Court clarifies test for confusion and distinctiveness in trade mark disputes over mānuka products
The Court of Appeal has dismissed Manuka Doctor Limited’s appeal against the registration of the trade mark MANUKA MEDIC, finding no real risk of confusion with Manuka Doctor’s registered mark. The decision in Manuka Doctor Limited v Hill [2025] NZCA 516 affirms earlier rulings by the Assistant Commissioner of Trade Marks and the High Court, allowing Rory Hill’s application to proceed.
Manuka Doctor has used the MANUKA DOCTOR mark for mānuka-based skincare and therapeutic products since 2011. The company opposed Mr Hill’s application to register MANUKA MEDIC for similar products, arguing that the marks were too close and likely to deceive or confuse consumers under sections 25(1)(b) and 17(1)(a) of the Trade Marks Act 2002.
The Court of Appeal, in a majority decision delivered by Hinton and Edwards JJ, reviewed the factual and legal background. Mr Hill’s mark is used for a mānuka oil and hydrosol blend and may be expanded to other products. The Intellectual Property Office of New Zealand (IPONZ) initially advised that MANUKA MEDIC appeared registrable, and Mr Hill proceeded to file the application in 2020 for goods in classes 1 and 3, including botanical extracts and essential oils.
The Court confirmed that both marks cover similar goods, but focused on whether the marks themselves are similar. The judges considered the visual, aural, and conceptual features of the marks, noting that while both share the word MANUKA, this is descriptive and less distinctive in the context of mānuka-based products. The key difference lies in the second words, DOCTOR and MEDIC, which the Court found to be quite different in look and sound. Although both words refer to health practitioners and share a common idea, the Court held that the similarity in idea does not outweigh the significant visual and aural differences.
The Court also addressed the likelihood of confusion or deception, applying the test of the average consumer. It found that consumers of skincare and therapeutic products are likely to pay attention to brand details and are not likely to assume that all products with MANUKA in the name come from the same source. The Court concluded there is no real risk of confusion between MANUKA DOCTOR and MANUKA MEDIC.
Cull J dissented, finding the marks too close and likely to confuse, but the majority’s view prevailed. The appeal was dismissed, and there was no order as to costs. The decision reinforces the principle that traders cannot claim exclusive rights over descriptive words and clarifies the approach to assessing similarity and confusion in New Zealand trade mark law.
