Vec Limited v Vapeman NZ Limited

[2023] NZHC 1581

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2022-404-1248

[2023] NZHC 1581

BETWEEN

VEC LIMITED

Plaintiff

AND

VAPEMAN NZ LIMITED

Defendant

Hearing:	On the papers
Appearances:	G F Arthur KC, MRC Wolff and A M Cottrill for the Plaintiff No appearance by or for the Defendant
Judgment:	27 June 2023

JUDGMENT OF ASSOCIATE JUDGE SUSSOCK

This judgment was delivered by me on 27 June 2023 at 4.00 pm pursuant to r 11.5 of the High Court Rules

Registrar/Deputy Registrar

Solicitors/Counsel:

Morrison Kent, Wellington GF Arthur KC, Wellington

VEC LIMITED v VAPEMAN NZ LIMITED [2023] NZHC 1581 [27 June 2023]

Introduction

[1]    The plaintiff, Vec Limited (Vec), is the owner of the registered trade mark “SOLO” in respect of class 34 goods as follows:

Electronic cigarettes; cigarette boxes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases.

[2]    Vec is seeking summary judgment against the defendant, Vapeman NZ Limited (Vapeman), for infringement of the plaintiff’s registered trade mark.

[3]    Vapeman uses a number of trade marks but Vec’s application for summary judgment is limited to the first cause of action in its statement of claim. This cause of action relates only to the following trade marks being used by Vapeman:

(a)“SOLO+”; and

(b)    “ ” (Vapeman’s Trade Marks)

[4]    Vapeman has not filed a statement of defence to the claims filed or a notice of opposition to the application for summary judgment. Nor did anyone appear on its behalf when the matter was first called. This decision is therefore made on the papers in the absence of opposition.

[5]    Vec submits that Vapeman is infringing its registered trade mark pursuant  to s 89(1)(c) of the Trade Marks Act 2002 by using trade marks in trade:

(a)that are similar to the “SOLO” trade mark;

(b)in relation to goods that are similar to goods in respect of which Vec’s “SOLO” trade mark is registered; and

(c)the use of Vapeman’s Trade Marks is likely to deceive or confuse.

[6]    Vec submits that Vapeman has no defence to the first cause of action and seeks summary judgment with the following relief:

(a)a declaration that Vapeman’s use of Vapeman’s Trade Marks infringes Vec’s registered trade mark;

(b)an injunction under s 106 of the Trade Marks Act restraining Vapeman from using Vapeman’s  Trade Marks, “SOLO+” and “ ”, and any other trade marks so nearly resembling the “SOLO” trade mark as to be likely to deceive or cause confusion in relation to the manufacture, sale and supply of electronic cigarettes;

(c)an order that Vapeman deliver up to Vec all product, packaging, labels, advertisements or other material in the possession or power of Vapeman, the use of which would breach the terms of the injunction granted;

(d)an enquiry as to damages or, at the election of Vec, an account of profits;

(e)interest on such damages or account of profits;

(f)costs; and

(g)such other relief or order as the Court sees fit.

[7]    I set out below the procedural background, the legal principles applying to summary judgment and the factual background, before addressing the questions of whether Vec’s registered trade mark has been infringed and whether the relief sought should be ordered.

Procedural background

[8]    When the matter was first called, counsel for the plaintiff, Mr Arthur KC, indicated the plaintiff wished to make an oral application to amend the original statement of claim to seek an injunction. As well as a potential issue in relation to

jurisdiction (since resolved), I directed that the plaintiff would need to file and serve an amended statement of claim seeking injunctive relief if it wished to proceed on that basis as the defendant needed to have a fair opportunity to respond given that it may take different steps if an injunction was being sought.

[9]    An amended statement of claim has now been filed together with an amended interlocutory application for summary judgment.

[10]   In addition to the claim for injunctive relief, the plaintiff seeks an order that the defendant deliver up to the plaintiff all product, packaging, labels, advertisements or other material in the possession or power of the defendant, the use of which would breach the terms of the injunction sought.

[11]   A memorandum was filed on behalf of the plaintiff on 4 April 2023 confirming that an affidavit of service of the amended statement of claim, the amended interlocutory   application   for    summary    judgment    and    affidavit    of Jonathan James du Toit sworn on 10 March 2023 had been filed. No documents have been filed on behalf of the defendant in response.

Factual background

[12]   One of the directors of Vec, Mr Benjamin James Pryor, has filed an affidavit in support of Vec’s application. Mr Pryor gives evidence that Vec trades as “VAPO” and sells a variety of electronic cigarettes, liquids and cartridges for electronic cigarettes, tobacco and tobacco alternatives. Mr Pryor explains that electronic cigarettes are commonly referred to as “vapes” and that this term is used in all of their product literature and marketing.

[13]   Mr Pryor states that they opened the first VAPO store in March 2017 in Auckland and at the time of swearing his affidavit had 22 stores across New Zealand as well as an online retail presence.

[14]   In 2019, Mr Pryor says they designed a recyclable disposable electronic cigarette or vape and chose the trade mark “SOLO” for the product, with the trade mark to be on the packaging and the product itself. Photographs of the products are

attached to Mr Pryor’s affidavit showing the trade mark on both the packaging and products.

[15]   An application to register the “SOLO” trade mark was made on 6 July 2019 in respect of class 34 goods, as set out in the introduction. The trade mark was registered on 1 September 2020, with copies of the Intellectual Property Office of New Zealand (IPONZ) listing and the certificate of registration for the “SOLO” trade mark attached to the affidavit.

[16]   The plaintiff’s evidence is that the “SOLO” trade mark has been used in relation to disposable vape devices, and that the customers of “SOLO” products are predominately vape and electronic cigarette users but that Vec also offers services to wholesale clients. Mr Pryor says that Vec uses the “SOLO” trade mark in a number of ways, including in advertising, on social media, on their online store and in retail shops. His evidence is that the trade mark features prominently in all of their marketing material with copies of those materials attached to his affidavit.

[17]   The defendant was incorporated on 31 August 2021, launching a website around that time with the domain name The defendant operates as an online-only manufacturer, seller and supplier of vape devices.

[18]   Mr Pryor deposes that Vec first became aware of Vapeman’s plan to use the “SOLO+”/“Solo Plus” trade marks in February 2020 when Vapeman notified the Health Advisory and Regulatory Platform (HARP) that it intended to sell a range of “Solo Plus” products in New Zealand. HARP is a database where manufacturers and importers of electronic cigarettes can notify their products and it allows retailers to apply to be a “specialist vape retailer.”

[19]   Mr Pryor says Vec was very concerned about this given the likelihood that customers and potential customers would be confused. He records his understanding that initially the only products listed on Vapeman’s website were “SOLO+” products and attaches screenshots of Vapeman’s website, as at 27 April 2022, confirming this.

[20]   Vec’s lawyers wrote to Vapeman on 14 February 2022 requesting that Vapeman cease and desist from using the “SOLO” trade mark and any name, word, sign or device substantially identical with or deceptively similar to any of Vec’s trade marks. The letter stated that Vec had become aware that Vapeman intended to sell “Solo Plus” products through the HARP system for product notification and confirmed that Vec was the owner of certain trade mark registrations in New Zealand including “SOLO”. The letter then asserts that the name “Solo Plus” is identical or similar to “SOLO” and that Vapeman’s use of “Solo Plus” in the course of trade would constitute an infringement of Vec’s rights under the Trade Marks Act.

[21]   Vapeman did not respond to the letter and from at least 29 March 2022, Vapeman’s “SOLO+”/“Solo Plus” vape devices started to appear on the market at various retailers in New Zealand.

[22]   In the interim, Mr Pryor says Vec sent cease and desist letters to the various retailers stocking Vapeman’s “Solo Plus” products in order to protect Vec’s business.

[23]On 31 March 2022, Vapeman applied to register the following trade marks:

(a)“”

(b)“Vapeman Solo Plus.”

[24]   A further cease and desist letter was sent by Vec’s lawyers to Vapeman on 7 April 2022. No response was received to this letter either.

[25]   The “Vapeman Solo Plus” trade mark was accepted by IPONZ on 19 April 2022 and registered on 4 October 2022.

[26]   On 30 November 2022, Vec filed an application to invalidate the registration of “Vapeman Solo Plus.” No updating affidavit has been filed confirming whether this was successful. Mr Pryor states in his affidavit however that Vapeman is not using the “Vapeman Solo Plus” trade mark in relation to its “SOLO+”/“Solo Plus” products.

The photographs annexed to Mr Pryor’s affidavit appear to support this. I discuss this further below when discussing possible defences.

[27]    As at the date of the submissions filed for the plaintiff, the application for     “ ” remains under examination.

[28]   Mr Pryor’s evidence is that Vapeman’s website listings have now changed, and the cardboard box  packaging  no  longer  contains  the  “SOLO+”/“Solo  Plus”  trade marks. Mr Pryor deposes however that the products being sold still contain the “SOLO+”/“Solo Plus” trade marks on the inside packaging and device itself.

[29]   I set out below the legal principles applying to summary judgment before considering whether Vec has made out its claim for trade mark infringement.

Legal principles applying to summary judgment

[30]   Rule 12.2(1) of the High Court Rules 2016 states that the Court may give summary judgment against a defendant if the plaintiff satisfies the Court that the defendant has no defence to a cause of action in the statement of claim.

[31]   The onus is on the plaintiff seeking summary judgment to establish that there is no arguable defence to the claim, and the Court must be left without any real doubt or uncertainty on the matter.1 This means that there must be no real question to be tried.2

[32]   Vec must therefore satisfy the Court that Vapeman has no defence to the first cause of action in the amended statement of claim dated 26 January 2023, being infringement of a registered trade mark pursuant to s 89 of the Trade Marks Act.

[33]   Although the onus is on the plaintiff, the defendant must provide some evidential foundation for any defences which are raised. Failure to do so means the plaintiff’s verification stands unchallenged and ought to be accepted unless it is

1      Krukziener v Hanover Finance Ltd [2008] NZCA 187, [2010] NZAR 307 at [26].

2      Pemberton v Chappell [1987] 1 NZLR 1 (CA) at 3.

patently wrong.3 I record that Vapeman has not filed a notice of opposition or any affidavits in support and so has not raised any defences to the claims against it.

[34]   Once the Court is satisfied there is no defence, it retains a discretion whether to order summary judgment for the plaintiff. This discretion is to be exercised sparingly with there being no room for its exercise in the great majority of cases once the Court is satisfied that the defendant has no defence.4

Does the use of Vapeman’s Trade Marks amount to infringement of a registered trade mark pursuant to s 89 of the Trades Marks Act 2002?

Trade mark infringement – legal principles

[35]   The Trade Marks Act sets out the rights and remedies that an owner of a registered trade mark has in relation to the goods or services in respect of which the trade mark is registered. These include exclusive rights to use the registered trade mark and to authorise other persons to use the registered trade mark.5

[36]   The plaintiff relies on s 89(1)(c) of the Trade Marks Act which provides that a person infringes a registered trade mark if the person does not have the right to use the registered trade mark and yet in the course of trade uses a sign similar to the registered trade mark in relation to any goods that are identical with or similar to the goods in respect of which the trade mark is registered, if that use would be likely to deceive or confuse.6

[37]   “Sign” is defined in s 5 of the Trade Marks Act and includes a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word, or any combination of these.

3      Australian Guarantee Corp (NZ) Ltd v McBeth [1992] 3 NZLR 54 (CA) at 59.

4      McGechan on Procedure (online ed, Thomson Reuters) at [HR12.2.11]; Sudfeldt v UDC Finance Ltd (1987) 1 PRNZ 205 (CA) at 209.

5      Trade Marks Act 2002, s 10.

6      Section 89(1)(c).

[38]   Where the plaintiff has an exclusive right to use a registered trade mark, a defendant cannot argue that it has made additions or variations in order to escape liability.7

[39]   The sign must be used in such a manner as to render the use of the sign as likely to be taken as being use as a trade mark.8 This is a question of fact, frequently treated as a ‘threshold’ question, that is generally construed to mean use of a sign to indicate the trade origin of goods.9 There appears to be no question that Vapeman’s Trade Marks are being used in a manner that is likely to be taken as them being used as a trade mark.

[40]   One Vec’s rights in respect of its own trade marks are established, there are three questions that must be asked when determining whether the use of Vapeman’s Trade Marks amount to infringement, namely:10

(a)Are Vapeman’s Trade Marks similar to Vec’s registered trade mark, “SOLO”?

(b)Are Vapeman’s goods or services identical with or similar to those goods and services in respect of which Vec’s trade mark is registered?

(c)Are Vapeman’s Trade Marks likely to deceive or confuse?

[41]   There is likely to be a degree of interdependence among the answer to these three questions.11

Vec’s rights in relation to the “SOLO” trade mark

[42]I begin by considering Vec’s rights in relation to its registered trade mark.

7      Levi Strauss and Co v Kimbyr Investments Ltd [1994] 1 NZLR 332 at 363; Rob Batty and Kevin Glover Intellectual Property Law (NZ) (online ed, LexisNexis) at [TMA89.8].

8      Trade Marks Act, s 89(2).

9      See, for example, Intercity Group (NZ) Ltd v Nakedbus NZ Ltd [2014] NZHC 124, [2014] 3 NZLR 177 at [88] and [157].

10     Batty and Glover, above n 7, at [TMA89.7].

11     At [TMA89.8].

Does Vec own the registered trade mark “SOLO”?

[43]   I am satisfied that Vec owns the registered trade mark “SOLO” as copies of the IPONZ listing for the “SOLO” trade mark and a copy of the certificate of registration for the “SOLO” trade mark are annexed to the affidavit of Mr Pryor.

[44]   The IPONZ listing records that Vec has registered the “SOLO” trade mark for “electronic cigarettes; cigarette boxes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases.” Therefore, pursuant to s 10 of the Trade Marks Act, Vec  has the exclusive right to use the registered trade mark    (s 10(1)(a)) and to authorise other persons to use the registered trade mark (s 10(1)(b)) in relation to these goods.

Has Vec authorised Vapeman to use the registered trade mark?

[45]   Vec’s evidence is that it has not authorised Vapeman to use the “SOLO” trade mark. It is clear from the evidence that Vec communicated its objection to Vapeman using the “SOLO” trade mark when it first learnt of Vapeman’s intention to sell its “SOLO+”/“Solo Plus” products. Vapeman has not filed any response to the summary judgment application and so has not disputed this point. Furthermore Vapeman appears to have changed the outer cardboard packaging on its products which suggests that it has not been authorised to use the “SOLO” trademark. I accept therefore that Vapeman has no right to use the “SOLO” trade mark.

Has the registered trade mark been used in trade?

[46]   Mr Pryor’s affidavit annexes photographs of Vapeman’s Trade Marks being placed on goods which are being sold by Vapeman, both online on Vapeman’s website and instore at local retailers. The use of Vapeman’s Trade Marks on its products and packaging clearly supports a finding that they are being used in trade.

[47]   I now consider whether Vec’s rights are being infringed by considering the three questions put in issue by s 89(1)(c).

Are Vapeman’s Trade Marks similar to Vec’s registered trade mark?

Relevant legal principles

[48]   In Re Application by Pianotist Co Ltd, the Court set out the overriding principles to be applied when comparing trade marks:12

…You must judge them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods…. you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

[49]   In Pharmazen Ltd v Anagenix IP Ltd, the Court of Appeal endorsed the following summary of the relevant principles in the similarity assessment:13

(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;

(d)comparison is not of the opponent’s marks 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.

[50]   The assessment of similarity is done from the perspective of the average customer in the relevant market.14

12     Re Application by Pianotist Co Ltd (1906) 1A IPR 379 at 380; cited in Coca-Cola Co v Frucor Soft Drinks Ltd [2013] NZHC 3282 at [194].

13     Pharmazen Ltd v Anagenix IP Ltd [2020] NZCA 306 at [47].

14     Coca-Cola Co v Frucor Soft Drinks Ltd, above n 12, at [154].

[51]   A mark has been considered to be similar (if not identical) under the Trade Marks Act where the same letters are used, the descriptive meaning of the words is the same, or the words sound the same.15

Application to this case

[52]   Vec’s registered trademark is “SOLO” and Vapeman’s Trade Marks are “SOLO+” and “ ”. The only difference between the trade marks as written is the inclusion of the “+” or the triangle behind the word. In Vec’s submission, from the

perspective of the average consumer, the additional “+” could either be ignored, forgotten or perceived as a new model from the same manufacturer. The plaintiff submits that it is common commercial practice for manufacturers to add a “+” or “plus” to the name of a product in order to represent it as a more premium version of the original product. No specific evidence is given of this, but it appears to be able to be inferred as a matter of common sense.

[53]   The plaintiff refers to Intercity Group (NZ) Ltd v Nakedbus NZ Ltd where “InterCity” and “inter city” were found to almost meet the threshold of being identical for the purposes of s 89(1)(a). On that basis, Vec submits that the addition of a “+” to Vec’s registered trade mark clearly amounts to a sufficiently similar mark for the purposes of s 89(1)(c). Counsel point to the fact that in “SOLO+”, the emphasis is on the word “SOLO”, which is in a significantly larger font than the “+”. Furthermore, counsel submits the mark is not sufficiently differentiated by the use of the triangle in the logo, or by the inclusion of the “+”.

[54]   Similarly, in N V Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd, the marks “ANGKOR” and “ANCHOR” were considered to be similar for the purposes of s 25(1)(b) the Trade Marks Act. The Court of Appeal considered the fact that there was an “aural similarity”, and that the length of the words were the same with only the middle two letters different.16 The Court held that difference would not necessarily be picked up by consumers in a normal shopping situation, particularly

15     See Intercity Group (NZ) Ltd v Nakedbus NZ Ltd, above n 9, at [189]; and N V Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd [2011] NZCA 264, [2011] 3 NZLR 206 at [50].

16     N V Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd, above n 15, at [50].

taking into account imperfect recollection. Furthermore, even though the “ANCHOR” mark also featured a picture of an anchor (in addition to the word), given that the mark featured the word “ANCHOR” so prominently, the Court did not see this as detracting significantly from the visual similarity between the two marks.

[55]   The same can be said in the present case. The trade marks are clearly similar both from the use and dominance of the word “SOLO” and the fact they are aurally similar. The addition of a “+” or a triangle does not significantly impact the visual similarity of the marks due to the prominence of “SOLO”; the differences would not necessarily be picked up by consumers in a normal shopping situation.

Are Vapeman’s goods or services identical with or similar to those goods and services in respect of which Vec’s trade mark is registered?

[56]   The second question requires the Court to look at whether the goods the trade mark is being used in respect of are identical with or similar to those for which the trade mark is registered.

Relevant legal principles

[57]   Goods are identical or similar if the defendant’s use is in relation to any goods in respect of which the plaintiff’s trade mark is registered; that is, an overlap will catch the defendant.17

[58]   The factors to be considered in determining whether they are similar goods include:18

(a)the respective uses of the goods;

(b)the respective users of the goods;

(c)the physical nature of the goods;

17     Batty and Glover, above n 7, at [TMA89.5(b].

18     N V Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd, above n 15, at [38]; citing

British Sugar plc v James Robertson and Sons Ltd [1996] RPC 281 (Ch) at 297.

(d)the respective trade channels through which the goods reach the market;

(e)whether in self-service stores they are found together or apart; and

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

Application in this case

[59]   Mr Pryor gives evidence that the “SOLO+”/“Solo Plus” products are referred to as disposable vape pens and that “vape pens” is another colloquial term for electronic cigarettes, alongside “vape devices” or “vapes”.

[60]   Mr Pryor’s evidence is that the “SOLO” trade mark is used by Vec in respect of disposable electronic cigarettes or vapes. As noted above, “SOLO” is registered in respect of class 34 goods, which expressly includes electronic cigarettes or vapes as they are more commonly known. The goods that Vapeman’s Trade Marks are being used in respect of are therefore identical with or similar to the goods for which Vec holds the registered trade mark and so the respective uses and users of the goods will be similar, if not identical. I add that the physical nature of the respective goods are undoubtedly similar, where both are disposable/non-refillable vapes with bright colours and similar flavours, and both reach the market through vape-specific online retailers and physical stores. These factors, in my view, confirm the respective goods are competitive.

[61]   Vapeman’s actions in changing the box packaging for their “SOLO+” or “ ” devices sometime after 27 April 2022 following letters from Vec’s lawyers to Vapeman tends to support the goods being similar, as otherwise Vapeman might have been

expected to resist. As stated, Mr Pryor’s evidence is that the plastic packaging on the device inside the box and the device itself still contain the “SOLO+”/“Solo Plus” trade marks.

Is Vapeman’s use of the defendant’s trade marks likely to deceive or confuse?

Relevant legal principles

[62]   The concepts of deception or confusion refer to whether the defendant’s use of the sign can be expected to perplex the minds of potential purchasers or create a mental impression that the defendant’s product is in fact the plaintiff’s product.19 The comparison required is between the normal and fair use by the plaintiff of its registered trade marks, given the rights granted by the registrations, and the actual use made by the defendant of the defendant’s sign.20 Whether a sign is likely to confuse or deceive is inherently related to the similarity of the two marks and the goods/services.21

[63]   In Geneva Marketing (1998) Ltd v Johnson & Johnson, the Court of Appeal stated that the following general factors suggested a likelihood of confusion or deception:22

(a)if the products are functionally the same and are marketed using names which are phonetically identical, visually similar, and represent the same idea;

(b)whether the words sound the same is particularly relevant to television and radio advertising and to situations where customers ask for the relevant product by name; and

(c)the likely imperfect recollection of customers.

[64]   The Court of Appeal further discussed the manner in which the respondents had marketed their products, which were material to the likelihood of confusion. In particular, the respondent placed particular emphasis on the allegedly infringing sign, using a larger font for “SILK” (where the applicant’s registered trade mark was “SYLK”), compared to other words that formed part of the branding.23 The Court

19     Geneva Marketing (1998) Ltd v Johnson & Johnson [2009] NZCA 591 at [19].

20     Coca-Cola Co v Frucor Soft Drinks, above n 12, at [156].

21     Batty and Glover, above n 7, at [TMA89.6].

22     Geneva Marketing (1998) Ltd v Johnson & Johnson, above n 19, at [23].

23 At [24].

accepted that use of a trade mark in a way which heavily emphasises a feature which comprises, or is similar to, another trade mark may have the potential to deceive or confuse.24

[65]   In Intercity Group (NZ) Ltd, the Court found that use of the sign was likely to deceive or confuse because a significant number of reasonable consumers would think that “inter city” in the Nakedbus advertisement related to the “InterCity” brand. There was further actual evidence that consumers had mistakenly booked with Nakedbus when intending to book with InterCity.25

Application in this case

[66]   I accept the applicant’s submission that the trade marks are phonetically identical apart from the “+.” Counsel for the plaintiff relies on the imperfect recollection of customers and the larger font for “SOLO” compared to the “+”. Vec submits that this means that the focus will be on the “SOLO” part of “SOLO+” with customers unlikely to remember that Vec’s products do not have a “+” or that Vapeman does have a “+”.

[67]   The photographs attached to Mr Pryor’s evidence show that both products are similar with the Vec products branded with “SOLO” and the Vapeman products branded with “SOLO+” in the same position towards the base of each unit.

[68]   In Geneva Marketing, as stated above, the Court of Appeal accepted that emphasis on the infringing portion of a mark points towards confusion or deception. There is an obvious emphasis on “SOLO” here compared to other parts of the branding, namely the “+” or triangle behind it. I accept that the use of Vapeman’s Trade Marks is therefore likely to deceive and confuse. I further agree that the actual use of the products and the other similarities between them discussed above, in particular their physical nature and respective users, confirms the likelihood of deception or confusion.

24     Geneva Marketing (1998) Ltd v Johnson & Johnson, above n 19, at [34].

25     Intercity Group (NZ) Ltd v Naked Bus NZ Ltd, above n 9, at [231].

[69]   Vapeman’s products themselves, despite the packaging changing, still contain “SOLO+”/“Solo Plus” trade marks and are therefore likely to be confused with Vec’s “SOLO” products because electronic cigarettes spend the majority of their lifespan outside of the box, with the marks on the device clearly visible.

Does Vapeman appear to have any defence?

[70]   As this is a summary judgment proceeding, I have to be satisfied that there is no arguable defence available to Vapeman.

[71]   Section 93 of the Trade Marks Act provides that a registered trademark is not infringed by the use of another registered trademark in relation to any goods or services for which that other trade mark is registered.

[72]   IPONZ has registered the “Vapeman Solo Plus” trade mark. However, Vec submits that this is not a trade mark being used by Vapeman in relation to Vapeman’s products. From the photographs annexed to Mr Pryor’s affidavit of Vapeman’s original packaging while the sign “Vapeman” appeared on the box, a different font was used for “SOLO+” and the two signs were placed one below the other rather than continuously.

[73]   While, as stated, Mr Pryor’s evidence is that Vapeman has now changed the boxing of its products to remove the reference to “SOLO+”, the products inside the cardboard box are enclosed in plastic packaging that has “SOLO+” in bold letters on it with no reference to Vapeman, and the vapes themselves have “ ” on their base. In addition, Mr Pryor’s evidence is that there are still shops in Auckland that are selling the Vapeman products in the old cardboard packaging which includes the reference to “SOLO+” on the box.

[74]   Whilst Vapeman therefore has registered a trade mark, “Vapeman Solo Plus”, it is not being used in the way registered. “Vapeman” and the word “SOLO+” are in different fonts, with “SOLO+” in larger font than “Vapeman”, and appear separately on different parts of the packaging and product.

[75]   Vapeman could not therefore rely on s 93 of the Trade Marks Act to defend these proceedings even if Vapeman’s registered trade mark, “Vapeman Solo Plus”, is found to be valid following determination of Vec’s objection. I am satisfied therefore that Vapeman has no defence to the claim and that summary judgment should be entered.

Is the relief sought appropriate?

[76]   The relief sought by Vec appears to be available and appropriate in the circumstances except for the proposed order pursuant to s 109 of the Trade Marks Act for Vapeman to deliver up all product, packaging, labels, advertisements and so forth in the power or possession of Vapeman, the use of which would infringe Vec’s registered trade mark.

[77]   An order for delivery up pursuant to s 109 of the Trade Marks Act appears only to be able to be made where an order to dispose of infringing goods is also made under s 110 or it appears to the Court that there are grounds for making an order under that section. Section 111 sets out the matters that must be taken into account in considering such an order including whether other remedies available for infringement would be adequate to compensate or protect the interests of the owner of the registered trade mark. No application for an order under s 110 is made by Vec and nor are submissions or evidence filed establishing the grounds for such an order.

[78]   In addition, it does not appear to be usual to include delivery up of product, as opposed to packaging, labels, advertisements and so forth, in an order for delivery up. Counsel for Vec submits that it is necessary in this case because the product has the infringing trade mark stamped on it. However the infringing trade mark may be able to be removed or replaced on the product. Granting the order in the form proposed would require the defendant to immediately deliver up all product when it may be able to be modified so that its use does not infringe Vec’s trade mark.

[79]   In these circumstances I do not consider it is appropriate to make the order to deliver up now. Instead, I reserve leave to Vec to file further submissions and evidence in support if it wishes to pursue this order, including addressing whether a s 110 order is also required to be made.

[80]   Finally I record that I have amended the wording of the order relating to the enquiry as to damages or account of profits so that either order is at Vec’s election to reserve the greatest flexibility to the plaintiff.

Result

[81]I order and declare:

(a)Vapeman’s  use of the Vapeman’s Trade Marks “SOLO+” and “ ” infringes the plaintiff’s registered trade mark “SOLO”;

(b)an injunction under s 106 of the Trade Marks Act 2002 restraining Vapeman  from using Vapeman’s Trade Marks,  “SOLO+”  and “ ”, and any other trade marks so nearly resembling the “SOLO” trade mark as to be likely to deceive or cause confusion in relation to the manufacture, sale and supply of electronic cigarettes;

(c)at the election of Vec, an enquiry as to damages or an account of profits; and

(d)interest on such damages or account of profits (to be awarded at the conclusion of the enquiry or account).

[82]   Leave is reserved to Vec to file further submissions and evidence if it wishes to pursue its application for an order that Vapeman deliver up to Vec all product, packaging, labels, advertisements or other material in the possession or power of Vapeman, the use of which would breach the terms of the injunction granted above.

Costs

[83]   Costs are awarded on a 2B basis to be fixed by the Registrar. I record that costs are only to be claimed for one statement of claim, one application for summary judgment and one affidavit of service as the need to amend the pleadings arose as a

result of the application for an injunction not being included in the original statement of claim, not as a result of the defendant’s actions.