A2 applied for a declaration of invalidity against Nutricare’s registration for NUENFANT PLATINUM in relation to a range of milk powders in Class 5. The owner of the mark did not participate in the proceedings.

In its allegations, the applicant noted that it owns several trade mark registrations in New Zealand that include ‘PLATINUM’ and cover the same goods as those of the owner’s registration. As such, the applicant and the owner of the registration would be competitors in the New Zealand marketplace, should the owner of the registration commence trading there. This, in the Assistant Commissioner’s view was sufficient for the applicant to be an aggrieved person.

Through its evidence, the applicant was able to establish that there would have been a ‘sufficient level of awareness’ of its PLATINUM branded goods in New Zealand. However, the Assistant Commissioner noted that ‘PLATINUM’ was a considerably descriptive term and that the applicant’s own evidence demonstrated that ‘GOLD’ was commonly used by competing traders for the same goods. On that basis, it was found that the trade marks A2 PLATINUM and NUENFANT PLATINUM were ‘stark, both visually and aurally’.

Further, the Assistant Commissioner found that respective trade marks did not convey similar ideas, with A2 and NUENFANT conveying distinct ideas to the respective New Zealand consumers.

Overall, whilst the applicant was able to show a level of awareness of its marks, the Assistant Commissioner was not persuaded that there would be likely deception or confusion as a result of the use/registration of the NUENFANT PLATINUM mark.

The application for a declaration of invalidity was rejected.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.