In a somewhat surprising decision, the Court of Appeal of New Zealand has held that the trade mark ActiPhen is likely to be confused with the prior mark ACTAZIN. In its decision of 29 July 2020 in Pharmazen Limited v Anagenix IP Limited 2020] NZCA 306, the Court dismissed an appeal and upheld the assessments of the High Court and the Assistant Commissioner of Trade Marks.
The Applicant, Pharmazen, applied to register its ActiPhen trade mark broadly in class 5, in respect of goods including pharmaceutical preparations and a range of related class 5 dietary products. The Opponent, Anagenix, is the owner of the trade mark ACTAZIN, registered in respect of goods including kiwifruit extract powder as a dietetic substance for medical use and dietary and nutritional supplements.
As there was little doubt that the respective party's products were similar, the onus fell upon Pharmazen to establish that its use of the ActiPhen mark would not be likely to deceive or confuse. This is different to the onus in Australian proceedings, where the onus would have fallen upon Anagenix to establish that there was a risk of confusion.
What did the Assistant Commissioner think?
The Assistant Commissioner upheld the opposition, finding that the two trade marks were visually similar and that there was a substantial degree of similarity in their likely natural pronunciation, despite potential purchasers likely to be more discerning when purchasing the relevant class 5 goods (Pharmazen Limited v Anagenix IP Limited  NZIPOTM27 (7 September 2018)
Did the High Court agree that the marks are similar?
The Applicant appealed the decision to the High Court of New Zealand (Pharmazen Limited v Anagenix IP Limited  NZHC 1520 (1 July 2019)). Cull J dismissed the appeal and agreed that the marks ACTAZIN and ActiPhen are similar.
In a somewhat surprising assessment, Cull J considered that "most New Zealanders would be likely to pronounce the words as "ACT-I-FEN" and "ACT-I-ZIN which would make them phonetically extremely similar, with the only difference being "F" as opposed to "Z". Citing the well-known case of London Lubricants (1920) Limited's Application to support Cull J's view, he noted that there is a tendency of persons using the English language to slur the termination of words, such that the first syllable of a word is, as a rule, the most important for the purpose of distinction.
This assessment is surprising given that the opposed mark is ActiPhen (not ActaPhen) and that the respective suffixes -PHEN and -ZIN are quite different to one another.
It is interesting to note that both the Assistant Commissioner and the High Court did not seem to give much weight to the fact that Anagenix's goods are sold to manufacturers rather than end consumers, surely reducing any risk of confusion.
The Court of Appeal agreed that the marks are similar
The Court of Appeal agreed with the High Court and Assistant Commissioner, finding that the respective marks ACTAZIN and ActiPhen are similar, such that there is a risk of deception of confusion. As with previous assessments, the prefix ACT- was not considered to be descriptive or generic, and significant focus was placed upon the phonetic similarity between the trade marks with emphasis upon the first syllable ACT-.
The Court of Appeal concluded that, as consumers and manufacturers were considered likely to pronounce the respective marks ActiPhen and ACTAZIN with the same rhythm, structure and sound, Pharmazen could not demonstrate that its use of ActiPhen was not likely to deceive or confuse.
How did it play out in Australia?
The same case was also considered by IP Australia. However, it reached a very different conclusion to that reached three times in New Zealand, finding that the trade marks were not "deceptively similar", as the suffixes of the trade marks were so different and differences in spelling were simply too great.
Interestingly, the Court of Appeal of New Zealand gave this little weight, holding that ". we do not find the Australian decision persuasive given that it was made in the context of s 44(1) of the Trade Marks Act 1995 (Cth). In such oppositions the opponent has the onus of showing that there is an existing or pending trade mark in relation to which the opposed trade mark is either substantially identical or deceptively similar. Anagenix was not able to discharge that onus. However in the New Zealand context it is for Pharmazen to establish that its use of ActiPhen would not be likely to deceive or confuse."
Once again, New Zealand is not Australia
As we have discussed previously, this case once again demonstrates that New Zealand opposition proceedings will often come to a different conclusion than that reached by the cousins in Australia. This was also demonstrated in the recent Pierre de Coubertin cases and Black & White decision, our assessment of each of which of which can be found here:
- New Zealand: A sweaty time for the BLACK & WHITE trade mark
- Tempting Brands retains the Pierre de Coubertin trade mark in New Zealand
- New Zealand vs Australia: Battle over rights to the name of the modern Olympic Games' founder Pierre de Coubertin
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