Trademark Dispute Becoming a Dogfight in New Zealand High Court

By Joseph Mandour on April 2, 2012

dog-thumb-200x132-38890 San Diego – Pet food manufacturers Mars and Heinz Wattie’s are taking their trademark infringement battle to a High Court in Wellington, New Zealand.

The United States-based Mars Incorporated, widely known for its candy brands, is appealing a decision by New Zealand’s assistant commissioner of trademarks to reject its application to trademark the term “Advance Advanced Pet Nutrition.” Mars produces well-known pet food brands such as Pedigree and Whiskas.

Mars’ trademark application had been opposed by Heinz Wattie’s, which owns the Chef and Champ brand, because it claimed that it had already used the unregistered trademarks “Champ Advanced Dog Nutrition” and ” Advanced Dog Nutrition” in New Zealand.

The assistant trademark commissioner’s decision, dated September 14, insisted that if Mars were to use the phrase from its trademark application, “it is likely that a substantial number of persons in the relevant market would be confused.” Section seventeen of New Zealand’s 2002 Trademark Acts states the commissioner must not register any matter as a trademark if its use is likely to deceive or cause confusion.

In addition to rejecting the Mars application, the trademark commissioner awarded Heinz Wattie’s costs of $3,340.

The trademark attorney representing Mars in New Zealand contends that the Chef and Champ taglines were never registered as trademarks in the country, nor had Heinz Wattie’s ever applied for their registration. He went on to say that the phrases were simply descriptive of the products and were a relatively insignificant part of the product’s packaging. Instead, he claimed, pet food consumers would recognize the product by its trademarked logo, which was displayed liberally on the product’s packaging.

He added that Mars was seeking a distinctive trademark because of its unique combination of “advance” and “advanced.”

However, the Heinz Wattie’s attorney argued that although the New Zealand company’s phrase was not registered as a trademark, it has been used on the Chef and Champ packaging for over twenty years and is indeed an identifiable component to the Champ trademark.

“It is inevitable that members of the public who have seen this product on sale for ten years or longer will make a connection with that tagline…it is part of the branding,” stated the Heinz Wattie’s attorney.

In 2010, Mars in New Zealand earned profits of $14.8 million on sales of $193.9 million, according to the most recent financials filed with the company. Hastings, New Zealand-based Heinz Wattie’s reported profits of $92.7 million on sales of $735.6 million for the year ending April 27, 2011.

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