New Zealand Case Law: Decisions & Judgments

Topic

Reputation

Legal area

Court

30 Jun 2023

SYED v MALIK [2023] NZHC 1676

Citation

[2023] NZHC 1676
Court

High Court

The Court awarded compensatory and aggravated damages based on findings that the defendants conducted a sustained, targeted and unproven smear campaign of 20+ defamatory publications attacking all facets of the plaintiff's character and business; the publications were repeated, widely disseminated within the plaintiff's community and continued in breach of court orders, aggravating harm; first defendant was principal author/publisher and bears full award; second defendant participated and is jointly and severally liable for a reduced share.
14 Jul 2020

DR AUGUST WOLFF GMBH & CO. KG ARZNEIMITTEL v COMBE INTERNATIONAL LTD [2020] NZHC 1679

Citation

[2020] NZHC 1679
Court

High Court

The Court found Combe had an established reputation in VAGISIL in New Zealand. On s 17(1)(a) the Court (differing from the Assistant Commissioner) concluded, by a narrow margin, that Combe's consistent use of a prominent stylised V device materially reduced the risk of deception or confusion from VAGISAN when assessed against Combe's actual use, so s 17(1)(a) was not made out. However, on s 25(1)(b), applying a fair and notional comparison (which sets aside Combe's device use), the Court agreed the word mark VAGISAN is similar to VAGISIL for the same or similar goods and that use is likely to…
30 Sept 2019

COMITE INTERNATIONAL OLYMPIQUE v TEMPTING BRANDS NETHERLANDS B.V. [2019] NZHC 2476

Citation

[2019] NZHC 2476
Court

High Court

The Assistant Commissioner's findings were correct and not shown to be wrong on rehearing: IOC failed to establish sufficient reputation or use in New Zealand as at 22 June 2015 to engage s17(1)(a); IOC failed to prove the higher threshold required under s17(1)(b) (passing off or Fair Trading Act breaches); there was insufficient evidence to infer bad faith by TBN under s17(2); and IOC did not establish prior use or proprietorship in New Zealand under s32. Appeal dismissed.
26 Sept 2019

ENERGY BEVERAGES LLC v PROLIFE FOODS LIMITED [2019] NZHC 1691

Citation

[2019] NZHC 1691
Court

High Court

The Court upheld the Assistant Commissioner's finding that Energy Beverages failed to prove sufficient awareness of its MOTHER-formative marks in New Zealand at the filing dates (evidence was hearsay, undated, or post-dated and lacked NZ sales/advertising data). Even assuming reputation, the marks (overall impressions) and most goods are not similar: only beverages overlapped but the visual, aural and conceptual differences (MOTHER vs MOTHER EARTH with prominent device/taglines and different market positioning and trade channels) mean no likelihood of deception or confusion. Therefore the Com…
2 Mar 2015

ZOGGS INTERNATIONAL LIMITED v SEXWAX INCORPORATED [2015] NZSC 16

Citation

[2015] NZSC 16
Court

Supreme Court

Leave to appeal dismissed because the Court of Appeal correctly applied s 17(1)(a), appropriately assessed reputation and the risk of confusion (including the prominence of "MR ZOGS" within the Sexwax mark) based on actual use and relevant exposure, and no issue of general or public importance or substantial miscarriage of justice was established to justify further appeal.
9 Sept 2014

SEXWAX INCORPORATED V ZOGGS INTERNATIONAL LIMITED CA461/2013 [2014] NZCA 311 [9 September 2014]

Citation

[2014] NZCA 311
Court

Court of Appeal

The Court held that the MR ZOGS element is an essential and memorable feature of Sexwax's complex mark which enjoys reputation/awareness in New Zealand among those exposed to its products; the relevant assessment under s 17(1)(a) is against those exposed to the applicant's goods and aware of the opponent's mark (not the entire buying public); given the similarity of MR ZOGS and ZOGGS and overlap in retail channels there is a reasonable likelihood of deception or confusion and Zoggs failed to show otherwise, so registration of ZOGGS must be refused.
16 Apr 2014

CADBURY UK LIMITED v J H WHITTAKER & SONS LIMITED [2014] NZHC 816

Citation

[2014] NZHC 816
Court

High Court

The Court held that, assessed as a whole, BERRY FOREST and BLACK FOREST are conceptually different (berries/fruit of the forest v Black Forest gateau/flavour), the conceptual and perceptual differences avoid a likelihood of confusion or deception among a substantial number of ordinary consumers, the higher threshold for s17(1)(b) was not met, and therefore registration of BERRY FOREST could not be refused under ss17(1)(a),(b) or ss25(1)(b),(c).
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…
15 Jun 2012

NV NUTRICIA V CAMBRICARE NEW ZEALAND LIMITED HC WN CIV-2011-485-002076

Citation

openlaw-25e45858_fbc2_4e64_be73_025f9701c2b2.pdf
Court

High Court

CAMBRICARE is not similar to KARICARE in visual, aural or conceptual respects; the common suffix 'CARE' is unremarkable and insufficient to create confusing similarity; New Zealand consumers will view KARICARE as a distinctively New Zealand brand and CAMBRICARE as English-origin, so there is no reasonable likelihood of deception or confusion under s17(1)(a) and no breach of s25(1)(b) or s25(1)(c).
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.