Region: New Zealand

The North Face defeated on appeal in dispute over similar device mark

In <I>The North Face Apparel Corporation v Sanyang Industry Company Limited</I>, the Court of Appeal has allowed the registration of a device mark by Sanyang Industry Co Ltd in Classes 7, 16, 25 and 35 despite an opposition by The North Face Apparel Corp. The Court of Appeal ruled that North Face had failed to prove prior use of an identical mark and was therefore not the proprietor of Sanyang’s application.

25 September 2014

Decision highlights difficulty of drafting questions in surveys

In <I>Tasman Insulation New Zealand Limited v Knauf Insulation Limited</I>, the High Court has found that Tasman’s BATTS trademark was not generic, even though there was a degree of “loose terminology” in relation to 'batts', as well a “not insignificant amount of what appears to be generic use”. The court concluded that the defendants infringed the mark by selling products featuring the words 'batt' and 'batts'.

04 July 2014

Use it or lose it: the scrap over SCRAPMAN

The decision in <I>Metalman v Scrapman BOP</I> is a useful reminder of the fundamental trademark principle: use it or lose it. The assistant commissioner ordered that Metalman’s registration for SCRAPMAN be removed from the register, finding that the mark had not been put to genuine use. She cited the ECJ’s decision in <I>Ansul v Ajax</I>, in which the court set forth the relevant factors for the assessment of whether use of a mark amounts to genuine use.

27 June 2014

High Court issues first decision on use of third-party trademarks as keywords

In <I>Intercity Group (NZ) Limited v Nakedbus NZ Limited</I>, the High Court has held that Nakedbus had not infringed Intercity’s trademark INTERCITY when it purchased the keyword ‘inter city’ via Google AdWords. However, the court found that Nakedbus had infringed Intercity’s mark by using the words 'inter city' in Google advertisements. Among other things, the court rejected Nakedbus’ argument that it only used the words descriptively.

25 March 2014

Filing for logo will not automatically remedy distinctiveness issues

In <I>South Island - Pinnacle Liquor Group Pty Ltd v New Zealand Winegrowers</I>, the assistant commissioner has upheld an opposition by New Zealand Winegrowers against the registration of the logo mark SOUTH ISLAND for wine. The decision conveys a number of valuable lessons in terms of strategy, the most important being that a logo mark will not automatically remedy any distinctiveness issues.

07 March 2014

Bayer successfully opposes registration of mark for health supplements

In <i>Bayer Consumer Care AG v DBC LLC</i>, the High Court has upheld Bayer’s appeal against a decision of the commissioner of trademarks in which the latter had found that there was no likelihood of confusion between the marks ELEVIV and ELEVIT for Class 5 goods. One important aspect of the case was that one of the products at issue had an inherent health risk for a particular category of consumers.

31 January 2014

'Nod' to IPHONE mark will not necessarily result in confusion

In <i>Crowther v Apple Inc</i>, the assistant commissioner of trademarks has dismissed Apple Inc’s opposition against the registration of the mark DRIPHONE for “waterproof electronics cases including cases for mobile phones” on the ground that there was no likelihood of confusion with Apple’s IPHONE mark. Although it was likely that the IPHONE mark had influenced the applicant’s choice of mark, this 'nod' would not necessarily result in deception or confusion.

14 January 2014

Honey trademarks found to have become customary

In <i>Lee v UMF Honey Association Inc</i>, the assistant commissioner has upheld an opposition by UMF Honey Association against the registration of six trademarks including the terms 'non peroxide activity' and 'total activity percent' for honey. Among other things, the assistant commissioner found that the marks consisted only of signs or indications that have become customary in the current language or in the good-faith and established practices of trade.

28 October 2013

Registry considering whether to introduce domain names directly under '.nz'

The Domain Name Commission Limited, the body responsible for running the ‘.nz’ namespace, is considering whether to introduce second-level registrations directly under ‘.nz’. There have been two consultation periods so far. Following the initial consultation, the DNCL proposed an initial sunrise period for holders of third-level domain names registered before a certain date to register or reserve the equivalent ‘.nz’ domain names in priority.

21 October 2013

NZ winemakers consider GI protection but commentators identify significant challenges

Recent reports indicate that New Zealand winemakers are seeking GI protection for their labels. As wine consumption grows in emerging markets such as China and Russia, domestic producers are increasingly concerned about potential knock-offs being passed off as premium labels. However, while the wine industry considers using GI status as a way of fending off counterfeiters, a number of commentators have expressed scepticism over its practical benefits.

25 September 2013

Unlock unlimited access to all WTR content