Registration of the trade mark TRAUMAGEL was recently opposed successfully by the owner of the mark TRAUMEEL in New Zealand in Cresilon, Inc v Biologische Heilmittel Heel GmbH [2021] NZIPOTM 13 (23 June 2021). The Applicant's case not helped by the fact that all of its evidence was held to be inadmissible.
At the risk of sounding more repetitive than a reference to Covid-19, the case demonstrates once again the difference between opposition proceedings in Australia and in New Zealand. It is also a warning to owners of pharmaceutical and medical brands that, in New Zealand, no trade mark opposition should be dismissed.
The Opponent, Heel GmbH (Heel), filed extensive evidence in relation to its TRAUMEEL-branded homeopathic remedy to treat pain, sprains, strains or other internal trauma, along with minor skin abrasions, which is sold in various forms including gel, liquid, tablets and ointment.
Cresilon's evidence was a simple declaration filed by its solicitor and was deemed inadmissible, as it was comprised mainly of submissions. A warning to Australian attorneys!
How does TRAUMAGEL appear to you?
In a telling assessment, Assistant Commissioner Aldred (AC Aldred) assessed TRAUMAGEL not as an obvious combination of the common terms "TRAUMA" and "GEL" but by a clinical dissection of the prefix "TRAUM" and the suffix "-EL". This led AC Aldred to conclude that there was a risk that TRAUMAGEL would be likely to deceive or confuse consumers as the marks' similarities would allegedly "tie the brands together and to spark a connection in the minds of consumers"1. – a win to Heel under New Zealand's well known "reverse onus" opposition ground2..
Some attorneys may query this assessment, particularly given that the Opposed goods were, if not specialised, then at least ones to which consumers pay some attention when purchasing. In addition, there is well established case law to the effect that competing brands are less likely to be confused with one another if one is an invented word mark (such as TRAUMEEL) and the other a conjoined word of obvious meaning (such as TRAUMAGEL).
Does TRAUMAGEL also fall foul of Heel's prior registration for TRAUMEEL?
Section 25 of the Trade Marks Act 2002 is the New Zealand equivalent of section 44 of the equivalent Australian Trade Marks Act 1995. However, it involves greater consideration as to whether use of the opposed mark would be likely to deceive or confuse, than its Australian equivalent. Once the Assistant Commissioner concluded as she did under the reverse onus section 17 ground discussed above, she had little difficultly finding that Cresilon had failed to establish that its use of TRAUMAGEL was not likely to deceive or confuse consumers.
Attorneys again may question the reasoning here, as the assessment of similarity and confusion discussed above under s17(1)(a) regarded significant consideration of Heel's use of its TRAUMEEL trade mark. This is despite the fact that the opponent's use of its mark is not relevant to an assessment under section 253. A conclusion that an opposition is successful under section, with its unique reverse onus, should not of itself create a clear pathway for a section 25 opposition, as appears to have applied here.
What can attorneys take away from this case?
One should never try to predict an outcome of opposition proceedings in New Zealand. Consequently, New Zealand opposition proceedings should always be kept in a brand owner's toolkit – particularly if a brand owner is engaged in an international trade mark dispute. A case such as this may increase a brand owner's bargaining position in the situation where the parties are at loggerheads internationally.
Footnotes
1. Applying Sex Wax Inc v Zoggs International Limited [2015] 2NZLR1
2. S17(1)(a), Trade Marks Act 2002
3. Excluding the well-known mark provisions of s25(1)(c).
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.
