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The fact that Pepscanz’ PUREX mark is well known in New Zealand was held against it in this recent opposition decision - why?

In Essam Yousef v Pepscanz Ltd [2013] NZIPOTM 14 (26 March 2013), Assistant Commissioner Walden (AC) has rejected Pepscanz’ oppositions against the two logos below in relation to tissue paper, toilet paper, paper towel and serviettes, on various grounds: 

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The decision

Under s25(1)(b), Pepscanz relied on earlier registrations for, or containing, PUREX in class 16. The key issue was whether the respective marks were similar. The AC considered that there was a total impression of dissimilarity:

  • “PURE” is not distinctive (the AC doubted that “PURE” “could ever function as a reliable badge of origin”);
  • the “X” at the end of Pepscanz’s mark that effectively transformed that mark into a word distinct from PURE;
  • PUREX would immediately be perceived in its own right as it is well known.

The AC held that there was no likelihood of confusion, as each mark was visually and aurally and “most importantly” conceptually dissimilar.

The ground based on PUREX being well known failed for largely the same reasons.

The absolute grounds objections against the applications also failed. The bad faith ground (pleaded only against the PURE XCEL logo) also failed. There was evidence that Mr Yousef had registered a family of PURE marks, including PURE ECO, PURE VALUE, PURE CLEAN and PURE BABY.

Comment

The decision is interesting from a comparative perspective:

  • on the one hand, the footnotes to the decision are liberally sprinkled with references to UK and EU decisions, including the decision of the Court of Justice in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ETMR 690;
  • on the other hand, it is clear from EU decisions on relative grounds (including Lloyd) that “the more distinctive the earlier mark, the greater will be the likelihood of confusion”, whereas in this case the likelihood of confusion was reduced due to the earlier PUREX mark being well known (it is common to see this approach taken in Australia also: Australian Postal Corporation v Digital Post Australia Pty Ltd [2012] FCA 862).

In giving predominance to the conceptual differences between the marks, the decision of the AC perhaps most closely echoes the counteraction principle discussed in decisions of the Court of Justice, including C-206/04P Mülhens GmbH & Co. KG v OHIM (Sir logo v Zirh) and Case C-361/04P Picasso v OHIM (Picasso v Picaro), namely that visual or phonetic similarities can be counteracted where one of the marks at issue has a clear and specific meaning “so that the public is capable of grasping it immediately”. The distinction here is that the meaning of the PUREX mark has come about through use and promotion as a trade mark.

The fact scenario also has some similarities with an earlier decision from the AC in TKS s.a. v Swatch AG (Swatch SA) (Swatch Ltd) [2012] NZIPOTM 7 (19 March 2012), in which an application for the ICE WATCH logo below was opposed based on the well known SWATCH mark: 

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However, that opposition was successful. It was held that the marks had aural similarities that contributed to a conceptual similarity (if the later mark was pronounced “I-SWATCH” or “ICE SWATCH”). In that case, Swatch’s reputation in the mark SWATCH, including its practice of marketing different product lines such as ICE STORM and FROZEN BREEZE, was a decisive factor in upholding the opposition (in relation to a number of grounds, including s25(1)(b)).

The decisions are available here.