In a recent judgment of the High Court, Her Honour Justice Goddard overturned the Commissioner of Trade Marks’s decision and found the trade mark ELEVIV was not eligible for registration due to its similarity to the trade mark ELEVIT.

ELEVIT trade mark

The ELEVIT trade mark is used by Bayer (the appellant) in relation to a vitamin and mineral supplement especially created for women who are pregnant, planning to become pregnant or are breastfeeding.

The ELEVIT product has been sold in New Zealand since 2002 and the evidence established that, internationally and in New Zealand, sales of and promotional expenditure for the ELEVIT product had been substantial.

The ELEVIT trade mark is used by the appellant in both a standard font as ELEVIT and in a stylised form as:

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ELEVIV trade mark

The respondent (DBC LLC) applied to register two stylised versions of the trade mark ELEVIV in New Zealand in respect of “dietary and nutritional supplements; nutritional shakes for use as a meal substitute; nutritional bar for use as a meal substitute” in class 5:

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Comparison of the trade marks

Goddard J found that the ELEVIT and ELEVIV trade marks have a marked similarity in spelling, in their stylisation, in the selection of font and in their pronunciation. These similarities were found to be an extent that gave rise to a real risk of consumer confusion and deception.

In relation to font and stylisation of the mark, Goddard J found that both trade marks have a high degree of similarity, including the placement of a pictorial element over the letter “I”. Her Honour found that the average consumer would not discern any striking significance in the differences between the respective pictorial elements; nor in the use of a slanted “e” in the stylised ELEVIV mark.

In the decision appealed from, the Commissioner, in considering the similarity of the marks, placed emphasis on the last letter of each opposed mark and determined that it was the last letter that caused the marks as a whole to be distinct and dissimilar. The Commissioner was swayed in reaching this decision by an analysis of the concept that each word might conjure up in the minds of the consuming public occasioned by the different last letter in each mark.

However, Her Honour found that it is the common feature in the first part of each trade mark that is more likely to create an impression and to linger in the mind of consumers. The dissimilarity in the last letter of each mark was found to be of negligible impact. Further, Goddard J did not accept that consumers would closely analyse the respective marks for possible differences in their meaning, as an academic might.

Similarity of goods

As a dietary and nutritional supplement, the ELEVIV product was found to be similar in kind to the ELEVIT product.

Goddard J found that there was a critical factor innate in the products that was significant in this case. The ELEVIV product should not be taken by pregnant or lactating women and carries a warning on its packaging in small print to that effect, advising:

Warning: Do not take if pregnant or lactating”.

This was viewed as a potentially dangerous outcome should confusion arise between the two products. The ELEVIT product on the other hand is intended specifically for use by pregnant or lactating women.

The nature of the products, the similarity between the goods to which the marks are to be applied and the range of consumer who is likely to purchase the goods were further factors in Her Honour’s view likely to add to confusion in the market place.

Her Honour agreed with the Commissioner’s finding that the respondent’s product, which includes “dietary and nutritional supplements”, was broad enough on a notional fair use basis to include the appellant’s “vitamin and mineral supplement for pregnancy”. However, Goddard J did not agree with the Commissioner’s ultimate finding on similarity which overlooked both the fact that ELEVIV must not be sold to pregnant or lactating women and the fact that neither product is a prescription medicine.

Contrary to law

The Commissioner declined to consider the appellant’s grounds based on breach of the Fair Trading Act and passing off “as a higher threshold of confusion appears to be required to establish passing off or a breach of the Fair Trading Act 1986 than is required under section 17(1)(a) of the Act (ground 1); and the opponent has not succeeded on that ground”.

In the appeal, Her Honour found that that use of the respondent’s marks would amount to passing off and constitute a breach the Fair Trading Act, contrary to s 17(1)(b) of the Act. Her finding in this regard was based on her conclusion that the consuming public would be misled or deceived if the respondent were permitted to market its product under the ELEVIT trade mark and the “too coincidental” close similarity of the names ELEVIV and ELEVIT which she considered to be “of a nature and extent that amounts to misrepresentation”.

The appellant succeeded on all grounds and Goddard J ordered that the registration of the respondent’s Trade Mark Applications Nos. 812734 and 812736 be declined and awarded costs in favour of the appellant.