Pet food wars rage
Men from Mars have won one and lost one in pet food wars.
Earlier this year Mars New Zealand beat off a challenge from Heinz Wattie to win the right to register a brand of dog tucker as Advance Advanced Pet Nutrition.
Heinz Wattie reckoned that name was too close to its trademark Champ, which has a tag line Advanced Dog Nutrition, and which Heinz Wattie said would confuse the dog tucker buying market.
In his first judgment of significance Justice David Collins – the former solicitor-general who blocked the laying of terrorism charges against gun-toting Urewera offenders – said there was no realistic risk of confusion, allowing Mars to have its trade mark registered.
But in the cut and thrust multi-million dollar business of international pet food, fortunes fluctuate.
This time round Mars New Zealand dipped out on a Court of Appeal objection to the registration by Roby Trustees of the chilled dog roll mark OPTIMIZE PRO “Lead the Pack”.
Roby is the majority shareholder in Butch Pet Foods, which has long sold chilled pet food in New Zealand.
Evidence was the first chilled dog roll was created by Ian and Lorraine Roby in 1964 as a means of combating hydatids and the Butch brands led the New Zealand chilled dog food market.
But Mars, a major competitor of Roby and possibly buoyed by the early win over Heinz Wattie, reckoned the Roby mark was too close to its own marks OPTIMUM and OPTIMUM “Nutrition for Life”.
Mars also used words and phrases such as Optimize, Optimize Your Pet, Optimize Your Dog and Optimize Your Cat in connection with its products.
The assistant commissioner of trade marks allowed Roby to register its proposed marks, but Justice Geoff Venning overturned that decision in the High Court.
Finding the assistant commissioner erred on the facts, Justice Venning noted that dog rolls were self-serve consumer items and the “directly competitive” products were likely to be found in the same area of the supermarket.
He found the “visual, aural and conceptual similarities” between the marks were such that, when taken with the developed brand and consumer awareness of Mars’ marks, it was inevitable the proposed marks would “deceive or cause confusion to a substantial number of persons in the relevant market”.
He also found Roby’s use of its proposed mark would also constitute misleading and deceptive conduct in breach of the Fair Trading Act.
But Court of Appeal Justices Tony Randerson, Lyn Stevens and Forrie Miller disagreed. They found they marks considered as a whole were visually different.
The judges placed particular importance on the addition of the word “PRO” and the phrase “Lead the Pack” by Roby.
They thought “Lead the Pack” – a phrase Justice Venning appeared not to have taken much notice of – was particularly striking and likely to be remembered by customers in distinguishing it from the Mars brand.
And viewed as a whole, the judges, finding in Roby Trustees favour, ruled the marks were distinctly different.