Eurodell Limited v Dubovskiy
[2016] NZHC 1342
•21 June 2016
IN THE HIGH COURT OF NEW ZEALAND CHRISTCHURCH REGISTRY
CIV-2015-409-000671 [2016] NZHC 1342
BETWEEN EURODELL LIMITED
Plaintiff
AND
ARTEMIY DUBOVSKIY Defendant
Hearing: 20 June 2016 Appearances:
A V Foote (as Agent for E St John) for Plaintiff
No Appearance for DefendantJudgment:
21 June 2016
JUDGMENT OF GENDALL J
Introduction
[1] The plaintiff Eurodell Limited seeks judgment by way of formal proof with respect to its claim against the defendant Artemiy Dubovskiy for trade mark infringement under ss 10 and 89 of the Trade Marks Act 2002 (the Act) with alternative causes of action advanced in passing off and under the Fair Trading Act
1986.
[2] Two affidavits have been sworn in support of this claim, the first by Anita Butkovic, the general manager of the plaintiff, and the second by Nicholas Farac, the managing director of the plaintiff.
[3] The plaintiff trades under the name “Eurodell” and is the owner of two trade marks:
(a) Registered in 1996 (724334) under the name Euro-Dell in Class No.
35; and
EURODELL LTD v DUBOVSKIY [2016] NZHC 1342 [21 June 2016]
(b) Registered in 2005 covering the name Eurodell under trade mark No.
979624 for Class No.s 35 and 43.
[4] The plaintiff is an importer/retailer and supplier of European foodstuffs. It has been operating since 1996, essentially now from its principal location in Lincoln Road, Henderson, Auckland, but throughout New Zealand. The plaintiff contends that since its inception it has built up a substantial reputation in its business of selling imported European products under its trade marks. Its evidence is that traditional Eastern European foodstuffs make up a large proportion of the plaintiff's sales.
[5] Evidence before the Court indicates that the plaintiff also operates throughout the Canterbury Region in addition to Auckland and the rest of New Zealand. The evidence of Mr Farac confirms that for the five month period to early June 2016 sales in the Christchurch region alone have been in excess of $200,000. The plaintiff has employed a fulltime sales representative in Christchurch since 2008 and sells its Eurodell branded products widely through local Christchurch supermarkets.
[6] The defendant operates his sole trader business described as “Euro Deli and Café” from shop premises at 77A Brigg Road, Christchurch. He promotes his business as the supplier of authentic European foodstuffs.
[7] It would appear that the name of the defendant’s business in his signs and marketing material is written as “Euro Deli” with a small “&” symbol followed by an illustration of a coffee cup. The word “Café” does not appear to be actually used, particularly in the prominent sign the defendant displays outside his shop premises in Christchurch.
[8] On 12 October 2015 the plaintiff filed its statement of claim in this proceeding. This, together with supporting documents, was served on the defendant personally on 29 October 2015. An appropriate affidavit of service to confirm this has been filed.
[9] The plaintiff ’s statement of claim alleges three causes of action against the defendant:
(a) An infringement of trade mark on the part of the defendant pursuant to s 89 of the Act;
(b) Passing off on the part of the defendant; and
(c) Breach of s 9 of the Fair Trading Act 1986.
[10] No statement of defence or opposition to the plaintiff’s claim here has been filed for or on behalf of the defendant. In correspondence between the parties prior to the issue of these proceedings the defendant denied any infringement of trade mark or other liability here. It appears however, that there has been no further communication from the defendant once the present proceedings were issued and served upon him.
[11] In its statement of claim and before me the plaintiff sought by way of remedy a permanent injunction restraining the defendant from using the name “Euro Deli” or any name that is similar, together with an order for costs. The claim outlined in the plaintiff’s statement of claim also included a claim for damages and interest but this was not pursued in the formal proof hearing before me.
[12] I turn now to the plaintiff’s three causes of action against the defendant
outlined at para [9] above.
First cause of action – infringement of trade mark
[13] The plaintiff claims that the defendant’s use of the words “Euro Deli” on its website, on its sign outside its shop premises and generally in all aspects of its business promoting its goods and services is an infringement of the plaintiff’s registered trade marks and its rights in relation to those marks. In particular, the plaintiff considers that the defendant’s use of the words “Euro Deli” breaches both ss 10 and 89 of the Act. Pursuant to s 101 of the Act the plaintiff seeks relief for such infringement including a permanent injunction against the defendant.
[14] Section 89 of the Act provides:
89Infringement where identical or similar sign used in course of trade
(1) A person infringes a registered trade mark if the person does not have the right to use the registered trade mark and uses in the course of trade a sign—
(a) identical with the registered trade mark in relation to any goods or services in respect of which the trade mark is registered; or
(b) identical with the registered trade mark in relation to any goods or services that are similar to any goods or services in respect of which the trade mark is registered, if that use would be likely to deceive or confuse; or
(c) similar to the registered trade mark in relation to any goods or services that are identical with or similar to any goods or services in respect of which the trade mark is registered, if that use would be likely to deceive or confuse; or
(d) identical with or similar to the registered trade mark in relation to any goods or services that are not similar to the goods or services in respect of which the trade mark is registered where the trade mark is well known in New Zealand and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.
(2) Subsection (1) applies only if the sign is used in such a manner as to render the use of the sign as likely to be taken as being use as a trade mark.
…
[15] It is clear that use of a sign on particular goods and also that is used to promote goods or services will qualify as “use” for the purposes of assessing a trade mark infringement – see The Laws of New Zealand Intellectual Property: Trade Marks.1
[16] The principles relating to the comparison of similar trade marks were laid out by the Court of Appeal in New Zealand Breweries Ltd v Heinekens Bier Browerij Maatschappij NV.2 In summary these are:
(a) the marks must be considered as a whole; (b) the idea of the mark is important;
(c) imperfect recollection should be taken into account where relevant; (d) the look and sound of the marks must be considered; and
(e) the trade channels of the respective goods must be taken into account.
[17] In this case there is no doubt the defendant does not have the right to use the registered trade mark “Euro-Dell” or the name “Eurodell”. I am satisfied the defendant here does use the name “Euro Deli” in relation to his business and some of the goods he supplies which are identical with or similar to the goods supplied by the plaintiff. This is the supply and sale of European, and particularly East European foodstuffs which form a significant part of the plaintiff’s business. And, as I see it, this directly relates to goods and products for which the plaintiff’s trade marks are registered.
[18] So far as the similarity of the marks of the defendant and the words and marks used by the plaintiff are concerned, in my judgment overall these are very similar. Generally, as a result of their use by the parties, their font and style is similar and the wording “Euro Deli” is almost identical to “Euro Dell”, the difference being principally one letter, an “i" substituted for an “l”. There can be no doubt that both marks have been crafted for the purpose of highlighting the idea of European food in the minds of customers when viewing and purchasing the products sold by the plaintiff and the defendant. In my view the marks are also, to a large extent, alike in the way they look and sound. And clearly they are used in connection with the sale of similar European and East European foodstuffs.
[19] It is clear that consumers do not have a perfect recollection of trade marks. They remember marks by “general impression” or by significant details that stand out.3 I am satisfied in this case that the difference between the marks in question are so minor as to be likely to be overlooked by consumers with imperfect recollection and thus a significant proportion of customers would be likely to be deceived. In addition, it is clear that in the Christchurch region the defendant and the plaintiff operate in similar trade channels to one another. They sell competing goods. The plaintiff sells its goods online and in supermarkets throughout the Christchurch
region and the defendant sells his goods to customers, again, in the Christchurch region. As I understand the position, the defendant previously operated a website promoting its goods but this has recently been taken down, although the plaintiff notes there is no assurance that the defendant will not seek to advertise online again in the future.
[20] The leading New Zealand authority on the test for likelihood of deception or confusion is the judgment of Richardson J in Pioneer Hi-bred Corn Co v Hy-Line Chicks Pty Ltd.4 At page 62 of that judgment His Honour stated that:
(a) …it is not necessary to prove that there is a commercial probability of deception leading to a passing off or infringement action. Detriment or financial loss to an opponent need not be established. It is sufficient if the result of the registration of the mark will be that persons to whom the mark is addressed are likely to be deceived or confused. “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public…
[21] In applying this test as enunciated by Richardson J to the matters prevailing in this case, I am satisfied that the similarity of the defendant’s name here is likely to create an incorrect mental impression, such that members of the public will be confused or deceived as to the source of the goods they are purchasing.
Result
[22] For all these reasons, I find that all of the constituent elements of trade mark infringement under s 89(1)(c) of the Act are made out here.
3 See: The Laws of New Zealand – Intellectual Property: Trade marks at 229.
4 Pioneer Hi-bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50.
[23] The plaintiff is therefore in terms of s 106 of the Act granted a permanent injunction restraining the defendant from using the name Euro Deli or any name that is similar in relation to the goods specified in the plaintiff’s registered trade marks
724334 and 979624 (noted at para [3] above) and similar goods.
Costs
[24] As to costs, the plaintiff has succeeded in its claim against the defendant and I see no reason why costs should not follow the event in the usual way. The plaintiff is therefore entitled to costs against the defendant calculated on a category 2B scale basis together with disbursement to be fixed by the Registrar.
Addendum
[25] Given my conclusion on the plaintiff’s first cause of action involving infringement of its trade marks it is not necessary for me to consider its alternative argument contained in the second and third causes of actions claiming passing off and breach of the Fair Trading Act 1986. I leave those matters on one side here.
...................................................
Gendall J
Solicitors:
Smith & Partners, Auckland
Copies to:
Eugene St John, Auckland
Duncan Cotterill, Christchurch
The Defendant
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