Confusion with well-known mark requires more than ‘link’

New Zealand

In Wistbray Limited v Ferrero SpA (CIV 2007-485-460, December 11 2008), the High Court of New Zealand has upheld Wistbray Limited's appeal against a decision of the assistant commissioner of trademarks in which the latter had refused to register the mark TICK TOCK for tea.

In 2007 the assistant commissioner held that the trademark TICK TOCK for goods in Class 30 of the Nice Classification (tea) was confusingly similar to the trademark TIC TAC for confectionery (for further details please see "TICK TOCK for tea too similar to TIC TAC for confectionery"). Neither party requested to be heard or made submissions at the opposition hearing. In the absence of direction from the parties, the assistant commissioner appeared to lack understanding of how the pleadings, evidence and law tied together. The applicant for the TICK TOCK mark, Wistbray Limited, appealed to the High Court. The owner of the TIC TAC mark, Ferrero SpA, did not oppose the appeal.
At the appeal hearing, Wistbray criticized two recent decisions of the High Court, which drew their authority from the Supreme Court (the final appellate court in New Zealand) for the proposition that while differences may be significant, it is the similarities that matter. The court did not agree that this was a wrong statement of law. It stated that, in particular circumstances, differences may be more telling. However, similarities may carry the day in other cases.
In the present case, the court found that the differences between the words were relatively subtle. Therefore, if the trademarks were to be used for similar goods, the differences between the marks might be insufficient to avoid confusion and deception.
However, the difference between the goods was decisive. While recognizing the strong reputation of Ferrero for its TIC TAC-branded product, the court found that the assistant commissioner’s reasoning had omitted a critical analysis as to whether confusion and deception were likely to arise if Wistbray used the mark for tea, which is a very different product to confectionery. 
The court mentioned the decisions of the Court of Appeal of England and Wales and of the European Court of Justice in Intel Corporation Inc V CPM United Kingdom Limited (Case C-252/07 and [2007] RPC 35), which referred to the requirement for there to be a "link" in the minds of consumers between the earlier and later mark. The court referred to the requirement under New Zealand law for there to be “a connection in the course of trade” rather than a “link” in the case of a well-known mark. However, it found the reasoning of the Court of Appeal of England and Wales in Intel to be helpful. In the present case, the dissimilarity of the goods was said to be a strong indication that there was no trade connection between TICK TOCK for tea and TIC TAC for confectionery.
The court reversed the costs award made by the assistant commissioner against Wistbray. It awarded costs for the appeal hearing and ordered that the application for TICK TOCK proceed to registration.

Kate Duckworth, Baldwins, Wellington

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