] NZCA 45

NATIONAL MINI STORAGE LTD v NATIONAL STORAGE LIMITED [2017] NZHC 1775

INTERCITY GROUP (NZ) LTD v NAKEDBUS NZ LTD [2014] NZHC 124

THE ZONE CORPORATION LIMITED v AMERICAN EXPRESS MARKETING & DEVELOPMENT CORPORATION HC WN CIV-2011-485-1274