Luiga Lavazza S.p.A. v Cantarella Bros Pty Limited
[2025] NZHC 175
•14 February 2025
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE
CIV-2023-485-754
[2025] NZHC 175
UNDER the Trade Marks Act 2002 IN THE MATTER
of an appeal from the decision of the Assistant Commissioner of Trade Marks
AND
IN THE MATTER
of New Zealand trade mark application no 1129912
BETWEEN
LUIGI LAVAZZA S.p.A.
Appellant
AND
CANTARELLA BROS PTY LIMITED
Respondent
Hearing: 26 June 2024 Appearances:
G F Arthur KC and T A Huthwaite for Appellant
C L Elliott KC, R C Watts and V S Somerville for Respondent
Judgment:
14 February 2025
JUDGMENT OF BOLDT J
Introduction
[1] Two international coffee companies are locked in dispute about a trade mark. One company — the appellant, Luigi Lavazza S.p.A (Lavazza) — is Italian. The other, the respondent, Cantarella Bros Pty Ltd (Cantarella), is an Australian company founded by two Italian brothers in 1947. The dispute centres on the word ORO, Italian for gold.
LUIGI LAVAZZA S.p.A. v CANTARELLA BROS PTY LIMITED [2025] NZHC 175 [14 February 2025]
[2] Cantarella owns the registered trade mark ORO, and has been selling coffee products in New Zealand using that mark (in association with its house mark Vittoria) since 2003. Lavazza has used the phrase “Qualità Oro” to describe its premium coffee blend since 1985. But in recent years its branding has evolved. Lavazza has developed a logo which emphasises the word ORO in a way which, Cantarella says, infringes its own mark.
[3] On 13 October 2023, the Assistant Commissioner of Trade Marks, Ms N Alley, rejected Lavazza’s application to register a new “QUALITÀ ORO” trade mark, finding the proposed new mark confusingly similar to Cantarella’s existing ORO marks, and likely to confuse consumers.1 Lavazza appeals. The mark in question — the opposed mark — looks like this:
Lavazza
[4] In 1895, Lavazza was founded by Mr Luigi Lavazza in Turin. The business was originally a grocery store, but from the mid-1930s it began to concentrate on producing coffee, oil and soap. From 1946 the production and sale of coffee, and related accessories, became its core business.
[5] In 1956, Lavazza developed a blend which, from around 1971, came to be called “Lavazza Qualità Oro”. By 1972 Lavazza was selling coffee internationally, and it now exports to more than 140 countries. It first applied to register a trade mark for Lavazza Qualità Oro in New Zealand in 1982, and that mark was registered in 1985. Exports to New Zealand began in 1990. Lavazza is a global coffee giant, consistently listed as one of the ten largest coffee companies in the world.
1 Luigi Lavazza S.P.A v Cantarella Bros PTY Ltd [2023] NZIPOTM 41 [Decision under appeal].
Cantarella
[6] Cantarella was founded in 1947 as a partnership between two brothers — Orazio and Carmelo Cantarella — who had emigrated from Italy to Australia. Cantarella began by importing and selling European foodstuffs, such as coffee, cheese and mineral water. In 1958, Cantarella began importing raw coffee beans into Australia which were roasted and ground, then packaged and sold under the trade mark Vittoria. It began exporting coffee to New Zealand in 1994.
[7] In or around 1996, Cantarella began attaching the trademark ORO to its Vittoria coffee; Vittoria is Cantarella’s house mark, and ORO is a secondary or subordinate mark. In 2002 it applied to register the word marks ORO and ORO NERO in New Zealand, and they were registered the following year.2 Cantarella uses its ORO mark to signify its premium quality products. In New Zealand it has marketed its ORO coffee as a premium blend since at least 2003. While Cantarella is the largest coffee company in Australia, and a substantial operation by any standards, it is a far smaller company than Lavazza.
The competing marks
[8] Cantarella’s marks protect its use of the words ORO and ORO NERO in connection with coffee and coffee-based beverages.3 Cantarella’s mark is a word mark, meaning it can use the word ORO in its packaging in any manner it sees fit. Currently, its ORO branded products look like this:
2 ORO NERO and ORO are registered trade marks 665278 and 665279 respectively.
3 ORO NERO is also registered over tea.
[9] A central feature of the case is the way Lavazza’s packaging, and in particular its use of the phrase “Qualità Oro”, has changed over the years. The trade mark Lavazza registered in 1985 looked like this:
[10] Cantarella accepts, when presented in that way, that the word ORO (and the phrase QUALITÀ ORO) can properly be regarded as descriptive. The dominant element of the mark is the word LavAzza. Mr Elliott KC, on behalf of Cantarella, acknowledged Cantarella had lived with Lavazza’s descriptive use of the phrase “Qualità Oro” for many years. The word ORO was originally a minor component, and it was highly unlikely consumers would mistake Lavazza’s mark for Cantarella’s.
[11] Lavazza’s branding changed over time. For example, from 2007, the packaging was updated to look like this:
[12] Then Lavazza moved to increase the prominence of the word ORO, first as part of the phrase “Qualità Oro”, then in its own right. The word LavAzza became separated from the medallion. New packs introduced around 2014 looked like this:
[13] At around the same time, Lavazza began packaging its Qualità Oro twin packs like this:
[14] Then, as part of a worldwide rebranding in the mid-2010s, Lavazza began selling all its Qualità Oro coffee in packaging that strongly resembled the mark it now seeks to register. In 2017 it created what it described as its “Perfect Pack”, which was designed to make its packaging globally consistent. Lavazza sought to make its branding recognisable and distinctive, while drawing on elements that had characterised its packaging in the past.
[15] Internal documents, which described a slightly earlier iteration of its updated packaging, noted the new branding aimed for elements of continuity, but sought to create a more modern and refined image. Lavazza sought to “better support premium positioning” by, among other things, “removing the parent brand from the blazon (the reference is emancipated)”, and putting “the graphic focus on the term “Oro” (top of range positioning)”.
[16]Lavazza’s “Perfect Pack” looked like this:
[17] Lavazza refined and updated its packaging further in 2018. The common feature of the post-2017 packaging was the strong emphasis Lavazza placed on the word ORO, at the expense of other aspects of its historic branding. In 2019, it began selling coffee packaged like this:
[18] Mr Elliott described the evolution of Lavazza’s branding as a “slow creep … towards [Cantarella’s] ORO Mark”. He argued the word ORO has gone from being a descriptor, and a minor part of the Lavazza Qualità Oro brand, to a brand in its own right.
[19] Lavazza stressed it was not part of its marketing strategy to emulate Cantarella’s branding. Rather, it sought to modernise and harmonise its worldwide packaging in a way which made ORO more prominent and central. It did not turn its mind to the fact Cantarella had already developed and registered an ORO mark.
[20] Mr Simon Creswick, General Manager Food Service for Cantarella, made a statutory declaration opposing Lavazza’s application to register the opposed mark. He said:
[89] Cantarella was very concerned by this change in the emphasis of the word “ORO” on the packaging of the Lavazza branded products and considered that Lavazza had moved towards using “ORO” as a trademark in its own right on its packaging. This is particularly so given that the font size of the word ORO appears larger, if not as big as, the word Lavazza. I am aware that Lavazza had historically used the words “QUALITÀ ORO” descriptively on its packaging.
[90] I am also aware that Cantarella viewed Lavazza’s move towards using “ORO” as a trademark in its own right as an infringement of its own ORO Trade Marks.
[21] Cantarella’s Australian solicitors wrote to Lavazza on 28 June 2019 demanding it immediately stop using its new packaging. Lavazza’s solicitors replied the
following month denying its packaging infringed Cantarella’s mark. On 24 July 2019 Lavazza applied to register its new mark across a number of territories, including Australia and New Zealand.
[22] Two Australian decisions help complete the background, though neither bears directly on the present appeal. First, in dismissing a challenge to Cantarella’s mark in 2014, the majority of the High Court of Australia accepted Cantarella’s ORO mark was “inherently adapted to distinguish the goods for which they are registered from the goods of other persons”.4
[23] Second, in 2023 the Federal Court of Australia dismissed Cantarella’s challenge to Lavazza’s use of its new QUALITÀ ORO mark in Australia. But the Court relied on a ground which does not apply in the present proceeding, namely that Cantarella’s ORO mark had not been validly registered in Australia because Cantarella was not the first to use the ORO mark in that country.5
[24] Nonetheless, Yates J found Lavazza’s QUALITÀ ORO mark did involve use of Cantarella’s ORO mark. The Judge echoed the High Court’s conclusion that Cantarella’s use of the mark was sufficiently inherently adapted to distinguish its coffee from the goods and services of others.6 The Judge expressed scepticism about Lavazza’s pleaded defences, including honest concurrent and prior continuous use,7 but did not reach a final conclusion given his decision to invalidate Cantarella’s mark.8
Trade marks
[25] Section 32 of the Trade Marks Act 2002 (the Act) provides that a person claiming to be the owner of a trade mark may apply to register it. Registration confers a suite of benefits, including the exclusive right to use the mark.9
4 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; (2014) 109 IPR 154; (2014) 254 CLR 337 at [78].
5 Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258. The Judge found (at [583]) that a company called Molinari was, in fact, the first to use the word “oro” as a trade mark for coffee in Australia, depriving Cantarella of its claim ownership of the ORO word mark in that jurisdiction. The Court cancelled the registration of Cantarella’s ORO mark in Australia.
6 At [483].
7 At [653].
8 At [650].
9 Trade Marks Act 2002, s 10.
[26] To “own” a trade mark, the applicant must be the first to intentionally use and assert ownership of the mark.10 Anyone who opposes an application to register a mark may file a notice of opposition. The notice must explain why registration is opposed.11 If the application is opposed and the applicant files nothing further the application is deemed abandoned. But if the applicant files a counter-statement explaining the grounds on which he or she relies in seeking to register the mark, the Commissioner of Trade Marks must determine whether, and subject to what conditions, the mark is to be registered.12
[27] Part 2 of the Act sets out the requirements for registration. The starting point is that a valid application for registration must be granted as long as the Commissioner is satisfied “there are no absolute or relative grounds set out in this Part that would prevent registration of the trade mark”.13 An “absolute” ground — in theory at least
— considers the mark in isolation, while “relative” grounds focus on the respective interests of parties who may be affected if the mark is registered.
[28]Section 17 relevantly provides:
17 Absolute grounds for not registering trade mark: general
(1)The Commissioner must not register as a trade mark or part of a trade mark any matter—
(a)the use of which would be likely to deceive or cause confusion;
…
[29] Section 25 is a relative ground, and provides that an application may be refused if there is already an existing registered mark which is identical, or similar, to the proposed mark. This case concerns the ground set out in s 25(1)(b), which provides:
25Registrability of identical or similar trade mark
(1)The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if—
10 See Newnham v Table for Six (1996) Ltd (1998) 44 IPR 269 (HC) at 278, approved in S C Johnson & Son Inc v International Consolidated Business Pty Ltd [2017] NZHC 3238 at [33].
11 Trade Marks Act, s 47.
12 Sections 48 and 49.
13 Section 13(2)(c).
…
(b)it is similar to a trade mark (trade mark C) that belongs to a different owner and that is registered … in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse; or
…
(2)Section 26 overrides subsection (1).
[30]Section 26 creates an exception to s 25. The relevant part provides:
26Exceptions
The Commissioner must register trade mark A if—
…
(b)the Commissioner or the court, as the case may be, considers that a case of honest concurrent use exists, or other special circumstances exist, that, in the opinion of the court or the Commissioner, makes it proper for the trade mark to be registered subject to any conditions that the court or the Commissioner may impose.
[31] Cantarella opposed registration of Lavazza’s new “Qualità Oro” mark, arguing it is too similar to Cantarella’s ORO mark, and is accordingly likely to cause confusion among consumers.
[32] There is no dispute the goods Lavazza and Cantarella sell are similar or the same. The central dispute is whether Lavazza’s proposed new mark is likely to cause confusion among consumers, either in its own right, or when considered alongside Cantarella’s existing mark.
[33] Lavazza argued no confusion is likely. It submitted the two marks look very different; while they both use the word ORO, it argued the dominant element of the opposed mark is the stylised word “LavAzza”. It contended consumers would read the phrase “Qualità Oro” as a whole, distinguishing it from the simple use of the word ORO in the Cantarella mark. It submitted coffee is not a typical fast-moving consumer good. Mr Arthur KC, on behalf of Lavazza, argued coffee buyers are discerning, and not easily confused. He submitted consumers are well aware that ORO signifies blend,
not source, and argued the dominant words in the respective layouts are LavAzza and Vittoria.
[34] In addition, Lavazza relied on both parts of s 26. It noted it has been using the distinctive phrase “Qualità Oro” in conjunction with the word Lavazza in its New Zealand packaging since the 1990s. It observed that the word “Oro”, or “d’Oro” is commonly associated both with coffee products and, sometimes, with cafés. It is, Lavazza submitted, a descriptor which signifies blend and quality rather than brand, and that ORO is not a highly distinctive mark.
[35] While it acknowledged the styling of the phrase in its branding has changed over time, Lavazza argued the enhanced prominence of the word ORO has been a feature of its branding since 2017 at the latest, and that the two marks have been in honest concurrent use at least since then.
[36] Lavazza also argued the “special circumstance” exception applies. It submitted the phrase “Qualità Oro” has been used, in association with a medallion and the word Lavazza, since 1990, and that the longstanding use of the phrase, without objection from Cantarella or apparent confusion, represents a special circumstance which should, all else aside, tell strongly in favour of registration.
The Assistant Commissioner’s decision
[37] The Assistant Commissioner declined to register the opposed mark. Most importantly, the Assistant Commissioner found the mark was confusingly similar to Cantarella’s ORO mark. She found that while ORO is a secondary mark, used in conjunction with Cantarella’s Vittoria house mark, “it is still a prominent and distinct mark on the relevant Cantarella products with a reputation in its own right”.14
[38] The Assistant Commissioner agreed “oro” does not mean anything in particular to the average New Zealand consumer. Unlike some Italian words, “oro” is not well understood here. The Assistant Commissioner noted the High Court of Australia
14 Decision under appeal, above n 1, at [189].
reached the same conclusion in 2014, despite Italian being the second most spoken language in Australia.15
[39] The Assistant Commissioner found the word ORO to be the dominant component of both marks. Visually she described them as “almost identical”,16 and “significantly similar”. She found the marks were aurally similar too, though not to the same degree given the presence of other words in Lavazza’s mark.17 The Assistant Commissioner noted the obvious dissimilarities as well— the words “LAVAZZA” and “QUALITÀ” — but observed that the focus of her assessment was the similarities, and the effect of Lavazza’s mark as a whole.18
[40] The Assistant Commissioner agreed there is a degree of stylisation in the depiction of the word “ORO” in the opposed mark, but concluded that was not sufficient to negate the overall visual similarity with Cantarella’s mark, and that, in any event, as a plain word mark it would be open to Cantarella to stylise the word ORO in its mark too.19
[41] The Assistant Commissioner found the similarities, both in the respective marks and the products to which they attach, were sufficient to create a likelihood of confusion among consumers. Coffee is a fast-moving consumer good. Consumers will often lack the time to make a detailed examination of the product’s branding before deciding to purchase. The Assistant Commissioner found Cantarella’s ORO mark “inherently at the higher end of the distinctiveness spectrum”. She also noted that because the goods are sold to the general public she was entitled to take her own experience as a purchaser into account, observing:
[110] … Despite being an avid coffee drinker with a genuine interest in coffee, if I came across the parties’ marks with no prior knowledge of the use to which the parties had put their marks (being the notional fair use test required under s 25(1)(b)), and taking into account imperfect recollection, I would be caused to wonder whether Lavazza’s opposed mark is connected to
15 At [75]–[76]. The Assistant Commissioner noted that, according to the most recent census data, fewer than 10,000 New Zealand residents speak Italian.
16 At [50].
17 At [81]. The Assistant Commissioner found Cantarella’s mark was “aurally identical to the “ORO” component of the opposed mark”. (At [50], emphasis in original).
18 At [51].
19 At [53].
Cantarella’s registered mark or whether the goods sold under those marks have a shared origin.
[42] The Assistant Commissioner noted she had carefully considered the fact there is no evidence of actual confusion among coffee buyers, but concluded that factor could not be regarded as determinative. She observed, among other things, that Lavazza’s opposed mark, with its enhanced focus on the word ORO, had been used in the New Zealand market for only a short time, meaning there was little opportunity for evidence of actual confusion to emerge.20
[43] Similarly, she rejected Lavazza’s submission that the use of the words “oro” and “d’oro” in association with other coffee brands, as well as by an Auckland café called Café Oro, diminished the distinctiveness of Cantarella’s mark and provided further evidence that confusion was unlikely. She found the evidence established that at the relevant date Cantarella and Lavazza were the only coffee brands using marks incorporating the word “oro” on a widespread basis.21 She concluded:
[127] On balance, I consider that use of the opposed mark by Lavazza is likely to confuse a considerable number of prospective purchasers of the opposed goods. In reaching this conclusion I am conscious that the onus is on Lavazza to establish that s 25(1)(b) does not prohibit registration of the opposed mark. Lavazza has failed to discharge that onus on the balance of probabilities.
[44] The Assistant Commissioner rejected Lavazza’s defence of honest concurrent use. Section 26(b) permits registration of a mark, despite its similarity to an existing mark, if the applicant can show it has, in good faith, used its mark alongside the registered mark over a sufficient period. Several elements must be considered. The decision-maker will consider the extent of the concurrent use, the degree of confusion likely to arise if the mark is registered, any actual confusion that has been proved, and the relative inconvenience likely to be caused if the mark is (or is not) registered. “Honest” concurrent use requires the applicant to show it has used the mark in a commercially honest manner without intending to cause confusion or “pass off the goods as the goods of the opponent”.22
20 At [118].
21 At [125]. The parties agree the relevant date at which the rights of the parties were to be determined was 22 July 2019.
22 Brands Ltd v Bed Bath ‘N’ Table Pty Ltd [2023] NZHC 1766, (2023) 174 IPR 261 at [198].
[45] The Assistant Commissioner found against Lavazza at each stage. She found Lavazza’s mark had only been used, in its current form, for around seven months before the relevant date, and that that period was not long enough to sustain the defence. Even adopting 2017 as the start date, when Lavazza adopted branding similar to the opposed mark across all its packaging, the Assistant Commissioner found the period of concurrent use would still have been insufficient to establish the defence.23
[46] In addition, the Assistant Commissioner reiterated her finding that confusion among consumers was likely, and that the absence of proven instances of actual confusion did not negate that conclusion. She found the inconvenience to Lavazza if its mark were not registered would be outweighed by the inconvenience to Cantarella, and the public, if the mark were registered.24
[47] More controversially, the Assistant Commissioner was not prepared to find Lavazza had acted in a commercially honest manner. She observed Lavazza’s decision to increase the prominence of the word ORO, despite Cantarella’s mark, did not persuade her its “use of the opposed mark, for the short period prior to the relevant date, was entirely commercially honest”.25
[48] Likewise, the Assistant Commissioner rejected Lavazza’s “special circumstances” defence. That defence arises where special circumstances justify taking the case outside the ordinary rules so justice may be done to the applicant.26 The defence is deliberately non-prescriptive; each case is to be determined on its own facts and with reference to first principles.
[49] The Assistant Commissioner concluded that no special circumstances existed which might justify registration of Lavazza’s mark. In particular, she rejected the submission that Lavazza’s independent authorship of the opposed mark, its use of the mark since 2019, the long history of the phrase “Lavazza Qualità Oro”, the differences between the two marks and the absence of bad faith might justify departure from the normal rules. She found Cantarella had established a longstanding trading presence
23 Decision under appeal, above n 1, at [155].
24 At [170].
25 At [163].
26 At [172], citing Lacoste [2017] NZHC 2216 at [49]–[50].
and reputation for its ORO mark as an individual blend or product in the VITTORIA range. The Assistant Commissioner determined there would be clear inconvenience to the public, in the form of likely confusion, if Lavazza’s mark were registered.27
[50] The Assistant Commissioner concluded the s 25(1)(b) ground of opposition had been made out, and that Lavazza’s affirmative defences under s 26(b) had failed.28
[51] Finally, the Assistant Commissioner held the likelihood of confusion if the mark were registered was such that she would, if necessary, have rejected the application under s 17(1)(a) as well.29 She concluded:
[199] On balance, I consider that, having regard to the reputation that Cantarella had acquired by the relevant date in its ORO marks, if Lavazza’s opposed mark was used in a normal and fair manner, such use is reasonably likely to cause confusion among a substantial number of persons. Put another way, I am not satisfied that Lavazza has discharged the onus of establishing that use of the opposed mark is not likely to confuse a substantial number of persons in New Zealand. Therefore, the s 17(1)(a) ground of opposition has been made out.
Discussion
[52] While the Assistant Commissioner’s decision, like the parties’ submissions, was lengthy, technical and detailed, the critical question in the case can be resolved, if not at a glance, then at least with a straightforward and pragmatic examination of the competing marks:
27 At [179].
28 At [183].
29 At [202].
[53] The parties agree the Assistant Commissioner applied the correct test when assessing similarity. In particular, she appropriately emphasised that the marks must be compared in their entirety, and noted she had been “careful to assess the ‘totality’ of [Lavazza’s] mark”.30
[54] The Assistant Commissioner’s findings that visually the marks were “almost identical” and “significantly similar”, and that confusion was therefore likely, lay at the heart of all her subsequent conclusions. Those findings led inevitably to her determination that both statutory grounds of opposition had been established, and that Lavazza’s affirmative defences could not succeed. There is little room for Lavazza to challenge the Assistant Commissioner’s overall conclusion unless it can persuade me those core findings were wrong. None of the cases on which Lavazza relies will assist if the Assistant Commissioner’s central findings remain undisturbed.
Approach on appeal
[55] The parties agree that while Lavazza must demonstrate a material error in the Assistant Commissioner’s decision, I should approach the appeal as a rehearing, assigning such weight as I consider appropriate to the Assistant Commissioner’s analysis. As Hammond J noted in VB Distributors Ltd v Matsushhita Electric Industrial Co Ltd:31
[32] An appeal on the basis of a statutory provision of this character is not a case for deference. This Court is required to form its own views. How much (if any) weight should be given to the Commissioner’s view may well depend on what is in dispute. If, for example, what is at issue is a matter of practise in trade mark applications then the experience of the Commissioner is not lightly to be disregarded. On the other hand … to the extent that the determination of likelihood of confusion rests upon a comparison of the marks themselves, the appellate court is in as good a position as the trial tribunal to come to a conclusion.
[56] While I have borne in mind the Assistant Commissioner’s expertise as a member of a specialist tribunal, this case is likely to turn on comparison of the marks themselves. I am in as good a position as the Assistant Commissioner to assess the
30 Decision under appeal, above n 1, at [51].
31 VB Distributors Ltd v Matsushhita Electric Industrial Co Ltd (1999) 9 TCLR 349 at [32]. See also Crocodile International Pte v Lacoste [2017] NZSC 14 at [65]–[66].
degree to which they might be regarded as similar, and any likelihood of confusion that might result.
[57] That said, Lavazza acknowledges that at each stage the Assistant Commissioner asked herself the right questions. No error of principle is involved. Rather, Lavazza challenges her conclusions, most importantly with respect to similarity and likelihood of confusion. The Assistant Commissioner’s decision shows she considered those issues carefully and thoughtfully, and I have been greatly assisted by her analysis.
Similarity
[58] My central conclusion mirrors the Assistant Commissioner’s. I agree she made no error when comparing the respective marks. The principal focus of both marks is the word ORO. That word now entirely dominates Lavazza’s packaging. I am comfortably satisfied the opposed mark infringes Cantarella’s ORO mark.
[59] Given the subjective nature of the analysis, and the fact the Court must consider the perspective of a busy shopper hurrying around the supermarket, there is a risk that dwelling on individual elements will detract from the immediate overall impression the competing marks create. Nonetheless, my own reaction, both after a quick initial examination and again when considering the marks in detail, was the same as the Assistant Commissioner’s. She described them as “visually significantly similar” and I agree.
[60] I reject Lavazza’s submissions to the contrary. Mr Arthur argued the Assistant Commissioner overemphasised the word “ORO” at the expense of the wider impression created by the marks. But I do not accept that the dominant word in the opposed mark is LavAzza, or that descriptor “Qualità Oro” survives in anything like the form it took before 2014. ORO plainly dominates. The rest is detailing, though the centrality of the medallion and the comparatively small font used for the word Qualità only serve to emphasise that the product should be regarded as ORO coffee.
[61] Moreover, there is no doubt Lavazza redesigned its packaging to ensure that would be the case. As noted above, the focus on ORO, at the expense of other elements
of the branding, was deliberate. Lavazza considered the focus on ORO would allow it to achieve “top of range positioning”.
[62] The new branding draws the consumer’s eye to the three letters at the centre of the package. Lavazza cannot maintain that the key feature remains the word LavAzza, now removed from the medallion and “emancipated” to the upper fifth of the pack. The word Qualità has been radically reduced in size in a manner that can only have been designed to de-emphasise it.
[63] While the two marks are plainly not identical, I do not consider the wider trappings of the opposed mark — the stylised word “LavAzza”, the (much smaller) word “Qualità”, and the ribbon and medallion — materially alter the overall impression it creates. ORO dominates both marks to the point where the casual observer is likely to be confused. Like the Assistant Commissioner, I consider the differences, both in detailing and style, are overwhelmed by ORO’s centrality and prominence.
[64] It follows I reject Mr Arthur’s submission that “LavAzza” is the dominant element, nor do I agree ORO remains intrinsically linked to the word “Qualità”. The history of the phrase “Qualità Oro” in Lavazza’s branding has shown a steady and deliberate increase in the prominence of ORO at the expense of “Qualità”.
[65] Mr Arthur sought to draw comparisons between the present marks and others where the decision-maker considered that ostensibly similar marks, on closer analysis, were either insufficiently similar or unlikely to cause confusion.32 While those cases are helpful in illustrating the general approach to competing marks, all turned on their own facts. I am satisfied the Assistant Commissioner reached the correct conclusion.
32 Cases on which Lavazza relied, as examples of cases where similarities were regarded as insufficient, included Nike Innovate CV v Loft Ipco LLC [2021] NZIPOTM 35, Les Mills World of Fitness Ltd v Reebok International Ltd [2003] NZIPOTM 18, Mitsubishi Gas Chemical Co, Inc v Beiersdorf AG [2010] NZIPOTM 8, CMA Corporation Ltd v CMA CGM [2011] NZIPOTM 27, Jules Taylor Holdings Ltd v Taylor, Fladgate & Yeatman Ltd [2021] NZIPOTM 12, Bed Bath ‘N’ Table Ltd, above n 22, and Geneva Marketing (1998) Ltd v Johnson & Johnson [2009] NZCA 591.
Likelihood of confusion
[66] Similarly, I cannot fault the Assistant Commissioner’s analysis of the likelihood Lavazza’s mark, if approved, would cause confusion among consumers. As the Court of Appeal observed in Seewax Inc v Zoggs International Ltd, the likelihood of deception or confusion is a fact-specific inquiry.33 Axiomatically, the risk of confusion may be higher where the goods of the applicant and opponent are the same.34
[67] As Mr Arthur emphasised, Lavazza carried the burden of proving registration would not cause deception or confusion amongst a “substantial number of persons”. The Assistant Commissioner concluded Lavazza had failed to discharge its burden, and that widespread confusion among consumers was likely.
[68] I agree. ORO dominates both marks in a manner designed to draw the consumer’s eye. Both emphasise the word ORO. For all but the small minority of New Zealand consumers who speak Italian, ORO does not mean anything in particular. Rather, when used as the central focus of coffee packaging, it has come to be associated with Cantarella’s premium coffee product, and not with Lavazza’s competing blend.
[69] I agree a busy consumer, used to Cantarella’s distinctive ORO mark, could easily look at Lavazza’s packaging and assume the products are related, or the same. The relevant market is the coffee-buying public. While Mr Arthur sought to imbue the hypothetical consumer with a degree of discernment which may not be present among purchasers of other fast-moving consumer goods, I cannot fault the Assistant Commissioner’s analysis. The goods are the same. They will often be found side-by-side on supermarket shelves. Even the Assistant Commissioner, who regarded herself as a discriminating coffee buyer, indicated she would find the competing packs confusing. The Assistant Commissioner was right to stress that purchasing decisions, with respect to fast-moving consumer products like coffee, are likely made quickly and without a great deal of deliberation.35 Consumers, whose recollection of detail is
33 Seewax Inc v Zoggs International Ltd [2014] NZCA 311 at [49].
34 At [60].
35 Decision under appeal, above n 1, at [99].
likely to be imperfect, will gravitate to the dominant element of the packaging. In this case, that is the word ORO.
[70] As cases like Bed, Bath ‘N’ Table illustrate, there may be contextual factors which mean even inescapably similar marks are unlikely to cause confusion.36 Equally, cases like Seewax demonstrate that even where the products in question are different (albeit sold in the same outlets), and the similarity involves only one aspect of a complex mark, the overlapping element can be “enough to tie the brands together and spark a connection in the mind of consumers”.37
[71] I am satisfied that in the context of competing coffee products, the Assistant Commissioner was right to conclude Lavazza had failed to prove confusion among a substantial number of coffee consumers was unlikely. In seeking to attribute special powers of discernment to coffee buyers, Lavazza relied on little more than assertion. It would undermine the integrity of the trade mark regime if a registered mark, like Cantarella’s ORO mark, could be so freely appropriated by a direct competitor. It would, as the Court of Appeal commented in Seewax, significantly reduce the utility of the relevant provisions as public interest protection measures.38
[72] It follows I agree with the Assistant Commissioner that the requirements of s 25(1)(b) were established.
Section 17(1)(a)
[73] My conclusion that s 25(1)(b) bars registration of the opposed mark is sufficient to resolve this part of the appeal. That said, I agree with the Assistant Commissioner that the factors which proved decisive under s 25(1)(b) are sufficient to establish the absolute ground of opposition under s 17(1)(a).
36 In Bed, Bath ‘N” Table, above n 22, Ellis J held that despite the obvious similarity between the marks “Bed, Bath & Beyond” and “Bed, Bath ‘N’ Table” there was no real likelihood of confusion. For example, the marks were descriptive and non-distinctive, and despite some overlap the focus of the respective businesses was different, as were their logos. The two business had operated side by side in New Zealand over an extended period, without evidence of significant confusion.
37 Seewax, above n 33 at [86].
38 At [84].
[74] The Assistant Commissioner observed that there is considerable overlap between s 17(1)(a) and s 25(1)(b). Both are concerned with the likelihood of deception or confusion. It is settled law — even if it might make more sense, as a matter of logic, to confine the s 17 analysis to deception or confusion inherent in the mark itself
— that the tests under s 17(1)(a) and s 25(1)(b) are very similar.39 The question is
whether, having regard to the reputation acquired by Cantarella’s ORO mark, the Court is satisfied the opposed mark, if used in a normal and fair manner, will not be reasonably likely to cause deception or confusion amongst a substantial number of persons.40 Having concluded the ORO mark is distinctive and well-established, and that Lavazza failed to discharge its onus under s 25(1)(b), those findings inevitably mean the s 17(1)(a) ground of opposition was established too.
Honest Concurrent Use and Special Circumstances
[75] Similarly, I largely agree with the Assistant Commissioner’s analysis of Lavazza’s affirmative defences. That said, those defences, even if established, would not affect the outcome of the appeal. As Ellis J confirmed in Bed, Bath ‘N’ Table, s 26(b) provides a defence only to s 25. It does not afford a defence to the absolute ground for non-registration under s 17(1)(a).41
[76] In any event, I agree Lavazza has not established honest concurrent use. It is true Lavazza’s 1985 mark and Cantarella’s ORO mark were in concurrent use for many years without confusion. The way Lavazza presented its LavAzza Qualità Oro blend, prior to the re-branding exercise in the mid-2010s, caused no difficulty. The word “oro” was used descriptively. It was not a mark in its own right, nor was it a dominant element of Lavazza’s mark.
[77] The opposed mark, in its final form, was in use in New Zealand for only around seven months before the relevant date. That said, I agree with Mr Arthur that the more appropriate period for comparison commenced when Lavazza adopted its “Perfect Pack” in New Zealand. Cantarella’s evidence was that the Perfect Pack began to appear in New Zealand in around 2018.
39 See the observations of Ellis J in Bed, Bath ‘N’ Table, above n 22 at [225]–[230].
40 Pioneer Hi-Bred Corn Co Ltd v Hy-line Chicks Pty Ltd [1978] 2 NZLR 50 at 57.
41 Bed, Bath ‘N’ Table, above n 22 at [277].
[78] I agree, even adopting the earlier commencement date, that Lavazza had only been using packaging similar to the opposed mark for a year or two before the relevant date. Cantarella’s evidence indicates it was immediately concerned about the infringement of its ORO mark, and its formal objection followed soon after. This was not a case where the two marks had been in use, side by side, for an extended period.
[79] More importantly, the high likelihood of confusion tells decisively against the defence of honest concurrent use. The defence will only be viable if the two marks can continue to co-exist without consumer confusion. For the reasons already canvassed, I consider the Assistant Commissioner was right to find it likely consumers will be confused if Lavazza’s mark is registered alongside Cantarella’s. It is likely that two competing coffee brands, each prominently marked ORO, will confuse consumers unacceptably, and unfairly prejudice Cantrella’s distinctive and longstanding mark.
[80] I disagree with the Assistant Commissioner in one aspect of her analysis. The Assistant Commissioner was not prepared to find Lavazza was acting in a commercially honest manner when it moved to increase the prominence of the word ORO in its branding. Cantarella submitted Lavazza changed its packaging in full knowledge of Cantarella’s ORO mark. The evidence discloses a clear decision to increase the prominence of the word ORO. Moreover, Lavazza’s internal discussion documents, which preceded the rebrand, included at least one photograph of Cantarella’s Vittoria ORO packaging (alongside photographs of numerous other brands that compete in the Australasian market).
[81] Nonetheless, I have no reason to doubt Lavazza was acting in good faith throughout. As noted above, Lavazza is a global coffee giant, far larger than Cantarella. Its rebranding exercise was a worldwide one. There is no evidence its rebranding was driven by an attempt to emulate Cantarella’s branding, or to induce consumers to confuse the two products.
[82] ORO is a strong and aurally appealing word, and its effectiveness in the marketing of coffee is unsurprising. It had been part (albeit not a dominant part) of Lavazza’s Qualità Oro branding for decades. My reading of Lavazza’s internal
material is that it was seeking to standardise its packaging around the world while independently deciding (many years after Cantarella reached the same conclusion) that the word ORO should dominate its branding. The fact it settled upon a mark which was strikingly similar to Cantarella’s existing mark does not, of itself, indicate an absence of good faith. It is more likely Lavazza independently had the same idea as Cantarella, albeit some years after the latter registered its mark.
[83] In any event, the defence of honest concurrent use must fail. While I would have found Lavazza acted in a commercially honest manner when it developed its new mark, the two marks had not been in concurrent use for long, and the likelihood of confusion and balance of convenience strongly militate against registration. Registration would represent an unacceptable intrusion upon a mark Cantarella retains the exclusive right to use.
[84] The same factors are fatal to Lavazza’s submission that the normal rules should be set aside because special circumstances exist. Mr Arthur is right to note it has used LavAzza Qualità Oro as a mark in New Zealand for decades. But, as discussed, Lavazza’s historic branding is of little relevance to its entitlement to use the opposed mark. To put it bluntly, the old branding did not infringe Cantarella’s ORO mark or risk widespread confusion. The opposed mark does both those things. Registration would create considerable inconvenience for both Cantarella and the public. The opposed mark squarely engages the mischief the Act is designed to prevent. There are no grounds to depart from the ordinary rules.
Conclusion
[85] Comparison between competing marks is a subjective analysis. While the rules are designed to provide clarity, both for trade mark owners and consumers, assessments are ultimately a matter of impression. But while reasonable minds may differ in some cases, particularly when it comes to questions of similarity and the likelihood of confusion, in this case the similarity of the marks is such that Lavazza has fallen well short of discharging the respective burdens it carries under ss 17, 25 and 26.
Costs
[86] The parties agreed that costs should follow the event, and that the unsuccessful party should pay the successful party’s costs on a 2B basis. I make an order for costs accordingly.
Result
[87]Lavazza’s appeal against the Assistant Commissioner’s decision is dismissed.
[88]Lavazza is ordered to pay Cantarella’s costs on a 2B basis.
Boldt J
Solicitors:
A J Park, Wellington for Appellant
Simpson Grierson, Auckland for Respondent
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