Court of Appeal returns NZ trademark oppositions to more conventional principles

In Roby Trustees Limited v Mars New Zealand Limited (COA CA30/2012 [2012] NZCA 450, October 1 2012), the Court of Appeal of New Zealand has overturned a High Court decision which held that the opposed OPTIMIZEPRO label was likely to be confused with an opponent's prior trademarks. In so doing, the Court of Appeal has reverted to a more conventional assessment of the likelihood of confusion between competing trademarks. The decision also validates consideration of the state of the Trademarks Register, when assessing a likelihood of confusion.

Mars New Zealand Limited opposed Roby Trustees Limited's application to register the OPTIMPIZEPRO label for dog food based upon its prior trademarks OPTIMUM NUTRITION FOR LIFE and OPTIMUM, both used and registered in relation to dog and cat foods. The New Zealand Assistant Commissioner of Trademarks rejected Mars' opposition, as she considered that the OPTIMIZEPRO label was not likely to deceive or cause confusion. However, upon appeal, Venning J found that Roby's use of the OPTIMIZEPRO label would be likely to deceive or cause confusion, contravening Section 17(1)(a) of the Trademarks Act 2002. Venning J also found that Roby's use of the proposed mark would contravene the Fair Trading Act 1986 and indicate a connection to Mars sufficient to prejudice Mars' interest, contravening section 25(1)(c) of the 2002 act.

In concluding that the OPTIMPIZEPRO label would be confused with Mars’ prior marks, the High Court virtually ignored the slogan 'LEAD THE PACK' and discounted the presence of the word 'pro'. Venning J also gave significant weight to the aural and conceptual similarities between the respective marks, despite the fact that the marks would usually be purchased only by visual inspection. The High Court's assessment of the OPTIMPIZEPRO label departed from established practice in New Zealand by focusing on separate elements of the opposed mark rather than considering the mark "in its entirety" and assessing correctly how the mark would function in the marketplace.

Upon appeal, the Court of Appeal of New Zealand returned to a more conventional assessment process when determining whether or not the OPTIMIZEPRO label was likely to be confused with Mars' prior trademarks. The Court of Appeal also allowed Roby to introduce new evidence to establish that other parties had been able to register marks commencing with the prefix 'opti-' in relation to the same goods as those for which Roby had applied.

The Court of Appeal concluded that Roby's use of its OPTIMIZEPRO label would not be likely to confuse or deceive New Zealand consumers, on the following grounds:

1. Although Mars had registered the marks OPTIMUM and the OPTIMUM NUTRITION FOR LIFE logo, the court gave significant weight to the fact that Mars primarily only uses the OPTIMUM NUTRITION FOR LIFE logo in the marketplace. Consequently, the court gave less weight to Mars' assertion that it had developed a separate reputation in the OPTIMUM mark. It is interesting to note that this assessment continued on to the court's consideration of Section 25 grounds of opposition, which relates strictly to a comparison of the opposed mark with Mars' prior registered trademarks. The Court of Appeal did not consider Mars' prior registered marks in the form in which they are registered, as Mars had registered the mark OPTIMUM solus. This assessment is itself somewhat inconsistent with the accepted principle that a prior mark must be considered in its entirety, as applied by the Court of Appeal itself.
2. "We accept that the Court should consider the impact of any essential feature of the proposed mark… it must be borne in mind that there are other marks in the same class that begin with OPTI-. In such a case consumers may pay more attention to the other features of the respective marks. The proposed mark is also a device mark, and must be considered as a whole" (emphasis added).
3. The Court of Appeal considered that the visual impact of the marks is most significant, as the goods in questions will be purchased in supermarkets.
4. Whilst the respective marks convey similar ideas, "there is nothing inherently distinctive about the idea". The court held that Mars' evidence did not establish that the word 'optimum' had become so associated with Mars' products so as to lose its ordinary descriptive meaning. Consequently, when the OPTIMIZEPRO label was considered in its entirety, the Court of Appeal observed: "we do not think it is likely that the proposed mark will deceive or cause confusion to a substantial number of persons in the market for dog food. Rather we consider that 'PRO' and 'LEAD THE PACK' clearly distinguish the mark from the Mars' marks." In departing from the assessment made by Venning J, the Court of Appeal observed that Venning J had "ultimately attached too little weight to the visual and aural dissimilarity of the marks when considered as a whole".

The Court of Appeal's decision should ensure that the primary consideration when determining whether or not use of an opposed mark is likely to deceive or cause confusion involves a practical assessment of how the mark will function in the New Zealand marketplace.

There are some important points for parties involved in New Zealand trademark opposition proceedings to consider, especially when an opponent is relying upon its use or registration of a prior mark:

1. The nature of the goods or services to be provided under the opposed mark are important. If they are goods which are most likely to be purchased by visual inspection, then increased importance can be placed upon the visual appearance of the trademarks, as opposed to any phonetic or aural similarities between the marks.
2. In assessing the nature of an opponent's prior marks, the Assistant Commissioner or a court may look at how the opponent uses its mark, rather than focusing exclusively upon the form of the mark as registered.
3. If the 'shared' element between competing marks is itself somewhat descriptive or non-distinctive, then this should reduce any risk that the opposed mark is likely to deceive or cause confusion.
4. The state of the Trademarks Register is also relevant. If the owner of an opposed mark can refer to other trademark registrations that co-exist covering the same goods as the opposed mark and which contain the same elements as upon which the opponent relies, then the Assistant Commissioner or a court is entitled to take note of that co-existence to form a conclusion that more weight may be given to other parts of the respective marks
5. This case highlights how critical evidence is in a New Zealand trademark opposition – including evidence of the marketplace and the state of the Trademarks Register

We consider that the Court of Appeal's decision is consistent with established principles that would ordinarily be applied in a New Zealand trademark opposition, when assessing whether or not two trademarks are likely to be confused with one another.

Nick Holmes, Davies Collison Cave, Melbourne