K-Y SENSUAL SILK remains on register

New Zealand
In Geneva Marketing (1998) Limited v Johnson & Johnson (Case CIV-2007-404-2431, October 2 2008), the High Court of New Zealand (Auckland Registry) has refused to declare that the trademark K-Y SENSUAL SILK was invalid. 
Geneva Marketing (1998) Limited is the owner of the trademark SYLK in New Zealand for, among other things, personal lubricants. Johnson & Johnson (J&J) had for many years sold a personal lubricant under the trademark K-Y. In 1997 it commenced selling its goods under the mark K-Y SENSUAL SILK. It also registered the trademark in 1997 before it commenced trading. Geneva sued J&J for trademark infringement, passing off and breach of the Fair Trading Act (which prohibits misleading and deceptive conduct). 
Geneva’s first hurdle was to overcome Section 93 of the Trademarks Act 2002, which provides that use of a registered mark cannot infringe another registered trademark. Geneva thus sought to remove the K-Y SENSUAL SILK mark from the register, claiming that the mark should not have been registered in the first place on account of its earlier registration for SYLK. It also claimed that J&J’s conduct was confusing and deceptive. 
Geneva’s SYLK-branded product had a loyal following and retail sales of NZ$180,000 a year. J&J’s K-Y product was the clear market leader with 80% market share and sales of NZ$1 million per year. The High Court found that:
  • purchasers of personal lubricants are discerning and loyal;
  • they are not impulse buyers; and
  • such goods would be purchased by look rather than sound. 

The court found that K-Y SENSUAL SILK was not likely to cause confusion or deception with SYLK. The presence of the well-known K-Y trademark was a factor in the decision, as well as the fact that the word 'silk' was only one word among four making up the K-Y SENSUAL SILK mark. The court thus declined to declare that K-Y SENSUAL SILK was invalid or to revoke it.

As Geneva had failed to remove the trademark from the register, J&J had an absolute defence to infringement, unless use of the K-Y SENSUAL SILK mark was not of the trademark as registered. Geneva claimed that J&J’s packaging adopted a different trademark because of the presence of the ® symbol (or the word 'brand' or 'marque') and the words ‘sensual silk’ on a different line and ‘silk’ in much larger letters than ‘sensual’ (thereby suggesting that 'silk' was a different mark). The court found that these differences did not alter the distinctive character of the registered trademark K-Y SENSUAL SILK, as they did not interrupt or affect the impression of a continuum created by its four constituent words. The court held that J&J was entitled to give prominence to any part of its trademark.
The court went on to consider the infringement claim, even though it had found that J&J had an absolute defence. Despite saying that the essential feature or idea of the trademark was relevant, it found that SYLK was a standalone mark, while ‘silk’ was the last word in four and each word conveyed a different idea or impression.
While the failure of the trademark infringement claim itself was not fatal to the passing off or the Fair Trading Act claim, the court's view on the similarity of the marks and the likelihood of confusion made failure of such claims inevitable.
Although each case is decided on its own merits, under De Cordova v Vick ((1951) 68 RPC 103), if a word forming part of a trademark has come in trade to be used to identify the goods of the owner, it is an infringement to use that word as the trademark or part of the trademark of another trader. The use of 'silk' by J&J was not use of part of Geneva’s trademark, it was use of the whole of the mark. Geneva may still appeal to the Court of Appeal.
Kate Duckworth, Baldwins, Wellington

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