The recent seizing of 300 boxes of Weetabix by New Zealand customs officials has highlighted the importance of brand protection and ensuring that your brand is protected in all territories in which you trade.
The boxes of Weetabix were imported by a specialist shop in Christchurch which carved out a niche for itself by selling UK versions of products to the local expat community. As many people are aware, food manufacturers often tweak recipes in different countries taking into account things taste as well as permitted ingredients.
Weetabix are generally not sold in New Zealand due to the owners of the Weetbix brand (Sanitarium) having a registered trademark and because of the similarity between the brand names. Incidentally, this is also the reason that Weetbix are not sold in the UK – because Weetabix has the registered trademark.
Although trademark law can differ from country to country, the general principles remain broadly the same. Namely, you can only register a name or logo that is original, that is not descriptive of the goods or services and does not infringe another name or logo in a similar class of services.
The important point in this case being the similarity between Weetabix and Weetbix – and as a result this falls fouls not only on the basis of similarity but because of what is known as the common law tort of passing off. This protects a brand from another brand benefitting from its goodwill. It allows the owner of the brand to take a number of different steps to protect their brand such as here, where Sanitarium sought and were granted an injunction, which then gave Customs the ability to seize the goods and prevent them from being sold.
As this situation highlights, trademark law gives the owner of the trademark very broad protection in terms of the exploitation of the brand. It protects not only against rival manufacturers – such as Weetabix in the UK and Weetbix in New Zealand – but also protects others who are trying to bring in infringing goods into the territory in which you have the protection.
So what do we recommend?
We always recommend that you carry out regular health checks on your brand:
- Do you have a unique business name, logo or slogan that you would like protecting?
- Do you regularly bring out new goods or services – could they be protected?
- Are you aware of any rival companies using your brand or something that is similar to it and if so, would you like to stop them?