NV Nutricia v Cambricare New Zealand Limited
[2012] NZHC 1344
•15 June 2012
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
CIV-2011-485-002076 [2012] NZHC 1344
UNDER the Trade Marks Act 2002
IN THE MATTER OF an appeal from the decision of the Assistant
Commissioner of Trade Marks dated 14
September 2011 in respect of New Zealand
Trade Mark No. 803628
BETWEEN NV NUTRICIA Appellant
ANDCAMBRICARE NEW ZEALAND LIMITED
Respondent
Hearing: 5 June 2012
Counsel: K J Duckworth and B J Shone for Appellant
B P Cain and J A Hazel for Respondent
Judgment: 15 June 2012
In accordance with r 11.5 I direct the Registrar to endorse this judgment with the delivery time of 4.00pm on the 15th day of June 2012.
RESERVED JUDGMENT OF COLLINS J
Introduction
[1] The appellant (Nutricia) appeals a decision of an Assistant Commissioner of Trade Marks (Assistant Commissioner) dated 14 September 2011. In her decision the Assistant Commissioner rejected Nutricia’s opposition to the respondent
(Cambricare)’s application to register the trade mark CAMBRICARE.
NV NUTRICIA V CAMBRICARE NEW ZEALAND LIMITED HC WN CIV-2011-485-002076 [15 June 2012]
[2] Nutricia appeals to this Court on three grounds. The gravamen of Nutricia’s case is that CAMBRICARE is confusingly similar to its KARICARE suite of trade marks.
[3] The three grounds of appeal under the Trade Marks Act 2002 (the Act) are:
(1)That the appeal should be allowed under s 17(1)(a) of the Act. That section provides:
17 Absolute grounds for not registering trade mark:
...
(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;
...
(2) That the appeal should be allowed under s 25(1)(b) of the Act.
Section 25(1)(b) provides:
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 ... 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;
...
(3) That the appeal should be allowed under s 25(1)(c) of the Act.
Section 25(1)(c) provides:
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–
...
(c) it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand (trade mark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trade mark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trade mark D, and would be likely to prejudice the interests of the owner.
Background
[4] Both Nutricia and Cambricare produce and market milk products for infants, young children and adults.
[5] Nutricia was founded in the Netherlands in 1905. It is now part of the Groupe Danone conglomerate of companies that manufactures and markets health goods including milk products.
[6] Nutricia has inherited a long tradition of manufacturing and marketing milk products for infants and young children in New Zealand. Mr Bradley, the managing director of the Australia and New Zealand Baby Division of Nutricia, explained that its KARICARE trade mark was originally derived from Karitane, which was the home town of Dr Truby King, the pioneer of baby and young children’s health care in New Zealand. Dr King founded the Royal Society for the Health of Women and Children (Plunket Society) in 1907. He was instrumental in the opening of “Karitane Hospitals” for babies and their mothers and for the training of “Karitane Nurses”. In 1927 Dr King began to manufacture infant formula in New Zealand which was marketed under the KARITANE brand. In 1986 the KARITANE range
of infant milk formula brands were licenced to Douglas Pharmaceuticals. In 1993 the trade mark KARICARE was developed from a combination of the word KARI (from Karitane) and CARE. Nutricia has used the KARICARE trade mark on infant formulas in New Zealand since 1996 when its word mark KARICARE and device
marks and
were registered in New Zealand in respect of class 5 (“infants and invalids’ foods” and “food for babies”), and class 29 (“milk and milk products”) of the Ninth Edition of the International Trade Mark Classification System (ITMCS) adopted as part of the Nice Agreement.1
[7] Cambricare was incorporated on 14 November 2008. It produces a range of dairy milk products. Those products include formula, whole milk powder and instant skim milk powder for babies and infants. Currently Cambricare’s principal market is China. Cambricare has been selling its products in China since January
2010. It is now preparing to launch the CAMBRICARE range of products in
New Zealand.
[8] Mr Wu, a director of Cambricare explained that he created the CAMBRICARE trade mark. He said in his affidavit that the “inspiration for the trade mark came from the town Cambridge in the Waikato”. He explained that the name Cambridge conjures an image of lush green pastureland which in turn generates confidence in dairy products associated with that region. Mr Wu said that he “chose the trade mark CAMBRICARE to capture the inspiration and positive feelings that the town of Cambridge and its surroundings evoke”. Mr Wu also said in his affidavit that “the Chinese translation of Cambricare has positive connotations with Chinese culture; the Chinese characters used in the translation of Cambricare means ‘health’, ‘baby’ and ‘lucky’ and ‘auspicious’”. Mr Wu did not explain which
of the Chinese languages he had in mind when giving this aspect of his evidence.
1 Trade Mark Regulations 2003, reg 3.
[9] The application for the trade mark CAMBRICARE was filed on 12 March
2009 under categories 5 and 29 of the ITMCS. The relevant date for determining the
parties’ rights in relation to the grounds of opposition is therefore 12 March 2009.2
The Assistant Commissioner’s decision
[10] Nutricia raised nine grounds of objection to Cambricare’s application to register CAMBRICARE. Those grounds of opposition have now been distilled into three grounds of appeal. It is convenient to analyse the Assistant Commissioner’s decision by referring just to the three grounds of appeal.
Section 17(1)(a) of the Act
[11] The Assistant Commissioner identified the issue raised by Nutricia’s opposition under s 17(1)(a) of the Act to the registration of Cambricare’s proposed trade mark by posing the following question:
Having regard to the reputation acquired [for Nutricia’s marks] KARICARE
... is the Court satisfied that the opposed mark, CAMBRICARE, if used in a
normal and fair manner in conjunction with the applicant’s goods, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons. (emphasis in Assistant Commissioner’s decision)
This statement of the issues raised under s 17(1)(a) of the Act reflected similar statements found in Smith Hayden & Co Ltd’s Application3 and Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd.4
[12] The reasoning of the Assistant Commissioner can be succinctly summarised. The Assistant Commissioner proceeded to answer the question she posed in [11]
above by adopting the following approach:
2 Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 61.
3 Smith Hayden & Co Ltd’s Application (1945) 63 RPC 97 (HC) at 101.
4 Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 57.
(1)She identified that the relevant market will consist of persons in New Zealand who are the prospective or potential purchasers of Cambricare’s products.5
(2)She noted that she had to determine whether a substantial number of persons in the relevant market is likely to be deceived or confused by the use of Cambricare’s trade mark.6
(3) She determined that at the relevant date there was an awareness in the
relevant market of Nutricia’s trade marks.7
(4)She recognised that she had to conduct an overall comparison of the KARICARE and CAMBRICARE trade marks, not a “side by side” comparison, and that allowance had to be made for imperfect recollection.8
(5) She noted that she needed to consider the actual use of the
KARICARE trade marks9.
(6) She recognised that the goods covered by the KARICARE and
CAMBRICARE trade marks were the same or similar.10
(7) She undertook a comparative analysis of the KARICARE and
CAMBRICARE trade marks by undertaking a “look, sound and idea(s) analysis”.11
5 At [61].
6 At [62].
7 At [77].
8 At [21], following New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV
[1964] NZLR 115 (CA) at 139; De Cordova v Vick Chemical Co (1951) 63 RPC 103 (PC) at
106.
9 At [20], following Anheuser-Busch Inc v Budweiser Budvar National Corporation [2003] 1
NZLR 472 (CA) at [30].
10 At [34], following British Sugar plc v James Robertson & Sons Ltd [1996] RPC 282 at 296-297 and Intellectual Reserve Inc v Sintes HC Auckland CIV-2007-404-2610, 13 December 2007.
11 At [22]-[30].
[13] After undertaking this analysis the Assistant Commissioner concluded that the CAMBRICARE and KARICARE marks are “dissimilar as a whole” and that accordingly Nutricia’s opposition based on s 17(1)(a) of the Act could not succeed.
Section 25(1)(b) of the Act
[14] In addressing the issues raised by the s 25(1)(b) ground of opposition the Assistant Commissioner followed the approach set out by the Court of Appeal in NV Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd. The Court of Appeal said that the order of inquiry under s 25(1)(b) of the Act should be:12
(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?
(c) If so, is use of the applicant’s proposed mark likely to deceive or
confuse?
[15] The Assistant Commissioner answered the first two questions set out in [14]
in the following way:
(1)She found that Cambricare’s infant milk powder (class 5) and milk powder (class 29) were the same as or similar to Nutricia’s infant foods and foods for babies (class 5) and milk and milk products in class 29.
(2) She reiterated her earlier finding that CAMBRICARE and
KARICARE are not similar.
[16] The Assistant Commissioner then concluded that Nutricia’s opposition based
on s 25(1)(b) of the Act could not succeed.
12 NV Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd [2011] NZCA 264, [2011]
3 NZLR 206 at [32].
[17] The Assistant Commissioner approached the issues raised by the s 25(1)(c) ground of opposition to Cambricare’s application by posing the following four questions which she adapted from Intellectual Reserve Inc v Sintes:13
(1)Are the CAMBRICARE marks identical or similar to the KARICARE word or device marks which are well known, or is an essential element of the opposed mark identical or similar to the opponent’s mark which are well known?
(2) Are the applicant’s goods the same as or similar to the opponent’s
goods?
(3)If not, would use of the opposed marks be taken as indicating a connection in the course of trade with the opponent?
(4) If the answer to issue (2) or (3) is “yes”, would use of the opposed
mark be likely to prejudice the interests of the opponent?
[18] The Assistant Commissioner recorded that as she had already found against Nutricia in relation to its s 17(1)(a) ground of opposition, that it “follows that the opponent does not succeed on the [s 25(1)(c)] ground of opposition”.
[19] For completeness, I record that the Assistant Commissioner also rejected
Nutricia’s other six grounds of opposition.
[20] In her carefully constructed submissions Ms Shone explained:
(1)that Nutricia’s appeal based on s 17(1)(a) should succeed because use of the word CAMBRICARE would be likely to deceive or confuse because of its similarity to the KARICARE “family of trade marks”;
(2)that Nutricia’s appeal based on s 25(1)(b) of the Act should succeed because the word CAMBRICARE is confusingly similar to Nutricia’s registered trade marks when used in relation to the same or similar goods; and
(3) that Nutricia’s appeal based on s 25(1)(c) of the Act should succeed because the word CAMBRICARE, or an essential element of it, is similar to the well known KARICARE “family of trade marks”.
[21] In explaining why in Nutricia’s submission CAMBRICARE was similar to the KARICARE trade marks Ms Shone emphasised the aural similarities between the marks, namely the similarity of the first syllables “KA” and “CA” and the role of the suffix CARE which appears in both Nutricia’s mark and Cambricare’s mark. Ms Shone was careful to emphasise however that a meticulous comparison of the marks was not necessary, and that what is required is for the Court to assess the impression created by the whole of the marks after making allowance for imperfect recollection. In making this point Nutricia relied upon the following passage in De
Cordova v Vick Chemical Co:14
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
[22] Ms Shone’s submissions in relation to the s 17(1)(a) ground of appeal can be summarised in the following way:
(1)That a substantial number of persons in the market for infant milk powder and milk powder in New Zealand have awareness, cognisance or knowledge of the KARICARE mark.
(2)That the KARICARE and CAMBRICARE marks look and sound similar. From a visual perspective Ms Shone submitted both marks:
(a) are of a similar length; (b) are single word marks;
(c) share seven letters in common; (d) end with the same suffix; and (e) have unusual prefixes.
From an aural perspective Nutricia suggested both marks: (a) start with the same sound (“KA” and “CA”); (b) end with the same sound;
(c) have three syllables, two of which are virtually identical; (d) receive the same intonation when spoken; and
(e) sound similar.
(3)That the KARICARE and CAMBRICARE marks are conceptually similar in that they are:
(a) both invented words;
(b) have the word “CARE” in common; and
(c) have been constructed in the same way (ie the prefix of both marks is derived from the names of small towns in New Zealand).
(4)When the marks are compared as they would be encountered in the usual circumstances of trade a substantial number of persons is likely to be confused.
[23] Ms Shone summarised her submissions in relation to s 17(1)(a) of the Act in the following way:
It is the overall impression provided in a comparison of the marks CAMBRICARE and KARICARE which is important in this case. Taken separately, the fact that the marks look and sound similar, and share the same idea (or lack thereof) is significant, but taken as a whole and taking into account the significant reputation of KARICARE, imperfect recollection, and the circumstances of trade, a substantial number of persons are likely to be confused.
[24] The basis of Nutricia’s second ground of appeal was:
(1) That the CAMBRICARE and KARIKARE marks are similar.
(2)That the respective uses of Nutricia and Cambricare goods are similar, as are:
(a) the respective users of the goods; (b) the physical nature of the goods;
(c) the trade channels through which the goods enter the market; and
(d) the ways in which the goods are presented in supermarkets.
(3)Accordingly, the use of the CAMBRICARE mark was likely to deceive or cause confusion.
[25] In relation to its appeal under s 25(1)(c) of the Act Nutricia submitted:
(1)That the CAMBRICARE mark is similar to the KARICARE word mark, which is well known and is used in relation to the same or similar goods.
(2) That the similarity of:
(a) the respective users of the goods; (b) the nature of the goods;
(c) the market in which the goods are presented; and
(d) the way in which the goods are presented
is likely to indicate a connection in the course of trade between
Cambricare and Nutricia.
(3) That such a connection would cause prejudice to Nutricia’s interests.
Summary of Cambricare’s submissions
[26] In his equally skilful submissions Mr Cain:
(1)accepted that Nutricia has a reputation in relation to its KARICARE word mark in relation to class 5 goods in New Zealand and is likely to have a reputation in relation to its KARICARE device marks in relation to class 5 goods in New Zealand;
(2)accepted that the goods specified in Cambricare’s application are the same as or similar to the goods covered by Nutricia’s KARICARE
word mark in relation to “food for babies” (class 5 of the ITMCS) and “milk and milk products” (class 29 of the ITMCS). Cambricare also accepted that the goods specified in Cambricare’s application are the same as or similar to the goods covered by Nutricia’s KARICARE device marks in relation to “food for babies” in class 5 of the ITMCS;
(3) submitted that the CAMBRICARE mark is distinctive;
(4) submitted that the CAMBRICARE mark is visually, aurally and
conceptually dissimilar to the appellant’s trade marks;
(5)submitted that the relevant purchasers of the goods to which the marks relate in New Zealand are not likely to be deceived or confused as to the origin of Cambricare’s goods; and
(6)submitted that the use of the CAMBRICARE mark will not indicate a connection in the course of trade between Cambricare’s goods and Nutricia’s goods and would in any event not be likely to cause prejudice to Nutricia’s interests.
Determining an appeal under the Act
[27] An appeal of this nature is conducted as a rehearing pursuant to s 173 of the Act and r 20.18 of the High Court Rules. The Court is not bound to accept the Assistant Commissioner’s findings of fact and is entitled to exercise any power or discretion available to the Assistant Commissioner at first instance. The Court must exercise its own judgement but, where appropriate, the Court may give weight to the expressions of opinion of the Assistant Commissioner.
[28] In Austin, Nichols & Co Inc v Stichting Lodestar, the Supreme Court said that when considering a general appeal the High Court is required to:15
... come to its own view on the merits. The weight it gives to the decision of the Commissioner is a matter of judgment [sic]. If the High Court is of a
15 Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [3].
different view from the Commissioner and is, therefore, of opinion that the
Commissioner’s decision is wrong, it must act on its own view.
[29] The Court went on to say:16
Those exercising general rights of appeal are entitled to judgment in accordance with the opinion of the appellate court, even where that opinion is an assessment of fact and degree and entails a value judgment [sic]. If the appellate court’s opinion is different from the conclusion of the tribunal appealed from, then the decision under appeal is wrong in the only sense that matters, even if it was a conclusion on which minds might reasonably differ. In such circumstances it is an error for the High Court to defer to the lower Court’s assessment of the acceptability and weight to be accorded to the evidence, rather than forming its own opinion.
In the present appeal there was no basis for caution in differing from the assessment of the tribunal appealed from. The case entailed no question of credibility. It turned on a judgment [sic] of fact and degree, not the exercise of discretion entrusted to the tribunal. We are of the view that the Court of Appeal was not correct to suggest that, because the decision turned on a value judgment [sic] apparently open to the Assistant Commissioner, “the High Court Judge ought not to have embarked on a reconsideration of the issue without considering, and giving weight to, the Assistant Commissioner’s conclusion”. The High Court Judge was obliged to reconsider the issue. He was entitled to use the reasons of the Assistant Commissioner to assist him in reaching his own conclusion, but the weight he placed on them was a matter for him.
Analysis
First ground of appeal – s 17(1)(a) of the Act
[30] In NV Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd the Court of Appeal explained “the purpose of s 17(1)(a) is the protection of the public from deception or confusion”.17 The Court of Appeal then proceeded to explain the test which should be applied when considering objections under s 17(1)(a) of the Act. When adapted to the present case that test is:18
... whether, having regard to the reputation acquired by [Nutricia] for [KARICARE], the Court is satisfied that the [CAMBRICARE] mark, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception or confusion amongst a substantial number of persons.
16 At [16]-[17].
17 NV Sumatra Tobacco Trading Co Ltd v New Zealand Milk Brands Ltd [2011] NZCA 264, [2011]
3 NZLR 206 at [78].
18 At [78].
That is the test which the Assistant Commissioner adopted in this case.
[31] The test articulated by the Court of Appeal in NV Sumatra Tobacco Trading
Co v New Zealand Milk Brands Ltd is based upon similar directions in Smith Hayden
& Co Ltd’s Application19 and Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd.20
In the latter case the Court of Appeal explained:21
...
(5) In considering the likelihood of deception or confusion all the surrounding circumstances have to be taken into consideration, including the circumstances in which the applicant’s mark may be used, the market in which his goods may be bought and sold and the character of those involved in that market.
...
(7) It is in relation to commercial dealings with goods that the question of deception or confusion has to be considered, and the persons whose states of mind are material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark and others involved in the purchase transactions.
...
(9) The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck. Terms such as “a number of persons” (Jellinek’s Application), a “substantial number of persons” (Smith Hayden & Co Ltd’s Application), “any considerable section of the public” (New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV), and “any significant number of such purchasers” (Polaroid Corporation v Hannaford & Burton Ltd) have been used. As Cooke J put it in his judgment in this case:
“The varying terminology in the judgments is a reminder that it is not always necessary that large numbers of people should be, or should probably be, of the state of mind in question: rather it is a question of the significance of the numbers in relation to the market for the particular goods”.
19 Smith Hayden & Co Ltd’s Application (1945) 63 RPC 97 (HC) at 101.
20 Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 57.
21 At 61-62.
[32] In New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV22 the Court of Appeal explained that undertaking a comparative analysis of respective marks:23
1.You must take the two words and judge of them both by their look and by their sound;
2.You must consider the goods to which they are to be applied and the nature and kind of customer who is likely to buy these goods; and
3.You must consider all the surrounding circumstances and what is likely to happen if each of the marks is used in a normal way as a trade mark for the goods of the respective owners of the marks: ...
[33] The test articulated by the Court of Appeal in NV Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd can, in the present case be further dissected into the following discrete questions:
(1)Do one or more of the KARICARE trade marks have a reputation in the relevant market?
(2) Are the KARICARE and CAMBRICARE marks similar?
(3) If so, is there a reasonable likelihood of deception or confusion being caused among a substantial number of persons in the relevant market?
[34] The first of the questions posed in [33] is easily answered in this case. Cambricare properly acknowledges that the KARICARE trade marks have an established reputation in the relevant market.
[35] The second question posed in [33] reflects the Court’s reasoning that before an applicant’s mark could be considered to be deceptive or confusing it must be found to be similar to the opponent’s mark. “Similarity” is an elastic concept. There are degrees of similarity.24 Minor degrees of similarity are tolerable. In determining
whether CAMBRICARE and KARICARE are similar the Court is seeking to
22 New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115 (CA).
23 At 139.
24 The European Limited v The Economist Newspaper Limited [1998] FSR 283 at 288 per Millett
LJ.
determine if any similarity between the marks is of sufficient degree to justify consideration of the third question posed in [33(2)]. In considering the second question posed in [33] the Court must:
(1) refrain from making a “side by side” comparison of the trade marks
(De Cordova v Vick Chemical Co);25 and
(2) examine the respective marks as a whole.
[36] In deciding if the marks in question are similar I have focused upon: (1) the visual appearance of the marks;
(2) the sound of the marks; and
(3) the idea behind the marks
and then made an overall comparative assessment of the marks.
Visual image of the marks
[37] I agree with the submissions advanced on behalf of Cambricare that the two marks are not visually similar, notwithstanding the fact that they have a common suffix. There are two key reasons why I have reached this conclusion, namely:
(1)The prefix “CAMBRI” is in my assessment quite distinguishable from the prefix “KARI”. To a New Zealand consumer “KARI” denotes a name of Mäori origin. “CAMBRI” on the other hand is quintessentially English and denotes a name of English heritage.
(2) CAMBRICARE is visually longer than KARICARE.
[38] I accept the common suffix “CARE” does create a small degree of similarity between KARICARE and CAMBRICARE. However, in my assessment the word
25 De Cordova v Vick Chemical Co (1951) 63 RPC 103 (PC) at 106.
“CARE” is a relatively common suffix. The lack of distinctiveness associated with the word “CARE” supports the submission that the minor degree of similarity between the marks in question is of no consequence. In reaching this conclusion I have found it helpful to avoid a microscopic dissection of the marks. In this respect I have been helpfully guided by the warning of Luxmore LJ in Aristoc Ltd v Rysta Ltd
who said:26
Little assistance, ... is to be obtained from a meticulous comparison of the words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elecution.
The sound of the marks
[39] Cambricare acknowledged there is some aural similarity between the marks as a whole. In The European Ltd v The Economist Newspaper Ltd27 Millett LJ observed that:28
Similarity is a matter of degree ... The question is whether the similarity is such as to be likely to cause confusion in the mind of the public. A degree of similarity is tolerable; the question is whether there is confusing similarity.
[40] Cambricare submits that the degree of aural similarity between the marks in this case is tolerable.
[41] I agree with Cambricare’s submissions. When pronounced normally, a purchaser of the parties’ products will not think CAMBRICARE is identical or similar to KARICARE. “CAMBRI” is a quite different sound to “KARI”, particularly if those pronouncing “KARI” do so in a way which respects the Mäori pronunciation of “Ä”. In my assessment, on hearing the natural and normal pronunciation of CAMBRICARE and KARICARE, a substantial number of persons
in the market would not think CAMBRICARE and KARICARE are similar.
26 Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87.
27 The European Ltd v The Economist Newspaper Ltd [1998] FSR 283.
28 At 288.
The idea of the marks
[42] There is an inextricable link between KARICARE and Karitane. The KARICARE mark reflects a long history in the baby milk product market and is well recognised by New Zealanders. The trade mark KARITANE was used for 80 years before it was changed to KARICARE.
[43] Mr Wu for Cambricare has explained that the idea of the CAMBRICARE mark was its apparent association with the lush dairy pastures surrounding Cambridge in the Waikato.
[44] Thus, whilst the idea behind the marks is in part derived from place names of New Zealand towns, in my assessment the ideas behind the marks are quite different. Furthermore, in my judgement, most New Zealand consumers are unlikely to associate CAMBRICARE with Waikato pasture land. Most New Zealand consumers are likely to associate the mark “CAMBRICARE” with the town and or university of Cambridge and assume that the mark has a distinctively English origin.
Assessing the marks as a whole
[45] In assessing the marks as a whole I have not made a “side by side” assessment of the marks. Instead I have assessed whether or not an informed and fair minded participant in the relevant market would conclude that the marks in question are similar. In my judgement, when one considers in total the visual, aural and conceptual features of the marks one is driven to the conclusion that the degree of similarity between the marks is very minor and of no consequence.
Deception or confusion
[46] In the event it is thought that I am wrong in determining that there is no meaningful similarity between the marks I shall now address the question of whether or not there is a reasonable likelihood of deception or confusion being caused amongst a substantial number of persons in the relevant market.
[47] In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd the Court of Appeal explained the difference between deception and confusion in the following way:
“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 (New Zealand Breweries Ltd v Heineken's Bier Browerij Maatschappij NV [1964] NZLR 115, 141). 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.
[48] In the present case Ms Shone placed most reliance on the proposition that the
CAMBRICARE mark was likely to cause confusion to those in the relevant market.
[49] In assessing whether or not there is likely to be confusion or even deception I
have:
(1) made allowance for imperfect recollection;
(2)borne in mind that Cambricare’s products to which its application relates are similar to if not identical to Nutricia’s products;
(3)proceeded on the basis that Cambricare will use the CAMBRICARE mark in a fair and normal way in relation to the products identified in the application.
[50] After undertaking this analysis I have concluded that there is little prospect that the CAMBRICARE mark will confuse let alone deceive a substantial number of persons in the market. My key reason for reaching this conclusion is my assessment that participants in the relevant New Zealand market are likely to believe that KARICARE is a distinctively New Zealand brand with a long history and association with baby and infant milk products in this country. CAMBRICARE on the other hand is likely to be thought of by participants in the New Zealand market as a mark with distinctively English origins and not in any way related to KARICARE.
[51] For these reasons I have concluded the first ground of appeal cannot succeed.
Second ground of appeal – s 25(1)(b) of the Act
[52] In NV Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd the Court of Appeal explained that assessments made pursuant to s 25(1)(b) of the Act should follow a three-step analysis, namely:29
(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?
(c) If so, is use of the applicant’s proposed mark likely to deceive or
confuse?
[53] The answer to the first question in this case is “yes”. Cambricare accepts
that:
(1)Its application for “infants milk powder” under class 5 of the ITMCS relates to the same or similar goods as those covered by Nutricia’s registered trade marks for “infant foods” and “food for babies” under class 5 of the ITMCS.
(2)Its application for “milk products” under class 29 of the ITMCS relates to the same or similar goods as those covered by Nutricia’s registered trade mark for “milk and milk product” under class 29 of the ITMCS.
[54] The answer to the second question raised by the second ground of appeal is “no” for the same reasons I have held that CAMBRICARE and KARICARE are not similar for the purposes of the s 17(1)(a) inquiry.
[55] If I am wrong in my answer to the second question raised in this ground of appeal then I would also have answered question (3) with a “no” for the reasons I
29 NV Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd [2011] NZCA 264, [2011]
3 NZLR 206 at [32].
have given for the purposes of the s 17(1)(a) inquiry, in which I concluded that there is no risk of deception or confusion between the trade marks in issue.
[56] For these reasons the second ground of appeal cannot succeed.
Third ground of appeal – s 25(1)(c) of the Act
[57] In NV Sumatra Tobacco Co v New Zealand Milk Brands Ltd the Court of Appeal explained that decisions under s 25(1)(c) require the following four-step analysis:
(1)Is the CAMBRICARE trade mark identical or similar to one or more of the KARICARE trade marks or is an essential element of the CAMBRICARE trade mark identical or similar to that which is well known?
(2) Are Cambricare’s goods the same as or similar to Nutricia’s goods?
(3)Would use of Cambricare’s goods using its trade mark be taken as indicating a connection in the course of trade with Nutricia’s goods?
(4)If the answers to questions (1), (2) or (3) is “yes”, would use of the CAMBRICARE trade mark be likely to prejudice the interests of Nutricia?
[58] The answer to question (1) in this ground of appeal is “no” for the reasons I have held for the purposes of the s 17(1)(a) inquiry that CAMBRICARE and KARICARE are not similar.
[59] If I had been required to do so I would have answered question (2) “yes” for
the same reasons I have given in [53] above.
[60] If I had been required to do so I would have answered question (3) “no” for
the same reasons that I have set out in [50].
[61] If my answer to question (1) was “yes” then my answer to question (2) would have necessitated that I also answer question (4).
[62] I accept Nutricia’s submission that if KARICARE is similar or identical to CAMBRICARE then it is likely that allowing Cambricare to use the CAMBRICARE trade mark would be likely to prejudice the interests of Nutricia, because if the marks are similar then purchasers would be likely to be confused. However, as the earlier part of this judgment demonstrates, I am far from convinced that there is any meaningful similarity between the marks or risk of confusion.
[63] For these reasons the appellant’s third ground of appeal must be dismissed.
Conclusions
[64] None of the grounds of appeal advanced by Nutricia can succeed. Accordingly the decision of the Assistant Commissioner’s concerning registration of CAMBRICARE and costs before the Assistant Commissioner is upheld.
[65] Cambricare is entitled to costs on a scale 2B basis for the hearing in this Court. Leave is given to the parties to file further memoranda if any issues in relation to costs should arise. Any memoranda relating to costs should be filed with
the Court within 15 working days of the date of this judgment.
Solicitors:
Baldwins Law Limited, Wellington for Appellant
James & Wells, Auckland for Respondent
D B Collins J
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