TICK TOCK for tea too similar to TIC TAC for confectionery

A hearing officer at the New Zealand Intellectual Property Office has upheld the opposition by Ferrero SpA against the registration of the mark TICK TOCK.

Wistbray Limited, a UK company, applied to register the mark TICK TOCK for tea in Class 30 of the Nice Classification. Ferrero opposed, claiming that it was too similar to its own mark TIC TAC, which it has used extensively for confectionery in New Zealand for some years. Ferrero, relying on its reputation in the mark TIC TAC for confectionery, produced a survey demonstrating that over 95% of consumers were aware of the TIC TAC brand. It also relied on several registered trademarks covering confectionery. Wistbray did not file any evidence.

In the hearing officer's view 'TICK' and 'TIC' are pronounced the same. He went on to say that not only were 'TAC' and 'TOCK' similar but they also "may even be identical", and further that to all intents and purposes, the marks "became the same".

In relation to the goods covered by the respective marks, the hearing officer conceded that the goods (tea and confectionery) were quite different and were unlikely to be positioned together in supermarkets and convenience stores. However, the strong reputation in the TIC TAC mark and the strong similarity between the marks was said to be likely to lead to confusion and deception despite the difference in the goods.

Although Ferrero had several trademark registrations for TIC TAC for non-medicated confectionery in Class 30, Ferrero failed on this ground. The hearing officer dismissed the opposition on the basis of the earlier registrations simply stating that use of TICK TOCK in relation to goods covered by the application is not likely to deceive or cause confusion. It is difficult to understand how an opposition can succeed on the basis of reputation but fail on the basis of trademark registrations for the same mark for the same goods for which reputation is claimed.

Ferrero also argued that the mark TICK TOCK lacked distinctive character. Presumably this was on the basis that it would always be confusingly associated with TIC TAC and was not capable of distinguishing Wistbray's goods from those of Ferrero sold under the mark TIC TAC. The hearing officer dismissed the opposition on this ground, stating that there was no evidence before him to address the objection that the mark TICK TOCK lacked distinctive character.

Neither party requested to be heard at a hearing or filed submissions. Rather, both parties asked that the matter be decided on the papers filed. In the absence of submissions from the parties, the hearing officer appeared to lack understanding on how the evidence related to the grounds of opposition as pleaded.

Wistbray had until mid-February 2007 to lodge an appeal to the High Court, but it is not known whether an appeal was filed.

Kate Duckworth, Baldwins, Wellington