<< Continued from COVER STORY
in every mainland Australian
state. Expansion into New
Zealand is an obvious option.
MFB itself moved into Australia
in 2014, competing directly with
HelloFresh, but withdrew from
that market in 2016.
As the incumbent New Zealand
market leader, MFB has a
considerable incentive to hinder
HelloFresh from muscling in on
its home territory. It claims to be
New Zealand’s third largest food
retailer behind only the two big
supermarket chains. Its annual
revenue exceeds $135 million
and it has more than 50,000
customers.
Although significantly smaller
than HelloFresh, this is quite
a big ‘David’. In light of these
stakes, it may have been a canny
move by MFB to paint HelloFresh
as an unreasonable aggressor.
HelloFresh does have legitimate
intellectual property to protect in
New Zealand but may not be as
keen to get into business here at
a time when its reputation is on
the back foot.
On the other hand, those that
dig beneath the surface of a
witty press release may realise
that the issues are not as
simple as they first appear. Any
business on the receiving end
of allegations of infringement of
trade marks or other intellectual
property should seek expert legal
advice.
Seeking to claim the moral
high ground or to gain a public
relations advantage can be part
of an effective response strategy
but this ought to be done with
careful consideration of the legal
and commercial strengths and
weaknesses of your position.
Baldwin’s is a leading
Australasian intellectual
property firm.
18 AUGUST 2018
HONEY TRADE MARK CRITICAL
A battle to protect
New Zealand’s multimillion
An industry group says
the best way to protect
mānuka honey is to trade
mark the term and then
fight for a Geographical Indication
– much like the way France has
protected champagne. Business
advisor John Hill says mānuka honey
is worth $180 million now, but that
could double in 10 years if the brand
is linked as one coming from New
Zealand. “If we don’t do anything,
we’ve already got Australia hot on
our tail, we’ve got Portugal, Mexico,
Paraguay…they’re all talking about
planting mānuka.” But regional
development minister Shane Jones
says he doesn’t see a role for the
Provincial Growth Fund in meeting
the costs of trade marking the
honey. He says there are avenues
in which the government can help,
dollar mānuka
honey industry from
international thieves
will cost $5.5 million
in the next decade,
the government has
been warned.
COKE v
PEPSICO The Carolina was the subject, at the
time, of uncontested design registration
in various countries, although such
protection was not sought in New
Zealand. From 1995, in order to be TRIPs
compliant, the Trade Marks Amendment Act 1994
widened the definition of what could constitute a
trade mark. While not specifically including shape
marks, the Intellectual Property Office of New
Zealand subsequently allowed shape marks to
be registered. While acknowledging differences
between the contour and Carolina bottles, Coca-
Cola claimed the silhouette of its contour bottle
was its most distinctive and memorable feature.
It argued that the silhouette of the Carolina bottle
also acted as a sign in the course of trade that
was likely to be taken as use of a trade mark, but
that its similarity to the contour bottle silhouette
made such use infringing. The presiding judge
agreed with Coca-Cola’s submission that for
shape registrations to have meaning, they cannot
be circumvented by another trader adding a
When PepsiCo was first released by
distributor Frucor into New Zealand in
2009 using a new range of 300ml bottles
called the ‘Carolina’, Coca-Cola objected
to its shape and contour as too close to
its own trade marked bottle.