In the recent highly publicised dispute, Sanitarium and brand MARMITE have once again been thrust into the spotlight, this time by the media, to justify their actions in preventing a shipment of 2000 jars of British Marmite from entry into their New Zealand market. The British shipment was intercepted upon entry to New Zealand by Customs with which Sanitarium has lodged a customs notice for detaining goods infringing their MARMITE trade mark registration.
The recently labelled “Marmageddon” has arisen from the temporary closure of Sanitarium’s earthquake damaged Christchurch factory, suspending production of the spread until at least October and leading to a heightened demand for substitute products. This perhaps is one of the motives behind Kaiapoi-based Rob Savage’s shipment of the British Marmite to New Zealand. Interestingly, it seems some British expats have in the past been able to get their hands on small quantities of the British spread in New Zealand. Retailers in New Zealand tend to stock the product marketed under the “Our Mate” brand. “Our Mate” is available to consumers throughout New Zealand seemingly without interference from Sanitarium. “Our Mate” and MARMITE being dissimilar trade marks, there is very little likelihood of confusion resulting.
The importation and sale of the British Marmite product would appear to be a clear cut case of simple trade mark infringement. The word Marmite is identical to the registered trade mark of Sanitarium, as are the goods, both being yeast based products. Under the Trade Marks Act 2002, trade mark rights are territorial i.e. in this case cover New Zealand, the fact the British Marmite product can be sold in the United Kingdom is irrelevant when considering the New Zealand marketplace. A registered trade mark is infringed where:
- A third party uses an identical trade mark in business in respect of any goods/services that the trade mark is registered; or
- A third party uses an identical or similar trade mark in business in respect of the same or similar goods/services as covered by a registered trade mark, if that use would be likely to deceive or confuse; or
- A registered trade mark is well known in New Zealand in relation to any goods/services, and use of the infringing trade mark takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the well known trade mark
These remedies are not available to a company which does not hold a registered trade mark.
Sanitarium is all too familiar with this type of negative publicity. This case virtually mirrors one several months ago where a Nelson-based importer of British WEETABIX was ordered to remove the infringing articles from his shelves. WEETABIX was not identical to Sanitarium’s WEET-BIX, but it is clearly sufficiently similar for deception or confusion to be likely. Sanitarium would appear to be well within their rights as registered trade mark owners of both WEET-BIX and MARMITE.
Trade mark registration enables companies such as Sanitarium to employ border protection strategies as cost effective means of combating and controlling the unauthorised importation of competing articles including counterfeits, into the country. Trade mark owners holding registered trade marks can lodge notices with Customs which empower Customs to intercept and detain goods at the border which Customs determines are counterfeit and infringe the registered trade mark identified in the notice. If the importer does not agree to surrender the notice, the trade mark owner has ten days within which to issue court proceedings. Sanitarium would appear to understand the value of their New Zealand brands, and the long-term benefits in registering their trade marks.
Trade mark registration is the key to various brand protection opportunities. Lodging customs notices allows you to intercept counterfeit goods before they get the market, and prevent third parties from taking advantage of your market and potentially damaging your reputation.