Mars New Zealand Limited v Roby Trustees Limited

IN THE SUPREME COURT OF NEW ZEALAND

SC 74/2012
[2012] NZSC 118

BETWEEN MARS NEW ZEALAND LIMITED
Applicant

AND ROBY TRUSTEES LIMITED
Respondent

Court: McGrath, Chambers and Glazebrook JJ

Counsel: E C Gray and R Scott for Applicant
C L Elliot for Respondent

Judgment: 19 December 2012

JUDGMENT OF THE COURT

AThe application for leave is dismissed.

BCosts of $2,500 plus reasonable disbursements as fixed by the Registrar are awarded to the respondent.

REASONS

Mars New Zealand Ltd (Mars) is the owner of several registered trademarks for OPTIMUM and OPTIMUM ‘Nutrition for Life’ for pet food, including dog rolls. Roby Trustees Ltd (Roby) applied to register the mark OPTIMIZE PRO ‘Lead the Pack’ to be used for dog rolls.
The Assistant Commissioner of Trade Marks allowed Roby to register its mark. In the High Court, Venning J allowed Mars’ appeal against that decision.[1] The Court of Appeal reversed Venning J’s decision and allowed the mark to proceed to registration.[2]
[1]Mars New Zealand Limited v Roby Trustees Limited HC Auckland, CIV-2011-404-004613, 7 December 2011.
[2] Roby Trustees Limited v Mars New Zealand Limited [2012] NZCA 450.
In its application for leave to appeal, Mars has set out what it maintains are a number of questions of law. It is difficult, however, to see them as other than questions of fact or complaints that not enough weight was accorded to particular factors.
Roby submits that the Court of Appeal, under s 17(1)(a) of the Trade Marks Act 2002, compared the marks according to well established principles. We agree.
Mars suggests that the Court of Appeal wrongly elided its consideration of ss 17(1)(a) and 25(1)(c) of the Trade Marks Act 2002. We accept Roby’s submission that the Court merely considered that its factual findings that the marks are “distinctly different” was in this case the controlling consideration under both grounds.
There are also complaints by Mars that certain matters were not taken into account of by the Court (or not adequately). Again, we accept Roby’s submission that the matters in question were taken into account by the Court. Mars’ complaints relate only to the weight that the Court of Appeal accorded those factors. This means that the complaints are confined to the particular facts of the case and are not matters of general public or commercial importance.
The application for leave to appeal is dismissed.
The applicant is to pay the respondent costs of $2,500 plus reasonable disbursements as fixed by the Registrar.

Solicitors:
Simpson Grierson, Auckland for Applicant
Shanahans, Auckland for Respondent

CaseChat Overview and Summary

The case before the Supreme Court of New Zealand involved Mars New Zealand Limited, the owner of trademarks for "OPTIMUM" and "OPTIMUM ‘Nutrition for Life’" for pet food, and Roby Trustees Limited, which sought to register the mark "OPTIMIZE PRO ‘Lead the Pack’" for dog rolls. The dispute centred on whether Roby's proposed trademark was too similar to Mars' existing trademarks, potentially leading to consumer confusion. The legal journey began with the Assistant Commissioner of Trade Marks allowing Roby's application, a decision that was subsequently overturned by Venning J in the High Court, only to be reversed again by the Court of Appeal. Mars then sought leave to appeal to the Supreme Court, raising several issues primarily centred on the application of sections 17(1)(a) and 25(1)(c) of the Trade Marks Act 2002.

The primary legal issues before the Supreme Court were whether the Court of Appeal correctly applied the statutory provisions in assessing the distinctiveness and similarity of the trademarks, and if the Court of Appeal had adequately considered all relevant factors in reaching its decision. Mars argued that the Court of Appeal had misapplied the statutory provisions and failed to adequately weigh certain factors. Roby, on the other hand, contended that the Court of Appeal had correctly applied established principles in comparing the marks. The Court needed to determine whether the Court of Appeal's decision was legally sound and if the application for leave to appeal presented questions of general public or commercial importance.

The Supreme Court found that the Court of Appeal had properly applied the statutory provisions and compared the marks according to established principles. The Court agreed with Roby that the Court of Appeal's findings that the marks were "distinctly different" were the controlling considerations under the relevant sections of the Trade Marks Act. The Court also found that Mars' complaints about certain matters not being adequately considered by the Court of Appeal were specific to the facts of this case and did not present issues of general public or commercial importance. Consequently, the application for leave to appeal was dismissed, and costs were awarded to Roby.

In conclusion, the Supreme Court upheld the Court of Appeal's decision, finding that it was legally sound and did not present broader issues that would warrant further review. The Court dismissed Mars' application for leave to appeal and ordered Mars to pay Roby costs of $2,500 plus reasonable disbursements. This decision reinforces the importance of established principles in trademark law and the Court of Appeal's authority in applying these principles to specific cases.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established