1. The Scotch Whisky Association v The Mill Liquor Save Ltd [2012] NZHC 3205


The Mill sought registration of the trade mark MACGOWANS in class 33 for "whisky flavoured spirits, none of which being whisky". The Scotch Whisky Association unsuccessfully opposed registration before the Assistant Commissioner of Trade Marks and appealed to the High Court.

The Association relied on two grounds of opposition. Firstly, that the mark breached sections 17(1)(a) and (b) of the Trade Marks Act 2002 on the basis that use of the mark was likely to cause consumers to be confused or deceived into thinking that the goods were Scotch Whisky or to otherwise be confused as to the origin or nature of the goods. Secondly, on the basis that there was no intention to use the mark in respect of the goods specified, in breach of section 32(1) of the Act.

Admission of reply evidence

The Assistant Commissioner refused to admit five statutory declarations adduced by the Association in reply, in which each deponent attested that they thought the MacGowans product looked like "whisky". She held that the evidence was not "strictly in reply". Justice Kos noted that the evidence arguably was in reply to the Mill's evidence that the Association had not produced any evidence of confusion. However he upheld the Assistant Commissioner's refusal. He noted that the opponent is often in the best position to lead evidence of alleged deception and confusion. Since the applicant had no right file rejoinder evidence to the reply evidence, it would be unsatisfactory for the applicant to have to file its evidence of non-confusion while having no chance to respond to reply evidence alleging confusion. This was particularly so given the applicant has the burden of proof in establishing the mark should be registered.

Likelihood of confusion

Justice Kos ruled, by a "relatively narrow margin", Linking (from) (to) XML Tag By pass XHTML Convert. Company Edit Preferences Company Url Tracking that it was unlikely a substantial number of purchasers would be confused by use of "MACGOWANS" on the relevant goods. Gaelic names have become ubiquitous in New Zealand. The mere adoption of a Gaelic name is not distinctive of a Scottish product. Even if purchasers wondered at the origin of a MACGOWANS labelled whisky flavoured product, the price difference would dispel any impression that the product was Scotch whisky. Finally Justice Kos referred to the lack of direct authority in support of the Association's position and the Australian Federal Court decision in Scotch Whisky Association v De Witt [2007] FCA 1649. In that case, an opposition to GLENN OAKS on a similar basis was refused. Justice Kos concluded that this lack of authority suggested that the law has been careful to avoid converting a de facto geographical association into a monopoly in the absence of demonstrable confusion.

Intention to use in respect of spirits

Section 32(1) of the Act requires that an applicant intends to use the mark on the goods for which registration is sought. The Association contended that "spirits", as defined in the Australia New Zealand Food Standard Code, must contain at least 37 per cent alcohol by volume. The Mill's MACGOWANS product was a 13.9 percent alcohol by volume "concoction of water, distilled spirit, sugar, colour, flavour and preservative" and therefore, the Association argued, was not a "whisky flavoured spirit".

Justice Kos agreed, rejecting the Mill's claim that the word "spirits" had a more general meaning encompassing any distilled alcoholic liquor. He held that the specification must be interpreted through the eyes of a Trade Mark Examiner and trade mark attorneys, not the purchasing public, and that they were likely to use the technical meaning derived from the relevant Food Standard. Even if a broader 'ordinary view' were taken, the product would have to be capable of being labelled as spirits. It was telling that the Mill's product was originally labelled as "light spirits" but that this description had been removed because of a concern that the product would not comply with the relevant food standard, and that the Mill itself had accepted in its evidence that the product was not "spirits".

The appeal was upheld on this basis and registration of the mark refused.

2. Roby Trustees Limited v Mars New Zealand Limited [2012] NZCA 450


Roby applied to register a device mark, OPTIMIZE PRO 'Lead the Pack', for dog rolls (dog food) in class 31. Mars, Roby's major competitor, opposed registration claiming that the proposed mark was likely to cause confusion with its device and word marks for OPTIMUM and OPTIMUM 'Nutrition for Life'. The claim was based on section 17(1)(a) (confusion as a result of use of Mars' marks), section 25(1)(b) (confusion arising from Mars' registered marks) and section 25(1)(c) (prejudice to a well known mark) of the Trade Marks Act 2002. The Assistant Commissioner allowed registration. The High Court allowed Mars' appeal, refusing registration. Roby appealed to the Court of Appeal.

Application for admit further evidence

In the Court of Appeal, Roby sought to adduce additional evidence that Nestle had been permitted after the relevant date to register the marks OPTISTART and OPTIHEALTH in class 31. It contended that this contradicted Mars' claim in the High Court to exclusivity of the prefix "OPTI-". Although the evidence was not fresh, the Court of Appeal allowed the new evidence as Mars' evidence had conveyed the impression that confusion might result if another party used the "OPTI-" prefix in connection with pet food.

Likely confusion in light of use of the Mars marks – section 17(1)(a)

As there was no challenge to the Assistant Commissioner's finding that Mars had substantial reputation for its marks in New Zealand, the only issue was whether confusion was likely to result.

While the Court recognised the well established principle that the first part of mark is generally the most important, it noted other marks in the same class beginning with OPTI-. In its advertising and packaging Mars also used the mark OPTIMUM 'Nutrition for Life' in which the word 'optimum' acted as an adjective. This indicated that the 'Nutrition for Life' element of Mars' mark was also important.

On the other hand, the Court found that dog roll is at the lower end of the pet food market and was likely to be bought casually or on impulse. This increased the risk of confusion, as did the fact that Mars was discontinuing its product, which meant that consumers would not view the competing products side by side. Most retail purchases would be made in supermarkets which meant that the visual impression was most important. The Court also accepted that the idea of each mark was the same - that of a quality or premium product. However it found that there was nothing inherently distinctive in such an idea.

In light of these considerations, the Court agreed with the Assistant Commissioner that the marks were aurally and visually different, even in the shortened versions, which they considered, in the case of Roby's mark, to be likely to be OPTIMIZE PRO, not OPTMIZE. It did not accept, as contended by Mars, that the evidence established that the word "optimum" had become so associated with Mars as to lose its ordinary descriptive meaning. Furthermore the additional "PRO" and "Lead the Pack" elements of the Roby mark clearly distinguished it from the Mars marks.

Interestingly, Mars had adduced evidence before the Assistant Commissioner of the purchase by Mars' solicitors of an OPTIMIZE PRO dog roll on a supermarket website. A Mars OPTIMUM dog roll was delivered instead, although the invoice confirmed sale of an OPTIMIZE PRO dog roll. In a conversation with a customer service representative of the supermarket, the representative suggested that the person filling the order could not tell the difference between the two rolls and sent the wrong one. This evidence was ruled inadmissible by the Assistant Commissioner as hearsay and this conclusion was not contested in the Court of Appeal. Had evidence from relevant person(s) at the supermarket itself confirming such confusion been adduced, the existence of actual confusion may have had an impact on the decision.

Likely confusion in light of registered Mars marks – sections 25(1)(b) and (c)

In light of the conclusion in relation to section 17(1)(a) of the Act, the Court concluded that the same result followed in respect of any fair and notional use of Mars' registered marks. These grounds also therefore failed and the mark proceeded to registration.

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