New Zealand: High Court makes surprising assessment of similarity between trademarks
Article first published in the INTA Bulletin publication Vol. 69 No. 1, on January 1, 2014.
The High Court of New Zealand recently refused to register the trademark FIPROLINE in New Zealand, upholding an appeal from a trademark opposition decision of the Assistant Commissioner of Trade Marks. The High Court found that the trademarks FRONTLINE and FIPROLINE were likely to be confused with each other when used in relation to veterinary products, an assessment that was in stark contrast to that reached by the Assistant Commissioner of Trade Marks. Merial v. Virbac SA  NZHC 2773
(Oct. 22, 2013).
Virbac SA applied to register the trademark FIPROLINE in Class 5 for “veterinary preparations, particularly an anti-parasitic preparation for external use.” Merial opposed registration of the trademark primarily on the basis of its prior use and registration of the trademark FRONTLINE. Merial had used and promoted the FRONTLINE mark extensively in New Zealand in relation to veterinary products, and had also registered other variations of the FRONTLINE mark.
Although the Assistant Commissioner found that Merial had established that it had a reputation in its FRONTLINE trademarks in relation to flea treatment products for cats and dogs, and that there was an awareness among consumers that those products contained the active ingredient fipronil, the Assistant Commissioner dismissed the opposition, holding that the marks FRONTLINE and FIPROLINE were visually and aurally dissimilar and were also not similar conceptually. She noted that FRONTLINE was a known English word, while FIPROLINE was an invented word.
Merial appealed the decision to the High Court (Auckland Registry). Ms. Justice Mallon upheld the appeal, concluding that there were “quite strong similarities” between the marks, as both commenced with the letter F and ended with the word LINE. Although the judge agreed that there were conceptual differences between the marks, she observed that the risk of consumer confusion was heightened by the fact that Merial’s FRONTLINE product contained fipronil and that this was referred to on its product packaging. Justice Mallon concluded that although the respective marks were conceptually different, “the actual use of FRONTLINE includes reference to fipronil and there is an awareness of that. Allowing for imperfect recollection and the competing products not necessarily being sold side by side, the purchasing public may think that FIPROLINE (which contains the active ingredient fipronil) is, or is associated with, FRONTLINE (which contains the active ingredient fipronil).”
This assessment may alarm manufacturers of veterinary or pharmaceutical products, as it is reasonably common for competitors in those markets to create and use distinguishable trademarks that nonetheless allude to the same key active ingredient present in the products.
Justice Mallon held that the relevant market for veterinary preparations did not comprise veterinarians only, but also the general public. She felt that people were not necessarily likely to pay the same kind of attention to the name of a flea treatment product as they might to, for example, product names when purchasing televisions.
The Assistant Commissioner, on the other hand, had been satisfied that use of the opposed mark was not likely to deceive or confuse because the relevant market was likely to be discerning, and because the marks at issue “(when assessed correctly as a whole) are visually, aurally, and conceptually dissimilar.” Virbac SA v. Merial,  NZIPOTM 16 (June 11, 2012).
As a separate issue, the Court also found that the Assistant Commissioner erred in permitting registration of FIPROLINE, as the specification was not confined to products containing fipronil. The judge concluded that any person who knew that fipronil was an active ingredient in a flea treatment was likely to think that FIPROLINE products contained fipronil. Consequently, she found that confusion was likely to occur if the FIPROLINE mark were used to sell products that did not contain fipronil. If the Court had not found that the FIPROLINE and FRONTLINE marks were sufficiently similar to uphold the appeal under Section 17 of the Trade Marks Act 2002 (absolute grounds for not registering a trademark), the registration would have been narrowed to include the words “that include fipronil as an ingredient.”
The decision demonstrates the great weight that evidence can play in New Zealand opposition proceedings in relation to marks that may otherwise be considered dissimilar. However, the conclusion reached by the Court—that the reference to the word “fipronil” in both products may result in consumer confusion—is one that many may find surprising.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.