New Zealand Case Law: Decisions & Judgments

Topic

Intention to use

Legal area

Court

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.
7 Sept 2016

MONSTER ENERGY COMPANY v OX GROUP GLOBAL PTY LIMITED [2016] NZHC 2124

Citation

[2016] NZHC 2124
Court

High Court

Leave granted: the High Court has jurisdiction under s172(3)(a) to permit an additional ground of objection where evidence emerged after the hearing supporting that ground; the correspondence and affidavit relied on were new and sufficiently relevant; permitting the amendment serves the interests of justice, will not cause undue prejudice because reply and timetable orders can address any prejudice, and avoids needless duplicate proceedings before the Assistant Commissioner.
6 Oct 2015

CROCODILE INTERNATIONAL PTE LTD v LACOSTE [2015] NZHC 2432

Citation

[2015] NZHC 2432
Court

High Court

The Crocodile Logo did not attract New Zealand artistic copyright because, when created, it possessed the essential characteristics of a design capable of registration under the prior design enactments (PDTMA 1922/Designs Act); even assuming copyright existed and was owned by Dr Tan, defendants were precluded from preventing Lacoste's use by reason of implied authorisation/acquiescence and delay; Lacoste had a bona fide intention to use the mark in New Zealand so its registration application must be allowed; there was no bad faith and ownership was not successfully challenged.
20 Jun 2013

ZOGGS v SEXWAX [2013] NZHC 1494

Citation

[2013] NZHC 1494
Court

High Court

Appeal allowed. The High Court held there was insufficient evidence to establish bad faith, the 2009 email and draft coexistence agreement related to the US application and were unaccepted offers not binding on Zoggs, the presumption of intention to use was not displaced and there was sufficient evidence of intended use in class 25, and there was no likelihood of confusion because the respondent's only New Zealand reputation was in a complex SEX WAX logo that is visually and conceptually distinct from the single-word ZOGGS mark (any respondent reputation was confined to a specialist surf mark…
1 Mar 2011

LACOSTE V CROCODILE INTERNATIONAL PTE LIMITED HC WN CIV 2009-485-2536

Citation

openlaw-42992d97_2b1a_4e4e_a1f6_ac4e890b01a3.pdf
Court

High Court

The appeal is allowed because Crocodile International did not prove awareness of its marks in a substantial number of persons in the New Zealand clothing market (spillover evidence via migration and travel was insufficient), and Lacoste demonstrated an intention to use the CROCODILE mark (use on the swing tag and the centrality of the crocodile concept to its brand sufficed to establish proprietorship), so registration should be permitted.
21 Mar 2007

EFFEM FOODS LIMITED V CADBURY LIMITED HC WN CIV 2005-485-1487

Citation

openlaw-600dfb62_0a68_4f99_ac77_96eb232a8b35.pdf
Court

High Court

Effem failed to prove prior use of EARTH in New Zealand in a trademark sense because the television advertisement and limited promotional production did not establish that EARTH, used alone, functioned to indicate trade source; Cadbury's own evidence showed the application was defensive and displaced the prima facie inference of intention to use, so Cadbury failed to establish a bona fide intention to use EARTH and the application must be rejected.

New Zealand Case Law

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

MONSTER ENERGY COMPANY v OX GROUP GLOBAL PTY LIMITED [2016] NZHC 2124

CROCODILE INTERNATIONAL PTE LTD v LACOSTE [2015] NZHC 2432

ZOGGS v SEXWAX [2013] NZHC 1494

LACOSTE V CROCODILE INTERNATIONAL PTE LIMITED HC WN CIV 2009-485-2536

EFFEM FOODS LIMITED V CADBURY LIMITED HC WN CIV 2005-485-1487