Zoggs v Sexwax in trademark dispute

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Surfing wax company Sexwax is battling to keep a swimwear company from trademarking a similar name in New Zealand - but a court was told today the brandname was too sexy for there to be any confusion.

The Wellington Court of Appeal today heard a dispute between Australian swimwear company Zoggs and Sexwax Inc, whose logo includes the words "Mr Zogs Sexwax", named after company founder Frederick Herzog.

Central to the case is whether the "Mr Zogs" aspect of the logo is a sufficiently distinctive part of the Sexwax brand.

Zoggs' lawyer John Upton, QC, argued that the word Sexwax was the dominant core of the brand, and there could be little confusion of conflict between Zoggs and Sexwax products.

He read surfing-related publications to the court that described the Sexwax as "eyebrow-raising", and "a brilliant brandname that was completely meaningless, alliterative, symmetric, and [that] sounds naughty".

One article quoted Mr Herzog talking about the origin of the name as "a little tongue-and-cheek commentary on Wall St's blatant use of sex as a selling point ... It's just a parody of sex being a big scene in advertising".

Justice Mark O'Regan summarised the argument as Sexwax being such a provocative word that it overshadowed the rest of the logo, making the words "Mr Zogs" non-distinctive.

"But it's really hard for you to say that 'Zoggs' is distinctive, but "Mr Zogs' isn't," he told Mr Upton.

Sexwax lawyer Nigel Robb said although the company name did not include "Mr Zogs", the name was recognised internationally as part of a product that has been on the market since 1972.

If Zoggs products were available alongside Mr Zogs Sexwax in a surfing or swimwear shop, it could cause confusion and a loss in company reputation, he said.

But Mr Upton said trademark application was to cover goods as diverse as clothing, footwear, swimwear, leisure wear, ski wear and wet suits. In a wide market, the risk of confusion is much lower.

Justice O'Regan challenged him on this: "Mr Zogs Sexwax doesn't sell in the Warehouse."

The Intellectual Property Office originally rejected Zoggs' trademark application, ruling it had acted in bad faith in relation to a verbal agreement between the companies more than 20 years ago.

The agreement was between Mr Herzog and Neil McConnochie, the son of one of Zoggs' founders. Herzog had agreed not to oppose a Zoggs trademark application in Australia based on "the founder's verbal promise to limit the products... to just swimming goggles".

The IPO ruling was overturned in the High Court, which found that the threshold for bad faith was very high. Sexwax is appealing that decision - but on grounds of market confusion and potential damage to reputation, rather than bad faith.

Zoggs Toggs was successfully trademarked in New Zealand in 1997, but has since expired.

The judges reserved their decision.