James & Wells Senior Associate Sarah Harrison was interviewed by Stuff.co.nz recently on a recent trademark case.
A global baby food giant is taking on a New Zealand company over an alleged copy cat trademark, even though its products are not available here.
Nutricia, owned by French multinational food-products corporation Danone, claims its trademarks Nutrilon and Nutrison are known to New Zealand consumers, and the Kiwi company's similar trademark, Nutrineon, would "deceive or cause confusion" to consumers.
Danone sells the well-known baby formula products Karigold and Aptamil in New Zealand, but not products labelled Nutrilon or Nutrison.
Danone Nutricia has a factory near Balclutha in South Otago and produces the baby cows' milk forumula product range, Kairicare.
Nutrineon is a natural dietary supplement company that sells herbal remedies online for sleep , stress and chest and throat ailment, as well as for cholesterol management.
Nutricia has claimed the Kiwi company's similar trademark violated the Trade Marks Act and Fair Trading Act.
Nutricia sells the milk powder products Karicare and Karigold in New Zealand supermarkets, but not products labelled Nutrilon or Nutrison.
The company also argued the similarities between the two would cause damage to the multinational because consumers would think the products of the New Zealand company were sourced from it.
But Nutrineon disputes Nutricia's claims and filed a counter statement claiming its trademarks, goods and product packaging "are distinctively different" from Nutricia's.
It said Nutrison and Nutrilon trademarks were "not put to good use" in New Zealand in the past three years.
Under the Trade Marks Act trademarks can be removed from the register if it can be proven the products are not in use in New Zealand.
Trademark lawyer Sarah Harrison of James and Wells said: "Nutrineon should be carrying out investigations to see if the two products are in use."
"That's why there's a removal policy, so the trademarks register isn't cluttered with ones that aren't used," Harrison said.
A company had to prove its trademark was well known, that its products were similar to a similar trademark owned by another company, and confusion was likely between the two.
The court would have to decide whether consumers were at risk of being confused by the two brands.
"Imagine a consumer walking into a pharmacy and asking for a product. What is the risk of them being confused or buying one thing and getting home to realise they've purchased another product?," Harrison said.
"The test will be looking at the end part of each word and how different or similar they are to an average person.
"To be fair to [Nutricia], they do need to take these steps to safe guard their mark. First syllables in a word in trademark law are usually given a lot of weight," Harrison said.
This Article orginally appeared on Stuff.co.nz on Wednesday 25 January and was written by Rachel Clayton.