We use cookies to give you the best online experience. By using our website you agree to our use of cookies in accordance with our cookie policy. Learn more here.Close Me
Anagenix opposed the Pharmazen’s
application to register ACTIPHEN in connection with a range of
medicinal food preparations (Class 5) and printed materials
relating to those goods (Class 16).
The crux of the opposition was the
opponent’s prior use and registration of the trade mark
ACTAZIN in connection with kiwifruit extract powders, which it has
used (and obtained trade mark registration for) for medicinal food,
as well as general food, preparations and products.
To succeed in the opposition on the
basis of its prior registered trade mark (section 25 (1)(b)), the
opponent needs to establish:
Similarity of goods;
Similarity of trade marks; and
Likely deception or confusion.
There was no doubt in the Assistant
Commissioner’s mind that the goods were identical.
Next, the similarity of the trade
marks was to be considered. The marks to be compared were
ACTAZIN and ACTIPHEN. In the Assistant Commissioner’s view,
the respective trade marks were clearly visually similar and there
were also some phonetic similarities. Based on those two factors,
the Assistant Commissioner formed the view that the trade marks
were similar for the purposes of section 25.
Having found that both trade marks
covered the same types of goods and were similar, the Assistant
Commissioner turned to the question of whether the
applicant’s trade mark was likely to deceive or confuse.
Under New Zealand law, the onus is on the applicant to disprove any
likely confusion and not on the opponent to prove it.
Whilst the Assistant Commissioner
accepted that the goods fell into the realm of specialised goods
that would only be purchased by ‘discerning’ customers,
the fact that there was only a small market for those goods in New
Zealand and that the two trade marks were similar was likely to
cause confusion for consumers who would at least wonder if there
was a connection between the ACTAZIN and ACTIPHEN trade marks.
Given the above, the opposition was
successful on the basis of the opponent’s prior ACTAZIN trade
mark registration. The application for ACTIPHEN was to be
refused.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
These CTMs would certify that certain funds do not invest in companies that manufacture or produce tobacco products.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
