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Establishing a reputation in New Zealand and Australia requires local evidence

Our firm represented Actron Industries Inc. (“Actron”) in its defence in both Australia and New Zealand of oppositions filed by United Brands Products Design, Development and Marketing, Inc. (“United Brands”). 

This article compares the two parallel oppositions to the “Whippit” trade mark, below. One was decided by the Commissioner of Trade Marks in New Zealand ([2025] NZIPOTM 10), the other by a Delegate of the Registrar in Australia (2024 ATMO 106). Actron Industries successfully defended both oppositions.

Background

Actron Industries Inc. designated Australia and New Zealand under International Registration 1630441, for its “Whippit” device mark.

United Brands, owner of the “whip-it!” trade marks, filed oppositions.

Mark				Owner			Goods
				Actron Industries Inc.			instant non-dairy whipping cream
				United Brands			nitrous oxide cartridges, whipping cream dispensers, gas chargers and butane torches

The grounds alleged in both jurisdictions included:

• That use of the ‘Whippit’ device mark in relation to “instant non-dairy whipping cream” would be likely to deceive or cause confusion, because of the reputation which already existed in the “whip-it!” marks for cannisters and chargers for dispensing whipped cream (section 60 in Australia; section 17(1)(a) in New Zealand); and
• That the ‘Whippit’ device mark is similar to United Brands’ prior registered “whip-it!” marks and covers goods which are the same or similar, to the extent that deception or confusion would be likely if Actron were to use its mark (section 44 in Australia; section 25(1)(b) in New Zealand).

The New Zealand Decision

The opponent’s registered mark on which it relied specifically covered “nitrous oxide cartridges, as used in whipping canisters for whipped cream”. When compared to “instant non-dairy whipping cream”, the Assistant Commissioner found that the uses of the respective goods and the physical nature of the goods is different, and the respective goods are not competitive or substitutes for one another. 

Whilst both parties’ goods might have users in common and could potentially be sold through the same outlets, the Assistant Commissioner concluded that these particular goods are not the same or similar. The opponent’s ground of opposition based on its registered mark was dismissed at this point.

The ground of opposition based on the opponent’s reputation required a more complex analysis, because the reputation which was found to exist covered a broader range of goods than those covered by the opponent’s registered mark.

First, the opponent needed to establish, at a minimum, that an awareness of its mark existed in New Zealand. Actron was critical of the opponent’s evidence as much of it was not specific to New Zealand. The Assistant Commissioner was prepared to find that an awareness existed, but this finding was “entirely on the border”.

The Commissioner then considered the likelihood of deception or confusion, by factoring in:

• The extent of awareness of the opponent’s mark;
• The similarity of the respective marks;
• The proximity of the goods; and
• The trade circumstances.

The Assistant Commissioner found that there was a degree of similarity between the two marks. She also noted that there is a “relationship” between the parties’ goods, one being the means by which to create whipped cream and the other being a substitute for fresh whipped cream. However, the existence of a relationship does not necessarily cause consumers to assume that there is a common trade source.

On balance, the Assistant Commissioner concluded that there was no likelihood of deception or confusion. This appears to be influenced by the following factors:

• The opponent’s evidence of the awareness of its mark in New Zealand “only just clears the … materiality threshold to engage this ground”;
• In relation to goods such as whipped cream or systems for dispensing whipped cream, the phrase “whip it” is somewhat descriptive; and
• There was a lack of similarity between the parties’ goods, notwithstanding the “relationship” between them.

Actron’s designation of its International Registration was allowed to proceed to registration in New Zealand.

The Australian Decision

Similarly to New Zealand, the Delegate in Australia dismissed the ground of opposition based on the opponent’s registered mark because the respective goods are not similar. The Delegate noted the “obvious relationship” between the goods. However, a “relationship” does not make goods “similar” from a trade marks law perspective.

The Delegate cited the decision in Canterella Bros. Pty Ltd v Sunbeam Corporation Ltd [2007] ATMO 3 (24 January 2007) where it was held that ice cream and machines for making ice cream are not similar. In that case, the Delegate said:

“I cannot expect the average consumer to go shopping for an ice cream but return home with an ice cream maker instead – and even if they did, I am not satisfied that they would make any connection between the trade origin of the two”.

The same logic was applied here, where Actron’s goods are a foodstuff and the opponent’s goods are kitchen hardware.

In relation to the opponent’s ground of opposition based on its reputation, the Delegate noted that the assessment is informed by a number of variables, each of which could have a differing influence, depending on the circumstances. Quoting from Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 (20 December 2012), the Delegate summarised the factors as:

“the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties”.

In the present case, the opponent’s reputation in Australia was found to be “very limited”, because its evidence related to global use and promotion, rather than activity specifically in Australia. Like New Zealand, it was relevant that the phrase “whip it” could be descriptive in relation to whipped cream. The differences between the respective goods meant that consumers were unlikely to think that the opponent had “branched out” into foodstuffs. Consequently, the ground was not established, and protection of Actron’s International Registration was extended to Australia.

Importance of local evidence

A key weakness in the opponent’s case was its evidence. In both countries, the opponent only just managed to establish that it had an awareness or reputation in its mark. Assistant Commissioners in New Zealand and the Delegates in Australia need to see evidence tailored for the local market. Large global sales figures or extensive marketing activities in the US are irrelevant unless sales, marketing and consumer engagement directly in Australia or New Zealand can be shown.

The countries are so parochial that even a favourable outcome in one country may not assist in the other.

The Australian decision issued before the New Zealand hearing was held. However, the New Zealand Assistant Commissioner said:

“In the absence of a clear evidential link to circumstances in New Zealand, the findings in the Australian decision - especially those relating to the likelihood of deception or confusion in the context of the Opponent’s reputation - are of limited value”.

Conclusion

The ‘Whippit’ decisions serve as a reminder that trade mark oppositions in New Zealand and Australia, while often running in parallel, are not interchangeable. Success in one jurisdiction does not guarantee success in the other, particularly where reputation-based grounds are concerned. Both decisions underscore the importance of presenting jurisdiction-specific evidence - global brand recognition alone will not suffice. 

For international brand owners, the message is clear: if you want to enforce your rights in Australasia, you must build and prove your reputation locally. For practitioners, these cases reinforce the need for strategic, evidence-led opposition planning tailored to each country’s legal and commercial landscape.

If your clients are expanding into New Zealand or Australia, now is the time to review their trade mark portfolios. Contact our Trade Marks team for expert guidance on navigating cross-border brand protection and opposition strategy.

David Moore - July 2025