Nothing But Foreign Reputation Insufficient for Opposition

In Kiwi Fresh Orange Company Limited v Monde Nissin (Australia) Pty Ltd 2020 NZIPOTM 26, despite spill-over reputation from the Australian market, the Assistant Commissioner declined to find a likelihood of deception or confusion due to the low distinctiveness of Monde Nissin’s marks.

In November 2015 Kiwi Fresh applied to register both a device mark and the word mark Grove “Nothing But” in respect of fresh fruit and fruit juices, which they began selling from that date. After being accepted these were opposed by Monde Nissin on the basis of their reputation in the marks NUDIE NOTHING BUT and NOTHING BUT in relation to fruit juices and on the basis that the applications were made in bad faith.

Monde Nissin’s marks have been used in Australia since 2010 and have an established reputation and market share there in the fruit juice, coconut water and vegetable juice markets. In May 2015 they began exploring the possibility of expanding into the New Zealand market and filed applications for their marks in February 2016. The NUDIE NOTHING BUT mark proceeded to registration, but the NOTHING BUT mark has been held in abeyance pending the outcome of the opposition to Kiwi Fresh’s accepted applications.

Opposition on the basis that use of the mark would be likely to deceive or confuse (section 17(1)(a)) first requires the opponent to establish a reputation in their mark in the New Zealand market at the application date of the opposed mark, with that reputation only at the level of awareness, cognisance or knowledge.

It was claimed that sample products of the opponent were sent to a New Zealand food distributor in May 2015, but the relevant email correspondence did not show use of the relevant marks. The opponent also sought to rely upon its website being accessible to New Zealanders, but given that the evidential extracts post-dated the application date it was unclear whether the relevant marks were used on the website prior to that date and in any case the number of New Zealand visitors to the website before that date was minimal. The opponent’s social media posts showed use of the marks prior to the relevant date, but whether those pages were viewed by New Zealanders prior to the relevant date was unclear.

The opponent also sought to rely upon spill-over reputation on the basis of its established reputation is Australia in conjunction with the significant volume of travellers between the countries. The Assistant Commissioner found it reasonable to assume that sufficient travellers from New Zealand would have been exposed to the marks to establish a level of reputation for those marks in New Zealand that satisfies the initial onus on Monde Nissin – but little more than that. While there was some use evidence for the NUDIE NOTHING BUT mark, it was noted that separate use of the NOTHING BUT mark was still in close proximity to the NUDIE mark and so functioned as a secondary mark and usually in a descriptive sense – such as ‘nothing but 21 oranges’.

Monde Nissin also sought to rely upon the finding in the case Muzz Buzz Franchising Pty Ltd v JB Holdings (2010) Ltd [2013] NZHC 1599 at [74] that Australia and New Zealand can be treated as a single economic market. However, the Assistant Commissioner noted first that subsequent section 17(1) cases have emphasised that it is reputation in New Zealand that matters, and secondly that the present case is distinguishable from Muzz Buzz as there was no evidence of proactive exploitation of the opponent’s marks. It was also noted that in Muzz Buzz the Judge did not start with an assumption of a single economic market and still required there to be some reputation in the mark in New Zealand.

In comparing the actual use of the opponent’s marks to the Grove “Nothing But” mark the Assistant Commissioner noted that the generally important first element or word is distinct in each case. It was also noted that the commonly understood meaning of ‘nothing but’ is ‘only’ and conveys concepts of purity, simplicity, wholesomeness, and a product that is not mixed with other substances, and that the opponent’s marks mostly use the phrase in a descriptive sense or to allude to the contents of the goods. In respect of the applicant’s mark the Assistant Commissioner noted that Grove is the more distinctive part, and that while it alludes to juices made from fruit grown on trees when used in relation to such goods, the concept of a small group of fruit trees is not contained in the opponent’s marks. Viewing the marks as a whole the Assistant Commissioner found the similarities of the marks to be at the lower end of the spectrum and that it was even lower in respect of the applicant’s device mark. Given the above, despite the opposed goods being the same as or similar to the opponent’s goods, being marketed towards the same consumers and involving low level purchasing decisions, it was held that a significant number of consumers would be unlikely to be deceived or confused by normal and fair use of the opposed marks – even with taking into account imperfect recollection.

Monde Nissin’s bad faith opposition ground centred on the fact that Kiwi Fresh’s sole director has substantial experience in the fruit juice market and would have been very aware of the significant reputation that the opponent’s marks had obtained in the Australian market. It argued that Kiwi Fresh’s conduct in adopting marks that contain the opponent’s mark or a key element thereof fell short of the normal standards of acceptable commercial behaviour as they sought to unfairly capitalise on the opponent’s reputation therein. Kiwi Fresh countered that this was conjecture and there is no absolute prohibition on a trader registering a foreign mark for use in New Zealand as bad faith is determined in relation to first use or reputation in New Zealand and that in any case the marks are insufficiently similar. The Assistant Commissioner held that bad faith was not established. Even if awareness of another party’s marks is shown, on its own this is insufficient to establish bad faith, which requires a basis for ownership of the same or confusingly similar marks in New Zealand.

Author: Quinn Miller

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