New Zealand Case Law: Decisions & Judgments

Topic

Well-known marks

Legal area

Court

18 Dec 2015

TOMTOM COMMUNICATIONS LIMITED v TOMTOM INTERNATIONAL B.V. [2015] NZHC 3333

Citation

[2015] NZHC 3333
Court

High Court

The Smith Hayden two‑stage approach applies in all s 17(1)(a) oppositions including where there is some evidence of actual confusion; appellants established limited reputation at the relevant date (threshold) but the evidence of confusion was largely 'wrong‑way‑round' administrative misdirected contact and not confusion as to origin; goods/services are materially different so use of TOMTOM by respondent would not be likely to deceive or cause confusion; s 17(1)(b) and Fair Trading Act claim not made out; no bad faith under s 17(2); opponents' mark not 'well known' for s 25(1)(c); appeal dismi…
8 Sept 2015

DAIMLER AG v SANY GROUP CO LTD [2015] NZCA 418

Citation

(2015) 14 TCLR 191
Court

Court of Appeal

The Court held the Sany mark is visually and conceptually distinct from Daimler's three-pointed star marks such that use of the Sany mark is not likely to deceive or cause confusion under s 17(1)(a); that finding disposes of s 17(1)(b) and s 25(1)(b); and although Daimler's marks are well known, s 25(1)(c) is not engaged because the marks are not identical or similar and no connection in trade would be inferred, therefore the appeal is dismissed.
7 Dec 2011

MARS NEW ZEALAND LIMITED V ROBY TRUSTEES LIMITED HC AK CIV-2011-404-004613

Citation

openlaw-2ac572eb_6765_4355_8ea1_f9b204dcf63c.pdf
Court

High Court

The Court held that, given Mars established reputation in pet food and the aural and conceptual consonance between "Optimize Pro" (commonly reduced to "Optimize") and Mars dominant mark "Optimum", a substantial number of purchasers in the New Zealand market for chilled dog rolls and dog food would be deceived or confused; accordingly Robys proposed mark infringed s 17(1)(a), amounted to passing off/breached the Fair Trading Act (s 17(1)(b)), and was similar to registered marks for the purposes of ss 25(1)(b) and 25(1)(c), so Mars opposition was upheld.
5 Jul 2011

SAO PAULO ALPARGATAS S.A. v BUT FASHION SOLUTIONS COMERCIO E INDUSTRIA DE ARTIGOS EM PELE LDA HC WN CIV 2010-485-2473

Citation

openlaw-ea8d273e_7d87_4d9f_b875_c000ef35b5ee.pdf
Court

High Court

The Assistant Commissioner was correct to conclude there is no likelihood of deception or confusion under s 17(1)(a) because, despite a shared tropical theme and a common ending, the marks differ sufficiently in visual and aural impression (notably different beginnings and a distinctive device in CUBANAS) such that imperfect recollection will not produce confusion; the broader notional use enquiry under s 25(1)(b) does not change that conclusion; although HAVAIANAS was found to be well known in New Zealand on the evidence, the remaining requirements of s 25(1)(c) (that use of CUBANAS would be…
14 Jun 2011

SUMATRA V NEW ZEALAND MILK BRANDS COA CA25/2009

Citation

openlaw-49ce5564_aaa7_4e97_b79b_3ce3dd50dd51.pdf
Court

Court of Appeal

ANGKOR is sufficiently similar to Milk Brands' ANCHOR word marks used on similar beverage and dairy‑related goods (including non‑dairy creamer and various beverage products) such that registration would be likely to deceive or confuse consumers; s26(b) does not rescue registration for those overlapping goods, but because Milk Brands' registrations had been narrowed by revocation proceedings the ANGKOR mark is no longer precluded in relation to cereal, biscuits and confectionery, so registration is permitted only for those goods.
13 Dec 2007

INTELLECTUAL RESERVE INC. V ROBERT SINTES HC AK CIV-2007-404-2610

Citation

openlaw-23a71a7f_dbf3_44b6_ade3_a44790650554.pdf
Court

High Court

Although the applied-for mark is similar to Intellectual Reserve's FAMILYSEARCH word and stylised marks, the services covered by the application (personal tracing and reuniting living family) are not the same or sufficiently similar to the goods and services of Intellectual Reserve (primarily do-it-yourself genealogical goods and training/wholesale services); therefore registration is not prohibited by ss25(1)(b) or 25(1)(c); s17 and s18 grounds likewise fail because the mark as filed (word plus device) is capable of distinguishing and no trade connection or likely prejudice was established;…
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.
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.