Pharmazen Ltd v Anagenix IP Ltd

• Jurisdiction: New Zealand
• Judge: Cull J
• Judgment Date: 01 July 2019
• Neutral Citation: [2019] NZHC 1520
• Court: High Court
• Docket Number: CIV-2018-485-741
• Date: 01 July 2019

Between

Pharmazen Limited

Appellant

and

Anagenix IP Limited

Respondent

[2019] NZHC 1520

CIV-2018-485-741

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

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

Intellectual Property — appeal against refusal to register trade mark — similarity — overlap of tests under s17(1)(a) Trade Marks Act 2002 (use would be likely to deceive or cause confusion) and s25(1)(b) (registrability of identical or similar trade mark — similar to a trade mark and its use was likely to deceive or confuse)

Appeal by Pharmazen Ltd (“Pharmazen”) under s170 Trade Marks Act 2002 (“TMA” (Appeals in relation to Commissioner's decisions) against a decision of the Assistant Commissioner of Trade Marks (“the Commissioner”) which refused its application to register its trade mark ActiPhen on the grounds that it was similar to Anagenix IP Limited's (“Anagenix”) mark, ACTAZIN, it was in respect of similar goods, it was likely a significant number of persons in the relevant market would be deceived or confused by Pharmazen's use of the mark under s25(1)(b) TMA (registrability of identical or similar trade mark - similar to a trade mark and its use was likely to deceive or confuse). The Commissioner found that Anagenix failed in its other grounds of opposition under s17(1)(a) TMA (absolute grounds for not registering trade mark: general - use would be likely to deceive or cause confusion) and s17(1)(b) TMA (use of which was contrary to New Zealand law) because there was insufficient evidence of awareness of the ACTAZIN mark in the relevant New Zealand market to satisfy the reputational threshold under s17(1)(a) TMA because Anagenix had not sold or marketed ACTAZIN in New Zealand since 2012. Both companies products were dried kiwifruit powder made from NZ green kiwifruit, sold for use as an ingredient in dietary supplements.

The issues were: whether the goods were similar for the purposes of s25(1)(b) TMA, whether the trade marks were similar for the purposes of s25(1)(b) TMA and whether the use of the trade mark would be likely to deceive or confuse, for the purposes of s25(1)(b) TMA or s17(1)(a) TMA (absolute grounds for not registering trade mark: general - would be likely to deceive or cause confusion).

The Court held that both goods had a similar but not identical composition. The respective uses and users of the goods and the respective trade channels through which the goods reached the market were the same or similar. The goods appeared to be in competition with each other, despite some of their different physical components. The was a similarity between the goods.

Whether the trade marks were similar came down to a consideration of the visual, aural, and conceptual similarities of the marks.

There was a substantial overlap between s17(1)(a) TMA and s25(1)(b) TMA. The comparison under s17(1)(a) TMA was between the actual use of Anagenix's registered mark and the fair and notional use of Pharmazen's mark. Under s25(1)(b) TMA the comparison was the fair and notional use of both marks. When a trade mark holder was relying on s25(1)(b) TMA, its own actual use and reputation were not relevant.

ACTAZIN was a registered trade mark in NZ. The fact that Anagenix currently had no product on the NZ market was irrelevant to the fair and notional assessment of their mark under s25(1)(b) TMA. It had a registration and an export market, and under s25(1)(b) TMA it was able to stop a conflicting mark being registered without having a reputation in the NZ market. That was in contrast to the s17(1)(a) TMA assessment where Anagenix's actual use of the mark ACTAZIN became relevant. On that assessment, the use of each of the respective trademarks in a normal and fair manner would be likely to cause deception and confusion. Pharmazen had not satisfied its onus of proving, on the balance of probabilities, that the use of ActiPhen would not be likely to deceive or cause confusion under s25(1)(b) TMA.

The absence of any evidence as to the size and nature of Anagenix's reputation in the NZ market was an irrelevant consideration in the s25(1)(b) TMA assessment. It was relevant to a s17(1)(a) TMA assessment.

The appeal was dismissed.

Appearances:

J V Ormsby and T M Ritchie for the Appellant

S Wheeldon for the Respondent

JUDGMENT OF Cull J

TABLE OF CONTENTS

Background	7
The Commissioner's decision	9
Approach to appeal	12
Preliminary issue of evidence	18
Legal framework	22
Issues	27
Issue One: whether the goods are similar	28
Issue Two: whether the trade marks are similar	40
Visual comparison	43
Aural Comparison	49
Conceptual/descriptive comparison	54
Discussion	58
Issue Three: whether the trade mark would be likely to deceive or confuse	64
Result	80

1 Pharmazen Limited's (Pharmazen) application to register its trademark, ActiPhen, was declined by the Assistant Commissioner of Trade Marks (the Commissioner). 1 Pharmazen appeals the Commissioner's decision (the Decision).

2 The Commissioner found that the ActiPhen trademark is similar to Anagenix IP Limited's (Anagenix) mark, ACTAZIN, 2 is in respect of similar goods, 3 and that it is likely a significant number of persons in the relevant market would be deceived or confused by Pharmazen's use of the mark under s 25(1)(b) of the Trade Marks Act 2002 (the Act). 4

3 Although Anagenix was successful under s 25(1)(b) of the Act, the Commissioner went on to find Anagenix failed in its other grounds of opposition under s 17(1) of the Act. Section 17(1)(a) requires that the use of the applied-for trade mark must not be likely to deceive or confuse, and s 17(1)(b) requires that the use of the applied-for trade mark must not be contrary to the Fair Trading Act 1986 or other New Zealand law for being misleading or deceptive.

4 Pharmazen appeals the Decision under s 170 of the Act. Pharmazen submits that the Commissioner's Decision relating to s 25(1)(b) is wrong and inconsistent with other findings made by the Commissioner: the same conclusions which led Anagenix to fail in respect of s 17(1)(a) must necessarily mean that Anagenix fails under s 25(1)(b).

5 Accordingly, Pharmazen submits:

• (a) the Commissioner erred in fact and law in finding that the goods are similar;

• (b) the Commissioner erred in fact and law in finding that the trade marks are similar; and

• (c) the Commissioner erred in fact and law in finding that a significant number of persons in New Zealand would be deceived or confused by Pharmazen's use of the ActiPhen mark.

6 Anagenix submits the Commissioner made no error in fact or in law: the goods are similar and the marks are similar, such that Pharmazen's use of the ActiPhen mark would be likely to deceive or confuse a significant number of people.

Background

7 On 4 May 2016, Pharmazen lodged an application to register the “ActiPhen” trade mark in relation to class 5 goods for food preparations adapted for medicinal purposes, pharmaceutical preparations, dietary supplements for humans and animals, antioxidants and kiwifruit powder, and class 16 goods such as printed material relating to the class 5 goods. 5 Anagenix filed a notice of opposition to prevent the registration of the mark, pleading the following grounds in its amended notice of opposition on 5 May 2017:

• (a) the opposed mark is similar to Anagenix's registered mark that is registered in respect of goods that are the same or similar to Pharmazen's goods, and use of the opposed mark by Pharmazen is likely to deceive or confuse (s 25(1)(b));

• (b) use of the opposed mark would be likely to deceive or cause confusion (s 17(1)(a)); and

• (c) use of the opposed mark is contrary to law because it would amount to a breach of the section 9, 10 and 13 of the Fair Trading Act 1986 (s17(1)(b)).

8 Anagenix relied upon its common law rights in the word mark ACTAZIN and its registered mark. ACTAZIN is a trade mark of class 5 goods and services for kiwifruit extract powder as a dietetic substance or ingredient adapted for human health and medical use, and of class 29 goods and services for kiwifruit extract powder as a dried fruit ingredient in the manufacture of food and chilled dairy products.

The Commissioner's decision

9 On 9 August 2018, the Commissioner determined that Pharmazen's ActiPhen and Anagenix's ACTAZIN produce similar goods and services; the ActiPhen mark is similar to the ACTAZIN mark as they both begin with the prefix ACT which is not commonplace, they have three syllables, and they end with the letter “N”; and the similarity is likely to deceive or confuse a significant number of persons in the relevant market, for the purposes of s 25(1)(b). 6

10 While noted as unnecessary, the Commissioner went on to consider the remaining grounds of opposition, under s 17(1)(a) and s 17(1)(b), and determined that there was “insufficient evidence of awareness of the ACTAZIN mark in the relevant New Zealand market to satisfy the reputational threshold under s 17(1)(a)” because Anagenix had not sold or marketed ACTAZIN in New Zealand since 2012. 7 The Commissioner explained that the threshold for establishing grounds for opposition under s 17(1)(b) is higher than that for s 17(1)(a), so where an opponent has not succeeded under s 17(1)(a), it is unlikely they will succeed under s 17(1)(b). 8 As the Commissioner found that Anagenix failed to establish sufficient awareness of its mark in the relevant marketplace to support its s 17(1)(a) ground of opposition, “[t]his point is relevant to, and dispositive of, all Fair Trading Act grounds advanced” by Anagenix. 9

11 The Commissioner accordingly directed that the trade mark application for ActiPhen not proceed to registration, and awarded Anagenix scale costs.

Approach to appeal

12 Section 170 of the Act allows for any “person who is aggrieved by a decision of the...