IP Case Law library

Facts

Manji Food Industries sold whole-grain biscuits under "MULTIBIX", which Weetabix alleged deceptively imitated its well-known "-BIX" family of marks (Weetabix, Oatibix, Bananabix, Fruitibix, Chocobix). The Registrar of Trade Marks had already upheld Weetabix's opposition to Manji's MULTIBIX application (TMA No. 66428, ruling 31 August 2012) on grounds of likely confusion under s.14 and Weetabix's well-known-mark status under s.15A. Manji continued selling MULTIBIX despite that ruling and without a stay, prompting Weetabix to seek a High Court injunction.

Issues

Whether Weetabix was entitled to a temporary injunction restraining Manji from continued trade in MULTIBIX given the unstayed, unchallenged Registrar's ruling.

Rule

Trade Marks Act s.14 (likelihood of confusion); s.15A (well-known marks); the underlying Registrar's ruling on opposition to TMA No. 66428.

Analysis

The judge treated the Registrar's findings as those of a competent tribunal which remained unchallenged, since Manji had not obtained a stay and had not prosecuted its application for leave to appeal out of time. The court reasoned Manji ought to have ceased trading in MULTIBIX immediately upon the Registrar's ruling rather than continuing business as usual in defiance of it — a reasoning some IP practitioners have noted as unusual given the High Court is not formally bound by the Registrar and this was only an interlocutory ruling, not a final judgment on the merits.

Conclusion

Temporary injunction granted restraining Manji from further dealing in the MULTIBIX product pending full trial; this was an interlocutory order, not a final judgment.

Ruling discussed at ipkenya.wordpress.com; underlying case HCCC No. 53 of 2013.