The recent case of Fonterra Brands (Tip Top Investments) Ltd v Tip Top Restaurant Ltd [2012] BCL 86, illustrates that an attempt to register a trade mark in respect of certain goods and services that are similar or identical to an already existing trade mark will be declined registration, in accordance with section 25 of the Trade Marks Act 2002.
Fonterra, whose trade mark has been used in New Zealand since 1936 in relation to ice cream and other products, appealed against a decision of the Assistant Commissioner of Trade Marks to allow the registration of TTRL’s word mark “Tip Top” to proceed. TTRL’s mark covered similar products and services. The High Court identified the relevance of, not only the current use of the respective party’s trade marks, but also the use to which the proposed and existing trade mark could be used. An examination of this broader potential use by TTRL demonstrated sufficient similarities to the Fonterra’s trade mark and entitled the Court to satisfy section 25 of the Act and decline to register TTRL’s mark. This case issues a clear warning to businesses that a broad potential use of a trade mark which demonstrates similarities with an already existing trade mark will be a breach of the Act and thus be declined registration.