PRIMO! Use of PRIMO on beer likely to be connected with producer of well known PRIMO flavoured milk
The recent decision of the Assistant Commissioner of Trade Marks in PABST Brewing Company v New Zealand Milk Brands Limited [2011] NZIPOTM 3 (30 March 2011) emphasises the ability of an owner of a well known mark to prevent use of the identical marks on dissimilar goods. The Assistant Commissioner refused to register the mark PRIMO for beer as the identical mark was well known in New Zealand for flavoured milk.
On 23 January 2008 PABST Brewing Company (“PABST”) applied to register the mark PRIMO for “alcoholic beverages, namely beer, ale, stout, malted beer, and other beer beverages” in class 32. The application was accepted by the Commissioner of Trade Marks and subsequently opposed by New Zealand Milk Brands Limited (“NZ Milk”).
NZ Milk had four registered marks consisting of or containing the word PRIMO for milk or milk products in class 29. However, as milk products and beer are not similar goods, NZ Milk failed in its opposition to the registration of the mark PRIMO based on these registrations under section 25(1)(b) of the Act (similar to registered trade mark).
However, NZ Milk also opposed registration of the mark PRIMO for beer based on its use of the mark PRIMO for flavoured milk under sections 17(1)(a), 17(1)(b) and 25(1)(c) of the Act. The Assistant Commissioner held that the mark PRIMO was well known based on NZ Milk’s extensive use of the mark in New Zealand since 1991 and NZ Milk’s substantial sales of flavoured milk bearing the mark PRIMO.
The Assistant Commissioner found in NZ Milk’s favour under section 17 of the Act. Specifically the Assistant Commissioner held that a substantial number of persons in the relevant market would be likely to be “caused to wonder” if there is a connection in the course of trade between PRIMO beer and NZ Milk because the respective marks were identical, NZ Milk’s mark was distinctive and well known, both goods, while dissimilar are beverages and both products have been marketed so as to appeal to a similar type and age bracket of consumers.
While the Assistant Commissioner considered that it was at the lower end of the confusion spectrum, she held that the application offended against section 17(1)(a) as use of the mark PRIMO for beer was likely to cause confusion, and against section 17(1)(b) as use of the mark was likely to offend against section 9 of the Fair Trading Act 1986.
In relation to section 25(1)(c), the Assistant Commissioner found that although the respective goods were dissimilar, use of the mark PRIMO would be taken as indicating a connection in the course of trade between PRIMO beer and NZ Milk because use of an identical mark within the beverage industry may cause consumers to wonder if Pabst’s PRIMO beer is an extension of NZ Milk’s brand. The Assistant Commissioner also held that use of the mark PRIMO for beer would prejudice NZ Milk’s interests as it would dilute the exclusivity of NZ Milk’s brand in the beverage market, would damage the healthy image of NZ Milk’s products and would cause a negative association with alcoholic beverages. Accordingly the Assistant Commissioner also found in NZ Milk’s favour under this ground of opposition.
The decision has not been appealed to the High Court and is therefore, final.
Naomi Hand – May 2011
