Zoggs v Sexwax dispute rumbles on

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A long-standing trademark dispute between a surfing wax company and a swimwear maker continues to rumble on after a court ruled in favour of an appeal.

Sex Wax Inc, which trades under the logo Mr Zogs Sex Wax, lodged the dispute against Zoggs International Ltd after it applied to register its trademark 'Zoggs' in New Zealand in December 2009.

Zoggs' application was denied by the Assistant Commissioner of Trade Marks on the basis it would cause confusion. However, the company appealed to the High Court which found there was no likelihood consumers would be confused.

Sex Wax then took its case to the Court of Appeal, which released its decision today.

The California-based surfboard wax company 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".

Australian company Zoggs sell swimwear and swimming goggles, and previously marketed under the label 'Zoggs Toggs'. In 2000 it was shortened to Zoggs.

The company argues consumers won't be confused, because they would be looking at the words 'Sex Wax' and 'Zoggs' on products, not 'Mr Zogs' and 'Zoggs'.

The Court of Appeal today said it agreed with the Assistant Commissioner of Trade Marks that there was the potential for customers to confuse the two brands.

"The use of the 'Mr Zogs' element in the complex mark and 'Zoggs' is enough to tie the brands together and spark a connection in the minds of consumers," it said.

"There is an overlap or confluence in products sold in surf shops, sports shops, and surf retail outlets selling beachwear.

"Given the awareness of the Mr Zogs Sex Wax mark by the individuals concerned, we are satisfied there is a reasonable likelihood those individuals will be confused or deceived by the registration of the Zoggs mark for goods falling within that intersection."

The Court of Appeal ruled Sex Wax's appeal was allowed, and quashed the High Court ruling that Zoggs was entitled to register its brand in New Zealand.