Zoggs v Sexwax dispute ends at Supreme Court

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A long-standing trademark dispute between surfing wax company Sex Wax and swimwear company Zoggs has ended at the Supreme Court.

Zoggs International Ltd has sold swimming goggles and other swimwear under the brand name Zoggs in Australia, New Zealand and the United Kingdom for many years.

It applied to register its trademark Zoggs in New Zealand in December 2009, but this was opposed by Sex Wax Inc, a California-based surfboard wax company.

Sex Wax is owned by Frederick Herzog, who uses the nickname Mr Zog and originally traded under the name Zog Industries.

The company still uses Zog Industries on its business forms, and argues the name Zog is integral to its brand, claiming customers refer to the wax as a "bar of Sex Wax" or a "bar of Zogs".

Zoggs' original application was denied by the Assistant Commissioner of Trade Marks on the basis it would cause confusion, given the reputation associated with Mr Zog's Sex Wax label.

However, that decision was overturned on appeal by the High Court, which found there was no likelihood consumers would be confused.

The original decision was then reinstated on a further appeal to the Court of Appeal, which quashed the High Court ruling that Zoggs was entitled to register its brand in New Zealand.

It said there was the potential for customers to confuse the two brands.

Zoggs fought back once again by seeking leave to appeal to the Supreme Court.

It argued the Court of Appeal had confused the reputation test by considering Sex Wax Inc's reputation among consumers of its own goods, rather than consumers of the goods covered by the proposed registration.

In its ruling, given today, the Supreme Court said it did not believe the Court of Appeal had confused the test for reputation.

"The risk of confusion is properly measured by reference to those who may be exposed to the applicant's goods and are aware of the opponent's mark," it said.

"We do not see this application as raising any issue of general or public importance.

Moreover we do not see it as involving the risk of a substantial miscarriage of justice."

The Supreme Court dismissed the application for leave to appeal.

It ordered Zoggs pay Sex Wax costs of $2500, plus reasonable disbursements.