NZ Trademark Office Gets It Right Scrutinizing Trademark Opposition Review

The world of the cosmetics industry is no stranger to trademark disputes. Without really diving in, I can think of several reasons why this would be. It is a saturated market in which both very large and much smaller companies play. It's an industry which produces products that basically beg for descriptive product names and branding. And it's an industry that is heavily focused on the retail space covering a huge swath of the public, making the potential and concern for public confusion legitimately more likely than in other industries.

But not all of that is valid in every case all the time. The problem in most countries, and certainly in America, is that most trademark offices don't often scrutinize opposition arguments or claims of infringement to the degree in which they should. That leads to far too many successful oppositions, bullying, and wins on infringement. But in New Zealand, at least, we get an example of a nation's trademark office actually taking the time to get it right when it comes to two competing cosmetics companies.

An essential oils start-up company has won a trademark dispute against a skincare company endorsed by one of the Kardashian sisters. Manuka Medic was started by West-Coaster Rory Hill in 2018 after he noticed his sensitive skin cleared up whenever he was on properties surrounded by native mnuka.

However, another New Zealand company, Manuka Doctor, has been selling cosmetic products containing extracts from the mnuka plant for nearly a decade and in 2016 it announced Kourtney Kardashian as one of its brand ambassadors. In an advert by Manuka Doctor, the eldest Kardashian sister said she'd been using their products for years before the company reached out asking if she wanted to represent the brand.

You all know what happened next. Manuka Doctor opposed the trademark application from Manuka Medic, arguing that the branding was too similar and would cause confusion with the public in the marketplace. New Zealand's IPO took the time to review that claim and concluded, properly in my opinion, that any concerns about confusion were unfounded.

Manuka Doctor's lawyer, Jack Oliver-Hood, told the IPO the names Manuka Doctor and Manuka Medic were too similar and consumers would likely confuse them. He said registering the new trademark would prejudice the interests of the already well-established company he represented.

Assistant commissioner of trademarks, Nigel Robb, said in his ruling he did not believe consumers would confuse the two names.

I do not think doctor and medic are commonly used interchangeably. A person might refer to taking a child to the doctor for an earache but is unlikely to say they were taking the child to the medic. Balancing the similarity of and strongly allusive nature of the marks, the nature of the goods and the surrounding circumstance I conclude the probability of deception or confusion is not reasonably likely."

Combined with the examples of other similarly named companies and brands in the market brought by Hill, such as Manuka Healer" and Manuka Restore," the IPO dismissed the opposition and is allowing Hill to register his mark. Now, Manuka Doctor has the option to appeal this decision, but it probably shouldn't. Given the other players in the market and the analysis by the IPO, I would expect that appeal to fail.

It would be nice to see more of this sort of thing, particularly here in the US. Trademark law shouldn't be used to suggest you get a full monopoly on words that only a part of your name. That allows the locking up of basic concepts, unrelated to the purpose of trademark law.