Man Truck & Bus AG (“Man”) appealed against a decision of the NZ Trade Marks Office to dismiss its opposition to trade mark application No. 983340 SHACMAN in Classes 12, 35 and 37 in the name of Shaanxi Heavy-Duty Automobile Co., Ltd (“Shaanxi”).

Background – TMO Decision

Man was the owner of several registrations for the trade mark MAN (in plain word and stylised forms) in Classes 12, 37 and related classes, including registration Nos. 194282 MAN in Class 12 and 194283 MAN in Class 37.

Man opposed application no. 983340 SHACMAN primarily on the grounds of Section 17(1)(a), prohibiting registration of a mark if its use would be likely to deceive or cause confusion, and Section 17(1)(b), which prohibits registration if use of the mark is contrary to New Zealand law.

The Assistant Commissioner held that Man established a reputation in its MAN (plain word) mark in the relevant New Zealand market for the relevant goods and services. Man was not able to establish sufficient reputation in its other MAN trade marks.

The onus then fell to Shaanxi to show use of its SHACMAN mark would not be likely to deceive or cause confusion. Most of the Assistant Commissioner’s analysis was directed to an overall comparison of the marks, rather than to the question of whether use of Shaanxi’s mark would be likely to deceive or cause confusion. Ultimately, the Assistant Commissioner held that if the SHACMAN and MAN marks were distinguishable, and therefore if Shaanxi’s mark was used in a normal and fair manner it would not be likely to cause confusion or deception amongst consumers.

Appeal to the High Court

Man appealed the Assistant Commissioner’s decision to the High Court. Shaanxi did not participate in the appeal.

The court found that the Assistant Commissioner erred in her conclusion that use of the SHACMAN mark would not be likely to deceive or cause confusion. In particular, the court found:

a) The Assistant Commissioner’s approach when assessing the similarity of the respective marks was wrong. The court held that a finding that the marks are not similar cannot be determinative, or largely determinative, when considering whether the applicant has discharged its onus to show use of the applied for mark would not be likely to deceive or cause confusion.

b)The Assistant Commissioner’s conclusion on similarity was wrong. The court held that there was similarity between the marks and that this was relevant to determining whether deception or confusion was likely.

c)There was a failure to give proper weight to the critical enquiry of Section 17(1)(a), namely the onus on Shaanxi to positively establish that use of the SHACMAN mark would not be likely to deceive or cause confusion. There was no evidence at all from Shaanxi on this question, and on the evidence available, the court found Shaanxi failed to establish that use of its mark would not be likely to deceive or cause confusion.

The appeal was allowed.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.