TICK TOCK compared with TIC TAC – the importance of the similarity of goods in a finding of confusion

In an appeal on an opposition to registration of a trade mark, the High Court of New Zealand has recently issued a decision which clearly states that:

i) differences between goods and/or services should be taken into account when considering the likelihood of deception or confusion arising from use of a trade mark for which registration is sought; and

ii) when considering the scope of the protection afforded to well-known trade marks, a trade connection is more than a “bringing to mind”, and there needs to be a real probability of prejudice.

In Wistbray Limited v Ferrero S.p.A (CIV 2007-485-460, 11 December 2008), the appellant, Wistbray, successfully appealed to the High Court from a decision of the Assistant Commissioner of Trade Marks.

In July 2005, Wistbray applied to register the trade mark TICK TOCK for tea. The mark had not been used in New Zealand by Wistbray. The application was opposed by Ferrero – the registered proprietor of a number of TIC TAC trade marks for confectionery. The grounds of opposition relied upon by Ferrero were based on the following provisions of the Trade Marks Act 2002:

section 17(1)(a) – use of TICK TOCK would deceive or cause confusion because of the reputation attaching to Ferrero’s TIC TAC marks;

section 25(1)(b) – registration of TICK TOCK should be refused because it is similar to Ferrero’s TIC TAC marks which are registered for confectionary, and use of TICK TOCK is likely to deceive or cause confusion;

section 25(1)(c) – registration of TICK TOCK should be refused because it is similar to Ferrero’s TIC TAC marks which are well known in New Zealand. Use of TICK TOCK for tea would indicate a connection in the course of trade between Wistbray’s tea and Ferrero and would be likely to prejudice the interests of Ferrero.

The Assistant Commissioner decided in favour of Ferrero on the section 17(1)(a) and 25(1)(c) grounds. He held that Ferrero “has established a reputation in and awareness of its TIC TAC trade mark in New Zealand and, as a consequence…use by the applicant of the applicant’s mark would be likely to deceive or cause confusion.” He also held that Ferrero’s TIC TAC marks were well-known in New Zealand and, accordingly, registration of TICK TOCK would contravene section 25(1)(c).

In rejecting the section 25(1)(b) ground, the Assistant Commissioner said:

“The goods in respect of which registration of [Wistbray’s] mark is sought are quite different to those goods in respect of which [Ferrero’s] marks are registered…This may, in the ordinary course, mitigate against similarity of the marks. Indeed, it is unlikely that goods bearing [Wistbray’s] mark will be positioned alongside or near goods bearing [Ferrero’s] mark in supermarket outlets or in dairies or petrol stations.”

Wistbray appealed to the High Court.

On the first ground of appeal, under section 17(1)(a), Wistbray argued that use of TICK TOCK would not lead to deception or confusion because:

i) whilst there are similarities between TICK TOCK and TIC TAC, there are differences – especially conceptual differences; and

ii) the Assistant Commissioner failed to consider the differences between the goods – tea is not similar to the mint flavoured candies for which Ferrero enjoys a strong reputation.

While there were some similarities between the marks, Dobson J ultimately held that deception or confusion was unlikely to occur because tea and mint flavoured candies are of a “starkly different type” – they are unlikely to be displayed alongside or near each other when presented for sale. The profile of purchasers would also differ. The dissimilarity between the relevant goods was decisive in ruling out the prospect of deception or confusion. Wistbray was successful on this ground of appeal.

On the second ground of appeal, under section 25(1)(c), Wistbray accepted that Ferrero’s TIC TAC marks were well-known in New Zealand. Even so, Wistbray contended that use of its TICK TOCK mark is unlikely to suggest a trade connection with Ferrero and is unlikely to prejudice Ferrero’s interests. Wistbray’s arguments were based on the differences between the marks and between the goods, and the fact that Ferrero had not demonstrated that it would be prejudiced by use of the TICK TOCK mark for tea.

Dobson J was of the view that, while TICK TOCK for tea may bring to mind TIC TAC in the minds of consumers, those consumers would not then go on and assume that there was a trade connection between Wistbray and Ferrero. A tenuous association founded on the similarity of certain trade marks was deemed insufficient to establish a trade connection – something more is required.

In support of its arguments, Wistbray pointed to the fact that it is not unusual for the same word or words to be registered by different owners for different products and referred to the Jaguar case – Jaguar Cars Ltd v Manufacture Des Montres Jaguar SA [2006] IEHC 103.

As to the likelihood of prejudice to Ferrero, Dobson J concluded that there is no real prospect of harm, should Wistbray use its TICK TOCK mark, because the relevant goods are so dissimilar.

In considering the question of trade connection and prejudice, Dobson J took into account the recent decision of the European Court of Justice in Intel Corporation Inc v CPM United Kingdom Ltd (C–252/07, 27 November 2008).

Having found in favour of Wistbray on both ground, Dosbon J awarded costs and ordered that the application for TICK TOCK proceed to registration.

Henry Hughes & Co acted for Wistbray in this successful appeal.

Barbara Sullivan - December 2008