AT A GLANCE: recent IPONZ decisions
Two recent trade mark opposition decisions (both issued in June 2026) provide a useful illustration of how the statutory tests for deceptive similarity continue to be applied in practice under NZ trade mark law.
In RCI Distribution Pty Ltd v Caterpillar Inc [2026] NZIPOTM 13 and Maen Oja International Nutrition Co., Ltd v Swisse Wellness Pty Ltd [2026] NZIPOTM 15, the Assistant Commissioners reached opposite conclusions on the likelihood of confusion.
Although both cases involved arguably well-known brands, the outcomes turned on an assessment of the distinctive features of the competing marks, the nature of the earlier rights, and the evidence supporting the alleged reputation. Taken together, the decisions demonstrate the analysis remains firmly grounded in the overall impression created by the marks and the source-identifying significance of their dominant and distinctive elements.
In RCI, the shared and distinctive word CAT proved decisive. Whereas in Maen Oja, clear similarities in device design (ie. a black oval on a red rectangle) were insufficient because the competing brand names (MAEN OJA vs SWISSE) remained the dominant elements and indicators of trade origin.
These decisions reinforce that the assessment of similarity and likelihood of deception or confusion remains highly contextual. While distinctive word elements will often carry greater weight than shared design features or colour schemes, the outcome ultimately depends on the distinctiveness of the earlier mark, the nature of the competing signs, and the quality of the evidence adduced.
The summary table in the image below compares the competing marks, the grounds relied on, and the outcomes from each decision:
Key takeaways
Registered word marks provide strong protection. In RCI, the addition of a descriptive word ("RED") was insufficient to distinguish the mark.
Evidence matters! The grounds of opposition relied on in the Maen Oja case under ss17(1)(a), 17(2) and 25(1)(c) are not without merit – but their success is entirely evidence dependent.
