Company prevented from using descriptive terms in certain regions

New Zealand
In Hearing Care Manawatu Ltd v National Hearing Care (New Zealand) Ltd (unreported, CIV-2009-404-8506, March 31 2010), the New Zealand High Court has awarded an interim injunction preventing National Hearing Care (New Zealand) Limited from using a stylized version of 'national hearingcare' in certain regions of New Zealand.  
 
The plaintiffs, Hearing Care Manawatu Limited and Hearing Care Wellington Limited (collectively Hearing Care), had been using a trademark incorporating the words 'hearing care' since 2005. National Hearing began to use the name Hearing Care New Zealand or HearingCare New Zealand in about July 2008. 
 
Hearing Care raised the issue of National Hearing’s use of 'hearing care' in March 2009, but took no formal steps to prevent it until November 2009. National Hearing argued that the delay was too long and fatal to the interim injunction application. National Hearing also claimed that Hearing Care, having chosen a descriptive name, could not prevent others from using the same name. The court chose deliberately not to deal with the merits of the competing claims and, therefore, this issue was not explored further.
 
A decisive factor in granting the interim injunction, despite the delay and alleged descriptiveness, may have been the fact that Hearing Care was able to point to examples of confusion and deception that had taken place. These included invoices that had been directed to the wrong entity, a government entity who had changed Hearing Care’s vendor numbers to National Hearing's, as well as examples of confusion among patients.
 
Despite the stylization being different, there were said to be distinctive aspects of the trademarks that gave rise to a potential for confusion, which appeared to be borne out by the evidence of confusion and deception. The court stated that, if National Hearing had focused on the words 'national hearing', as opposed to 'hearing care', there would have been less room for confusion.
 
The court concluded that there was a real risk of confusion in certain areas of New Zealand, but not in others where Hearing Care did not have patients. On balance, the court ruled that an interim injunction was justified, but only to ensure that the minimum amount of protection was granted.
 
The court indicated that the matter should be brought on for a substantive hearing as soon as practicable.
 
Kate Duckworth, Baldwins, Wellington

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