NZ High Court: identical or similar marks for different goods may coexist

NZ High Court: identical or similar marks for different goods may coexist

NZ High Court: identical or similar marks for different goods may coexist

New Zealand’s High Court has upheld an appeal from an opposition decision relating to registration of the trademark TICK TOCK for tea goods. Wistbray Ltd. v. Ferrero S.p.A., No. HC WN CIV-2007-485-460 (H.C. Dec. 11, 2008), concerning NZ application No. 733359 for TICK TOCK in Class 30.

Ferrero’s opposition was based upon its prior registrations and use of its well-known trademark TIC TAC, which had been registered in New Zealand since 1973 and used since 1993, in relation to mint candy. The Assistant Commissioner upheld the opposition on the basis that Wistbray’s use of the TICK TOCK mark was considered likely to deceive or cause confusion, and also that registration of the TICK TOCK mark would be contrary to Section 25(1)(c) of the Trade Marks Act 2002, as the TIC TAC mark was well known in New Zealand.

Wistbray’s appeal was successful, and the judge ordered that the TICK TOCK application proceed to registration. In reaching this conclusion, the judge made two interesting points in assessing what is required to demonstrate a “likelihood of confusion” and “connection in the course of trade.”

Likelihood of confusion

To assess whether use of the TICK TOCK mark for tea goods would be likely to deceive or cause confusion (based on the existing reputation of Ferrero’s TIC TAC trademark), the judge considered differences between tea and mint candy. The court applied the well-established tests set out by New Zealand’s Court of Appeal in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty Ltd ([1978] 2 NZLR 50) and placed “considerable weight on the dissimilarity of the goods involved,” noting that candy mints and tea are “of a starkly different type,” to support the view that there was not sufficient likelihood of confusion, and he allowed that ground of the appeal.

The need to consider the relevant goods or services when assessing the likelihood of confusion for a Section 17 ground of opposition in New Zealand recognizes that identical marks may be used by different parties for different goods and coexist in the New Zealand marketplace without confusion, as reflected in the Trade Marks Register. For example, the New Zealand register includes the trademark TIP TOP for both ice cream and bread; DOVE for both soap and chocolate; BELL/BELLS for both tea and whiskey; and CROWN for beer, corned beef and removal services.

The court did, however, draw a distinction between trademarks that consist of invented words and those of ordinary English words, noting that “any made-up word is likely to convey that it is distinctive to one trade mark owner” (emphasis added).

Connection in the Course of Trade

Ferrero had successfully argued that registration of the TICK TOCK mark would contravene Section 25(1)(c) of the Trade Marks Act, which essentially relates to well-known marks. However, the Assistant Commissioner’s finding did not explain whether use of the TICK TOCK mark for tea would “be taken as indicating a connection in the course of trade” between Wistbray’s tea and Ferrero’s TIC TAC mints, as required under Section 25(1)(c).

To determine what is required for there to be “a connection in the course of trade,” the court followed the reasoning of the English Court of Appeal in Intel Corp. Inc. v. CPM United Kingdom Ltd ([2007] RPC 35), subsequently appealed to the European Court of Justice (Case 252/07), which the judge considered providing “a useful contemporary analysis on the requirements under subsection 25(1)(c).” In the Intel case, the judge noted inter alia:

I would hold that a “link” requires more than such a tenuous association between the two marks. If a trade mark for particular goods or services is truly inherently and factually distinctive it will be robust enough to withstand a mere passing bringing to mind when it or a similar mark is used for dissimilar goods or services.

In its assessment of which factors should be taken into account, the court considered:

(a) Whether, having regard to the nature of the goods or services for which the later mark is used, the average consumer would consider that there is an economic connection between the owners of the two marks;

(b) Whether the distinctiveness or repute of the earlier mark for the goods or services for which it is registered is really likely to be affected if the later mark is used for the specific goods or services covered by its registration (emphasis in original)

[I]t is very important that the harm or prospect of harm must be real and tangible. A mere possibility or assertion of damage is just too remote and would leave trade mark owners in too monopolistic a position. Trade mark law is there to protect a proper system of competition, not to provide trade mark owners with overreaching rights which may obstruct trade.

In applying that approach, the court held that the dissimilarity between tea and mints was a strong indication there was not a trade connection between TICK TOCK tea and TIC TAC mints. While New Zealand consumers “might well have TIC TAC ‘brought to mind’ when confronted with TICK TOCK tea,” the court did not consider that such consumers would “go on and assume from the similarity of name that there was a connection between the producers of the dissimilar products.”

Perhaps demonstrating a concern that trademark owners may be hypersensitive to the existence of similar marks in the wider marketplace, the court went on to note that “a loyal buyer of TIC TAC mints is hardly likely to think less of that product (or its manufacturer) because of an adverse experience with TICK TOCK tea.”

While the High Court’s decision is not groundbreaking, it does reflect the realities of the New Zealand marketplace.

This article is reprinted with permission from INTA Bulletin Vol. 64 No. 4. Copyright © 2006 the International Trademark Association.