I was taken aback to read a submission advanced by Pharmazen in Pharmazen Ltd v Anagenix IP Ltd [2020] NZCA 3016, namely that actual market use and conditions should be relevant to the assessment of confusion and deception under s 25(1)(b) of the Trade Marks Act 2002 as well as to the assessment of confusion and deception under s 17(1)(a) . Such a bold submission! And what would the consequences...
Section 17(1)(a), which prohibits registration of a trade mark if its use is likely to deceive or cause confusion, is a funny provision in terms of onus. An opponent relying on an earlier mark must meet an initial threshold test of showing that the earlier mark has a sufficient reputation, and if it can do so then the onus of proof flips to the trade mark applicant. Traditionally, that initial...
This post is the first in a two-part series about aspects of trade mark law that are invisible to non-experts. These areas of the law are invisible because they have developed through case law – and sometimes pretty obscure case law – rather than being set out in the legislation. IN PRAISE OF CODIFICATION The good thing about statutes is that they are known, they are usually pretty clear...
