A poster advertisement for Manuka Doctor featuring Kourtney Kardashian produced by Strada Creative in the United Kingdom. Picture supplied https://www.stradacreative.co.uk/
A skincare company endorsed by one of the Kardashian sisters has failed in a bid to oppose a trademark bid from a small startup on the West Coast.
The startup, owned by drain layer Rory Hill, hoped to call itself Manuka Medic after the plant it derives its essential oil from.
However, incumbent skincare, cosmetics and honey giant Manuka Doctor opposed Hill registering the name on the basis that it was too similar to their own brand.
Last year the Intellectual Property Office dismissed Manuka Doctor’s claim but the company appealed to the High Court earlier this year.
In a recently released ruling Justice Paul Radich also dismissed the company’s appeal and granted Hill the right to use the name Manuka Medic for his own business.
“I’m not holding my breath but I’m a lot more positive about it than I have been in awhile,” Hill told NZME, noting that Manuka Doctor could still seek leave to take their opposition to the Court of Appeal.
“I’ve been in a bit of a holding pattern because mentally I wasn’t prepared to win this case.”
Hill said he’d remained cautiously optimistic that he’d be able to use the name he wanted but will wait until the 28-day time period for Manuka Doctor to lodge an appeal passes before he starts sketching up a new logo.
His business at the moment is run under the name Blackfern Botanical and he’s been selling his mānuka oil through it, but sales have been slow.
“We haven’t done too much in the way of marketing just yet while we wait for this judgement,” he said.
By contrast Manuka Doctor has been selling skincare products containing extracts from the mānuka plant for nearly a decade and in 2016 it announced Kourtney Kardashian as one of its brand ambassadors.
In his judgement Justice Radich said that ultimately there would not be any deception or confusion for consumers between the two brands.
“…as I see it, the focus in the mind of a consumer, taking imperfect recollection into account, will be on the distinctive elements of the marks, not the descriptive elements,” his judgement reads.
“They will not in my view think that all things ‘mānuka medical’ stem from the same source. There is sufficient distinctiveness here.”
Manuka Doctor’s case before the court was that the marks were too similar with both companies using the word mānuka followed by a synonym for health practitioner.
At the hearing Hill’s lawyer, Matt Sumpter, used the analogy of multi-storey car park to describe the trademark law in New Zealand.
He said the lower level spaces were wider and reserved for larger, more distinctive, and often made-up names like Google or Microsoft, while at the same time higher levels the spaces became narrower because they had less distinctness.
“If you choose a mark that has a descriptive quality to it then you have to park at the top of the building, and you have to accept that someone might park next to you.
“They might even clip your wing mirror.”
Manuka Doctor’s counsel, Greg Arthur KC, said that in this case Manuka Medic had clipped his client’s mirror and would cause confusion for consumers if their trademark was approved.
“Even if the car spaces are narrow it’s still possible for the car next to you to come too close and this is one of those times,” he said.
Justice Radich did find that both companies were marketing similar goods as both of them used botanical extracts in their products. His finding differed from the Intellectual Property Office’s finding on this point.
However, for the trademarks themselves Justice Radich found there was sufficient differences between them.
“The only similarity between the marks is the word ‘Manuka’, he said.
“They do both refer to a type of health practitioner and they do both have two syllables. But they are different words.
“They look and sound different.”
Manuka Doctor did not respond to a question from NZME about whether it will be lodging an appeal against the ruling.
NZME editorial note: Correct spelling of mānuka includes a macron above the ‘a’. However, neither of the two companies in this story uses a macron in its trademark. When referencing a trademark or brand in relation to these companies NZME has omitted a macron, but when reference is made to the mānuka plant itself we have used one.
Jeremy Wilkinson is an Open Justice reporter based in Manawatū covering courts and justice issues with an interest in tribunals. He has been a journalist for nearly a decade and has worked for NZME since 2022.
The protest will pass over the harbour bridge this morning.