New Zealand Case Law: Decisions & Judgments

Topic

Notional fair use

Legal area

Court

23 Jul 2020

PHARMAZEN LIMITED v ANAGENIX IP LIMITED [2020] NZCA 306

Citation

[2020] NZCA 306
Court

Court of Appeal

The Court held that s 25(1)(b) is determined by a notional fair‑use comparison and does not require actual use or reputation of the registered proprietor; applying that test the Court found ACTAZIN and ActiPhen to be similar and that Pharmazen failed to prove on the balance of probabilities that use of ActiPhen would not be likely to deceive or confuse, therefore the appeal is dismissed.
30 Nov 2012

THE SCOTCH WHISKY ASSOCIATION v THE MILL LIQUOR SAVE LIMITED HC WN CIV 2012-485-1494

Citation

openlaw-b52c9d31_15e5_4d58_995b_388daa8f8326.pdf
Court

High Court

The Assistant Commissioner correctly excluded the Association's reply declarations under reg 85; on a notional fair use analysis excluding extraneous get-up the MACGOWANS mark when applied to whisky-flavoured spirits would not, on balance, be likely to deceive or cause confusion of a substantial number of relevant purchasers; however The Mill failed to prove an intention to use the mark in relation to 'spirits' as properly understood (and defined by the food standard), therefore the application must not be registered.
24 Feb 2010

N V SUMATRA TOBACCO TRADING COMPANY V BRITISH AMERICAN TOBACCO (BRANDS) INCORPORATED CA761/2008

Citation

openlaw-71881266_4bd5_413d_b908_7beb7a656164.pdf
Court

Court of Appeal

On a global assessment under s17 the Court found LUCKY DRAW and LUCKY DREAM are sufficiently similar to BAT's LUCKY STRIKE (prominent shared element 'LUCKY', conceptual overlap and risk under imperfect recollection) that N V Sumatra failed to discharge the onus of showing there is no reasonable likelihood of deception or confusion; on s16 the Court held the evidential threshold is awareness/knowledge in the relevant market and BAT met that threshold so Clifford J's higher 'substantial reputation' test was incorrect and the cross-appeal is allowed.

New Zealand Case Law

PHARMAZEN LIMITED v ANAGENIX IP LIMITED [2020] NZCA 306

THE SCOTCH WHISKY ASSOCIATION v THE MILL LIQUOR SAVE LIMITED HC WN CIV 2012-485-1494

N V SUMATRA TOBACCO TRADING COMPANY V BRITISH AMERICAN TOBACCO (BRANDS) INCORPORATED CA761/2008