New Zealand Case Law: Decisions & Judgments

Topic

Proprietorship

Legal area

Court

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.
23 Mar 2006

AUTOMOBILE CLUB DE L'OUEST, ACO V SOUTH PACIFIC TYRES NEW ZEALAND LIMITED HC WN CIV 2005 485 248

Citation

openlaw-394e194a_d3a2_43bd_b95a_dac725ab78ab.pdf
Court

High Court

The Assistant Commissioner's decision was upheld in substance: although LE MANS has sufficient distinctiveness in New Zealand to be registrable under s14(1)(e) generally, the appellant failed to prove factual distinctiveness or proprietorship in New Zealand; the respondent's prior use of LE MANS on tyres since 1986 made it the proprietor for tyres in New Zealand; concurrent use on tyres would be likely to deceive or cause confusion under s16 and offend s17(2); accordingly registration may proceed only if tyres and parts, fittings and accessories for tyres are excluded from the specification.

New Zealand Case Law

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

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

AUTOMOBILE CLUB DE L'OUEST, ACO V SOUTH PACIFIC TYRES NEW ZEALAND LIMITED HC WN CIV 2005 485 248