Region: New Zealand

Muzz Buzz secures caffeine hit (and permanent injunction) over Jitta Buzz

In <i>Muzz Buzz Franchising Pty Limited v JB Holdings (2010) Limited</i>, the High Court has awarded a permanent injunction in favour of Muzz Buzz, a drive-through coffee business, against its New Zealand-based competitor Jitta Buzz. The decision provides a good illustration of what to do, and what not to do, as a small business looking to gain a foothold in the Australasian market.

02 September 2013

Evidential requirements cause Unilever to stumble on the CATWALK

In <i>Unilever PLC v McPherson's Consumer Products Pty Limited</i>, the High Court has upheld a decision of the assistant commissioner in which the latter had rejected Unilever’s opposition against the registration of the mark CATWALK. In the absence of registered rights, Unilever had to establish an awareness of its CATWALK mark in the relevant market. The decision highlights the risk that owners take when electing to forgo registered protection.

31 July 2013

Descriptive name no impediment to obtaining injunction

In <i>NZ Tax Refunds Limited v Brooks Homes Limited</i>, the Court of Appeal has granted an injunction prohibiting the respondent from using the trade name Tax Refund NZ and the web address 'www.taxrefundnz.co.nz&#039;. NZ Tax Refunds Limited was found to have established a goodwill and reputation in the name NZ Tax Refunds, which the Court of Appeal found “may amount to distinctiveness”.

18 June 2013

Fame of PUREX mark counts against it in trademark opposition

In <i>Yousef v Pepscanz Ltd</i>, the assistant commissioner has rejected oppositions by Pepscanz Ltd, the owner of the PUREX marks, against the registration of two PURE logos for tissue paper, toilet paper, paper towel and serviettes. The fact that Pepscanz’s PUREX mark is well known in New Zealand was held against it, as the assistant commissioner found that the mark would immediately be perceived in its own right.

24 May 2013

Franchising case highlights important issues for brand owners

In <i>Health Club Brands Limited v Colven Botany Limited</i>, the New Zealand High Court has issued an interim injunction preventing a former Club Physical franchisee from operating three gyms which had been rebranded as Jolt Fitness. The decision shows, among other things, that it is a good idea to obtain legal advice for IP agreements – particularly where they involve complex legal elements such as a franchising relationship or a restraint of trade.

05 April 2013

Offer to sell not enough to keep trademark on register

In <i>Bickford’s Trading Pty Ltd v Tata Sons Limited</i>, the Intellectual Property Office has ordered the revocation of three WATERPLUS marks on the grounds of non-use. The owner relied on <i>Moorgate Tobacco Co Ltd v Philip Morris Ltd</i>, in which an intention to offer or supply goods was found to be sufficient. The case shows that a trademark owner will have to demonstrate something quite extraordinary to keep a mark on the register in the absence of use.

21 March 2013

Scotch Whisky Association successfully opposes 'Mac' mark in unexpected twist

In <i>The Scotch Whisky Association v The Mill Liquor Save Limited</i>, the High Court has reversed a decision upholding an application for the mark MACGOWANS for “whisky-flavoured spirits”, despite opposition by the Scotch Whisky Association. The appeal succeeded not on the basis of the ability of the mark to qualify for registration, but because the MacGowan’s product did not meet the Food Standard’s definition of 'spirits'.

07 January 2013

Baron Philippe de Rothschild fails to prevent registration of 'mouton' mark for wine

In <i>Ohsawa Kogyo (NZ) Ltd v Baron Philippe De Rothschild SA</i>, Baron Philippe de Rothschild SA and Groupement Foncier Agricole Des Vignobles De La Baronne Philippe De Rothschild, the owners of several marks including the word ‘mouton’ for wine, have been unsuccessful in their opposition to applications to register the trademark FLYING MOUTON in respect of wine.

07 December 2012

Court of Appeal returns NZ trademark oppositions to more conventional principles

In <i>Roby Trustees Limited v Mars New Zealand Limited</i>, the Court of Appeal has overturned a High Court decision which held that the opposed OPTIMIZEPRO label was likely to be confused with Mars New Zealand Limited’s prior trademarks OPTIMUM NUTRITION FOR LIFE and OPTIMUM. In so doing, the court reverted to a more conventional assessment of the likelihood of confusion between competing trademarks.

19 November 2012

The North Face fails to prevent registration of device mark

In <i>The North Face Apparel Corp v Sanyang Industry Co Limited</i>, the High Court has dismissed The North Face Apparel Corp's appeal against a decision of the assistant commissioner finding that North Face’s SUMMIT SERIES device mark and Sanyang’s device-only mark were not substantially identical. Among other things, the court denied North Face’s request to rotate Sanyang’s mark and then compare it with its own mark.

18 October 2012

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