Trade Mark Battles Over Breakfast

Weetabix comes to a crunch in New Zealand

As you may be aware, Sanitarium is the owner of the long standing breakfast cereal Weet-Bix in Australia and New Zealand. However, Weetabix Ltd has been selling the cereal Weetabix in the UK for many years also. Both companies own registered trade marks in their respective jurisdictions.

When the owner of the grocery store ‘A Little Bit of Britain’ in Christchurch, New Zealand imported 300 boxes of Weetabix from the UK last month, Sanitarium had the product detained at customs. Sanitarium claims that the sale of this product will infringe their Weet-Bix trade mark in New Zealand. This came as a surprise to the owner of the store targeted towards British expats. She believes her small business is being bullied by the multi-million dollar company.

Sanitarium suggested that the only way the Weetabix can be sold in New Zealand is with a white sticker covering the infringing labelling. It is reported that other New Zealand stores who have tried to import the product have also been prevented from doing so and have succumbed to Sanitarium’s demands.

The store owner intends on fighting this battle, claiming the Weetabix look, taste and branding is completely different to Weet-Bix and that consumers are unlikely to be confused. She is prepared to take the case to High Court and is currently gathering much support through social media and the ‘Free the Weetabix’ petition.

Special K hits back

Kellogg Company, owner of the Special K cereal, has been engaged in efforts to suppress the ‘Special K’ trade mark application lodged by TJ Kokkinakis Pty Ltd in association with the international tennis star Thanasi Kokkinakis who is sometimes known as ‘Special K’.

Generally, trade mark applications which are the same or similar to previously registered trade marks will be denied registration where acceptance of both trade marks will cause confusion about who the owner of the goods and/or services is or suggest that one business related to or is endorsing the other. If a brand is extremely well known, it’s overall reputation may increase its chances of showing the possibility of confusion in various fields of business irrespective of the goods and services claimed by its trade mark. Therefore, some lawyers asked about this case believe Kokkinakis has very slim chances of being granted the ‘Special K’ trade mark.

The Kellogg Company’s Special K trade marks are only registered in relation to cereal. On the other hand, Kokkinakis’s trade mark application is in the area of sports related products including clothing, equipment and coaching. In the opposition proceedings instigated by the Kellogg Company, the Hearing Officer accepted that these respective fields were different enough to avoid consumer confusion and dismissed the opposition. Dissatisfied with this result, Kellogg Company has appealed to the Adelaide Federal Court and a mediation is scheduled for August this year. The outcome is to be seen.

Lessons smaller businesses can learn from these matters:

  1. When developing a brand and logo, it is best to ensure it is not too similar to any large national and international brands.
  2. If you are planning to enter overseas markets, again take precautions early and research the brand names of similar products in that country.
  3. If your intended trade mark is similar to a big business, anticipate an opposition to occur and consider whether you are resourced enough to either defend your application or let it go.
  4. If a big business opposes your trade mark application, don’t immediately take this as a sign to give the brand away. If you have developed your own reputation using this name or logo and operate in a completely different business sector, you may have good cause to fight back.

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Level 1, 109 Pitt Street NSW 2000 Australia
Level 1, 109 Pitt Street NSW 2000 Australia
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