When I was working in London I used to spend some of my hard earned sterling in the New Zealand Shop that was then located on the ground floor of New Zealand House.

There I would acquire supplies of such essentials as JAFFAS®, MOLENBERG® bread and, of course, PINEAPPLE LUMPS®. Although I never bought it1, New Zealand produced MARMITE® was available there. So I was surprised to hear - although not entirely - that SANITARIUM® had had New Zealand Customs seize and detain a shipment of the UK produced MARMITE product destined for a small store in Kaiapoi called Piccadilly Circus (which specialises in the sale of British grocery products) and has now issued High Court proceedings against its owner seeking the destruction of the shipment.

It seemed cruel and unfair that New Zealanders can pop down to a shop in London (now apparently located in Covent Garden) and buy as much New Zealand MARMITE® as they want but an expat from the UK cannot acquire their MARMITE here (or, at least, not labelled as such)2.

I know, I know, its a trade mark issue and SANITARIUM®3 has owned the trade mark MARMITE® in New Zealand for over 90 years. But its product is being sold in the UK and no-one is attempting to stop it at the border like its some kind of class-A drug.

So why, to use the words of its own advertising campaign4, has SANITARIUM® "freaked" about the activities of a small store in Kaiapoi?

The background

In August, Customs seized a shipment of 1908 jars of the UK MARMITE product being imported by a company called Savage Ltd. (This is the company that operates the Piccadilly Circus store.)

It did this because SANITARIUM® had put in place a Trade Mark Customs Notice relying on its trade mark MARMITE®.

Customs Notices request Customs to detain any goods on or in physical relation to which the relevant trade mark is used. A trade mark owner may put such a notice in place by virtue of the Border Protection Measures of the Trade Marks Act 2002.5

Once such a notice is in place and Customs makes a determination that the goods being imported will infringe the trade mark covered by such a notice, it will detain the goods for a period of 10 working days. If during this 10 day period the trade mark owner issues Court proceedings alleging that the goods infringe the relevant trade mark, Customs will continue to detain the goods. If such proceedings are not initiated, the goods will be released to the importer.

In the case of Savage Ltd's shipment of UK MARMITE, SANITARIUM® initiated proceedings.

These seek an order pursuant to ss 153 and 154 of the Trade Marks Act directing that the product be forfeited to the Crown or destroyed on the basis that they are goods in respect of which an infringing sign has been used. This order has been sought by way of an application for summary judgment.

It also seeks by way of relief damages (or an account of profits) for trade mark infringement and an injunction preventing Savage Ltd from importing further shipments of UK MARMITE.

The injunction sought also seeks to restrain Savage Ltd from importing any UK goods which bear trade marks identical or similar to two further trade marks owned by SANITARIUM® in New Zealand (viz. WEET-BIX® and GRANOLA®).

Finally, they also seek relief in respect of previous shipments of UK MARMITE imported by Savage Ltd.

However, the UK product in the most recent shipment imported by Savage Ltd is not prominently labelled with the trade mark MARMITE®. This particular product is unusual as it is labelled MA'AMITE, as it was part of a limited edition run produced in honour of Her Majesty's Diamond Jubilee. The trade mark MARMITE® does appear on the product but only three times on the back label.

The merits

This is not rocket science. To the extent that these goods bear the trade mark MARMITE® they will be goods in relation to which an infringing sign has been used other than for private and domestic use and the Court will have to make an order under section 154 of the Act.

However, the appropriate form of that order is likely to be the key issue for determination if the summary judgment application proceeds.

This is because under s 154 of the Act, if the Court holds that these goods are goods in relation to which an infringing sign has been used other than for private and domestic use, it may make an order that they be –

  1. forfeited to the Crown; or

  2. destroyed; or

  3. otherwise dealt with as the Court thinks fit.

This last option gives the Court a very wide discretionary power to make an order that does justice in the particular circumstances.

The possible outcome

One obvious solution to this situation would be for the Court to make an order requiring Savage Ltd to over-sticker the back label of the jars in question. That would ensure that the identical mark MARMITE® was not visible to the public when the jars were put on sale in the Piccadilly Circus store.

But what about the other complaint, namely the presence of MA'AMITE on the front of the jars?

Well, Savage Ltd is probably on pretty strong ground when it argues that the use of the mark MA'AMITE is not likely to deceive or confuse – a necessary ingredient of infringement when a plaintiff is alleging infringement through use of a similar, rather than an identical, mark.6

There are a number of reasons why the mark MA'AMITE is unlikely to cause deception or confusion in the circumstances of this particular case.

First, the mark MA'AMITE is both visually and aurally different from MARMITE®.

Secondly, MARMITE® is an iconic mark in New Zealand. It is exceedingly well-known, as is its packaging. Given this fame, few, if anyone, would believe that a product labelled MA'AMITE, packaged in a very different jar and bearing prominently references to Britain comes from the same trade source as MARMITE®. In other words, the fame of the MARMITE® mark in this case is likely to count against it.

Thirdly, Savage Ltd's MA'AMITE product would not be sold through the same trade channels as MARMITE®. Importantly, it would be sold through a shop that specialises in selling UK groceries to British expats and others familiar with them through travel. In other words, the nature of the retail outlet itself and the "educated" nature of its clientele would mean that the likelihood of confusion or deception would be negligible.

Fourthly, it is a well-known fact that MARMITE® is presently unavailable at almost all retail outlets in New Zealand.

Fifthly, the very significant publicity surrounding the dispute itself in recent weeks in almost all the major New Zealand news media outlets, also counts against there being a likelihood of deception or confusion between the products.

Given these considerations, it is strongly arguable that over-stickering the identical mark MARMITE® present on the back of the relevant jars would remove all infringing marks from the product and that, therefore, an order releasing the shipment to Savage Ltd, which required it to undertake such over-stickering before placing the goods on sale, would be a just result in the circumstances.

Whether such a result, at least in relation to this latest UK shipment, is reached remains to be seen but it would appear to be a practical and sensible solution.

But what do I care? I'm a VEGEMITE® guy.

First published in NZ Lawyer, 9 November 2012.