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The importance of distinctive elements to the question of similarity

The High Court decision in Manuka Doctor Ltd v Hill¹ considers the issue of trade mark similarity, and the pivotal consideration of distinctive versus descriptive elements in deciding whether there is a sufficient risk of deception or confusion in order to deny registration. The case was an appeal from the decision of an IPONZ Assistant Commissioner which did not uphold the opposition by Manuka Doctor Ltd to the registration of MANUKA MEDIC.² It concerned two health-related products derived from mānuka oil. Mānuka oil, derived from the foliage, bark and seeds of mānuka trees and shrubs, has a range of healing properties. M­­ānuka oil is used in a number of health-related products made in Aotearoa / New Zealand.

Rory Hill created a mānuka-based topical spray named "Manuka Medic," which he sought to register as a trade mark. Manuka Doctor Ltd, specialising in mānuka-based products with the registered mark MANUKA DOCTOR, opposed the registration under s 25(1)(b).

Radich J’s decision weighed three main issues:

1. The similarity between the “Manuka Medic” and “Manuka Doctor” marks.
2. The likelihood of confusion among consumers.
3. Whether the distinctive elements of both marks mitigated the risk of deception or confusion.

Similarity of Marks

Section 25(1)(b) of the Trade Marks Act 2002 provides that a mark cannot be registered where it is similar to an existing registered mark, and use is likely to deceive or confuse consumers as to the origin of goods and/or services pertaining to the marks. 

The Court emphasised that the words "Doctor" and "Medic" are quite different, both visually and phonetically.³ It found that this difference negated the alleged similarity based on the marks sharing a common idea.

On the shared use of the term "Manuka”, Radich J considered it to be of a descriptive nature, referring to goods derived from the mānuka plant (leptospermum scoparium). The Court cited previous cases where it was found that the word "Manuka" lacked distinctiveness.⁴ For further reading on this subject and the intersecting considerations of tikanga Māori, please refer to our previous article concerning Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited.⁵

Ultimately, the Court found that there was insufficient similarity under section 25(1)(b) of the Act. While this was enough to dismiss the opposition, Radich J saw value in considering the likelihood of deception or confusion.

Likelihood of Deception or Confusion

In considering the likelihood of confusion or deception between the marks "Manuka Medic" and "Manuka Doctor," the Court emphasised that the assessment should not solely rely on comparing the marks side by side, as consumers may not always encounter the products together. Instead, Radich J looked at the overall impression left on consumers and the potential for confusion or deception in the marketplace. This included taking into account the concept of imperfect recollection: that consumers will not have perfect recall of marks when encountering them.⁶

Despite some similarities between the marks, such as the number of syllables and cadence, the Court ultimately concluded that the use of the "Manuka Medic" mark was not likely to cause deception or confusion among consumers. This decision was influenced by the descriptive and allusive quality of the words used in the marks, as well as the low distinctiveness of the word "Manuka" in relation to the goods.

Distinctive Elements

Furthermore, the Court highlighted the importance of considering the distinctive elements of the marks in mitigating the risk of confusion. It noted that consumers would focus on these distinctive elements rather than assuming all products with similar descriptive terms come from the same source.⁷

Distinctive elements in a mark are those that set it apart from others in the marketplace and help consumers identify the source of the goods or services. Radich J found that the distinct elements “Medic” and “Doctor” contributed to creating separate brand identities for the products, making it less likely for consumers to confuse one with the other. This difference in distinctive elements was sufficient to prevent the necessary deception or confusion among consumers.⁸

Moreover, the Court recognized that descriptive or suggestive elements within a mark, such as references to health benefits or characteristics of the goods, may reduce the distinctiveness of the mark.⁹ It also noted that the focus in the mind of consumers will be on the distinctive elements of the marks not the descriptive elements.  In this case, his Honour was of the view, given the descriptiveness of the elements of the trade marks, that consumers would not think that all things “mānuka medical” would originate from the same source.¹⁰ On this basis, confusion and deception was not considered likely. 

Key Takeaways

In summary, Radich J found for Rory Hill allowing registration of MANUKA MEDIC. In finding that the distinctive elements of "Manuka Medic" and "Manuka Doctor" were not sufficiently similar, this played a crucial role in mitigating the risk of deception despite the common first word MANUKA.

This case highlights the importance of considering the distinctiveness of elements of a mark in the context of the goods and services for which they are registered when assessing similarity. However, once this is done it is the overall impression the marks create in the minds of consumers which is crucial in determining the risk of consumer deception or confusion in New Zealand.

Gracie Scragg - June 2024

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