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.
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