Can That "Taste Of Home" Cause Trademark Infringement?

Nadaline Webster,

Recessions, globalisation, romantic liaisons and a thirst for adventure are only a few of the reasons why so many of us have family members inhabiting various corners of the globe. No matter what reasons might have taken them to far-flung places in the first place, there is always a hankering for at least some parts of home. In many cases, these yearnings revolve around foodstuffs that are the taste of our childhood or contribute to your national identity.

For many years, this led to desperate missives home to send care parcels stuffed with the most critical foodstuffs. Pleas from abroad for Barry's teabags, packets of Tayto crisps, Cadbury chocolate and even loaves of Brennan's bread were a familiar routine in Ireland as the younger populace moved abroad in order to find work.

Increasingly though, these kind of circumstances have led to the development of specialist shops to cater to this clientele with many more regular shops acquiring goods from overseas. While this is fantastic for the end recipients and in some cases, good for local business - it can create headaches for the companies that produce those goods.

Trademark rights are regional in nature but globalisation is rapidly breaking down the commercial barriers for consumers in accessing their desired products regardless of their location. While increasing harmonisation is doing much to make international trademark registration easier, cheaper and faster, it doesn't solve the problems engendered by the regional aspect of trademark rights.

Just such a dispute has arisen in New Zealand regarding breakfast cereals. The Sanitarium company first registered the WEET-BIX trademark  in New Zealand in 1928 under the company name Australasian Conference Association Limited. The mark was registered under Class 30 for breakfast cereals.

Just a few years later in England, the Weetabix Food Company was founded in 1932 and registered the trademark WEETABIX  in England in the same year. Based in entirely separate regions, the two companies co-existed peacefully, with each using their similar trademarks concurrently in their individual geographic locations. 

New Zealand has a population of just over 4.5 million inhabitants and during the 2013 census, a little over 36,000 residents identified themselves as British in origin. A business in Christchurch, NZ, called "A Little Bit of Britain" caters for this market. Amongst the popular products in demand by their ex-pat clientele is the humble box of Weetabix. Recently, 360 boxes were impounded by New Zealand customs prompting the shop to add a campaign to 'Free The Weetabix' to their website!

Lisa Wilson, current owner of A Little Bit of Britain, was quoted as saying "It's what you grow up on; you're used to Weetabix, you love Weetabix. If you're a Kiwi then you eat Weet­Bix, so it doesn't actually affect them at all, it seems stupid." From that perspective, the two cereals are perceived to not appeal to the same demographic and therefore are assumed not to be effectively competing in the same marketplace.

From a trademark perspective though, is it that simple?

A spokesperson for Sanitarium was quoted as saying:

"It is an infringement for any other company to import, distribute or sell a product using a deceptively similar name. We believe imports of Weetabix from the UK represent a trademark infringement. We are working with importers to find solutions that allow product sales while protecting our trademark."

In this instance, the claimed infringement is not presumed to be as a result of the actions of another company, but by the actions of consumers who have moved to another country and brought their brand loyalty with them. Where that brand is similar to another existing in the new locale that has already acquired rights, importation of similar brands can create problems. Tolerance to the importation of those brands can, in some cases, contribute to erosion of rights in relation to their own trademarks.

The Social Media commentary supports a view that Sanitarium have taken an overly aggressive stance on the issue given that the product is question is destined only for a specialist shop supplying ex-pat customers and not for regular supermarkets where it could be confused for their own product by everyday New Zealand shoppers. 

As this case between the shop owners and Sanitarium is purported to have moved to the New Zealand High Court, the findings will make interesting reading and will provide food for thought for many companies that have created strong brand loyalties in the countries in which they do business. What impact will it have where their customers abroad demand imports to a country in which they do not have existing trademark rights or do business and rights to similar or identical trademarks are already owned by another company?

Will retail outlets serving a limited demographic have courtesies extended to them allowing a potentially infringing brand to co-exist in the marketplace? Or will we all have to go back to relying on the kindness of family members and regular care parcels to get our 'taste of home' fix?

International Trademark Infringement TrademarkNow