TICK TOCK not similar to TIC TAC says appeal court

In 2007 the Assistant Commissioner of Trade Marks issued a decision ruling TICK TOCK in class 30 covering tea was confusingly similar to TIC TAC covering confectionery (World Trademark Law Report 8 March 2007). Neither party requested to be heard or made submissions at the opposition hearing. In the absence of direction from the parties, the Assistant Commissioner appeared to lack understanding of how the pleadings, evidence and law tied together. The applicant for TICK TOCK, Wistbray Limited, filed an appeal to the Assistant Commissioner’s decision at the High Court. The owner of TIC TAC, Ferrero S.p.A. did not oppose the appeal.

At the appeal hearing, counsel for Wistbray criticised two recent decisions of the High Court, which drew their authority from the Supreme Court (the final appellate court in New Zealand), for the proposition that whilst differences may be significant, it is the similarities that matter. The Judge would not agree that that was a wrong statement of law. This is not surprising given that one of the impugned decisions was his own. He said that in particular circumstances differences may be more telling but in other cases similarities may carry the day.

The Judge found that the differences between the words are relatively subtle, and if the trade marks were to be used for similar goods, then the differences between the trade marks may not be enough to avoid confusion and deception (Wistbray Limited v Ferrero S.p.A (unreported, CIV-2007-485-460, 11 December 2008, Dobson J)).

The difference in the goods was decisive. While recognising the strong reputation Ferrero has for its TIC TAC product, the Judge found that the Assistant Commissioner’s reasoning omits the critical analysis as to whether confusion and deception is likely to arise when Wistbray uses the mark for tea, which is a very different product to confectionery.

The Judge referred to the European Court of Justice and English Court of Appeal decisions in Intel Corporation Inc V CPM United Kingdom Limited (Case C-252/07, June 26 2008) and [2007] RPC 35 referring to the requirement for there to be a “link” in the minds of consumers between the earlier and later mark. The Judge referred to the requirement under New Zealand law, in the case of a well-known mark, for there to be “a connection in the course of trade” rather than a “link” but found Jacob LJ’s reasoning in Intel to be helpful. The dissimilarity of the goods was said to be a strong indication against there being a trade connection between TICK TOCK for tea and TIC TAC for confectionery.

The Judge reversed the costs award made by the Assistant Commissioner against Wistbray and awarded costs for the appeal hearing.

World Trademark Review Daily
3 February 2009