Manuka Doctor Limited v Hill

[2024] NZHC 766

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE

CIV-2023-485-576

[2024] NZHC 766

UNDER

the Trade Marks Act 2002

IN THE MATTER

of Trade Mark 1164530 MANUKA MEDIC in classes 1 and 2 in the name of Rory Hill

AND

an appeal against decision [2023] NZIPOTM of the Assistant Commissioner of Trade Marks dated 21 August 2023

BETWEEN

MANUKA DOCTOR LIMITED

Appellant

AND

RORY HILL

Respondent

Hearing:	7 March 2024
Counsel:	G F Arthur KC and P J M Gerard for Appellant M C Sumpter for Respondent
Judgment:	11 April 2024

JUDGMENT OF RADICH J

[1]    Mānuka oil, derived from the foliage, bark and seeds of mānuka trees and shrubs, has a range of healing properties. It forms the basis of a number of health- related products.

[2]    In 2020, Rory Hill created a mānuka-based topical spray. He named it Manuka Medic. His application to register a trade mark by that name was opposed by Manuka Doctor Ltd, which specialises also in mānuka-based products and has the registered mark Manuka Doctor.

MANUKA DOCTOR LIMITED v RORY HILL [2024] NZHC 766 [11 April 2024]

[3]    In a decision of 21 August 2023, the Assistant Commissioner of Trade Marks found that Manuka Doctor’s grounds of opposition had not succeeded and that the mark could be registered.1

[4]    Manuka Doctor brings this appeal from the decision of the Assistant Commissioner. It says that the application should have been refused because (reflecting the statutory tests):

(a)Mr Hill’s goods are similar to those of Manuka Doctor;

(b)The Manuka Medic mark is similar to the Manuka Doctor mark;

(c)The use of the Manuka Medic mark is likely to confuse and deceive consumers.

The products of Mr Hill and Manuka Doctor

[5]    Mr Hill began distilling mānuka oil from a property near the West Coast town of Whataroa when he observed its healing properties from his own experience. He began to create skin treatments for himself and others. In 2020, he created a mānuka- based topical spray to cleanse, balance and heal skin. He called it Manuka Medic to allude to its healing properties.

[6]    In 2020, Mr Hill applied to register Manuka Medic as a trade mark. He proposed two specifications. The first – class 1 – was described as “botanical extracts, other than essential oils, for use in making cosmetics”. The second – class 3 – was described as “aromatic essential oils”.

[7]    While, currently, the product is only in the form of a topical spray, Mr Hill has indicated a desire to broaden the range of products that use the mark Manuka Medic.

[8]    Manuka Doctor specialises also in mānuka-based products. Its mark, Manuka Doctor, is registered in four different classes. The specifications for each are relatively

1      Hill v Manuka Doctor Ltd [2023] NZIPOTM 35.

lengthy but they include, for class 3, “cosmetics; … non-medical skincare products and preparations” and, for class 5, “therapeutic and dietary products and preparations;

… skincare products and preparations”.

[9]    It has been using the Manuka Doctor mark on its products since 2011. Within the cosmetics and skincare categories, it has used the mark on a wide range of products including skin treatment serums, skin repair creams, gels and facial cleansers. It sells these products in various forms including creams, serums, toners, lotions, balms, facial oils, replenishing oils and lip enhancers.

[10]   For the first six years of its operations, it sold its skincare and cosmetic products from its own store in Auckland. Since then it has expanded and now sells its products online and through a range of stockists including pharmacies, department stores, skincare and cosmetic clinics, health stores, gift and souvenir stores and, in the case of its honey, in supermarkets.

The Court must consider the merits of the case afresh

[11]   The approach to an appeal under s 170 of the Trade Marks Act 2002 such as this was considered by the Supreme Court in Austin, Nichols & Co Inc v Stichting Lodestar.2 The Court held that, under the equivalent provision in the Trade Marks Act 1953, appeals under s 170 are general appeals by way of rehearing. The appellate court must consider the merits of the case afresh. It must come to its own view on the merits. The onus is with the appellant to persuade the Court that the decision was wrong. The deference that the appellate court gives to the reasoning of the decision maker is a matter for the appellate court’s assessment. However, an appellate court might hesitate to conclude that the decision maker’s findings of fact, or fact and degree, are wrong where the decision maker has had a particular advantage, such as technical expertise or the opportunity to assess the credibility of witnesses.

[12]   The Supreme Court in Crocodile International Pte Ltd v Lacoste said that – while it was not an issue on which it had heard argument or that needed to be resolved

2      Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [3]–[5],

[13] and [21].

in that case – it may be appropriate for an appellate court to hesitate to depart from a qualitative assessment of the Commissioner of Trade Marks given the wide range of trade mark decisions that Commissioners are called upon to make.3 However, that is not a potential principle that I need to draw upon in this case.

The relevant test – a similar trade mark for similar goods where its use is likely to deceive or confuse

[13]   The case turns upon the application of s 25(1)(b) of the Trade Marks Act, which is in the following terms:

25       Registrability 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—

…

(b)it is similar to a trade mark (trade mark C) that belongs to a different owner and that is registered, or has priority under section 34 or section 36, 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;

[14]   It is a sentence that is not, on first read, easy to follow. It has three essential component parts. The first focuses upon whether the trade marks of the appellant and the respondent are similar. The second focuses upon whether the goods of the appellant and the respondent, which are the subject of the allegedly similar marks, are similar or the same. And the third focuses upon whether, if both the marks and the goods are similar, the use of the trade mark is likely to deceive or confuse.

[15]The order of inquiry under s 25(1)(b) is:4

(a)Is an applicant’s proposed mark (or marks) in respect of the same or similar goods or services covered by any of the opponent’s trade mark registrations?

(b)If so, is the applicant’s proposed mark (or marks) similar to any of the opponent’s trade mark registrations for the same or similar goods identified in the first inquiry?

3      Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, [2017] 1 NZLR 679 at [66].

4      NV Sumatra Tobacco v New Zealand Milk Brands Ltd [2011] NZCA 264, [2011] 3 NZLR 206 at [32].

(c)If so, is use of the applicant’s proposed mark likely to deceive or confuse?

[16]   It has been said that the separation of these inquiries is somewhat artificial.5 The factors are interrelated and any final assessment will necessarily have a global flavour.

[17]   The case turns also to some extent on the application of s 17 of the Trade Marks Act which provides that the Commissioner must not register as a trade mark or part of a trade mark any matter, the use of which would be likely to deceive or cause confusion.

[18]   While s 17(1)(a) appears on its face to be similar to s 25(1)(b), the two provisions apply in different contexts.6 The policy behind s 17(1)(a) is to protect the public from likely deception or confusion, whereas the policy behind s 25(1)(b) is to protect a competitor’s rights in a trade mark.7 Accordingly, a relevant inquiry under  s 17(1)(a) that is not relevant to s 25(1)(b) is a mark’s reputation. While both sections refer to likely deception or confusion, this assessment is only made in the context of the actual reputation the opponent has for its mark under s 17(1)(a).

[19]The order of inquiry under s 17(1)(a) is:8

(a)Did the opponent’s mark have a reputation in New Zealand at the relevant date?

(b)If so, having regard to that reputation, is the Court satisfied that the mark applied for, if used in a normal and fair manner, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons, by reference to those who may be exposed to the applicant’s goods and are aware of the opponent’s mark?

5      Coca Cola Co v Frucor Softdrinks Ltd [2013] NZHC 3282 at [154].

6      Pharmazen Ltd v Anagenix IP Ltd [2020] NZCA 306, (2020) 157 IPR 198 at [27].

7      Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 61–63 [Pioneer Hi-Bred]; Sexwax Inc v Zoggs International Ltd [2014] NZCA 311, [2015] 2 NZLR 1 at [27] and [47].

8      Sexwax v Zoggs International, above n 7, at [27], [48], [49] and [54].

[20]   Section 17 only becomes relevant here in the event that registration is not precluded under s 25(1)(b).

The application of s 25(1)(b)

Are Mr Hill’s goods similar to Manuka Doctor’s goods?

[21]   Jacob J (in the Chancery Division of the High Court of England and Wales) put it well when he described the several factors that are relevant in determining the similarity of goods in the following way:9

(a)The respective uses of the respective goods or services.

(b)The respective users of the respective goods or services.

(c)The physical nature of the goods or acts of service.

(d)The respective trade channels through which the goods or services reach the market.

(e)Whether in self-service stores they are found together or apart.

(f)The extent to which the respective goods or services are competitive.

The Assistant Commissioner found that some of Mr Hill’s goods were similar to those

of Manuka Doctor and that some were not

[22]   The Assistant Commissioner found that Mr Hill’s class 3 goods – “aromatic essential oils; essential oils” – were similar to Manuka Doctor’s class 3 and class 5 goods, which include “cosmetics; non-medical skincare products and preparations” and “skincare products and preparations”.

[23]But he said:

36.        I  am less  comfortable with finding there is a  similarity between  Mr Hill’s class 1 goods and those specified in the MANUKA DOCTOR

9      British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 28 at 296–297.

registration. This is because the users of the respective goods are not the same. The MANUKA MEDIC purchasers will be cosmetic manufacturers not members of the general public buying a product for personal use and the trade channels are likely to be different.

37.        On the other hand Mr Hill’s class 1 goods are ingredients in some of the class 3 and 5 goods of Manuka Doctor and the end products will be competitive. I have no evidence on whether it is common for cosmetics and therapeutic skincare products to promote the ingredients by brand name.

The positions of the parties on the issue

[24]   It is said for Manuka Doctor that the Assistant Commissioner erred in the finding referred to in [23] above, essentially for three interrelated reasons. First, it is said that different users and different trade channels do not mean that the goods are not similar.

[25]   Secondly, it said that Manuka Doctor produces its own botanical extract (the mānuka extract) that it then uses in its skincare products. This, it is said, is much the same as the way in which Mr Hill produces the mānuka extract which, ultimately, is used in its cosmetics and skin care products.

[26]   It says that it is artificial to distinguish between Mr Hill’s cosmetic products and its mānuka extract to be used as an ingredient for cosmetic products. A brand of cosmetics or skincare products can readily be, it is said, a brand for ingredients of products of that sort.

[27]   Thirdly, it is said for Manuka Doctor that the Assistant Commissioner was wrong to assume that Mr Hill’s botanical extracts would only be purchased and used by “cosmetic manufacturers”. There is no limitation in Mr Hill’s intended specification based upon “manufacturing”, it is said, and it is just as likely that individual consumers would wish to purchase and use the extracts to make home-made cosmetics. That, it is said, would place sales of Mr Hill’s botanical extracts “squarely alongside” Manuka Doctor’s products.

[28]   It is said for Mr Hill that his goods – his botanical extracts and essential oils – “are their own thing”. They are not, it is said, substitutable for the mānuka honey, health supplements and skincare products in which Manuka Doctor trades.

Conclusion on the similarity of the goods

[29]   Ultimately, it seems sufficiently clear to me that Manuka Doctor is right on this point. Botanical extracts used in making cosmetics and the cosmetic products from which they are made are similar goods. The products have the same characteristics – they either are, or contain, botanical extracts.

[30]   As Mr Arthur KC has observed, there have been a number of cases in which certain goods, as ingredients, have been found to be similar to goods or services which use or integrate them.10

[31]   Accordingly, on this issue the conclusion I have reached differs from the decision of the Assistant Commissioner as it relates to Mr Hill’s class 1 goods. I find that Mr Hill’s proposed mark is, in the cases of both of the classes to which it relates, in respect of similar goods to those covered by the Manuka Doctor mark.

Is Mr Hill’s trade mark similar to Manuka Doctor’s trade mark?

[32]   The Court of Appeal in Pharmazen Ltd v Anagenix IP Ltd endorsed the following set of principles for the trade mark similarity assessment:11

(a)the Court should consider the marks in their entirety; the overall or net impression of the marks should be considered;

(b)while differences between two marks may be significant, it is the similarities which are most significant, whether visual, audible, distinctive, or conceptual;

(c)the impression or idea conveyed by the marks is important in assessing how they will be recalled; the idea of a mark is more likely to be recalled than its precise details;

10 For example,  NV Sumatra Tobacco Trading Co v Qantas Airways Ltd  [2012] NZIPOTM 13,  where goods such as tea, biscuits and chocolates were seen to be similar to services for the provision of food and beverages; Beauty Free Shop [1999] ETMR 20 (EUIPO) where “services offered for beauty salons; solarium services” were similar to “beauty preparations, perfumery, cosmetics, dietetic substances”; Robinson v Palm Inc IPOT 26/2007, 10 September 2007, where telephones were “quite similar” to “consultancy services relating to communication, information technology and electronic communications consultancy”; and Fonterra Brands (Tip Top Investments) Ltd v Tip Top Restaurant Ltd HC Wellington, CIV-2011-485-1011, 4 November 2011 where café, cafeteria and snack services were deemed to be too similar to ice cream.

11 Pharmazen Ltd v Anagenix IP Ltd, above n 6, at [47], endorsing the High Court Judge’s summary in Pharmazen v Anagenix IP Ltd [2019] NZHC 1520 which, in turn, drew from the judgment of Winkelmann J in Intellectual  Reserve  Inc  v  Sintes   HC  Auckland  CIV-2007-404-2610,    13 December 2007 at [16].

(d)comparison is not of the opponent’s mark with the mark of the applicant when taken side by side, but taking into account imperfect recollection in all the circumstances in which the products might be sold; and

(e)the marks are to be compared as they would be encountered in the usual circumstances of trade.

[33]The concept of imperfect recollection is important. The House of Lords in

De Cordova v Vick Chemical Co said:12

In most persons, the eye is not an accurate recorder of visual details and marks are remembered rather by general impression or by some significant detail than by photographic recollection of the whole.

[34]   Emphasis is placed, by Manuka Doctor, on the similarities in the “idea of the marks”, referring to the following description of the concept from the decision of the High Court of Australia in Jafferjee v Scarlett:13

Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

The Assistant Commissioner found the trade marks to be similar

[35]   The appellant is right to say that it is difficult to discern what the Assistant Commissioner’s conclusion on the similarity of marks was. On balance, it appears that he found the marks to be similar. He referred to the use of the word “Manuka” in both marks as meaning that they have a common visual, audible and conceptual component, but said that the elements “Doctor” and “Medic” are clearly different in look and sound. However, he found the idea of “Doctor” and “Medic” to be similar in a general way, although they refer to professions which are the result of different qualifications. He found that consumers of the products are likely to take some care in purchasing them, rather than making a snap purchase – suggesting a step back from a similarity finding – but went on to say that the trade channels for the goods will be

12     De Cordova v Vick Chemical Co (1951) 68 RPC 103 (PC) at 105–106.

13     Jefferjee v Scarlett (1937) 57 CLR 115, as cited with approval by the Supreme Court of New Zealand in Crocodile International PTE v Lacoste, above n 3, at [69].

the same and that the circumstances in which the goods are encountered by consumers are likely to be the same.

The positions of the parties on the issue

[36]   Manuka Doctor does not challenge the Assistant Commissioner’s finding as such, but it does disagree with elements of it. It emphasises the similarities in the marks: each mark comprises two words and in each case the second word has two syllables, such that the names have a similar cadence. Moreover, it says that the conceptual connection between “Medic” and “Doctor” is closer than that accepted by the Assistant Commissioner. Referring to dictionary definitions of “Medic” it makes the point that they almost always include a reference to “Doctor” or “Medical Practitioner”. In colloquial language, it is said, “Medic” can, commonly, be substituted for “Doctor”. It is important, it is said, not to fall into the trap of analysing the literal differences, rather than the idea left upon the mind.

[37]   Mr Sumpter emphasises that Manuka Doctor does not own the word “Manuka”. It refers to it having a low distinctiveness – referring simply to goods derived from the mānuka plant and that, accordingly, it is purely descriptive. In referring to other cases in which it was found that the word “Manuka” in and of itself did not provide for distinctiveness,14 the argument is made that it comes down to the difference between the words “Doctor” and “Medic” and that they really are quite different.

Conclusion of the similarity of the marks

[38]   The only similarity between the marks is the word “Manuka”. The words “Doctor” and “Medic” are quite different. They do both refer to a type of health practitioner and they do both have two syllables. But they are different words. They look and sound different. This is not a case where a person with imperfect recollection is confronted with unfamiliar, made up words such as those which confronted Gault J

14 For example, Manuka Honey Appellation Society Inc v Australian Manuka Honey Association Ltd [2023] NZIPOTM 19 at [352] where it was held that the certification mark “Manuka Honey” was wholly descriptive because it consisted only of a sign that serves to designate a characteristic of the goods; and Mission Health NZ Limited v Manuka Health New Zealand Limited [2023] NZIPOTM 46 at [73] where it was held that marks containing “Mānuka” had a reasonably low level of distinctiveness such that it may not take much for them to be distinguishable.

in Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd where he found that the marks ‘Vagisil’ and ‘Vagisan’ were similar and may well be mixed up.15

[39]   The difference is such that in my view we do not reach the next step of needing to consider whether, given a degree of similarity, the marks have a common idea.16

[40]   Moreover, I accept the point made for Mr Hill to the effect that there could not be (effectively) ownership of a name that incorporates, first, a common plant and, secondly, the notion that it brings health benefits, as might a health professional. The name in each case refers to the characteristics of mānuka. The Court should in my view be slow to conclude that there could be similarities in those circumstances to such an extent as to enable exclusivity for Manuka Doctor over any name that combines a reference to mānuka with a reference to health benefits or a provider of health benefits.

[41]   Accordingly, not only, in my view, are there differences between the marks but any overlap between them, or in the idea conveyed by them, from the perspective of people with imperfect recollections are insufficient to render them as being similar for the purposes of s 25(1)(b).

[42]   That can be the end of the matter. However, having regard in particular to the comments made in [16] to the effect that the factors are interrelated and have a global flavour, I go on to consider whether the use of the Manuka Medic mark is likely to deceive or confuse.

Is there a reasonable likelihood that use of the mark Manuka Medic would be deceptive or confusing to a substantial number of consumers?

[43]   A proposed mark is likely to deceive or confuse under s 25(1)(b) if the Court is satisfied that there will be a reasonable likelihood of deception or confusion among a substantial number of people, assuming normal and fair use of both marks in relation

15     Dr August Wolff GMBH & Co KG Arzneimittel v Combe International Ltd [2020] NZHC 1679, [2021] 3 NZLR 236 at [38], [46], [67] and [72].

16     Platinum Homes (NZ) Limited v Golden Homes (1998) Limited HC Wellington CIV-2005-485- 1870, 11 August 2006 at [24].

to the goods covered by the proposed and actual registrations.17 Several decades ago, the Court of Appeal described the characteristics of deception and confusion in the following way:18

“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. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

[44]   There is certainly a linkage in the similarity between products and the potential confusion that results. Intuitively, the more similar the marks look, the higher the chances of confusion will be. But confusion, or a lack of it, can be influenced by distinctiveness. Distinctiveness focuses upon the qualities of a particular mark. Where an element of a mark describes the underlying character of the good, it is not likely to be distinctive. The more descriptive a mark may be, the less obvious the connection between it and the mark of another party will be to the average customer.19

[45]   Similarly, but to a lesser extent, a mark that alludes to a suggested meaning can present difficulties with distinctiveness.20

[46]   Courts are wary of granting monopolies over descriptive words. As Ellis J put it in Brands Ltd v Bed Bath ‘N’ Table Pty Ltd:21

(a)some confusion must be expected and tolerated as the price for using such words; and

(b)the use of such words diminishes the capacity of the relevant marks to signify the relevant origin of the goods or services to which they relate; and so

(c)reasonable consumers confronted with such marks will recognise the descriptive allusions for what they are and [will] understand that they are less likely to signal a connection with the particular proprietor of the mark, or the proprietor’s goods and services;

17     Smith Hayden & Co Ltd’s Application (1945) 63 RPC 97 (CA) at 191.

18     Pioneer Hi-Bred, above n 7, at 62.

19     Brands Ltd v Bed Bath ‘N’ Table Pty Ltd [2023] NZHC 1766, (2023) 174 IPR 261 at [139].

20 At [150].

21     At [153], citing Intellectual Reserve Inc v Sintes [2009] NZCA 305, [2014] NZAR 556 at [74].

(d)small differences—such as the “&” and the “N” or “beyond” and “table” here—may well suffice to distinguish the marks.

[47]   The notion of imperfect recollection is relevant under this head, as it was in considering whether or not the marks were similar. Again, the assessment of the likelihood of deception or confusion is not made by comparing the marks side by side because the respective products will not always be found next to each other.22

The Assistant Commissioner found that the use of the Manuka Medic mark was not

likely to cause deception or confusion

[48]   The Assistant Commissioner concluded that, even accounting for imperfect recollection, the use of the Manuka Medic mark was not likely to cause deception or confusion.23

[49]   While, the Assistant Commissioner considered, there were real similarities between the new marks, he saw a substantial part of a similarity as stemming from the use of the word “Manuka”. It was a word, he found, that had a low level of distinctiveness because it referred to the character of the goods.24 The descriptive and allusive quality of the words led him to the conclusion that the probability of deception or confusion was not reasonably likely. While conceptually similar, he found the terms were not interchangeable and conveyed slightly different ideas.25

Positions of the parties

[50]   It is said for Manuka Doctor that the Assistant Commissioner’s finding on this point is an error. It is said that the marks Manuka Medic and Manuka Doctor are conceptually identical, or nearly so. This, it is said, when combined with other features of similarity – the number of syllables in the words and their cadence for example – makes the use of the Manuka Medic mark likely to deceive or confuse. There will, it is said, be a substantial number of consumers who are likely to be deceived into believing that products bearing the marks Manuka Medic and Manuka Doctor are associated or from the same source, or, at least, as to whether that is the case.

22     Pharmazen Ltd v Anagenix IP Ltd, above n 6, at [47(d)].

23     Hill v Manuka Doctor, above n 1, at [78].

24 At [71].

25 At [76].

[51]   It advances several scenarios in support of its submission that there is likely to be confusion:

An older person who has previously purchased MANUKA DOCTOR essential oil skin blemishes lotion with only an imperfect recollection of the brand seeing an essential oil skin treatment product branded MANUKA MEDIC on the shelves while doing their weekly supermarket shop.

A teenager (potentially distracted by friends) who has seen an advertisement for MANUKA DOCTOR acne skin foaming cleanser, who sees an acne essential oil cleanser branded MANUKA MEDIC in the health store.

Any person who has received a recommendation for MĀNUKA DOCTOR product from a friend encountering MANUKA MEDIC for the same type of product.

A person asked to buy a MANUKA DOCTOR product by a relative or friend seeing MANUKA MEDIC for the same type of product at the pharmacy.

[52]   People in any of these fair use scenarios would, it is said, recall imperfectly the Manuka Doctor brand by the word “Manuka” and the underlying idea. Upon encountering the Manuka Medic mark, it is said, many would be deceived or confused as to whether that was the product they had previously bought, seen advertised or had recommended or requested. It is said that even the person who remembers the Manuka Doctor trade mark accurately could be confused. They may be deceived into believing that it is an associated product. Even, it is said, a person attentive enough to notice the differences in the trade marks could believe the source of the products to be the same.

[53]   Mr Sumpter sees the Assistant Commissioner as having decided this point correctly, saying that a finding to the contrary would give Manuka Doctor a monopoly over the idea that mānuka-based products have therapeutical health benefits when used in cosmetics and skincare. Mr Sumpter referred to the Supreme Court’s caution in Crocodile International v Lacoste to the effect that there needs to be a wider inquiry than looking at “central idea and message”, which risks ignoring or downplaying potentially significant visual differences between trade marks.

Conclusion on deception or confusion

[54]   I do see the inquiry as needing to be broader than looking at the “central idea and message” alone. Mr Arthur rightly observes that the Supreme Court in Crocodile International was dealing with a different state of affairs – the alleged non-use of a

trade mark. The case was concerned, through s 7(1)(a) of the Trade Marks Act, with traders who registered trade marks for multiple representations of (in that case) a particular animal, used only one of them but retained an unduly broad protection through having registered all of them. The Court was concerned in those circumstances to preclude an inquiry that was no wider than looking at the “central idea and message”.26

[55]   I do agree that the context for the decision in Crocodile International differs from that under s 27(1)(b), where the prospect of confusing similarity between two marks, both in active use, is being considered. Nevertheless, in considering whether someone will be deceived or confused, the central idea or message, while important, will be one of the relevant considerations that will go into the kete.

[56]   In my view, the outcome on this issue is focused, more fundamentally, on another of those relevant considerations: the distinctive elements of the marks.

[57]   Manuka Doctor’s case, described in part through the scenarios in [51] above, is premised on consumers recalling only the mānuka element of the mark together with a reference to a health practitioner. But, as I see it, the focus in the mind of a consumer, taking imperfect recollection into account, will be on the distinctive elements of the marks, not the descriptive elements. They will not in my view think that all things “mānuka medical” stem from the same source. There is sufficient distinctiveness here. There will not, in my view, be deception or confusion.

Section 17(1)(a)

[58]   Given my findings under s 25(1)(b), Manuka Doctor’s objections fall to be considered also under s 17(1)(a) of the Act. Accepting, as Mr Hill does, that Manuka Doctor has a reputation in New Zealand at the relevant date, Mr Hill can, for the same reasons that I have given in relation to s 25(1)(b), establish that there is no likelihood of confusion caused by the use of the Manuka Medic mark due to Manuka Doctor’s reputation in its mark.

26     Crocodile International PTE Ltd v Lacoste, above n 3, at [61] and [62].

Result

[59]For these reasons, the appeal is declined.

[60]   In line with the brief discussion on costs at the conclusion of the hearing, I will leave it to the parties to consider costs between themselves in the first instance. In the event that a decision on  costs  from  the  Court  is  needed,  Mr  Hill  may,  within  15 working days from the date of this decision, file a memorandum and Manuka Doctor may, within a further 15 working days, file a memorandum in response. Any such memoranda, including schedules, should be limited to five pages in length.

Radich J

Solicitors:

Duncan Cotterill, Wellington for Appellant Chapman Tripp, Auckland for Respondent