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NV Sumatra Tobacco Trading Company v New Zealand Milk Brands Limited

(2011 NZCA 264, 14th June 2011)

Sumatra was partially successful in its application to register the mark ANGKOR. The Court of Appeal essentially agreed with the High Court that use of ANGKOR would infringe upon NZ Milk Brands ANCHOR registrations for dairy products. However, the scope of those registrations had recently been diminished enough for ANGKOR to be allowed for cereal, biscuits and confectionery.

Sumatra’s class 30 application covered coffee, tea, cocoa, chocolate, artificial coffee, flavourings for beverages, cereal, non-dairy creamer, biscuits, and confectionery. NZ Milk Brands has class 29 registrations for the word mark ANCHOR covering a wide spectrum of dairy products, and a class 30 registration for a device mark prominently containing the word ANCHOR that covered some of the goods in Sumatra’s application. The class 30 device mark was held sufficiently similar to ANGKOR, and the goods were sufficiently similar for a finding of a likelihood of confusion or deception under section 25(1)(b).

NZ Milk Brands class 29 registrations were held to be similar goods to coffee, tea, cocoa, chocolate, artificial coffee, flavourings for beverages, and non-dairy creamer. While the latter are not ready to consume, they are still competitive with the former with sufficiently similar respective uses and users. The marks were considered sufficiently aurally and visually similar, and a finding of a likelihood of confusion or deception under section 25(1)(b) was made in relation to those goods.
In these assessments under section 25(1)(b) the Court of Appeal adjusted the sequence of questions to be asked to:

(a) Is an applicant’s proposed mark (or marks) in respect of the same or similar goods or services covered by any of the opponent’s trade mark registrations?
(b) If so, is the applicant’s proposed mark (or marks) similar to any of the opponent’s trade mark registrations for the same or similar goods identified in the first inquiry?
(c) If so, is use of the applicant’s proposed mark likely to deceive or confuse?

Sumatra introduced pleadings under section 26(b), which overrides section 25, that special circumstances mean that the ANGKOR mark should be registered. The special circumstances were the intervening partial revocation of goods from relevant Milk Brands registrations following litigation with a third party. Most notably, the specification of the class 30 device mark prominently containing the word ANCHOR was significantly pared back. This was sufficient for now finding that its goods were no longer sufficiently similar to cereal, biscuits and confectionery, for which ANGKOR was allowed to proceed to registration.