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Roby Trustees Ltd v Mars NZ Ltd

(2012 NZCA 450, 1st October 2012)

In Roby Trustees Ltd v Mars NZ Ltd the Court of Appeal overturned the High Court decision that had prevented Roby from registering their device mark OPTIMIZE PRO LEAD THE PACK for dog food on the basis of Mars’ stylised registration for OPTIMUM that included the same goods.

In the Court of Appeal Roby accepted that its case stood or fell on whether the respective marks so resemble one another as to be likely to deceive or confuse consumers (s 17(1)(a)). Prior to making that assessment the Court of Appeal allowed as further evidence the fact that a third party, Nestle, had subsequently registered OPTISTART and OPTIHEALTH covering the same goods as Roby’s application.

The relevant consumer is the pet food purchasing public, and it was noted that Mars’ use of OPTIMUM to those consumers only occurred in conjunction with the tagline ‘NUTRITION FOR LIFE’, the combination of which was also registered by Mars in a device mark. Further, given that dog roll occupies the lower end of the pet food market, relevant consumers could be subject to making impulsive purchases and have imperfect recollection.
In applying the Pianotist rules for comparison of marks, the Court of Appeal held that Roby’s mark is to be compared with OPTIMUM in conjunction with the ‘NUTRITION FOR LIFE’ tagline rather than alone. While accepting that in use Roby’s mark could be shortened to OPTIMIZE PRO, the Court of Appeal rejected the High Court’s finding that it would be shortened to OPTIMIZE. Even accounting for the shortened version, the marks were found to be aurally different. Taking into account the circumstances of purchase, the Court of Appeal considered the visual impact of the marks to be the most important comparison, and held that when considered as a whole or when acceptably shortened the respective marks are visually different. It was also noted that the first part of the mark is not the most important comparison when there are other marks in use that begin the same. Here, the Nestle OPTI- marks reduced the distinctive capacity of Mars’ OPTIMUM marks. While there was found to be conceptual similarity between the marks, Mars had not established that its mark is distinctive in respect of that concept. The Court of Appeal also held that, having succeeded on the absolute ground of section 17(1)(a), on the facts of the case Roby had no case to answer on the relative grounds of section 25.