NEW ZEALAND: High Court Confirms That “Identical” Means Identical in Trademark Infringement Actions
INTA Bulletin 1 December 2018, Vol 73, No 20
On September 24, 2018, the High Court of New Zealand confirmed that “direct” trademark infringement is restricted to use of the identical mark to that which is registered. The case was also the first time a court has considered the meaning of “use” of an infringing mark in the context of customs seizures. Australasian Conf. Assoc. Lt v. A Little Bit of Britain Ltd. NZHC 2501.
A Little Bit of Britain Limited and Lisa Wilson (Little Bit of Britain) sold British food products, including British Weetabix breakfast cereals, in New Zealand through its specialty food stores and its website. Three parties (collectively referred to as Sanitarium) alleged that Little Bit of Britain’s sales of British Weetabix infringed Sanitarium’s WEET-BIX trademark registration.
If the trademarks WEET-BIX and WEETABIX were not found to be identical, then Little Bit of Britain would have a defense to the allegations of trademark infringement if it established that its sales of Weetabix were not likely to deceive or confuse the public.
The court confirmed that “identical” means strictly identical. Justice Gendall noted that the absolute liability that follows a finding of “identical” or direct trademark infringement “indicates that the term requires a complete identity with a registered trademark, and not something that is almost or nearly identical.” Consequently, the court found that the trademarks WEET-BIX and WEETABIX were not identical and thus there was not direct trademark infringement.
To prove infringement, Sanitarium needed to establish that Little Bit of Britain’s use of the trademark WEETABIX was likely to deceive or cause confusion. As Little Bit of Britain’s UK specialty stores only sold products sourced from the United Kingdom, it argued that its relevant market would know that the Weetabix products were from the UK.
Sanitarium lodged evidence from two market experts, as well as a survey. While the court demonstrated its usual reluctance to give much weight to the survey, it found “by a reasonably fine margin,” that a sufficient proportion of people were likely to be confused or deceived, such that Sanitarium’s trademark registration WEET-BIX was infringed.
The court confirmed that customs seizure powers do not require an assessment as to whether the subject mark is used in the course of trade (a requirement for trademark infringement in New Zealand), as customs could not be expected to make independent inquiries as to how exactly goods would be used before deciding whether to detain them.
The court ordered that the goods seized by customs be destroyed. The court also granted a permanent injunction restraining Little Bit of Britain from selling WEETABIX branded products except at its UK specialty stores in New Zealand and as long as the WEETABIX mark was “over stickered.”
This case demonstrates the narrowness of the test for “direct” trademark infringement in New Zealand; however, the court only found that deception or confusion was likely by a “reasonably fine margin,” due to the specialist evidence filed by Sanitarium. If Little Bit of Britain had filed its own specialist evidence, then it is entirely possible that Sanitarium would have failed to establish trademark infringement.
“This article first appeared in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”