That is the question that Mr Justice David Gendall of the High Court of New Zealand will now have to consider.
The case concerns the well-known (in the UK) British breakfast cereal Weetabix and the equally well-known (in Australia and New Zealand) Kiwi breakfast cereal Weet-Bix.
The question arises after British expat Lisa Wilson opened up her "A Little Bit of Britain" shop in Canterbury, New Zealand. The shop sells imported British products that are not commonly found in mainstream shops in the country and is aimed at homesick expats.
Last year she decided to import Weetabix to add to her range, but the shipment was intercepted and confiscated by customs officials following a complaint by Sanitarium, the manufacturer of Weet-Bix.
Sanitarium claims that Weetabix infringes its trademark for Weet-Bix and would cause confusion to customers leading to passing off.
Ms Wilson's argument has been that her shop caters specifically to people wanting to buy British products, and those customers would not be confused by the two cardboardy breakfast foods. She will, however, have to overcome a significant barrier: Weet-Bix is not sold in the UK due to the trademarks for Weetabix.
While English and Welsh law does not bind the New Zealand courts, it is at least informative and it would be very surprising if the judge did not at least consider the contrary position in the UK.
If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or firstname.lastname@example.org.Posted by: in: EU/International, Passing Off, Trade Marks