Region: New Zealand

No leave to appeal despite commissioner and lower courts reaching different decisions

In <i>NV Sumatra Tobacco Trading Company v New Zealand Milk Brands Limited</i>, NV Sumatra Tobacco Trading Company has had its application for leave to appeal to the Supreme Court, the highest court in New Zealand, refused. The Supreme Court ruled that the appeal did not raise any particular point of law, despite the assistant commissioner, the High Court and the Court of Appeal all reaching different decisions.

26 October 2011

New act brings significant changes to trademark legislation

The Trademarks Amendment Bill (previously the Trademarks (International Treaties and Enforcement) Amendment Bill) was passed on September 8 2011. It received royal assent a week later as well as a new name, becoming the Trademarks Amendment Act 2011. The act is a significant piece of new IP legislation for the country.

28 September 2011

Beer society fails to prove that ‘radler’ is descriptive for beer

In <i>DB Breweries Limited v Society of Beer Advocates Inc</i>, DB Breweries Limited, one of New Zealand’s largest brewers, has been able to maintain its registration for RADLER, despite an invalidity attack by SOBA, a beer society. Among other things, the assistant commissioner of trademarks held that SOBA had failed to establish that RADLER had any meaning, other than DB’s Radler product, at the application date.

20 July 2011

Indonesian company partially successful against NZ dairy company

In <i>N V Sumatra Tobacco Trading Company v New Zealand Milk Brands Limited</i>, Sumatra Tobacco has been partially successful in its application to register the mark ANGKOR. The Court of Appeal agreed with the High Court that use of ANGKOR would lead to prejudice to New Zealand Milk Brands, the owner of ANCHOR for dairy products. However, registration of ANGKOR was allowed for cereal, biscuits and confectionery.

30 June 2011

Slogan for soft drink held to be registrable

In <i>Coombe v Coca-Cola Amatil (NZ) Limited</i>, the High Court of New Zealand has held that the phrase 'World Famous in New Zealand' was registrable as a trademark. Among other things, the court found that the phrase was an oxymoron that produced a quirky and original statement.

09 May 2011

Wine marks held to be similar based on actual use

The assistant commissioner has upheld an opposition against the registration of the trademark OYSTERCATCHER for wine on the grounds that it was confusingly similar to the mark OYSTER BAY, which is also used in connection with wine. Among other things, the assistant commissioner found that consumers were likely to perceive OYSTERCATCHER as part of the OYSTER BAY range.

04 May 2011

Applicants for revocation reminded that they must be “aggrieved persons”

In <i>Tui AG v DB Breweries Limited</i>, the assistant commissioner has rejected an application by DB Breweries Limited, owner of the well-known TUI mark for beer, for the revocation on the grounds of non-use of four registrations for the mark TUI, owned by Tui AG. The decision shows that the requirement that an application for revocation must be filed by an aggrieved person is clearly an essential step for a successful application.

15 March 2011

'My' trademark applications allowed in surprising decision

The assistant commissioner has allowed the registration of several trademarks including the words 'my' and 'insurance' by an insurance firm despite oppositions from four competitors. Surprisingly, the assistant commissioner found that the marks were capable of distinguishing because the word 'my' (in combination with the descriptive words) was not a generic description for insurance services.

31 January 2011

Fashion company successfully invalidates competitor's mark

In <i>Cotton On Clothing (New Zealand) Limited v Ruby Apparel (2008) Limited</i>, the Intellectual Property Office has considered an application for a declaration of invalidity of the mark RUBI SHOES and an opposition against the registration of the mark RUBY. Ruby Apparel (2008) Limited was successful both in its application for invalidation and in its defence to Cotton On Clothing (New Zealand) Limited's opposition.

08 November 2010

Well-known fashion company unsuccessful in opposition proceedings

In <i>Prada SA v The Farmers Trading Company Limited</i>, the High Court has dismissed an appeal against a decision of the assistant commissioner of trademarks in which the latter had found that the trademark MIMI was not similar to Prada SA's trademark MIU MIU. The court found that the similarities were superficial and strongly outweighed by the differences.

03 November 2010

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