Proprietorship as a ground of opposition

Under section 32(1) of the Trade Marks Act 2002, a “person claiming to be the owner of a trade mark” may apply for the registration of a trade mark.

 By applying for registration of the opposed mark, the applicant is effectively claiming that, at the relevant date, it was the owner inNew Zealandof that trade mark for its goods or services.

 The test for determining whether marks are substantially identical is set out in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1). Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody (2), per Latham C.J. (3), and Ex parte O’Sullivan; Re Craig (4), per Jordan C.J. (5), where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, …”

 In Sanyang Industry Co. Ltd v The North Face Apparel Corp [2012] NZIPOTM 3 (26 January 2012) the Commissioner found that the Opponent’s evidence established use of a composite trade mark before the relevant date:

This mark was to be compared side by side with the applicant’s mark:

Then “their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and that total impression of resemblance or dissimilarity that emerges from the comparison”.

The Commissioner found:

  • the opponent’s marks consist of two essential features: (1) the device; and (2) the words “SUMMIT SERIES”;
  • the position of “SUMMIT SERIES” helps to anchor the device above it so that the device must be viewed from a particular perspective;
  • “SUMMIT SERIES” gives the device context by implying that the centre of the device is a summit; and
  • the incomplete circle of which the summit forms the centre may give the impression of a highly stylised “S”, which might stand for either or both of “SUMMIT” and “SERIES”.

On the other hand, the Commissioner considered “that the opposed mark appears to be three dimensional and reminiscent of a badge for a vehicle”. In particular, it was noted that the opposed mark is enclosed within a completed circle, and consists of different shading, which gives a metallic, and therefore industrial, appearance to the mark. Finally, the Commissioner concluded that the central part of the opposed mark does not look like a summit.

 Thus, notwithstanding the identical nature of the relative device elements (albeit that the applicant’s mark is turned 45 degrees compared with the Opponent’s device mark) the Commissioner found “that the most significant and obvious difference between the opponent’s marks and the opposed mark is that the opposed mark does not contain the words “SUMMIT SERIES”, which are an essential feature of the opponent’s marks”.

The writer would have been more interested in the Commissioner’s view on the similarity of the two device components which appear to be identical and hopes that this is the finding that the Commissioner would have come to had the Opponent been able to establish use of the device component on its own without the additional words “SUMMIT SERIES” before the relevant date.

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The importance of clearance searches and trade mark registration made clear

A recent story to hit the media in New Zealand shows the importance of a clearance search before using a trade mark and also the importance of registering a trade mark – even if only used locally.

According to the story as reported, the Brown Sugar Café opened in Taihape in or around 1993.  The owners of this café also have a second café with the same name in Otaki.  Taihape (population c 1,800) and Otaki (population c 4,500) are towns in the lower part of the North Island, just over 3 hours and one hour drive north of Wellington respectively.

In 2001, the owners of the Brown Sugar Café filed an application to register BROWN SUGAR CAFÉ as a trade mark.  Whilst the trade mark may only have been used locally, the trade mark registration of course gave protection against use of the same or similar trade mark throughout the whole of New Zealand.

The House of Brown Sugar opened in Nelson in June 2010.  The owner of that café put “brown sugar” in the name because she ”put brown sugar in everything“.  Nelson is a popular holiday destination at the top of the South Island (population c 43,000).

In September 2011 the owner of The House of Brown Sugar received a complaint from Brown Sugar Café about use of BROWN SUGAR in the name of her café.  Some time thereafter, Brown Sugar Café commenced proceedings, presumably for trade mark infringement, passing off and/or breach of the Fair Trading Act. 

The House of Brown Sugar initially appear to have fought back, but recent reports indicate that they have decided to move on and select a new, and hopefully this time available, name – STRAWBERRY BAKEHOUSE.

I feel greatly for our friends in Nelson and I hope that they do not mind if I use their story to provide some lessons for others.  There are three key lessons to be learnt from this saga:

1. Check that the name you wish to use is not already used or registered by a third party

The name of a business can be one of the most valuable assets of that business.  However, far too often people do not check to see if their proposed name is available for use before they invest in that name.  As not every business registers its name as a trade mark it is important to check not only the Intellectual Property Office database for the same and similar names, but other sources such as the Companies Office and telephone directories.  While many business people are happy to undertake such research themselves, I of course would highly recommend that the services of a patent attorney are engaged to undertake the necessary clearance searches for you.

2. Register your trade mark – once you know it is clear for use

Even if you only plan to trade in one location give consideration to registering your name as a trade mark.  Once registered, you then have a monopoly right to use, and to prevent others from using, that and confusingly similar names any where inNew Zealand.

The filing of an application gives the public notice of your rights and ownership of that trade mark and should act as a deterrent to others planning to use a similar name.

Further, you never know how things might turn out and you may decide to trade in other locations, or to licence other to use the name in other centres.

3. Beware the backlash if you come on too heavy

One of the key aspects of registering a trade mark is to enforce your rights.  However, inNew Zealandwe tend to support the “underdog” and hate to see bullies winning.  

The comments following the news reports about the Brown Sugar case suggest a fair amount of backlash against the Taihape café owners.  It has been said that there is no such thing as bad press, but in this case I tend to disagree.

Some of my favourite trade marks for the month

–        A HERITAGE OF MODERNISM – is this like “an instant classic”?

–        FASHSTASH – sounds like my wardrobe!

–        KiwiOmeter / KIWI-O-METER – how kiwi can you be?

–        IT’S A FUN THING – because life should be about fun!

–        SCOOTITUDE – they have the ‘tude obviously.

(from marks advertised as accepted in the December Journal)

By way of introduction …

I thought that I would start with an overview of the Commissioner of Trade Marks’ decisions which issued in 2011.

It was a busy year with 46 decisions, compared with 31 and 29 decisions in the preceding two years. As well as the usual run of oppositions alleging confusion with an earlier registered or used trade mark, there were a couple of decisions relating to trade mark practice that are having far reaching consequences on how we run our practices and have lead to a change of practice generally relating to extensions of time in contested cases before the Commissioner…. More on this later …

The High Court also issued six decisions during 2011 following appeals of decisions of the Commissioner which issued during the period 2009 – 2011. Of those six appeals, four were success and two not.  Only one case (an opposition first heard by the Commissioner in 2007) was considered by the Court of Appeal.  Following that decision, the original applicant sought leave to appeal to the Supreme Court, which was denied.

In the usual appeal case, the Commissioner does not make an appearance. However, in one of the appeals the Commissioner was represented (by Crown Law). In this case the Commissioner largely argued that there was no jurisdiction for the Court to entertain the appeal.

Hopefully you will see me by here every week or so with commentary on a decision of the Commissioner and related appeals and also some of those IP related stories that make it into our mainstream media.

See you soon! Elena