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9 September 2014Trademarks

Zoggs trademark dispute makes waves in New Zealand

A long-running dispute between a surfing wax company and swimwear brand Zoggs looks set to continue after a New Zealand court ruled in favour of the former’s appeal.

The dispute, between California-based surf wax company Mr Zog’s Sex Wax, and Zoggs, will now be heard by the Court of Appeal after a previous High Court ruling was thrown out.

Mr Zog’s, whose name is based on the nickname of entrepreneur Frederick Herzog who established the brand in the 1970s, claimed there was a 20-year verbal co-existence agreement between the companies, but brought the legal action after Zoggs attempted to register the trademark ‘Zoggs’  in New Zealand in 2009.

Australian brand Zoggs' application was rejected by the New Zealand Intellectual Property Office, which said the company could not trademark the word following complaints from Mr Zog’s.

In June this year, the High Court of New Zealand upheld Zoggs’ appeal and said the word could be trademarked without causing confusion.

But, following further complaints from Mr Zog’s, The Court of Appeal claimed on Monday, (September 9) that an appeal should be granted, quashing the High Court’s ruling.

"The use of the 'Mr Zog’s' element in the complex mark and 'Zoggs' is enough to tie the brands together and spark a connection in the minds of consumers," the appeals court wrote.

Mr Zog’s, sometimes referred to as ‘Sex Wax’, said it still uses the branding Zog Industries on its business forms and claimed the name 'Zog' is integral to its brand.

Zoggs, which sells swimwear and swimming goggles, was previously called Zoggs Toggs but shortened it to Zoggs in 2000.

The court said: "There is an overlap or confluence in products sold in surf shops, sports shops, and surf retail outlets selling beachwear.

“We are satisfied there is a reasonable likelihood those individuals will be confused or deceived by the registration of the Zoggs mark for goods falling within that intersection.”

Zoggs and Mr Zog’s did not respond immediately to a request for comment.

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