Pabst Brewing Co. v. New Zealand Milk Brands Ltd [2011] NZIPOTM 3 (Mar. 30, 2011)

Pabst Brewing Company applied to register the trademark PRIMO in relation to beer. New Zealand Milk Brands Limited opposed registration based on its substantial use of the identical trademark PRIMO in relation to flavored milk and on related registrations of the PRIMO mark covering milk and milk products.

New Zealand Milk’s prior PRIMO trademark registrations did not provide a successful ground of opposition, as none of the covered goods were considered to be similar to beer.

However, New Zealand Milk established that it had developed a significant reputation in the New Zealand marketplace in relation to its PRIMO flavored milk, before the priority date of Pabst’s trademark application. While the Assistant Commissioner of Trade Marks noted numerous differences between flavored milk and beer, she held that New Zealand Milk had established each of the following grounds of opposition:

  • Use of the PRIMO mark in relation to beer was considered “likely to deceive or cause confusion,” contravening Section 17(1)(a) of the Trade Marks Act 2002. The Assistant Commissioner found that each party marketed its beverage products with similar surfing themes aimed at men aged 25–40. This meant that people would be “caused to wonder” whether there was a trade connection between the two products—such as a licensing arrangement, or endorsement, or whether PRIMO beer was a “line extension” of PRIMO milk. 
  • As use of PRIMO for beer was likely to deceive or cause confusion, the use would also contravene Section 9 of the Fair Trading Act 1996 and therefore be “contrary to law,” contravening Section 17(1)(b) of the Act. 
  • Pabst’s use of the PRIMO mark in relation to beer would be “taken as indicating a connection in the course of trade between [beer] and [New Zealand Milk], and would be likely to prejudice the interests of [New Zealand Milk],” contravening Section 25(1)(c) of the Act. Pabst’s use of the PRIMO mark in relation to beer would indicate a connection in the course of trade with New Zealand Milk because the marks were identical and would both be used in the beverage industry. Pabst’s use of the identical mark in relation to beer would also be likely to prejudice New Zealand Milk, because it would lead to confusion and dilute the distinctiveness of New Zealand Milk’s mark and there would be a negative association of PRIMO milk with alcoholic beverages.

The decision demonstrates the breadth of grounds available to the owner of a well-known mark in New Zealand in trademark opposition proceedings. In this case, the opposition was successful even though the reputation of the opponent’s well-known mark related to goods that were dissimilar to the goods covered by the opposed application and even though the mark was not registered in New Zealand for the specific goods for which it had become well known.

This article was originally published in the INTA Bulletin, Vol. 66, No. 11 – June 15, 2011 and is republished here with permission. Copyright © 2011 International Trademark Association.