Big Blak Saks New Zealand Ltd V D & A Marketing Ltd

Big Blak Saks New Zealand Limited (BBS) sought an interim injunction to prevent D & A Marketing New Zealand Limited (D & A) from copying its four best selling rubbish bags. BBS enjoyed 78% of the New Zealand market. D & A argued that the low cost, simple rubbish bags produced and marketed by BBS were so mundane, common and functional that they could not possibly create goodwill. However the Court agreed with the principle that a combination of factors, not distinctive in themselves, can nonetheless become distinctive. The combination of such common elements in BBS's bags had, in the view of the Court, over the last 30 years come to be seen as distinctive. The Court noted that D & A's bags were so similar in appearance (as is evident from the image above) to the BBS bags that should the two products be stocked alongside one another in a supermarket they would be visually almost indistinguishable to the point where it was seriously arguable that a consumer would believe that D & A's products were BBS's. The Court even took the view that the appearance of D & A's products was deliberately calculated to mislead.

D & A's brand name was not prominently displayed and the products were such (cost and volume being relevant factors) that instant and immediate impressions would be the guiding force in a consumer's decision to purchase, and not the small print in which reference to D & A appeared. Given the inferior quality of D & A's products to those of BBS, the Court found it seriously arguable that a consumer disappointed with the quality of D & A's bags could easily be of the view that they had in fact purchased BBS bags and refrain from purchasing such in the future, thus damaging BBS's market position. The Court awarded an interim injunction in favour of BBS preventing D & A from continuing to market its products. D & A had, in the words of the Court, "sailed too close to the wind".

This case highlights that, while individual features of a product design or appearance may seem common and mundane, combinations of those sorts of features may become distinctive trademarks over time. Even for the most mundane of products in that situation, there must be clear differentiation by competitors. Had D & A's brand name been prominently displayed on its products, the outcome might well have been in its favour.