Proof of reputation crucial for Nestle’s MILO in NZ trade mark opposition

Proof of reputation crucial for Nestle’s MILO in NZ trade mark opposition

Proof of reputation crucial for Nestle’s MILO in NZ trade mark opposition

Eastern Global Triumph Sdn Bhd v Societe des Produits Nestle SA [2012] NZIPOTM 10

In this recent New Zealand trade mark opposition decision Nestle opposed registration of Eastern Global Triumph registration of trade mark MIDO, based upon its rights in the well known mark MILO in New Zealand. The decision confirms that the owner of an obviously well-known trade mark must still prove its reputation if it is to be relied upon in a New Zealand trade mark opposition proceeding. The decision also reinforces the importance of getting an opponent’s evidence in support correct as there is unlikely to be an opportunity to lodge further evidence subsequently, unless it is strictly in reply to evidence lodged by the applicant. Nestle succeeded in its opposition, but only by virtue of its prior registrations of the MILO mark.

Nestle’s opposition grounds and evidence relating to its MILO mark

Nestle relied upon three related opposition grounds. Two of these grounds related to Nestle’s claimed reputation in its well known MILO trade mark in New Zealand. The remaining opposition ground related to Nestle’s prior registration of the MILO marks in class 29, in reference to section 25(1)(b) of the Act.

Nestle’s evidence in support of its opposition consisted of a declaration made by an employee of its attorneys which referred to Nestle’s trade mark registrations for MILO and contained extracts from Nestle’s website, to demonstrate use of the MILO mark in New Zealand. This was subsequently supported by a further declaration made by Nestle’s Regional Intellectual Property Adviser, as evidence in reply to the applicant’s evidence. The second declaration included an assertion that the mark had been used and promoted extensively in New Zealand for over 70 years. However, the Assistant Commissioner dismissed that evidence as it was not strictly in reply to anything put forward by the Applicant in its evidence.

Nestle failed to establish any reputation in its well known MILO mark

The MILO mark is generally considered to be well known in New Zealand, where it has been used in relation to flavoured milk continuously since 1935. Nonetheless, the Assistant Commissioner concluded that she should not take judicial notice of that fame (as requested by Nestle) and that Nestle must establish its reputation in the MILO mark through evidence. Nestle’s evidence failed to establish any such reputation. The only real reputation-based evidence which Nestle submitted was the extracts from its website, which were obtained well after the filing date of the opposed application, and much of which was also considered to be hearsay.

Nestle failed to establish its reputation-based grounds of opposition. However, the Assistant Commissioner found that the MIDO mark was similar to Nestle’s registered MILO mark and MILO logo, as the respective marks only differed by one letter and as the relevant goods may appear in close proximity on supermarket shelves, the purchase of which is “unlikely to require high involvement purchase decisions”. As such, the Assistant Commissioner found that use of the MIDO mark may be likely to deceive or cause confusion, in reference to Nestle’s prior registrations of the MILO mark. The Assistant Commissioner also found that Eastern Global Triumph had not established a case for “honest concurrent use” or any other special circumstances. Nestle succeeded in its opposition, but only by virtue of its prior registrations of the MILO mark.

Lessons for Trade Mark Opponents in New Zealand

This case is a warning to the owners of well known trade marks who intend to rely upon the fame and notoriety of those trade marks in New Zealand opposition proceedings. Even if the mark is considered to be well known, the potential opponent must still provide strong and reliable evidence to establish the reputation in the relevant mark in New Zealand, as the Assistant Commissioner is unlikely to assume any such reputation exists, even if the mark is well known in New Zealand. Some examples to help establish strong evidence of reputation may be:

  • advertisements from newspapers, television, magazines;
  • examples of catalogues, promotional material, billboard advertising
  • yearly sales revenue and advertising expenditure;
  • third party references to the opponent’s trade mark;
  • list of stores in which the opponent’s goods are sold.

In each case this evidence should be dated, the older the better. It will also help to provide details of the scope of use of the opponent’s mark e.g did the television advertisement screen nationwide, where was the opponent’s catalogue circulated. Finally, the evidence should all relate directly and clearly to the goods or services sold under the specific mark upon which the opponent is relying, in the opposition.

The case is also a warning that opponents must ensure that their evidence in support correctly establishes their position. Intellectual Property Office of New Zealand is unlikely to allow the opponent to introduce further evidence as “evidence in reply” unless that evidence strictly and clearly responds to evidence which the applicant may have lodged in the proceedings.