NV Sumatra (Sumatra) applied to register ANGKOR as a word mark in class 30 for coffee, tea, cocoa, chocolate, artificial coffee flavourings for beverages, cereal, non-dairy creamer, biscuits, and confectionary. Milk Brands owned various registered word, device and word, and device marks comprising or incorporating the word ANCHOR, and/or an image of an anchor in classes 29, 30 and 32.

Milk Brands opposed Sumatra’s application relying on its prior registrations (s25(1)(b)), the fact that its ANCHOR mark was well-known in New Zealand for dairy products (s25(1)(c)) and the prior reputation and awareness of its ANCHOR marks in New Zealand (s17(1)(a)).

Sumatra also raised a new point on appeal, namely that several of Milk Brands’ registrations had been pared back as a result of revocation proceedings. In particular its ANCHOR word/device mark in class 30 had been reduced to cover only milk and chocolate based beverages. Sumatra argued that special circumstances existed under s26(b) to allow concurrent registration of ANGKOR.

The Court allowed the appeal (only to the extent of registration of NV Sumatra’s mark for cereal, biscuits and confectionary) but dismissed the appeal in all other respects.

The Court of Appeal took the opportunity to refine the test applying under s25(1)(b) i.e. where the trade mark is similar to an already registered trade mark. This slightly recalibrated test is:

(a)   Is an applicant’s proposed mark (or marks) in respect of the same or similar goods or services covered by any of the opponent’s trade mark registrations?;

(b)   If so, is the applicant’s proposed mark (or marks) similar to any of the opponent’s trade mark registrations for the same or similar goods identified in the first inquiry?;

(c)   If so, is use of the applicant’s proposed mark likely to deceive or confuse?

The decision also addressed the often-difficult area of comparison between a word mark and a device mark – in this case the word ANGKOR and (separately) a combined word/device mark ANCHOR and the device of an anchor. Given the prominent nature of ANCHOR in the device mark, the Court of Appeal considered it legitimate to compare that word with ANGKOR. It considered that the two marks were similar given the aural similarity and that the length of the words was the same with only two middle letters different. That difference “would not necessarily be picked up by consumers in a normal shopping situation, particularly taking into account imperfect recollection”.

When comparison was also made between ANGKOR and a device only mark comprising a picture of an anchor, the marks were held not to be similar.

The decision also saw a rather unusual application of s26(b) (“other special circumstances”). As a result of separate revocation action taken by another entity against Milk Brands’ registrations, the class 30 registrations that had been cited in support of s25(1) grounds had been narrowed. The Court was prepared to find that three of the goods applied for (cereal, biscuits and confectionary) could no longer be regarded as similar to the goods now covered by Milk Brands’ registration in class 30 so that, by operation of s26(b), Sumatra was no longer precluded from registering its mark in respect of those specific goods. All other goods for which registration was sought in class 30 were ruled out under ss 25(1)(b) and (c) and s17(1)(a).