Facts

The appellant Mars had existing word mark and logo registrations for ADVANCE in class 31 in respect of petfood. Mars then applied to register ADVANCE ADVANCED PET NUTRITION.

The application was opposed by Heinz Wattie’s relying on 19 registered trade marks for CHAMP which included, as part of the mark, a tagline incorporating the word ADVANCED – for example CHAMP ADVANCED DOG NUTRITION.

Heinz Wattie’s grounds of opposition comprised first ss 17(1)(a) and (b), relying on reputation and awareness of CHAMP plus ADVANCED DOG NUTRITION marks and asserting that use of the mark applied for would give rise to confusion or deception. It also alleged that the registration would be contrary to s25(1)(c) in that its mark was well-known in the relevant market in respect of dog food and that the mark applied for would be taken as indicating a connection in the course of trade between the goods and Heinz Wattie’s (and would be likely to prejudice the interests of Heinz Wattie’s).

At first instance, Assistant Commissioner Walden had upheld the opposition under ss 17(1)(b) and 25(1)(c) and refused registration.

Decision

On appeal, Collins J overturned the decision.

S17(1)(a)

The principal issue for the Court was whether the ADVANCED DOG NUTRITION element of Heinz Wattie’s registrations had a sufficient reputation in the relevant market to sustain the ground of opposition. While Heinz Wattie’s had amply demonstrated a reputation in CHAMP, it had failed to show that the words ADVANCED DOG NUTRITION formed part of that reputation:

• The evidence showed that the word CHAMP comprised the bulk of the mark with the tagline taking up less than 6% of the mark. In a much smaller less defined font than the rest of the mark, it was unlikely to be noticed by persons in the relevant market. Further, the words ADVANCED DOG NUTRITION did not appear in the Heinz Wattie’s trade presentations.
• On their face and in the context of the logo, the words ADVANCED DOG NUTRITION were Heinz Wattie’s way of conveying to consumers the nutritional value and were descriptive,
• There was no evidence to support the Assistant Commissioner’s finding that ADVANCED DOG NUTRITION had an independent significance.

Collins J went on to find that the words ADVANCED DOG NUTRITION had not ceased to be descriptive nor had they taken on any trade mark significance.

Finally, in comparing the marks, the Court found that by far the most striking feature of the Heinz Wattie’s marks relied on was CHAMP and the silhouette of a dog. There was no meaningful comparison between this and a fair and notional use of the mark applied for. The Heinz Wattie’s marks would be referred to in the market as CHAMP and it was unlikely that customers would refer to ADVANCED DOG NUTRITION. The ideas of the mark were also different. Collins J found that the Assistant Commissioner had not given sufficient consideration to the appellant’s rights in its registered mark ADVANCE and it was “highly unlikely” that there would be any confusion in the relevant marketplace.

S25(1)(c)

Here Collins J concluded that the mark applied for was not identical or similar to one or more of the Heinz Wattie’s marks relied on – nor was an essential element of the mark applied for identical or similar to that which was well-known (i.e. the Court having found that ADVANCED DOG NUTRITION was not part of the Heinz Wattie’s marks for which it was well-known). The Court also found little likelihood of there being any connection between the appellant’s and respondent’s products.