James & Wells wins High Court Appeal for Cambricare

The recent decision in Nutricia NV v Cambricare NZ Ltd [2012] NZHC 1344 contains an important lesson for trade mark owners.

On 5 June 2012, James & Wells appeared on behalf of Cambricare New Zealand (CBNZ) in the High Court, Wellington.

On the other side was Nutricia, owner1 of the KARICARE trade marks in New Zealand. Nutricia was appealing the September 2011 decision of the Assistant Commissioner of Trade Marks rejecting Nutricia's opposition2 to CBNZ's application3 to register its trade mark CAMBRICARE in respect of infant and adult milk powders.

The grounds of Nutricia's appeal

Nutricia appealed the Assistant Commissioner's decision on three grounds:

Use of CAMBRICARE is likely to deceive or cause confusion (with Nutricia's KARICARE marks) (section 17(1)(a) Trade Marks Act); CAMBRICARE is confusingly similar to Nutricia's registered trade marks for KARICARE when used in relation to the same or similar goods (section 25(1)(b)); and CAMBRICARE, or an essential element of the mark, is similar to Nutricia's KARICARE marks which are well known in New Zealand in respect of identical or similar goods and registration and use of the CAMBRICARE mark would be taken as indicating a connection in the course of trade between CBNZ's goods and Nutricia which would be likely to prejudice Nutricia's interests (section 25(1)(c)). The substance of Nutricia's case

As his Honour remarked at [2] of the Court's decision "[t]he gravamen of Nutricia's case is that CAMBRICARE is confusingly similar to its KARICARE suite of trade marks".

Hence if the Court found use of CAMBRICARE was likely to confuse consumers under section 17(1)(a) of the Act Nutricia would also likely succeed on the two grounds of appeal under section 25 of the Act.

Summary of the parties' arguments

Counsel for Nutricia summarised Nutricia's arguments in relation to section 17(1)(a) thus (at [23]):

It is the overall impression provided in a comparison of the marks CAMBRICARE and KARICARE which is important in this case. Taken separately, the fact that the marks look and sound similar, and share the same idea (or lack thereof) is significant, but taken as a whole and taking into account the significant reputation of KARICARE, imperfect recollection, and the circumstances of trade, a substantial number of persons are likely to be confused.

In response, Ben Cain on behalf of CBNZ argued, inter alia, that:

the CAMBRICARE mark is distinctive; the CAMBRICARE mark is visually, aurally and conceptually...

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