New Zealand: Australia and New Zealand are not always similar

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

New Zealand: Australia and New Zealand are not always similar

A recent New Zealand High Court decision (Pharmazen Limited v Anagenix IP Limited [2019] NZHC 1520 (July 1 2019)) serves as a reminder of the subjective nature of the comparison of trademarks, with the court finding the marks “Actazin” and “ActiPhen” too similar, while on the same facts and evidence, an Australian hearings officer had decided the opposite.

What happened – a crisis of kiwifruit

The case involved the marks ­“Actazin” and “ActiPhen”, both covering kiwifruit powder. The applicant argued forcefully, but ultimately hopelessly, that the marks were to be applied to dissimilar goods. Unfortunately, neither the law nor common sense permitted this ­argument.

The applicant argued, perhaps surprisingly, that its goods, which included “kiwifruit powder (not for medical purposes) for use as an ingredient in dietary supplements” were not similar to the opponent’s goods, which included “kiwifruit extract powder as …an ingredient adapted for human health …use including dietary… supplements”. Its reasoning was that the actual goods sold by the parties were different due to their manufacturing procedures, additives, and water and enzyme activity. It further argued that there could be no likelihood of confusion because the opponent’s goods were not for sale in New Zealand.

The judge looked over the case law in this area, and reaffirmed that the comparison of goods in a specification is a purely notional exercise, and when considered on their face, the respective specifications were obviously similar, if not identical.

This meant the matter came down to a comparison of marks.

In each of the New Zealand and Australian decisions, the decision-maker was presented with a table breaking down the marks into their constituent parts, and was asked to analyse the similarities/differences between the marks in detail.

In the Australian decision, this review resulted in the marks being considered different aurally and visually.

In New Zealand, the hearings officer noted that the comparison is between the marks as a whole, having regard to their essential features; it is not a side-by-side comparison, and allowance must be made for imperfect recollection.

However, the hearings officer then made what might be considered a side-by-side comparison and held that the marks were similar because they both began with the prefix “act”, they had three syllables, and they ended with the letter “n”.

On appeal, the judge also noted the artificiality and inapplicability of such a side-by-side comparison, but still agreed with the hearings officer; the deciding factor being that the similarities occurred at the start of the marks. In so doing, the judge was mostly swayed by the similarity of the first syllable, opining that the first part of the mark is the most important because of the tendency of consumers to slur the second part.

The respective analyses at first instance and appeal both effectively applied an imperfect recollection test, but arguably such a test should not be applied without careful consideration of the likely customer. In neither case was there particular regard to the types of customers who would purchase the kiwifruit dietary supplements covered by the marks. Such health conscious customers of nutraceuticals are likely to be more sophisticated, and demonstrate a higher level of attention when making purchasing decisions. A lot was made of the aural similarities between the marks, whereas perhaps the visual comparison is more important because of the way the products are likely to be purchased off the shelf in a pharmacy, or online.

This case is somewhat of a departure from previous recent cases in New Zealand, which have taken a fairly robust approach along the lines of that seen in Australia, to the comparison of pharma or nutraceutical names, generally on the basis that relevant customers seem to be well versed in differentiating brands with common (often ingredient-based) prefixes.

In this case, the prefix “act” was chosen by both parties to indicate the active ­ingredient “Actinidin”, but because this was not yet commonplace on the register the descriptive nature of this prefix was not taken into account, leaving the first-comer Anagenix with a broader scope of protection than perhaps was warranted.

watts-victoria.jpg

Victoria Watts


Baldwins Intellectual PropertyLevel 15, HSBC House, 1 Queen St, Auckland 1010, New ZealandTel: +64 9 373 3137Fax: +64 9 373 2123email@baldwins.comwww.baldwins.com

more from across site and SHARED ros bottom lb

More from across our site

The insensitive reaction to a UK politician crying on TV proves we have a long way to go before we can say we are tackling workplace wellbeing
Adrian Percer says he was impressed by the firm’s work on billion-dollar cases as well as its culture
In our latest interview with women IP leaders, Catherine Bonner at Murgitroyd discusses technology, training, and teaching
Developments included an update in the VAR dispute between Ballinno and UEFA, the latest CMS updates, and a swathe of market moves
The LMG Life Sciences Americas Awards is thrilled to present the 2025 shortlist
A new order has brought the total security awarded to a Canadian tech company to $45 million, the highest-ever by an Indian court in an IP case
Andrew Blattman reflects on how IP practices have changed and shares his hopes for increased AI use and better performance on the stock market
The firm said major IP developments included advising on a ‘landmark’ deal involving green hydrogen production, as well as two major acquisitions
The appointments follow other recent moves in the European market as firms look to bolster their UPC offerings
Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
Gift this article