Customs officials in New Zealand seized around 300 boxes of popular British cereal Weetabix in June at the request of rival cereal giant Sanitarium, to prevent confusion between Weetabix and its brand Weet-Bix.
The Weetabix pallet arrived in a container to be sold on the shelves of New Zealand grocery shop A Little Bit of Britain, which sells the breakfast cereal to mostly British ex-pats. Sanitarium alleges the cereal infringes its trademark rights for Weet-Bix. It has contacted the co-owner of the grocery shop stating the Weetabix will only be released if the Weetabix name and label is blanked out when the boxes go on sale. A Little Bit of Britain has decided to fight against Sanitarium’s demands, and says it will even consider taking the case to the high court if necessary.
In response, Sanitarium states that the Weet-Bix trademark is protected by national law, and that it has been previously disallowed from selling its own product Weet-Bix in other geographies due to Weetabix’s trademark rights in those territories.
What is the likely verdict?
‘Even if a brand is well known, like Weetabix, it does not automatically mean that you are allowed to sell that product in a particular territory’ explains Novagraaf’s Claire Jones. ‘If another company has earlier trademark rights in that territory, and your product contains a trademark that is similar or identical (for similar or identical goods or services), as in this case, you are prohibited from selling your product in that territory.’
Strategies to ensure your trademark rights
A trademark gives its owner the right to exclude others from using the registered mark in the relevant territory and group of classes. As such, the emphasis is on the trademark owner to monitor for misuse and to enforce the right via infringement action where misuse is found. Following the strategies below will help you to protect and enforce your rights:
- Conduct a thorough trademark search before using or seeking to register a new mark in your chosen territory or class, as there is a possibility that your chosen mark will be similar or confusingly similar to a mark that has already been registered in your markets of interest.
- Make sure you have a trademark watching service. This alerts trademark owners to the unauthorised use or misuse of brand names, logos and trade names, including passing off (a UK action).