Recently the High Court examined whether an imported cereal labelled “Weetabix” infringed our much-loved Kiwi brand, “Weet-Bix”. It found that it did!

Background

In New Zealand, registering your brand as a trade mark helps to prevent other companies from “copying” your brand. Once registered, you have exclusive rights for at least 10 years (plus subsequent renewals) to use that mark.

A company can further protect its trade mark by filing a border protection notice with the New Zealand Customs Service, to prevent the importation of products displaying the same or similar trade mark into New Zealand. If Customs detects imported goods that could infringe a New Zealand trade mark, it is able to detain the goods and notify the registered trade mark owner of the issue.

In the Weet-Bix case, the plaintiff had registered its trade mark in New Zealand in 1928 and had filed a border protection notice with the Customs Service. When the defendant sought to import Weetabix it was stopped by Customs and the goods were detained due to the similarities between the two marks. 

The plaintiff then issued proceedings under the Trade Marks Act 2002 to obtain an injunction to prevent the importation of Weetabix.  

Decision

The High Court held that the defendant’s use of “Weetabix” infringed the Weet-Bix trade mark.

The court noted that while the marks were not identical, they were too similar and therefore a significant portion of the general public would likely be confused and/or deceived.

The court considered that the majority of consumers purchase cereal regularly and are not always attentive as to which product they take off the shelf. Therefore, it would be likely that consumers would be confused due to their unfamiliarity with the brand Weetabix and could easily mistake it for Weet-Bix.

As a result, the judge awarded a conditional injunction preventing the defendant from continuing to sell Weetabix unless it removed the word “Weetabix” from its packaging and advertising.  

Protecting your brand

It is important to protect your brand and register your brand as a trade mark in case a similar situation threatens to affect your business. If your trade mark is registered, it is possible for a court to grant an injunction to prevent a person or company from using your mark where it could cause deception and/or confusion to consumers. If your brand is not registered, it is harder to prevent another person from using your mark.

Further, if you have formally registered your branding you can file a border protection notice to prevent importers from infringing on your reputation in the market-place.

If you would like further information, or you are wanting to register your trade mark and/or file a border protection notice, it is recommended to seek legal advice. 

Kirsten Ferguson

Wellington Lawyer