K-Y SENSUAL SILK prevails again on appeal

New Zealand

In Geneva Marketing (1998) Limited v Johnson & Johnson ([2009] NZCA 591, December 18 2000), the Court of Appeal has dismissed an appeal against a decision of the High Court in a case involving the trademark K-Y SENSUAL SILK.

In 2008 Geneva Marketing (1998) Limited failed to prevent Johnson & Johnson (J&J) from using and maintaining its trademark registration for K-Y SENSUAL SILK in relation to personal lubricants in the face of its trademark registration for SYLK for the same goods. The High Court refused to declare that the trademark K-Y SENSUAL SILK was invalid (for further details please see "K-Y SENSUAL SILK remains on register") and Geneva appealed to the Court of Appeal.

While the Court of Appeal ultimately agreed with the High Court's conclusion, the two courts disagreed about the extent of the similarities and the possibility for confusion.

The trial judge had found that the marks at issue conveyed a different idea or impression. The Court of Appeal disagreed and noted the following similarities between the two parties’ products:

  • The products are sold in similar sized packaging and bottles;
  • The words 'sylk' and 'silk' are the dominant features of the packaging; and
  • Both sets of packaging used similar alliterative phrases: the Sylk product used “silky smooth and slippery”, while the Silk product used “seductively silky, smooth sensation”.

However, despite these similarities, the Court of Appeal considered that the get-up of the two products was not particularly similar, and that different colour schemes and layouts were used.

The trial judge had not seen “even a reasonable possibility” of confusion between the mark, but the Court of Appeal viewed the issue as “closely balanced”. The Court of Appeal found that confusion on the part of some consumers was inevitable, but the question was said to be whether the extent of confusion was sufficiently significant. The Court of Appeal held that given the function of the products, the different target markets and the discerning nature of the purchasers, the differences were more important than the similarities, particularly in light of the fact that K-Y was a well-known brand.

The Court of Appeal held that anyone who buys a product bearing the mark K-Y SENSUAL SILK thinking that it is a Sylk product can be expected to realize the mistake reasonably quickly, and vice versa. Given that most customers are repeat purchasers, the overall proportion of purchases that would be affected by confusion or deception was said to be small.

The appeal was thus dismissed. Geneva can seek leave to appeal to the Supreme Court, New Zealand’s highest court. J&J may continue to use its SILK mark - for now.

Kate Duckworth, Baldwins, Wellington

Unlock unlimited access to all WTR content