Protecting Marmite’s Kiwi Trade Mark – Update On Hearing
1 February 2013
Protecting Marmite’s Kiwi Trade Mark – Update On Hearing Date
The summary judgment application to be heard in relation to the trade mark infringement case involving jars of UK Marmite imported for retail sale in New Zealand in breach of Kiwi-made Marmite’s trade mark will now be heard in the Christchurch High Court on 19 February.
The application was to be heard in the Christchurch High Court on 26 February with the Parties agreeing that if an earlier hearing date became available they would take it subject to availability of Counsel. The earlier fixture of Tuesday 19 February has been confirmed today.
In August 2012, British ex-pat Rob Savage imported 1,908 jars of UK Marmite to sell in retail outlets in New Zealand. NZ Customs detained the shipment as its sale here infringes the Marmite trade mark, which protects Sanitarium’s Kiwi-made Marmite as the only spread that can be sold here under that name.
Sanitarium says the matter can be quickly and easily settled out of court without the product going to waste. Under the Trade Marks Act 2002, imported products found to have infringed a trade mark can be destroyed, as a last resort, to prevent them from being sold.
Following earlier offers by Sanitarium which failed to result in a final agreement, Sanitarium made an open offer to Mr Savage with two options: one that would allow him to re-label the products or, as a one off, to sell the 1,908 jars of UK Marmite, labelled for the Queen’s Diamond Jubilee as ‘Ma’amite’, with the profits donated to a Christchurch charity. Mr Savage did not accept that offer.
To prevent trade mark infringements in the future, Sanitarium is happy for Mr Savage to continue importing UK products and selling them here under a different name.
UK Marmite is already sold in New Zealand under the ‘Our Mate’ trademark and is made by Unilever, in the same factory, with the same ingredients as the product available in the UK. So a “taste of England” is already freely available in supermarkets here.
Like other well-known brands, the trade mark ‘Marmite’ is protected under law for the companies which have the exclusive rights to use it in countries or ‘territories’ around the world. These companies are Sanitarium in New Zealand, Sanitarium in Australia, Unilever (which makes UK Marmite) in Europe and the UK and Bokomo Foods in South Africa and Sub-Saharan Africa.
Selling the UK, or South African, spread with the name Marmite here infringes trade mark law, as New Zealand’s own Marmite made by Sanitarium in Christchurch, has been trade marked since 1921. Protecting the Marmite trade mark is also about protecting Kiwi jobs and Kiwi manufacturing. Sanitarium Marmite is proudly made by New Zealanders for New Zealanders.