An individual has succeeded in defending his New Zealand trade mark application for MANUKA MEDIC in opposition proceedings brought by Manuka Doctor Limited, owner of the MANUKA DOCTOR brand.
The Intellectual Property Office of New Zealand (IPONZ) recently held that there was no likelihood of confusion between the "MANUKA DOCTOR" trade mark registration (no. 846119), for a range of beauty products, with the pending trade mark application filed by Mr Rory Hill, for "MANUKA MEDIC" (no. 1164530) covering "essential oils" (cl. 3). The main reasons for the decision were that:
- the prefix "MANUKA" is descriptive for the goods concerned and should be discounted in the comparison of the marks;
- the terms "MEDIC" and "DOCTOR" are visually and phonetically different, which leads to the conclusion that the signs are dissimilar overall, notwithstanding any conceptual overlap – both signs conveying the allusion that the goods have some therapeutic benefit; and
- the MANUKA MEDIC trade mark for "aromatic essential oils; essential oils" (cl. 3) was found to be either identical or similar to all of the MANUKA DOCTOR trade mark products in classes 3 and 5 for, broadly speaking, cosmetics and therapeutic, dietary and medicinal goods including lotions. Notwithstanding the finding that some of the products were identical and similar, since the signs were found to be dissimilar overall, there could be no likelihood of confusion or deception.
Notably, the MANUKA DOCTOR trade mark covers a range of products in classes 3 and 5 that are not limited to those that have ingredients from the Mānuka tree, and may contain products that do not contain such ingredients/characteristics. This is in conflict with IPONZ’s decision to discount the prefix "MANUKA" in the respective marks entirely on the basis that it is descriptive. It will be interesting to see whether the owner of the MANUKA DOCTOR trade mark appeals IPONZ’s decision on this basis.
It is unclear from the decision whether the representatives for Manuka Doctor Limited claimed that the MANUKA DOCTOR trade mark possesses an enhanced distinctive character owing to the use of the mark in New Zealand. This was not discussed in IPONZ’s reasoning when assessing the level of distinctive character of the respective signs.
Manuka Doctor Limited had made a claim that the sign was well-known. Although this failed, the evidence furnished would likely have helped to support an enhanced distinctiveness claim. Manuka Doctor Limited had furnished evidence that the MANUKA DOCTOR trade mark had been used in New Zealand since 2011 on supplements, cosmetics and skincare products, as well as facial oils. The MANUKA DOCTOR branded products have featured in New Zealand’s Cleo magazine, on TVNZ’s breakfast show, radio advertising, on buses, and in sponsorship with the New Zealand Breakers basketball team.
Where an owner is claiming that their trade mark is well-known, and filing evidence of use to support that claim, it is generally worthwhile claiming that the trade mark possesses an enhanced degree of distinctive character in tandem.
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