Dawn Ellmore Employment reviews the trade mark battle between Weetabix and Weet-bix

In somewhat of a David and Goliath stand-off, a battle between two cereals has reached the High Court in New Zealand.

Arguing that a British store owner has violated its Weet-bix trade mark, cereal producer Sanitarium is pursuing a civil suit against them.

Major brand

Sanitarium makes Weet-bix, a nationally beloved and well-recognised breakfast cereal brand in Australasia. The Weet-bix brand name has the same iconic standing as Weetabix does in the UK, which is why the company was immediately concerned when Lisa Wilson, owner of a small chain of stores that sell British goods, began importing Weetabix to sell to ex-pats.

The cereal manufacturer is adamant that the imported Weetabix sounds far too similar to its iconic Weet-bix and would cause confusion for customers.

Trade mark battle

It’s a fight that’s been raging for at least 18 months, after Sanitarium asked New Zealand Customs to put a hold on a Weetabix shipment into the country last year.

Lisa’s store is called ‘A Little Bit of Britain’ and imports all kinds of products from the UK to sell to homesick Brits in Australia. Ms Wilson told the court that she didn’t think there was any risk of confusion for customers and was clear that there had been no attempt at deception through choosing to sell Weetabix.

She said: “The Weetabix box actually has the UK price in pound sterling written on the front as can be seen from the box. I have never had anybody asking why our Weetabix are so expensive, thinking they were New Zealand products. They know they are British Weetabix as we sell British groceries.”

Products held

Ms Wilson was also keen to have her products released by Customs so that she could begin to recoup the costs of buying them and bringing them into New Zealand. She said: “I want to get the stock released as soon as possible since the goods are perishable, but I’m not prepared to relabel it as I don’t accept that Sanitarium can interfere.”

She was, however, prepared to only sell Weetabix through her specialist retail stores and online store as a concession to Sanitarium’s concerns over the trade marked name. Her lawyer, Kevin Glover, accepted that the brand name Weet-bix is similar to Weetabix, but that was the extent of the similarities.

A lawyer speaking on behalf of New Zealand Customs told the Court that its CEO had made the decision to detain more than 360 boxes of Weetabix, which are still under lock and key.

Options offered

Sanitarium pointed out that they had offered to allow the Weetabix logo to be covered up, but that Ms Wilson had turned this option down. They also offered to buy the shipment of Weetabix, relabel it at their own expense and donate it to a foodbank, which were also refused.

Their argument is that there is potential for the Weetabix brand to come into the country and cash in on a long-standing brand loved by New Zealanders.

High Court judgement

The case was taken to the High Court in Christchurch before Justice David Gendall, and boxes of both cereals were laid on the bench at the witness box. In its attempt to establish that the name Weetabix infringes its trade mark Weet-bix, Sanitarium submitted that the substitution of an ‘a’ instead of a hyphen ‘hardly changed the trade mark at all’.

Sanitarium cited that they had been stopped from selling Weet-Bix in the UK and China due to trade mark worries, and that the threat from Weetabix (now owned by Post Holdings) is significant.

Protecting the brand

The CEO of Sanitarium, Kevin Jackson, pointed out that the cereal maker is trying to defend all possible breaches. He maintains that if a small importer of Weetabix goes uncontested, then this would leave the way clear for a big competitor to enter the New Zealand market. He said: “We didn’t want to go down the legal process. It’s not about giving her [Ms Jackson] a hard time. We just want to protect our brand from a very big company called Weetabix.”

Ms Jackson, on the other hand, said: “We are not trying to confuse or deceive anyone. We are just a small-time trader with a British store. Our clients are all British and come for a specific product.”

Court decision

Justice Gendall released the High Court’s decision two days ago, saying that there is absolutely no chance of customers being misled. However, the court ruling was that importing Weetabix does breach the Trade Marks Act as the name is too similar to Weet-bix and that Ms Wilson must cover up the label when selling the cereal in future. Ms Wilson is clear that this poses no problem to her or her customers, as they’re both more concerned with what’s inside the packet of cereal.

At Dawn Ellmore Employment, the team stays abreast of major Intellectual Property (IP) legal cases as it helps keep on top of the market we operate in recruitment. The Weetabix v Weet-bix case is particularly of interest as it shows how far major companies are prepared to take the fight, even against small businesses, underlining how vital trade mark protection is.

About Dawn Ellmore Employment

Dawn Ellmore Employment was incorporated in 1995 and is a market leader in intellectual property and legal recruitment.