Pharmazen Ltd v Anagenix IP Ltd

JurisdictionNew Zealand
CourtCourt of Appeal
JudgeBrown J
Judgment Date23 July 2020
Neutral Citation[2020] NZCA 306
Date23 July 2020
Docket NumberCA348/2019

[2020] NZCA 306

IN THE COURT OF APPEAL OF NEW ZEALAND

I TE KŌTI PĪRA O AOTEAROA

Court:

Brown, Dobson and Nation JJ

CA348/2019

Between
Pharmazen Limited
Appellant
and
Anagenix IP Limited
Respondent
Counsel:

J V Ormsby and B J Entwistle for Appellant

G F Arthur and J L Calvert for Respondent

Intellectual Property — appeal against a High Court decision which declined the appellant's application to register its trade markon the grounds it was similar to the respondents trade mark and was likely to deceive or confuse — test for similarity — Trade Marks Act 2002

The issues were: whether use by the registered owner of a trade mark was a prerequisite for a successful opposition under s25(1)(b) TMA; ActiPhen Act when was similar to ACTAZIN; whether the use of ActiPhen was not likely to deceive or confuse

The Court held use by the registered owner of a trade mark was not a prerequisite for a successful opposition under s25(1)(b) TMA. Section 17(1) TMA and s25(1)(b) TMA involved different tests as to a likelihood of confusion between two marks. In both s17(1)(a) TMA and s25(1)(b) TMA the activity under scrutiny was the anticipated normal and fair use of the trade mark for which registration was sought. However in the s17(1)(a) TMA analysis, the base comparator was the manner in which another trade mark had already been used. In the s25(1)(b) TMA analysis the comparator was an assumed use of an existing registered trade mark, in a normal and fair manner.

Marks should be considered in their entirety. Both trade marks were invented words. Neither had an apparent meaning, nor did either convey an impression or an idea. The trade marks were of similar length. They shared the first syllable “Act” and they conclude with the letter “n”. There was a significant visual similarity between them. ACT was not descriptive, generic or a common part of trademarks for the relevant goods. Invented words such as the two marks in question are likely to generate a variety of pronunciations. The two trade marks were similar.

The likelihood of confusion or deception in the s25(1)(b) TMA analysis was not to be assessed by reference to the actual use or reputation of the registered trade mark as the relevant measure. The notional market would include ordinary consumers buying products from health shops. The discernment of a manufacturer should not be attributed to a purchaser when making a purchase with imperfect recollection of a product previously purchased. Pharmazen had not demonstrated that its use of ActiPhen was not likely to deceive or cause confusion with products bearing the ACTAZIN brand.

The appeal was dismissed.

  • A The appeal is dismissed.

  • B The appellant must pay the respondent costs for a standard appeal on a band A basis and usual disbursements.

JUDGMENT OF THE COURT
REASONS OF THE COURT

(Given by Brown J)

1

The respondent (Anagenix) is the registered proprietor of the trade mark ACTAZIN for goods and services in classes 5 and 29, in particular kiwifruit extract powder as a dietetic substance or ingredient for medical use. The appellant (Pharmazen) applied to register its trade mark ActiPhen in respect of what are accepted in this Court to be similar goods. The decision of the Assistant Commissioner of Trade Marks declining that application 1 was upheld on appeal by the High Court. 2

2

On this appeal Pharmazen challenges the finding that ActiPhen is similar to ACTAZIN and the conclusion in the context of s 25(1)(b) of the Trade Marks Act 2002 (the Act) that the use of ActiPhen is likely to deceive or confuse.

Registrability of similar trademarks
3

The focus of this appeal is the interpretation and application of s 25(1)(b) of the Act. Section 25 relevantly states:

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—

  • (a) it is identical to a trade mark ( trade mark B) belonging to a different owner and that is registered, or has priority under section 34 or section 36,—

    • (i) in respect of the same goods or services; or

    • (ii) in respect of goods or services that are similar to those goods and services, and its use is likely to deceive or confuse; or

  • (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;

(2) Section 26 overrides subsection (1).

4

Section 26 states:

26 Exceptions

The Commissioner must register trade mark A if—

  • (a) the owner of trade mark B, trade mark C, or trade mark D (as the case may require) consents to the registration of trade mark A; or

  • (b) the Commissioner or the court, as the case may be, considers that a case of honest concurrent use exists, or other special circumstances exist, that, in the opinion of the court or the Commissioner, makes it proper for the trade mark to be registered subject to any conditions that the court or the Commissioner may impose.

5

Mr Ormsby's argument for Pharmazen also placed significant reliance on s 17(1)(a). Section 17(1) states:

17 Absolute grounds for not registering trade mark: general

(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; or

  • (b) the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court; or

  • (c) the use or registration of which would, in the opinion of the Commissioner, be likely to offend a significant section of the community, including Māori.

6

Given the nature of the argument to be considered, it is also convenient to note the jurisdiction to remove a trade mark registration on account of the owner's non-use.

66 Grounds for revoking registration of trade mark

(1) The grounds for revoking the registration of a trade mark are as follows:

(a) that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered:

(1A) For the purposes of subsection (1)(a), continuous period means a period that commences from a date after the actual date of registration and continues uninterrupted up to the date 1 month before the application for revocation.

(2) However, there are not grounds for revoking the registration of a trade mark for its non-use if its non-use is due to special circumstances that are outside the control of the owner of the trade mark.

(3) Subsection (1)(a) does not apply if the owner commences or resumes genuine use of the trade mark in the course of trade in New Zealand after the expiry of the 3-year period and before the application for revocation is made.

(4) Any commencement or resumption of use referred to in subsection (3) after the expiry of the 3-year period but within the period of 1 month before the making of the application for revocation must be disregarded unless preparation for the commencement or resumption began before the owner became aware that the application may be made.

7

Relevant to the present case the definition of trade mark use in s 7 includes:

7 Meaning of use of trade mark

(1) In this Act, unless the context otherwise requires, use, in relation to a trade mark, includes—

(b) applying the trade mark to goods or services or to materials for the labelling or packaging of goods or services in New Zealand solely for export purposes; and

(c) the application in New Zealand of a trade mark to goods or services to be exported from New Zealand, and any other act done in New Zealand in relation to those goods or services that, if done in relation to goods or services to be sold or otherwise traded in New Zealand, would constitute use of a trade mark in relation to those goods or services for which the use is material under this Act or at common law;

Relevant background
8

Because this appeal is concerned solely with s 25(1)(b) the facts can be briefly stated.

9

The Anagenix group of companies as described by its managing director is a collective of New Zealand nutraceuticals companies with an interest in natural products relating to digestive health, including kiwifruit powder. Anagenix develops ingredients for supplements and has also developed some finished products for sale.

10

The trade mark ACTAZIN, coined by Anagenix in 2007, was registered in New Zealand with an effective date of registration of 27 October 2009 in respect of the following goods:

Class 5: kiwifruit extract powder as a dietetic substance or ingredient adapted for human health and medical use including dietary, health and nutritional supplements, medical food and functional foods and beverages;

Class 25: kiwifruit extract powder as a dried fruit ingredient in the manufacture of food and chilled dairy products, including drinking yoghurts.

The managing director of Anagenix deposed that the first syllable, ACT, originated from the botanical name for kiwifruit, Actinidia, and the name of the enzyme Actinidin, although he acknowledged that “not everyone is aware of this fact.”

11

ACTAZIN was the trade name for the first product developed by Anagenix, a kiwifruit powder concentrate produced from New Zealand green kiwifruit. Since the first sales in 2009 in the United States, Anagenix has sold its ACTAZIN product primarily to businesses overseas. The product was sold in New Zealand for a number of months commencing in February 2012 but in mid-2012 Anagenix ceased selling ACTAZIN products in New Zealand because of the potential infringement of a recently granted patent. The managing director of Anagenix deposed that, while Anagenix did not accept the...

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