Region: New Zealand

McDonald’s fails to prevent registration of 'arch' mark

In <i>AJ Enterprises (Aust) Pty Ltd v McDonald's International Property Company Ltd</i>, the assistant commissioner of trademarks has ruled that a figurative trademark which included an arch design was not confusingly similar to McDonald's International Property Company Ltd's 'golden arches' trademark.

01 September 2009

Essential feature test on its way out

The decision of the Intellectual Property Office of New Zealand in <i>Timaru Bluestone Industries Limited</i> further indicates that the essential feature test set out in <i>De Cordova v Vick</i> is on its way out in relation to assessing the similarity of marks. Owners of registered trademarks may be unable to prevent their competitors from registering a mark that wholly contains their registered trademark.

09 June 2009

New Zealand one step closer to joining international IP treaties

The Trademarks (International Treaties and Enforcement) Amendment Bill has had its first reading in Parliament. The bill has now been referred to the Foreign Affairs, Defence and Trade Committee. New Zealand has moved one step closer to joining a number of international IP treaties and introducing further legislative measures to fight counterfeiting and piracy.

28 April 2009

High Court interprets Section 66 of Trademarks Act

In <i>Heinz Wattie’s Limited v Goodman Fielder Consumer Foods Pty Limited</i>, the High Court of New Zealand has considered whether an applicant for revocation for non-use could add an additional ground following the emergence of new evidence. The case raised an important question of interpretation of the provisions of Section 66 of the Trademarks Act.

17 March 2009

'Impractical' interim injunction issued in car hire logo case

In <i>Ace Tourist Rentals (NZ) Limited v Clouth & Giles Investments Limited</i>, the High Court has ordered that Clouth & Giles Investments Limited refrain from using its Hireace logo in advertising and promotional material in relation to the hire of cars, but not with regard to truck or trailer hire, or commercial hire. The court order is arguably impractical.

13 March 2009

Confusion with well-known mark requires more than ‘link’

In <i>Wistbray Limited v Ferrero SpA</i>, the High Court has held that there was no likelihood of confusion between the trademark TICK TOCK for tea and the well-known mark TIC TAC for confectionery. Among other things, the court referred to the requirement for there to be “a connection in the course of trade” between the marks, rather than a “link” in the mind of consumers.

03 February 2009

K-Y SENSUAL SILK remains on register

In <i>Geneva Marketing (1998) Limited v Johnson & Johnson</i>, the High Court of New Zealand has refused to declare that the trademark K-Y SENSUAL SILK was invalid. Among other things, the court held that Johnson & Johnson’s use of the mark K-Y SENSUAL SILK was not likely to cause confusion or deception with Geneva Marketing (1998) Limited’s trademark SYLK.

07 November 2008

Two for one in the House: International Treaties and Enforcement Bill

Parliament has introduced the Trademarks (International Treaties and Enforcement) Amendment Bill, which contains provisions amending both the Trademarks Act 2002 and the Copyright Act 1994. One of the main aims of the bill is to add provisions to both acts as part of the battle to crack down on counterfeiting and piracy.

22 October 2008

PUREBABY decision: the end of the essential feature test?

In <i>In the matter of Trademark Application 738606 in the name of Purebaby Pty Ltd</i>, the hearings officer has held that the mark PUREBABY was not confusingly similar to the earlier registered trademark PURE. The decision indicates that the essential feature test set out in <i>De Cordova v Vick</i> may no longer be of much relevance when considering the similarity of marks.

01 October 2008

VERAGE is confusingly similar to VERGE, but not VERSACE

In <i>Hangzhou Gema Suitcases & Bags Co Ltd v Gianni Versace SPA</i>, the Intellectual Property Office has upheld Gianni Versace SPA's opposition against the registration of VERAGE. Although the office found that VERSACE and VERAGE were not confusingly similar, the opposition succeeded on the grounds that VERAGE was confusingly similar to VERGE, which is owned by an unrelated company.

14 July 2008

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