INXS v IMXS: when reputation and similarity are not enough
At first glance, INXS and IMXS looks like a pretty straightforward trade mark dispute.
One is the name of an internationally successful Australian rock band. The other is a registered trade mark covering (among other things) clothing and jewellery.
The marks are visually similar, the goods overlap, and INXS has an established reputation in New Zealand.
But in IPONZ’s recent decision of Jiangxi Maisi Clothing Co., Ltd. v INXS International Pty Limited [2026] NZIPOTM 16, INXS’s application to revoke the IMXS registration ultimately failed.
Why? A crucial evidential threshold of the revocation ground had not been met.
What happened?
Chinese fashion company, Jiangxi Maisi Clothing Co., Ltd owns a trade mark registration for IMXS in New Zealand across a number of classes (including clothing and jewellery). INXS International Pty Ltd, which owns the INXS trade marks associated with the Australian rock band, applied to partially revoke the IMXS registration (as it related to clothing and jewellery) under section 66(1)(e) of the Trade Marks Act 2002. That provision allows a registered trade mark to be revoked where, as a consequence of the owner’s use of the mark, the mark is likely to deceive or confuse the public. INXS argued, in essence, that use of IMXS on clothing and jewellery was likely to cause New Zealand consumers to believe that those goods originated from, or were associated with, the INXS band.
There was certainly evidence before IPONZ demonstrating the extent of INXS’s reputation in New Zealand. But that was not enough. The question under section 66(1)(e) is not simply whether use of IMXS on the goods covered by the registration could or would be likely to cause confusion. Instead, the decision-maker must retrospectively look at how the registered mark was actually used and determine whether, as a consequence of that use, it is likely to deceive or confuse the public.
That means evidence of use is a necessary starting point.
The relevant period ran from 26 March 2024, when the IMXS mark was registered in New Zealand, until 16 May 2024, when the revocation application was filed. A window of only around seven weeks. There was evidence from Jiangxi Maisi of New Zealand purchases of products bearing the IMXS mark, including clothing and jewellery. But, lucky for them, those purchases occurred outside the relevant period. INXS had also not filed any evidence of use of the IMXS mark in New Zealand during that period. Without that evidence, there was no foundation for assessing whether the use of IMXS was likely to deceive or confuse consumers under section 66(1)(e).
The revocation application therefore had to fail.
Why this is different from a usual confusion assessment
The decision reiterates the High Court’s guidance on the differences between section 66(1)(e) and other provisions of the Trade Marks Act dealing with deceptive or confusing marks, as set out in Geneva Marketing (1998) Ltd v Johnson & Johnson HC Auckland CIV-2007-404-2431, 2 October 2008.
While the underlying tests for deception and confusion are the same, the difference is the retrospective versus forward looking applications of each test. For example, under section 17(1)(a), the decision-maker asks whether use of the mark would be likely to deceive or confuse, based on notional and fair use of the mark. Whereas section 66(1)(e) is based on what has actually happened since registration.
That distinction sounds technical, but it can completely change how a case needs to be prepared.
Here, the apparent similarity between INXS and IMXS, the overlap in clothing and jewellery, and the reputation of INXS might naturally appear to be the central issues, but they never became determinative because the evidence of actual use was missing.
Special thanks to Partner Katy Rostovitch for preparing this article.
Disclaimer: The content of this article is general in nature and not intended as a substitute for specific professional advice on any matter and should not be relied upon for that purpose.
