Manuka Doctor skincare products are seen on display during Cocktail Party With Manuka Doctor Global Brand Ambassador Kourtney Kardashian at Gracias Madre on 19 October, 2016 in West Hollywood, California. Photo: Charley Gallay / Getty Images for Manuka Doctor / AFP
A mānuka honey-based skincare company endorsed by one of the Kardashian sisters has escalated its trademark battle against a small start-up with a similar name.
Kiwi cosmetics company Manuka Doctor has appealed the Intellectual Property Office's (IPO) earlier decision to allow the Whataroa-based essential oils business to trade under the name of Manuka Medic.
Manuka Doctor told the High Court at Wellington this week that the names were too similar and would likely confuse consumers.
But Manuka Medic believed any reasonable customer would not mix the two.
Manuka Medic founder Rory Hill told NZME it had been demoralising having to fight a financial Goliath when he was just trying to get his business off the ground.
"I figure they have a bit of money to spend and can afford to see how effective an appeal can be," he said.
"Seems like they've got money to burn and are just throwing darts at the wall."
Hill claimed Manuka Doctor's attempts to stop him from using the name was an effort to monopolise mānuka and its health benefits.
His company began in 2018 after Hill moved from Queenstown to the West Coast where he found his sensitive skin cleared up when around native mānuka trees.
From there, he and his dad began distilling the bushes in an old dairy vat they turned into a still and started selling the essential oil at markets and through Hill's website Blackburn Botanicals.
However, when he went to register the brand name Manuka Medic he was taken to the IPO by Manuka Doctor.
Manuka Doctor has been selling skincare products containing extracts from the mānuka plant for nearly a decade and in 2016 it announced Kourtney Kardashian as one of its brand ambassadors.
In an ad by Manuka Doctor, the eldest Kardashian sister, who was recently in New Zealand with her husband Travis Barker and his band Blink-182, said she had been using the products for years before the company asked if she wanted to represent the brand.
Kardashian continues to back the products.
Manuka Doctor skincare products are seen on display during Cocktail Party With Manuka Doctor Global Brand Ambassador Kourtney Kardashian at Gracias Madre on 19 October, 2016 in West Hollywood, California. Photo: Charley Gallay / Getty Images for Manuka Doctor / AFP
At the appeal, Hill's counsel Matt Sumpter used the analogy of a multi-storey car park to describe the trademark law in New Zealand.
He said the lower level spaces were wider and reserved for larger, more distinctive, and often made-up names like Google or Microsoft.
"As you get higher up the building, the spaces get narrower because they have less distinctiveness," Sumpter said at the hearing.
"If you choose a mark that has a descriptive quality to it then you have to park at the top of the building, and you have to accept that someone might park next to you.
"They might even clip your wing mirror."
Sumpter submitted no one could keep the word "mānuka" to themselves and pointed to other traders who used the word such as Manuka Clinic, Manuka Health and Manuka Care.
"In taking some care, consumers of mānuka-based products are to be given some credit. They are quite simply unlikely to mix up Doctor and Medic when making a considered purchase of relatively expensive therapeutic items," Sumpter said.
"No reasonable consumer is likely to mix the marks up because they look or sound the same."
Sumpter submitted Manuka Doctor was attempting to assert control of the "central message and idea" of mānuka oil as a health product.
"But in doing so it reaches too far. It has no right to stretch its narrow monopoly wider than the law allows," he said.
Manuka Doctor's lawyer Greg Arthur, KC, used Sumpter's analogy against him in his submissions.
"They're clipping the wing mirror and confusing the point," he said.
"Even if the car spaces are narrow it's still possible for the car next to you to come too close and this is one of those times."
Arthur's submissions centred on the two trademarks being linguistically similar, having the same cadence and that the average consumer would likely get them mixed up.
He said trademarks should be compared by a consumer's imperfect recollection rather than a direct side-by-side comparison.
"There would be a number of shoppers who would react to seeing Manuka Medic by saying 'I think that's what I bought recently', or 'I think that's what my friend purchased'," he said.
"There is a likelihood of confusion."
Arthur said the company accepted the word "mānuka" had a descriptive element but did not describe the products it sold.
"It has the therapeutic benefit of mānuka but it is not mānuka," he said.
"If my product registration was mānuka then we'd have a problem, but it's not.
"We're not hanging our hat on mānuka, we're hanging our hat on the entirety of the trademark."
Justice Paul Radich, who heard the appeal, will release his decision in the coming weeks.
NZME editorial note: Correct spelling of mānuka includes a macron above the 'a'. However, neither of the two companies in this story uses a macron in its trademark. When referencing a trademark or brand in relation to these companies NZME has omitted a macron, but when reference is made to the mānuka plant itself we have used one.
* This story originally appeared in the New Zealand Herald.