Bayer successfully opposes registration of mark for health supplements

In Bayer Consumer Care AG v DBC LLC ([2013] NZHC 3203, December 3 2013), Bayer Consumer Care AG has won its battle to prevent the registration of two ELEVIV trademarks in Class 5 of the Nice Classification for supplements and meal replacements.

Bayer opposed the registration of two stylised versions of the mark ELEVIV by DBC LLC on the basis of its use and registration of ELEVIT. 

ELEVIT is, at least in New Zealand, a heavily promoted supplement for women who are pregnant, planning on becoming pregnant or are breastfeeding. ELEVIT has been registered in New Zealand in Class 5 since 1969 and sold in New Zealand since 2002. It is registered in 145 countries around the world and has considerable sales.

Eleviv is a general well-being supplement said to “support natural vigour”; it is known as “the ‘feel great’ supplement”.

Bayer opposed two applications by DBC for registration for ELEVIV, both in a stylised form, one being more stylised than the other:

Bayer was unsuccessful in its opposition before the commissioner of trademarks. The commissioner found that, although ELEVIT and ELEVIV are only one letter different, the 'vit' in ELEVIT would be taken as a reference to vitamins and would therefore distinguish ELEVIV from ELEVIT.

Bayer appealed to the High Court, and the High Court overturned the decision of the commissioner. The judge found that the trademarks ELEVIT and ELEVIV have a marked similarity. The fact that the first six letters were the same was significant. The dissimilarity of the last letter was said to be of negligible impact.

One noteworthy factor in the case was, that although the Eleviv product has similarities to Elevit in that both are supplements, Eleviv is not be taken by pregnant or lactating women. This was said to be a potentially dangerous aspect of the Eleviv product, should confusion arise.

DBC has not appealed the decision, so the decision of the High Court stands and the ELEVIV trademarks cannot be registered in New Zealand.

Kate Duckworth, Catalyst Intellectual Property, Wellington