The Goliath
Sanitarium NZ sues a tiny David NZ UK specialist foods importer for a breach of their trademark. They say the NZ importer of UK “
Weetabix” is in conflict with their NZ “
Weet-bix” trademark.
It’s like the ‘Pavlova War’ or who owns Phar Lap; who invented or ‘owns’ a starchy wheat cereal marketed for breakfasts as fibrous good flow.
A local specialist food importer with shops in New Zealand (with whom I’ve traded) imports a genuine UK cereal called “Weetabix,” which is well-known in Britain. The importer provides traditional UK foods for ex-pats living here, as do Asian supermarkets, or a South African food chain, or most supermarkets with their International aisles, what might be called “Home Comforts Abroad.”
Sanitarium NZ has a product called “Weet-Bix” which is something of a NZ icon. I was a “Weet-bix Kid” and traditionally ate four at a go with milk. I also ate them as sandwiches with jam or Marmite. Weet-bix in NZ was actually produced a few blocks from where we live in Papanui and where I grew up. But, shock horror! Apparently Aussies are also “Weet-bix kids,” a TV campaign revived in Australia in 2006. It’s who owns Phar Lap and Russell Crowe all over again!
In the Harrods case the use of the word was less the issue, but the NZ appropriation of the typeface and the font styling (the logo) of Harrods UK. Doing that intimated the NZ store was a branch of Harrods UK or some sort of agent. Confusion reigned. NZ was in the wrong and forced to change.
In our own case, Mr Tryhard tried to extort money from us having successfully done so from several other less ‘standy-uppy’ Kiwis, and was enjoying a nice wee number collecting dishonest ‘royalties’ on a ‘trademark’ of “bach.” End result, he disappeared, we carried on trading using the name. Lesson? Always stand up to bullies.
Disney have had several successes enforcing their Mouse copyright. The most famous includes the years of litigations with Dan O’Neill the San Francisco Chronicle – and now cult – cartoonist of the Odd Bodkins serials (not cereals) from the 1970s and beyond. Original Bodkins art now sells online for several hundred to thousands of dollars. I’ve illustrated a tribute pastiche to O’Neill, as yet to be published, so will probably go to prison for that.
Back to Weet-bix.
The Spinoff has done some historical research. In a nut shell (or wheat husk) there is a
Weet-bix (Aus/NZ) WIKI page [first line
“Not to be confused with Weetabix” (which of course it is) ]; AND a UK
Weetabix WIKI page [first line
“Not to be confused with Weet-bix” (which of course it is).
Wheaties with our WIKI.s!
NZ Weet-Bix was first made by Ben’ Osborne in Australia (gasp of collective national breath SFX) in the 1920s. It was made in competition with another breakfast gravel, “Granose,” which was made by – wait for it – the Sanitarium Health Food Company (1898) wholly owned by the Seventh-Day Adventist church. (One wonders if eating Weet-bix on a Saturday is therefore a sin?). Sanitarium also has a WIKI page.
“Weet-bix” was a name invented by Osborne. It was registered by his Sydney (Leichhardt) Co. Grain Products Ltd as a trademark. The independent co. was joined by a Kiwi marketer (Ian MacFarlane). The new Weet-bix sold so well in Oz, MarFarlane marketed the product in NZ as well and supplies from Oz barely kept up. It was, then, truly an Australasian product (but originated in Oz).
Sanitarium (then of “Granose” fame, or infamy) then stepped in and within two years bought the feisty successful competitor outright (Oz in 1928; NZ in 1930) and Weet-bix became their product. Taxes are now not paid in either Australia or NZ for religious registration reasons. I guess “Granose” was quietly retired.
Sanitarium went on to sponsor the Ozzy cricket team and the NZ All Blacks and introduced collectors’ cards in 1942. Remember those? The Maori cards, the vintage cars, the steam locomotives. I still have some of the albums from the 1970s. Ah nostalgia over a bowl of Weet-bix.
Ozzy Osborne and Kiwi MacFarlane of “Grain Products Ltd” then went to South Africa and then London and started Weet-bix all over again as The British and African Cereal Company Ltd. But this time they called their product “Weetabix.”
So “Weet-bix” was first and “Weetabix” second.
In 1936, they changed the SA/London co. name to Weetabix Ltd. It’s now valued at 2.4 billion NZ dollars and is present in 80 countries. It’s a different product (sort of), being smaller and oval to the larger rectangular Weet-bix. To confuse matters, Weet-bix have a circular variant with bran.
But back to the suit. Recently,
Sanitarium (owner of Weet-bix) sued the NZ importer of UK Weetabix. The stoush is over. It is ruled “Weetabix” (imported to NZ) is a breach of “Weet-bix” (already here via Oz) and it must be covered up in wider distribution, or sold restricted to the importers’ speciality stores where people are seeking it out specifically, because of CONFUSION.
And this is the law of copyright or trademark. Or of the mythology around “possession is 9/10s of the law.” It’s also the answer to the bula dispute in the USA re kava and Polynesia.
You cannot trademark a word common in English parlance, like “bach” or “bula.” It belongs to everyone and the people (NZ and Fiji). “Google” on the other hand is an invented word and clearly has ownership (regardless of whether you copy their logo or not), so its use would be contested. The word itself is, to a very large degree, also their logo. Think of Xerox and “xeroxing.” Or Sanitarium and a “sanitarium” (US for sanatorium).
You can trademark a logo (the Harrods logo in the UK). You could for example have a restaurant called Mr & Mrs McDonalds est. 1950 but cannot use the McDonalds logo or trade off that name. The use of the name is more problematic.
The answer is, does your use of a name cause confusion to the public? Are you appropriating another’s name to gain an advantage? Piggy-backing. Are you unfairly benefitting from their use of the name. It’s where the respective investment has been made over time and who is benefiting from that investment fairly or unfairly. Mr & Mrs McDonald might have been first. But after McDonalds set up in their town, they switched, made their business look like a McDonalds franchise and started selling burgers. They’d be in breach regardless of their historic use of “McDonalds” even if it’s their real name.
There are hundreds of McIntosh businesses or MacDonald’s (drainlayers, electricians, landscape gardeners, lawyers firms, etc). Is it confusing is they key and who benefits from what?
Trademarks and copyrights are also country specific and time constrained. Osborne and MacFarlane were free to reinvent Weet-bix in the SA and London, which went to 80 countries as “Weetabix” and turned into a global giant after “Weet-bix” Oz and NZ was sold to Sanitarium.
“Bula” may have been trademarked in the USA, but that does not mean they own the phrase internationally, or even in the USA. It just means they own the right to that chain of kava cafes called that in the USA. Others cannot call a similar chain of cafes by the same name, there. It would confuse the public and create potential unfair appropriation (piggy-backing off their brand). But someone could start a US tropical fish store called “bula.” It might even pre-exist.
So both Weet-bix and Weetabix can be sold in NZ with very similar (confusing) packaging. But it has to be contextualized and where the context is genuinely confusing, Weetabix must now be covered up beside Weet-bix.
So, over your next bowl of cereal, remember all the sweat over wheat and the old adage, ‘better a dry crust with a lamb than a steak with a lion.’
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