Region: New Zealand

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

Marks containing common surname refused registration

In <i>Higgins Coatings Pty Limited v Higgins Group Holdings Limited</i>, the High Court has refused to allow the registration of the word mark HIGGINS COATINGS and of a stylised version of the surname Higgins. Although the court found that there was no likelihood of confusion with earlier HIGGINS marks, it concluded that the marks applied for lacked distinctiveness.

06 September 2010

First criminal charges laid under Major Events Management Act

The government has laid the first criminal charges for counterfeiting in relation to the Rugby World Cup, which is being held in New Zealand in 2011. The charges were laid under the Major Events Management Act, which deals with ambush marketing for 'major events'.

13 May 2010

Company prevented from using descriptive terms in certain regions

In <i>Hearing Care Manawatu Ltd v National Hearing Care (New Zealand) Ltd</i>, the High Court has awarded an interim injunction preventing National Hearing Care (New Zealand) Ltd from using a stylized version of 'national hearingcare' in certain regions of New Zealand. The court concluded that there was a real risk of confusion between National Hearing's and Hearing Care's marks in certain areas of the country.

06 May 2010

K-Y SENSUAL SILK prevails again on appeal

In <i>Geneva Marketing (1998) Limited v Johnson & Johnson</i>, the Court of Appeal has dismissed an appeal against a decision of the High Court in which the latter had held that K-Y SENSUAL SILK was not likely to cause confusion with SYLK. 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.

03 February 2010

No retrospective extension of time in revocation proceedings, says court

In <i>The Muir Electrical Company Pty Limited v The Good Guys Group Limited</i>, the High Court has overturned a decision of the assistant commissioner of trademarks in which the latter had granted a retrospective extension of time under Regulation 32 of the Trademarks Regulations 2003. The court held that it is not possible to grant an extension where the time for taking a step has expired.

27 January 2010

Mere delay is not bar to seeking remedy, says Court of Appeal

In <i>Intellectual Property Development Corporation Pty Ltd v Primary Distributors New Zealand Limited</i>, the Court of Appeal has allowed an appeal against a decision of the High Court in which the latter had held that an account of profits was not available for the period during which the plaintiff was aware of the infringement but did not take any action.

28 October 2009

Foster’s fails to prevent registration of FIJI BEER marks

In <i>Flour Mills of Fiji Limited v Foster's Group Pacific Limited</i>, the assistant commissioner of trademarks has dismissed an opposition filed by Foster’s Group Pacific Limited, which sells beer under the trademark FIJI BEER, against the registration of two marks containing the words 'Fiji beer'. Among other things, the assistant commissioner declined to order a disclaimer for the word 'Fiji'.

15 October 2009

FAMILYSEARCH decision affirmed on appeal

In <i>Intellectual Reserve Inc v Sintes</i>, the Court of Appeal of New Zealand has dismissed an appeal against a High Court decision in which the latter had held that there was no likelihood of confusion between the mark FAMILYSEARCH for genealogy services and the mark FAMILYSEARCH for services for reuniting missing family members.

16 September 2009

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