New Zealand: James & Wells wins High Court Appeal for Cambricare
Last Updated: 27 July 2012

The recent decision in Nutricia NV v Cambricare NZ Ltd [2012] NZHC 1344 contains an important lesson for trade mark owners.

On 5 June 2012, James & Wells appeared on behalf of Cambricare New Zealand (CBNZ) in the High Court, Wellington.

On the other side was Nutricia, owner1 of the KARICARE trade marks in New Zealand. Nutricia was appealing the September 2011 decision of the Assistant Commissioner of Trade Marks rejecting Nutricia's opposition2 to CBNZ's application3 to register its trade mark CAMBRICARE in respect of infant and adult milk powders.

The grounds of Nutricia's appeal

Nutricia appealed the Assistant Commissioner's decision on three grounds:

  1. Use of CAMBRICARE is likely to deceive or cause confusion (with Nutricia's KARICARE marks) (section 17(1)(a) Trade Marks Act);
  2. CAMBRICARE is confusingly similar to Nutricia's registered trade marks for KARICARE when used in relation to the same or similar goods (section 25(1)(b)); and
  3. CAMBRICARE, or an essential element of the mark, is similar to Nutricia's KARICARE marks which are well known in New Zealand in respect of identical or similar goods and registration and use of the CAMBRICARE mark would be taken as indicating a connection in the course of trade between CBNZ's goods and Nutricia which would be likely to prejudice Nutricia's interests (section 25(1)(c)).

The substance of Nutricia's case

As his Honour remarked at [2] of the Court's decision "[t]he gravamen of Nutricia's case is that CAMBRICARE is confusingly similar to its KARICARE suite of trade marks".

Hence if the Court found use of CAMBRICARE was likely to confuse consumers under section 17(1)(a) of the Act Nutricia would also likely succeed on the two grounds of appeal under section 25 of the Act.

Summary of the parties' arguments

Counsel for Nutricia summarised Nutricia's arguments in relation to section 17(1)(a) thus (at [23]):

It is the overall impression provided in a comparison of the marks CAMBRICARE and KARICARE which is important in this case. Taken separately, the fact that the marks look and sound similar, and share the same idea (or lack thereof) is significant, but taken as a whole and taking into account the significant reputation of KARICARE, imperfect recollection, and the circumstances of trade, a substantial number of persons are likely to be confused.

In response, Ben Cain on behalf of CBNZ argued, inter alia, that:

  1. the CAMBRICARE mark is distinctive;
  2. the CAMBRICARE mark is visually, aurally and conceptually dissimilar to the KARICARE marks;
  3. the relevant purchasers of the goods to which the marks relate in New Zealand are not likely to be deceived or confused as to the origin of CBNZ's goods; and
  4. the use of the CAMBRICARE mark will not indicate a connection in the course of trade between CBNZ's goods and Nutricia's goods and would in any event not be likely to cause prejudice to Nutricia's interests.

Central to CBNZ's arguments were two submissions:

  • First, the suffix 'care' in both marks is not distinctive of either party's marks as it is a suffix commonly adopted by traders in relation to infant and adult milk powders. Consequently comparison of the marks should not focus on the marks as a whole, as submitted by Nutricia, but on the prefixes of the marks - CAMBRI and KARI - which in CBNZ's view are visually and aurally distinctive. To support its submission CBNZ relied on evidence of a number of New Zealand trade mark registrations incorporating the suffix 'care' in relation to infant and adult milk powders (as relied on in Merck KGaA v Generic Health Pty Ltd [2007] ATMO 1 (15 January 2007) at [45]).
  • Second, if CAMBRICARE and the KARICARE marks were found by the Court to be similar, they were not confusingly similar: a degree of similarity was tolerable (The European Limited v The Economist Newspaper Limited [1998] FSR 283 at 288 per Millett LJ). Consequently use of CAMBRICARE was not likely to deceive or confuse consumers.

The Court's decision

In the Court's decision, issued on 15 June 2012, his Honour Justice Collins dismissed all three grounds of Nutricia's appeal (at [64]).

In doing so, his Honour agreed with CBNZ's two core submissions and adopted a third - that the prefix 'KARI' may denote a name of Maori origin or influence while 'CAMBRI' may denote a name of English heritage (at [37] - [41] and [50]). Consequently consumers were not likely to be deceived or confused between CAMBRICARE and KARICARE.

Nutricia has not appealed the Court's decision.

What trade mark owners can learn from this case

As every trade mark attorney in the world will confirm, there is an inherent danger in incorporating a word in a trade mark, in whole or in part, which is not distinctive of one particular's trader's goods or services; the danger being other traders may choose also to use that word resulting in dilution of reputation and scope in of protection in the first mark using that word.

Thus it was, notwithstanding Nutricia's significant reputation in its KARICARE trade marks (which CBNZ acknowledged), CBNZ successfully narrowed the focus of the argument to the prefixes CAMBRI and KARI thereby facilitating the Court's decision to dismiss all grounds of Nutricia's appeal.


1A legal term to describe a person entitled to make an application for a patent. In New Zealand this includes any person claiming to be the true and first inventor, the assignee of the inventor, or the legal representative of a deceased inventor or his/her assignee.
2In New Zealand, once a patent application has been accepted, it will be published in the Intellectual Property Office Journal. There is then a three month period where the application may be objected to (or opposed), by a third party. If no opposition is made the patent application will proceed to grant.

Any party that has an interest in the subject matter of the patent can oppose acceptance. The grounds that can be used to oppose a patent application include lack of novelty, lack of inventive step and insufficient disclosure of the invention.

Not all countries have an opposition period on patent applications. For country specific information, contact your IP advisor.
In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. The terms "application", "pending" or "patent application" are used to describe the status of the application up to grant.

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