An Auckland eatery and Taupō sports retailer are two recent winners in trademark battles against huge overseas corporations.

If you walked into a dumpling house named Barilla, would you expect to be served up a bowl of pasta? How about asking for your favourite album at a sports retailer named Sportify? Names can throw us off if an association already exists in our mind, but if there’s a clear enough distinction between two businesses, how at risk are we of being deceived?

In March, a Feilding fish and chip shop named Popeyes Takeaway changed its name after being sent a cease and desist letter from US fried chicken slinger Popeyes. The small business had never thought to register its name, while Popeyes Louisiana has owned trademarks in New Zealand since 1976, despite not opening its first New Zealand outlet until this year. Now named North Street Takeaways, the fish and chip shop owners said it was easier to bow down to the bigger restaurateur than potentially put themselves out of business by forking out for legal costs.

Being the bigger guy typically means you’re better resourced, but it doesn’t necessarily make you a winner. The Spinoff examines two recent cases from the Intellectual Property Office of New Zealand (NZIPO), which saw smaller local businesses triumph over bigger corporations.

Barilla v Barilla

One’s the largest and highest-earning pasta company in the world; the other, a damn good spot for dumplings on Auckland’s Dominion Road. You probably know Barilla for the blue boxes that have sat on our supermarket shelves since 2003, carrying a variety of dried pastas. Barilla Dumpling, on the other hand, has sold Chinese cuisine on one of Auckland’s most famous food streets for decades, and in recent years has expanded, opening two other branches in the supercity.

But when Barilla Dumpling applied to trademark its name, the Italian pasta makers objected. The saga began in August 2016, when Barilla Dumpling’s Shao Chenghu, Shao Jun and Shao Li applied to register Barilla Dumpling as a trademark in “Asian-style restaurant services”.

The NZIPO did not formally approve the application until early 2018, after which it was publicly advertised for three months to allow third parties to object. Italy’s Barilla opposed it in that period, arguing the registration conflicted with its own trademarks registered in New Zealand.

Under New Zealand law, if a mark has been registered but not used in the three years following, a third party is allowed to apply to remove it from the register, says  trademark lawyer Narly Kalupahana, who worked on the Barilla case in its early years. He says that when a business applies to register a trademark, it is effectively applying for a government certificate to show it’s the owner of the name or logo – in this case, the words “Barilla Dumpling”.

Barilla (the pasta one) relied on four of its various trademark registrations to oppose Barilla Dumpling’s filing, but between 2016 and 2018, three of those were revoked for not being used, following applications from the dumpling house. One included “Casa Barilla”, a trademark for restaurant and catering services.

Kalupahana says narrowing down the scope of the registration was an effective step in strengthening Barilla Dumpling’s position. However, as Barilla’s Casa Barilla mark for restaurant and catering services was only registered in December 2015, and Barilla Dumpling’s application came before the three-year grace period was up, it needed to be considered under “special circumstances”. This position was made stronger when Barilla failed to challenge the application for revocation.

Barilla argued that although it had not used the mark for restaurant and catering services, there was no evidence that the company hadn’t consciously decided not to expand into that area. The company has operated pop-up “Casa Barilla” cafes and cooking schools in various locations around the world. In New Zealand, Barilla pointed to masterclasses held at the Auckland Seafood School and stalls at the Auckland Food Show and Auckland Gluten Free Food and Allergy Show between 2008 and 2015, but the judgment ruled that the brand had not built a reputation in New Zealand for these demonstrations, especially as these were sponsored events, and the company does not typically offer full-time cooking classes in Aotearoa.

As third party evidence, Barilla presented Italian food importer Antonio Cacace, owner of Wellington’s La Bella Italia. When Cacace gave evidence in June 2022, he spoke about growing up as a young child in Italy familiar with the Barilla brand as an institution, and said that he takes “every opportunity to educate and to make people aware of the Barilla brand”.

The NZIPO found that Cacace’s evidence did not add weight to Barilla’s case, as despite the brand being a “well-established household name” in Italy, Cacace has still had to educate New Zealanders on Barilla, suggesting the brand did not already have significant awareness in Aotearoa.

Assistant commissioner of trademarks Virginia Nichols ruled she found no evidence of confusion between Barilla Dumpling and Casa Barilla, nor evidence that Barilla has “established any valuable goodwill in the mark Casa Barilla in connection with the services of providing food and drink”.

“The goodwill associated with those marks is strongly associated with Italian food,” Nicols wrote. “It is not clear that would be affected by an Asian-style restaurant.”

Despite the opposition’s application being lodged in April 2018, the case didn’t reach a hearing until April 2024, with the decision released in August. This delay is unusually long, Kalupahana says, but also reflective of the limited resources the NZIPO is working with. “In New Zealand, we don’t have a lot of hearing offices, [there’s] about three or four at the moment,” Kalupahana says. Registering a trademark is a “slow process” and there are a “tonne” of unheard NZIPO cases waiting their turn, Kalupahana says.

He adds that some companies are more trigger happy with trademark applications than others – such as beverage giant Monster Energy, whom Kalupahana says tends to have three or four cases going at any one time.

“It doesn’t actually stop people from using a trademark, it just ties up resources. So if you’ve got Monster fighting [you], you’re stumbling up to thousands in legal fees,” he says. “It’s really difficult to be the little guy and keep up with the volume of visits you might need to successfully defend your case.” While Barilla doesn’t necessarily fall into this category, there are “bully” corporations who tend to appeal against any mark that may be too close to theirs, says Kalupahana.

The NZIPO ruling ordered Barilla to pay Barilla Dumpling $3,379 in costs. Barilla Dumpling did not respond to a request for comment from The Spinoff.

Sportify v Spotify

Meanwhile, in Taupō, another family-owned business found itself caught in a years-long trademark dispute with a different overseas giant. Sporting goods retailer Sportify has had an online and physical presence since 2013, originally as Sportif. But after adding a “y” to the end of its name in 2021, music streaming giant Spotify accused the company of breaching its trademark.

Sportify’s owner, former professional squash player Kashif Shuja, hasn’t been able to put money into growing his business while his NZIPO case has dragged on. His business has been operating as Sports Café since 2023 due to Spotify’s application, but now that he’s won the case, Shuja plans to switch the name back to Sportify.

After applying to trademark Sportify as a sports retailer, Shuja says he was contacted by Spotify’s Wellington-based lawyers, “to ask, very nicely, if we could take our website down and let go of our trademark”. When Shuja refused, the lawyers offered to “buy [him] out”, he says. When he declined, Spotify took the issue to the NZIPO. “We did wonder why they were working so hard to shut us down.”

The name change was partly inspired by Spotify’s recommendations technology, which generates suggested songs and playlists for users based on their data, says Shuja. His vision for Sportify was to create a brand that could suggest relevant sports to customers based on their skills, age, physique and interests, though development of this technology has taken a back seat while Shuja has tried to keep business spending down.

Despite being famously music-focused, Spotify argued it had created a reputation in sporting goods and services by having large brands (Nike, the All Blacks, Sky Sports and Spark Sports, for example) control their own sponsored playlists, and having sporting figures such as Dan Carter promote Spotify. Assistant commissioner of trademarks Ruvini Rendle ruled this was not sufficient evidence to prove consumers associated sports with Spotify, “in the way that a general news publisher is unlikely to acquire a reputation in relation to goods or services which are the subject matter of articles published”.

Evidence Spotify used to argue the similarity between its and Sportify’s marks included a screenshot of a Google search for Sportify, which showed the search result asking“did you mean Spotify?”. Rendle ruled this was insufficient evidence, as the search suggestion was probably more a reflection of Spotify’s popularity.

The NZIPO ruled in June 2024 that Spotify’s application was unsuccessful, saying that as Sportify was operating as a sporting goods service, consumers were unlikely to confuse the business with Spotify. The decision acknowledged a similarity between the names, but “this is on the low end of the scale” and “deception and confusion is unlikely to occur”.

Shuja says he stopped all advertising and shut down his website to cut costs while his application was being considered, and is now looking forward to being able to grow his business again. “For small New Zealand businesses in any industry, if people feel bullied or that their rights have been reduced, I think this is a lesson for all of us to stand our ground if we are right,” he says.

“We had to decide if we were willing to take the risk of losing,” Shuja says. “It took three years of deliberation and delays, then we finally got the result. I maybe had tears in my eyes.”