New Zealand Case Law: Decisions & Judgments

Topic

Registration refusal

Legal area

Court

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.
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.
22 Sept 2011

N V SUMATRA TOBACCO TRADING CO v NEW ZEALAND MILK BRANDS LTD SC 79/2011

Citation

SC 79/2011
Court

Supreme Court

Leave to appeal was refused because the applicant did not demonstrate any error of law of general or public importance or commercial significance, failed to identify a novel point of law in the Court of Appeal's application of trade marks principles, and did not satisfy the miscarriage of justice threshold; the applicant also did not challenge the Court of Appeal's determinative finding under s 17(1)(a).
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.
31 Aug 2006

CARABAO TAWANDANG CO LTD V RED BULL GMBH HC WN CIV-2005-485-1975

Citation

openlaw-16ca3785_482c_4b31_9f3b_9e33a5a632b4.pdf
Court

High Court

When the CARABAO mark and RED BULL marks are compared overall, their shared dominant concept of a horned bovine/bull combined with prominent use of red (and an impression of a gold circular device) is likely to deceive or confuse a substantial number of consumers in the energy drink and related non-alcoholic drink markets; accordingly the appeal is dismissed and registration refused.

New Zealand Case Law

PHARMAZEN LIMITED v ANAGENIX IP LIMITED [2019] NZHC 1520

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

N V SUMATRA TOBACCO TRADING CO v NEW ZEALAND MILK BRANDS LTD SC 79/2011

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

CARABAO TAWANDANG CO LTD V RED BULL GMBH HC WN CIV-2005-485-1975