The antipodean food company, Sanitarium, has recently been successful in having a consignment of the UK breakfast cereal WEETABIX impounded by New Zealand customs officials. The basis for Sanitarium’s complaint was that the WEETABIX brand is confusingly similar to, and therefore infringes, its local trade mark registration for WEET-BIX, which covers identical class 30 food products, namely wheat-based biscuits.
This isn’t the first time that the two companies have had a spat over the conflicted brand names. Sanitarium is reported to be precluded from making sales of its rival products in other global markets due to WEETABIX having earlier trade mark rights in those territories.
Whilst the case might appear to be a slam-dunk from a legal perspective, Sanitarium has nonetheless encountered a surprising degree of public backlash on social media following a viral campaign to ‘#freetheweetabix’. This has included widespread allegations that the company is bullying the importer, a small specialist shop called ‘A Little Bit of Britain’, together with threats that purchases of the WEET-BIX product will be boycotted throughout Australia and New Zealand unless they ‘let the Weetabix in’.
To our minds, Sanitarium offered the importer a fair solution by suggesting that the products would be released if a sticker was placed over the WEETABIX label and all references to the UK brand name removed from the importer’s online store. This would enable the importer to sell the products without diluting the WEET-BIX brand.
The case serves as a useful reminder of the effectiveness and benefits that a customs watch can provide to intellectual property rights holders. A customs watch application enables a brand owner to notify customs authorities of the nature and extent of their trade mark rights, the goods to which they apply, the details of all their authorised importers/suppliers/manufacturers etc., and details relating to the goods’ (genuine) packaging. This information is then used and relied upon by customs officials who will seize at the border any goods suspected to be counterfeit and notify the brand owner.