No evidence that words contained in earlier marks had ceased to be descriptive

New Zealand

In Mars New Zealand Limited v Heinz Wattie's Limited ([2012] NZHC 591, March 30 2012), the High Court has overturned a decision of the assistant commissioner of trademarks, and allowed registration of the word mark ADVANCE ADVANCED PET NUTRITION.

In 2007 Mars New Zealand Limited applied for the registration of the trademark ADVANCE ADVANCED PET NUTRITION in Class 31 of the Nice ClassificationHeinz Wattie's Limited opposed on the basis of:

  • its stylised CHAMP ADVANCED DOG NUTRITION marks:

  • the word mark ADVANCED DOG NUTRITION.

Heinz Wattie's relied on 19 marks on the register which contained the word 'champ', along with the word 'advanced' and other words. Heinz Wattie's also relied on its sales of dog food under the CHAMP mark since 1998.

Mars relied on prior registrations it held for ADVANCE and argued that, where it held registration for that trademark, it was also entitled to register that mark with descriptive elements such as 'advanced pet nutrition'.

The assistant commissioner upheld the opposition by Heinz Wattie's and refused registration of ADVANCE ADVANCED PET NUTRITION.

In overturning the assistant commissioner, the High Court ruled that the ADVANCED DOG NUTRITION mark did not have a reputation separately from CHAMP. Although the High Court did not use the words "limping mark", this is a classic case of one, much like the KIT KAT HAVE A BREAK case. The High Court was not convinced that the words had ceased to be descriptive, and had taken on trademark significance. Evidence of use was said to be insufficient to establish the transition from descriptive to trademark.

The High Court went on to compare the marks. 'Champ' was found to be the dominant and unique element of Heinz Wattie's marks. Mars' mark, on the other hand, was said to rely on 'advance', presented as a noun in conjunction with the word 'advanced', which is commonly used as an adjective. The combination was said to "not make grammatical sense", but was said to convey that the product is progressive, and that concept was different to the CHAMP marks. The assistant commissioner had not placed enough emphasis on the 'advance' part of Mars' mark. As a result, the marks were found to be sufficiently different that no confusion or deception was likely.

Mars was thus able to register its ADVANCE ADVANCED PET NUTRITION mark, and was awarded costs.

Kate Duckworth, Baldwins, Wellington

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