The recent New Zealand High Court decision in Luigi Lavazza S.p.A. v Cantarella Bros Pty Limited [2025] NZHC 175 highlights the difficulties brand owners face relying on “honest concurrent use” as a defence to opposition against an owner of a similar prior mark.
The central dispute focused on whether Lavazza’s new LAVAZZA QUALITÀ ORO composite logo mark would likely confuse consumers, either in its own right or when considered alongside Cantarella’s prior ORO mark, in the context of longstanding use of other LAVAZZA QUALITÀ ORO marks.
The case confirms that honest concurrent use cannot be used as a defence to an absolute ground of opposition and emphasizes the dangers of incremental stylistic alterations to composite logo brands where a dominant element within the brand changes.
Historical co-existence of parties’ ORO marks
Lavazza, an Italian based coffee producer, filed its original LAVAZZA QUALITÀ ORO logo trade mark in 1982 and commenced using this mark on coffee goods in New Zealand in 1990. Cantarella filed its ORO and ORO NERO New Zealand trade marks in 2002 and commenced using those marks on coffee goods in New Zealand in 2003. Both parties co-existed in the New Zealand marketplace for many years.
Over time, Lavazza updated its LAVAZZA QUALITÀ ORO trade mark on multiple occasions, including in 2007, 2014, 2017 and 2019. With each re-brand, the ORO word element in Lavazza’s logo marks became more prominent.
| Lavazza QUALITÀ Oro Logo Changes | ||||
| 1985 | 2007 | 2014 | 2017 | 2019 |
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The incremental changes by Lavazza to increase the prominence of the ORO word elicited a swift response from Canteralla.
Cantarella’s opposition to Lavazza’s New Zealand LAVAZZA QUALITÀ ORO logo trade mark application
In 2019, Lavazza applied to register the following logo trade mark for coffee and related goods in class 30:
(LAVAZZA QUALITÀ ORO Logo)
Following acceptance, Cantarella opposed the application in 2020 on the basis that the LAVAZZA QUALITÀ ORO logo:
- was similar to Cantarella’s ORO and ORO NERO registrations (s 25(1)(b));
- would likely deceive or cause confusion (s 17(1)(a)); and
- was similar to Cantarella’s prior marks (s 25(1)(c)).
Lavaza defended the opposition, arguing:
- no confusion between the marks would be likely (noting use of the opposed mark without consumer confusion);
- the dominant element of the Lavazza mark is the word “LAVAZZA”;
- coffee is not a fast-moving consumer good;
- coffee consumers are discerning consumers; and
- that the longstanding honest concurrent use of LAVAZZA QUALITÀ ORO without objection represents a special circumstance in favour of registration.
The Assistant Commissioner found in favour of Cantarella because the ORO element in the compared marks was a dominant element and would likely confuse consumers and, in view of Cantarella’s reputation in its ORO marks, use by Lavazza of the LAVAZZA QUALITÀ ORO Logo would likely deceive or cause confusion.
Lavazza appeal to the New Zealand High Court unsuccessful
Lavazza appealed the adverse opposition decision. However, the New Zealand High Court upheld the Assistant Commissioner’s opposition decision, stating the updated branding of the LAVAZZA QUALITÀ ORO mark was confusingly similar to Cantarella’s ORO mark. In particular, Justice Boldt stated at [63]:
ORO dominates both marks to the point where the casual observer is likely to be confused…
(Where the detailing and style of the compared marks) …are overwhelmed by ORO’s centrality and prominence.
On the issue of the Assistant Commissioner’s reasoning on the absolute ground of opposition that the LAVAZZA QUALITÀ ORO logo was likely to deceive or confuse consumers, Justice Boldt stated at [73]-[74]:
…I agree with the Assistant Commissioner that the factors which proved decisive under s 25(1)(b) are sufficient to establish the absolute ground of opposition under s 17(1)(a).
The Assistant Commissioner observed that there is considerable overlap between s 17(1)(a) and s 25(1)(b). Both are concerned with the likelihood of deception or confusion. It is settled law — even if it might make more sense, as a matter of logic, to confine the s17 analysis to deception or confusion inherent in the mark itself — that the tests under s17(1)(a) and s25(1)(b) are very similar. The question is whether, having regard to the reputation acquired by Cantarella’s ORO mark, the Court is satisfied the opposed mark, if used in a normal and fair manner, will not be reasonably likely to cause deception or confusion amongst a substantial number of persons. Having concluded the ORO mark is distinctive and well-established, and that Lavazza failed to discharge its onus under s25(1)(b), those findings inevitably mean the s17(1)(a) ground of opposition was established too.
Honest concurrent use does not defeat s17 “deception or confusion” grounds
The decision reinforces the longstanding edict that honest concurrent use does not provide a defence to an absolute ground of rejection. In that regard, Boldt J stated at [75]:
As Ellis J confirmed in Bed, Bath ‘N’ Table, s26(b) provides a defence only to s25. It does not afford a defence to the absolute ground for non-registration under s17(1)(a).
In relation to Lavazza’s incremental stylistic changes of its LAVAZZA QUALITÀ ORO brand and longstanding use, Boldt J stated at [84]:
Lavazza’s historic branding is of little relevance to its entitlement to use the opposed mark. To put it bluntly, the old branding did not infringe Cantarella’s ORO mark or risk widespread confusion. The opposed mark does both those things. Registration would create considerable inconvenience for both Cantarella and the public. The opposed mark squarely engages the mischief the Act is designed to prevent.
Takeaways for brand owners
The key takeaway for brand owners from this case is to beware of incremental changes to your trade marks. Ownership in an old brand will not provide a defence to infringement of a different brand where the dominant elements have changed. This is particularly important in circumstances when brand change align with a known competitor’s brands.
The case also highlights that a claim to “honest concurrent use” will not defeat New Zealand’s “reverse onus” opposition ground.