Zoggs International Ltd v Sexwax Incorporated

JurisdictionNew Zealand
CourtSupreme Court
JudgeMcGrath,Glazebrook,Arnold JJ
Judgment Date02 March 2015
Neutral Citation[2015] NZSC 16
Docket NumberSC 105/2014
Date02 March 2015

[2015] NZSC 16

IN THE SUPREME COURT OF NEW ZEALAND

Court:

McGrath, Glazebrook and Arnold JJ

SC 105/2014

Between
Zoggs International Limited
Applicant
and
Sexwax Incorporated
Respondent
Counsel:

J O Upton QC, R M Wallis and T A Huthwaite for Applicant

N J Robb for Respondent

Application for leave to appeal against the Court of Appeal's (CA) decison that registration of the applicant's trademark would be likely to deceive or cause confusion with the respondent's mark — applicant manufactured swimwear and related lines — respondent manufactured wax for surf boards and related products—whether the CA erred by confusing the test for reputation by considering the respondent's reputation among consumers of its own goods rather than consumers of the goods covered by the proposed registration — whether the CA discarded the marketplace test in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd—whether the CA erred by considering the fair and notional use of both parties’ marks rather than evidence of the opponent's actual use and reputation—whether the CA erred by extracting and focussing on the extract from the mark rather than considering the mark as a whole.

The issues were whether the CA erred by: (1) confusing the test for reputation by considering the respondent's reputation among consumers of its own goods rather than consumers of the goods covered by the proposed registration; (2) discarding the marketplace test in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd; (3) considering the fair and notional use of both parties’ marks rather than evidence of the opponent's actual use and reputation; and (4) extracting the words “MR ZOGS” from the “MR ZOGS SEX WAX” mark rather than considering the mark as a whole.

Held: (1) The CA did not confuse the test for reputation. It said, correctly, that the risk of confusion was properly measured by reference to those who might be exposed to the applicant's goods and were aware of the opponent's mark.

(2) The CA did not discard the use of the market concept. Its focus was, rightly, on the language of s17(1)(a) Trade Marks Act 2002 (Absolute grounds for not registering trade mark—likely to deceive or cause confusion) and the need for a fact-specific inquiry. The CA accepted that use of the concept of the relevant market could be helpful in the s17(1)(a) assessment, albeit that it was not always necessary.

(3) The CA did consider the respondent's actual use and reputation. Detail was given of sales figures, the number of outlets that sell the respondent's goods and kinds of goods sold

(4) The CA considered the prominence of “MR ZOGS” within the Sexwax mark as a whole and found that it was “a central and essential component” of it. It considered the risk of confusion against that background.

The application did not raise any issue of general or public importance. It did not involve the risk of a substantial miscarriage of justice.

Application for leave dismissed.

JUDGMENT OF THE COURT
  • A The application for leave to appeal is dismissed.

  • B The applicant must pay the respondent costs of $2,500, plus reasonable disbursements.

REASONS

1

The applicant, Zoggs International Ltd, has for some years sold swimming goggles and other swimwear under the brand name “Zoggs” in Australia, New Zealand and the United Kingdom. On 9 December 2009 it applied to register “ZOGGS” as a trade mark in relation to “clothing, footwear, headgear, swimwear, swim caps, warm-up suits, t-shirts, jackets, beachwear, leisure wear, ski wear, sports clothing and wet suits”. The application was opposed by the respondent, Sexwax Incorporated.

2

Sexwax, which was originally named Zog Industries,...

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