Machinery Manufacturer‘s Victory over Luxury Automobile Company

A recent decision of the New Zealand Court of Appeal (Daimler AG (“Daimler”) v Sany Group Co Ltd  (“Sany”) [2015] NZCA 418) has seen Chinese heavy manufacturing company Sany emerge triumphant from a long standing dispute with automobile manufacturer Daimler, who operates internationally under the Mercedes-Benz brand.


Mercedes-Benz’s three-pointed star trade mark has been used in New Zealand since 1911. Multiple variations of the trade mark have been registered for machinery and vehicles in New Zealand:

Daimler Mercedes-Benz

In 2006, Sany applied to register its trade mark for machinery and vehicles in New Zealand:


Daimler opposed registration of Sany’s trade mark before the Assistant Commissioner of Trade Marks. The opposition was unsuccessful, so Daimler appealed to the High Court. The appeal was dismissed for a number of reasons, including that Sany’s trade mark was not so similar to Daimler’s trade mark as to be likely to deceive or confuse consumers. Daimler then appealed to the Court of Appeal.

The Court of Appeal’s Decision

It was not disputed that Daimler’s trade mark is well known in New Zealand. The main issue was whether the trade marks were similar, and therefore whether there was likelihood for deception or confusion under section 17(1)(a) of the Trade Marks Act 2002.

Daimler argued that the three-pointed star within the circle was an “essential element and dominant feature” of its trade mark. When comparing this to Sany’s trade mark, the “dominant concepts and visual appearances” of the marks were similar, and therefore confusion or deception was likely.

However, the Court of Appeal reached the same conclusion as the High Court and the Assistant Commissioner, finding that the trade marks were sufficiently dissimilar, both visually and conceptually. Notably, the Court considered that the inclusion of the word “Sany” in Sany’s trade mark did distinguish it from that of Daimler but even without its inclusion there was no risk of confusion as the trade marks were still lacking in visual similarity.

The Court further affirmed that the relevant purchasers or prospective purchasers of goods bearing the trade marks would be discerning and reasonably knowledgeable. Therefore, confusion between the two trade marks was unlikely.

This case is one part of a wider global dispute between Daimler and Sany over the use and registration of Sany’s trade mark and it is interesting to note the divergence in outcomes of the various international courts and trade mark offices. This is a reflection of the differences in the individual laws and practices of each jurisdiction.


 Ultimately, this case is an uncomplicated exercise in the comparison of two trade marks. A range of arguments was raised by Daimler and Sany to support their respective positions, but as is apparent from this decision, long-standing and basic concepts of trade mark law can still be strong grounds for opposition.

Recent Trade Mark Decisions

Lacoste [2015] NZIPOTM 7 (25 June 2015) lacoste1


A notice of intention to reject issued under section 43 of the Trade Marks Act 2002 in respect of trade mark application number 998331 in the name of Lacoste.  The Commissioner directed that a halt of 6 months be placed on application no. 998331 pending a decision regarding the cited trade mark owned by Crocodile International Pty Ltd.  The cited trade mark status should be reviewed 10 days before the end of that period to assess if a further halt should be put in place.

Point of Interest – the Sandwich Principle

The Commissioner considered the long-standing and ongoing proceedings between Lacoste and Crocodile International Pte Ltd in respect of the CROCODILE and lacoste2 trade marks.  Lacoste argued special circumstances applied to enable registration of the current trade mark as it is the owner of a significant number of registered trade marks in New Zealand and had provided evidence of use of its trade marks in New Zealand.  Lacoste argued application no. 998331 is registrable under section 26(b) due to special circumstances which “makes it proper for the trade mark to be registered”.  This is referred to as the “sandwich” principle (which echoes the 1953 Act argument of Equity on the Register).  The “sandwich” principle holds that a later filed application can be registered because an earlier registration creates a right despite other similar trade marks filed by others in between the two applications.

Commissioner found that current proceeding is part of the wider disputes between Lacoste and Crocodile International Pte Ltd and advised that caution should be exercised “not to ‘muddy the waters’ before the courts have had the opportunity to determine those matters”.  Regulation 28 allows the Commissioner discretion to place matter under a Halt.  Therefore, while Lacoste has declined to put this application into abeyance, the Commissioner considered it in the public interest to instil a Halt to ensure the Lacoste-Crocodile International Pte Ltd disputes are “managed in a holistic, co-ordinated and systematic fashion (which includes the cited application being determined prior to the current application)”.

Commissioner further comments that the “sandwich” principle forms part of a draft Practice Guideline not yet published by the Office.  In its present format, the requirements are that “the applicant’s earlier filed mark and the intervening (cited) mark both had to be registered, and the applicant’s later (applied for) mark had to be the same or a substantially identical mark to its earlier trade mark registration (rather than being the same or a very similar mark)… substantially identical in this context means not materially different”.


Anthony Christopher Gibbs v Westland Milk Products IP Limited and Easiyo Products Limited [2015] NZIPOTM 8 (8 July 2015)


Opposition by Westland Milk Products IP Limited and Easiyo Products Limited to application no. 969296 Dairy-Yo in class 29 in the name of Anthony Christopher GIBBS.  The Commissioner held that “having regard to the reputation acquired for the EasiYo markthat the Dairy-Yo mark, if used in a normal and fair manner in connection with the opposed goods, would not be reasonably likely to cause confusion or deception amongst a substantial number of persons”.  Opposition does not succeed on any grounds and the Commissioner directed that Dairy-Yo should be registered.

Point of Interest – Status of the Opponents

Preliminary issue raised regarding status of the opponents.  The notice of opposition identifies “the Opponent” as “Westland Milk Products IP Limited / Easiyo Products Limited”.  The Opponent is also claimed as the owner of trade mark registration nos. 218842 and 218843.   The registrations are registered in the name of Westland Milk Products IP Limited, struck off the New Zealand Company Register in 2011.

At the Hearing a chain of title to the current opponents was outlined including reference to a 2014 assignment recorded to correct the Register.  However, in order to lodge an opposition an opponent must be a legal person and because Westland Milk Products IP Limited was struck off on the date of opposition, it could not be a legal person and therefore could not be an opponent.  Easiyo Products Limited is also identified as an opponent and qualifies as a legal person.  The Commissioner held the opposition could continue in the name of Easiyo Products Limited.

The grounds of opposition claimed including that use of Dairy-Yo is likely to deceive or cause confusion; and/or is contrary to law because of breaches of the Fair Trading Act and passing off (section 17(1)(a) and (b)); that Dairy-Yo is similar to registered trade mark EASIYO and likely to deceive and confuse (section 25(1)(b)); and/or that Dairy-Yo is identical/similar to opponent’s well known trade mark (section 25(1)(c)).

Commissioner held that because Easiyo Products Limited does not own the trade mark registrations, it has no standing to plead the section 25(1)(c) ground.  There is nothing in the statute which requires the opponent to also be the owner of the trade marks for the remaining grounds of opposition so Easiyo Products Limited is entitled to bring the opposition on those grounds.


Bluebird Foods Limited v Griffin’s Foods Limited [2015] NZIPOTM 9 (9 July 2015)


Application for Removal for non-use by Griffin’s Foods Limited (“Griffins”) of registrations in the name of Bluebird Foods Limited (“Bluebird”).  Commissioner held Griffins is an aggrieved person, Bluebird has not used the marks during the relevant period and has not established that its non-use of the marks was due to special circumstances.  However, under the Commissioner’s discretion trade mark nos. 149111, 173987, 173988, 293733, 293734, 316068, 316069, 752029, and 752033 are to remain on the register.

Number 149111 173987173988 293733293734 316068316069 752029  752033
TradeMark  ccs1  ccs2 ONLY CC’S IS TASTING LIKE THESE  ccs3 CC  ccs4

Point of Interest – Exercise of Commissioner’s Discretion

Special circumstances for non-use were raised pointing to problems of supply and quality control (including because of an infestation of weevils).  The Commissioner held there was insufficient evidence to show the extent and effect of these circumstances on Bluebird and therefore no special circumstances were established.

Bluebird submitted use of the trade mark after the end of the non-use period identified in the removal action was evidence of an intention to use the trade marks and efforts to prepare for that use during the relevant period.  The Commissioner held that while this evidence did not help Bluebird establish use during the relevant period, it did go towards the exercise of discretion which was “influenced by the fact that Bluebird did not abandon its marks; the evidence that there is a residual reputation in the marks despite the period of dormancy; and the fact that no one would be deceived or confused if the marks were to remain on the register in the name of Bluebird Foods Limited – in fact, the opposite may be true”.

The Commissioner also referred to allegations from Bluebird that Griffins had no bona fide intention to use the CC’s trade mark in good faith, however found that in the face of no evidence filed by Griffins, that allegation could not be assessed.

Frequently Asked Questions about Protecting Your Trade Mark on Tropical Islands

Advances in communication and travel have opened trade routes and access for consumers and traders across many industries.  Commerce in far-flung islands is no longer hampered by distance and a number of island states are now establishing their own intellectual property laws.  It is increasingly important to bear in mind the development of National trade mark laws particularly in countries where formal trade mark rights have been dependent on overseas registrations.

These are some of the countries where we have recently been asked how best to protect trade mark rights:

The British Virgin Islands allocates registered trade mark rights through an extension of an existing UK trade mark application.  The resulting British Virgin Islands registration is dependent on the UK base registration and any changes to the UK base registration must also be made to the British Virgin Islands registration The British Virgin Islands Trade Marks Act 2013 comes into force on 1 September 2015. Once the new Act is in force, trade mark registrations in the British Virgin Islands must be secured through a registration filed on a National basis.

French Polynesia has historically been covered by an extension of the French National registrations.  The extension of those rights is no longer automatic.  Older National registrations will continue to cover French Polynesia but National applications filed between 3 March 2004 and 31 January 2014 require separate validation if French Polynesia is to be covered.  National trade mark applications filed after 31 January 2014 require the owner to opt in to coverage in French Polynesia, if it is desired.

Vanuatu previously required an existing UK trade mark application or registration as a base to secure a Vanuatu trade mark right.  The Trade Marks Act 2011 transfers any rights secured under this system to National Vanuatu trade mark rights.  Trade mark applications should now be filed under the new Act and re-registration of a UK registration is no longer possible.

The Marshall Islands was once a US territory and trade mark rights were covered by US legislation.  No National legislation has been adopted since the Marshall Islands secured full sovereignty in 1986 so at the moment trade mark registrations cannot be secured.  Trade mark rights in the Marshall Islands depending upon common law rights and publication of cautionary notice is recommended to draw attention to those rights.

The Cook Islands was covered by the New Zealand Trade Marks Act 1953.  However, when that legislation was repealed and replaced by the 2002 Act, reference to the Cook Islands was removed.  Nothing was included in the 2002 Act to address transfer of trade mark registrations which used to cover the Cook Islands or to cover new trade mark rights sought in the Cook Islands.  At the moment there are no mechanisms to register trade mark rights in the Cook Islands so traders need to rely on their common law rights.  Publication of cautionary notices are recommended to draw attention to those rights.

Tuvalu, Kiribati and the Solomon Islands still operate under a system of re-registration based upon a registration in the UK.  The registration is valid for the duration of the UK registration and renewable once the UK registration is renewed.

This list is by no means exhaustive and we recommend on-going review with our network of local agents as the law continues to develop.

New Zealand’s Newest Website Domain Extension: .nz

The shortened domain extension .nz became available for registration as of 1pm on 30 September 2014.

This means individuals and companies, from both New Zealand and around the world, can now register

New Zealand follows in the footsteps of the UK in dropping the .co and it is sure to be the most popular domestic domain name extension in time – rather than a question of if, it is inevitably a question of when this extension will take over as the most prevalent and sought after domain extension.

Rights given to existing registrants

If you have an existing domain (e.g.,, etc.) registered before 9am 30 May 2012 you are granted certain rights to obtain the .nz equivalent.

However, the effectiveness of these rights depend on whether there are other registrations for your domain name (registered before 9am 30 May 2012) and what the intentions are of the other registrants with regard to the new .nz extension.

If you and another registrant, with the same domain but different extension (e.g. and, both want the .nz domain name, the new domain will enter into the conflicted name process. The DNC does not go into specifics as to what this process involves.

If there is no clear outcome from the conflicted name process the DNC will offer a facilitation process to aid in resolving who should acquire the new domain.

Alternatively, if there are no other registrants of your domain name you can register or reserve (free for two years) the new shortened version of your domain name.

Issues to be aware of

The opening up of this top level domain name does not come without the usual squatting issues.

Again, New Zealand’s domain name commission (DNC) have disregarded trade mark rights as a barrier to registration. This is in contrast to Australia, where a legal claim to a name (such as a registered trade mark) is required before you can register a domain.

Examples of suspected squatters are already emerging in the .nz domain space, including the following registered domains:

As is made clear from the above registrations, the protection afforded by the DNC’s protocols may not extend to stop anyone registering domains which include words which are confusingly similar to existing registered trade marks.

Be aware that the prior registered rights granted to the holders of a domain name are only given to those who have been registrants since before 9am 30 May 2012.

This means that if you registered after this date, and the .nz extension is important to you, you will need to register the new domain as soon as possible before it gets snapped up by another interested party as names without prior rights are governed by the first come, first served policy.

But remember that you won’t have any claim to the new domain extension if someone else has registered it prior to 9am 30 May 2012.

You can check the status of any proposed .nz domain name at

If you would like help registering your domain, or if you are having trouble obtaining a domain you feel you have existing rights in, please feel free to get in touch.

Please visit for further information on all aspects of Intellectual Property, or email Emily Ellis at if you would like to discuss any issues relating to avoiding genericism in your brand.

First award of indemnity costs by the Intellectual Property Office of New Zealand

Ellis Terry was recently successful in obtaining what is believed to be the first award of indemnity costs by the Intellectual Property Office of New Zealand (IPONZ).  Despite their power to award indemnity costs, IPONZ has always been reluctant to award costs greater than the scale.  Numerous applications for indemnity costs have been unsuccessful over the years.
In Compudigm International Ltd and Bally Technologies Inc v Cardno [2013] NZIPOPAT 31 (13 December 2013) IPONZ reversed the incorrect registration of Bally Technologies as a joint applicant of a patent application.  Registration of the alleged assignment to Bally Technologies would have required the consent of all joint applicants, including Mr Cardno.  Bally Technologies and their lawyers were aware of this requirement. Nevertheless, in the absence of Mr Cardno’s consent, Bally applied for registration as joint applicant on two separate occasions and on the second occasion their application was incorrectly allowed.  In view of that conduct, indemnity costs were deemed appropriate.

Key changes under the Patents Act 2013 (the “New Act”)

Effective 13 September 2014

Higher Thresholds

  • Change from local novelty (known or used in New Zealand) to absolute novelty (known or used anywhere).
  • Patentability threshold changes from ‘benefit of the doubt’ to ‘balance of the probabilities’.
  • Examination will include “obviousness” rather than just simple novelty.
  • Computer software protection is likely to be more restricted.

New Procedures

  • Increased filing, examination and maintenance fees – renewal fees will be payable annually from the 4th year of filing.
  • Examination must be requested instead of the old automatic examination system.
  • Automatic publication of all New Act applications 18 months from filing – no more submarine patents hidden from view.

Challenge Options

  • Third Party Notifications can be lodged by any interested party challenging the novelty or inventiveness of a published application and the Commissioner must consider the objection.
  • Re-examination of a patent application or granted patent may be requested by any interested party.
  • Opposition remains with stronger grounds than under the Old Act.
  • Revocation before the Commissioner or the Court is available throughout the life of a patent (previously only available before the Commissioner for one year after grant).

Old Act Cases (Patents Act 1953 continues to apply)

  • “Old Act” cases are those where a “complete specification” is filed before 13 September 2014.
  • Old Act cases will be examined under the provisions of the Old Act (Patents Act 1953).
  • A divisional from an Old Act case will be treated as an Old Act case.
  • A PCT national phase application entering New Zealand before 13 September 2014 will be treated as an Old Act case but a pending PCT application filed before 13 September 2014 that has not entered the national phase in New Zealand will be a New Act case.
  • The validity of Old Act cases will be determined under the Old Act grounds.

Strategic Issues


Complete specifications filed before 13 September 2014 will enjoy the more lenient provisions of the Old Act. Consideration should be given to:

  1. Completing any provisional application already filed before 13 September 2013.
  2. Filing any new application as a complete in the first instance before 13 September 2014.
  3. Entering the national phase in New Zealand for any pending PCT application before 13 September 2014.

Challenges to Validity

  1. New Act Re-examination will be cheap but an interested party cannot participate further after a request is filed.
  2. New Act Opposition will be a more powerful option with the enhanced grounds of opposition and has the key advantage of suspending grant.
  3. Old Act Oppositions may be refiled as New Act revocation proceedings, gaining the stronger revocation grounds under the Old Act and simple balance of probability applies rather than the benefit of the doubt.
  4. New Act Revocation before the Commissioner offers a more cost effective challenge option for older patents.

Important: This note is intended to provide general information as to changes when the Patents Act 2013 comes into force. Other factors may be relevant in developing a strategy for a particular situation and you should seek our advice before deciding upon a strategy.

The “Jandal Scandal” Takes a New Twist

In a scandal of jandal proportion, Stuff is reporting an army of fanatics has formed following the stoush which emerged yesterday regarding the monopolisation of this quintessential kiwi word.

Yesterday a Hamilton based online retailer received a cease and desist letter from Stanford Industries Limited asking it to cease using the word “jandal” to advertise its footwear, claiming breaches of trade mark law.

The website owners have now taken to the social networking site Facebook seeking public support for their use of the term “jandal”. The page “Jandal Scandal” currently has 909 likes.

Stanford Industries Limited is the owner of two New Zealand trade mark registrations for JANDALS (nos 60683 and 108195) for goods including footwear.

The registration of a trade mark grants its owner nationwide exclusivity in a trade mark. However, registration is only part of the picture, and trade mark registrations may be attacked or challenged.

The purpose of a trade mark is to differentiate the goods or services for which it is registered from those of other traders.

If a trade mark can no longer serve to differentiate the particular goods or services because it has become generic or descriptive when used in relation to those goods or services, it can no longer serve its fundamental purpose.

Under the Trade Marks Act 2002 a trade mark may be revoked if, as a consequence of “inactivity of the owner, the trade mark has become a common name in general public use for a product or service in respect of which it is registered”.

This is known in trade mark law as “genericism”. Some examples of words which were formerly the subject of trade mark registrations in the United States, but which have later been found to be generic are:


It has been suggested by some commentators that the trade mark JANDALS has obtained this generic status in the minds of New Zealanders.

Another level of attack may have open is revocation on the basis of “non-use”. Under New Zealand trade mark law a registration may be revoked if “at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered”.

So far two New Zealand intellectual property law firms have offered to take up the case for, namely Catalyst Intellectual Property and James and Wells, so the end of this particular saga does not appear imminent.

Please visit for further information on all aspects of Intellectual Property, or email Emily Ellis at if you would like to discuss any issues relating to avoiding genericism in your brand.

Revision in Chinese trade mark law

On 30 August 2013 China’s Standing Committee of the National People’s Congress revised China’s trade mark law passing the “Decision on Revising the Trademark Law of the People’s Republic of China”.

The changes will significantly align prosecution procedures with international norms, and will improve trade mark owners’ ability to enforce their intellectual property rights against infringers.

Some of the key changes are outlined below.

General changes include:

  • a “good faith” requirement is introduced for trade mark applicants;
  • agents must now inform clients if a trade mark they intend to apply for cannot be registered; and
  • agents may not accept instructions if the agent knows the client is applying to register a trade mark in bad faith.

Procedural changes include:

  • the China Trade Mark Office will introduce an online filing procedure and will now allow multiclass applications;
  • the Office must issue its examination report within nine months of the filing date;
  • trade marks can now be renewed from 12 months prior to the expiration date;
  • accepted applications will now be published for a period of three months during which an interested party may oppose the registration of the mark; and
  • in an attempt to curb oppositions made in bad faith, only parties with prior rights will be able to lodge oppositions.

Enforcement changes include:

  • unauthorised use of “well-known” trade marks or taking advantage of “well known” branding in a manner that leads to consumer confusion or deception will become an offence;
  • there is an increase in statutory damages for trade mark infringement from RMB 500,000 to RMB 3 million;
  • the changes introduce a fair use standard and owners of trade mark registrations will not be permitted to stop the fair use of generic names and designs, the model numbers of goods, place names, and expressions of the quality, primary raw materials, functions, intended purposes, weight, quantity, or other characteristics of the goods; and
  • a party alleged to have infringed a trade mark registration will be able to defend an infringement action if the trade mark the subject of the registration has not been used in the past three years.

The changes will simplify China’s complex prosecution procedures, and address international concerns relating to bad faith applications and a lack of clear remedies for infringement.

The changes to China’s trade marks law will take effect from 01 May 2014.

Since the New Zealand-China Free Trade Agreement signed in 2008 China has become New Zealand’s fastest growing trading partner.

Please visit for further information on all aspects of Intellectual Property, or email Emily Ellis at if you would like to discuss any issues relating to protecting or enforcing your brand in China.