RECENT NEWS

Rugby World Cup 2015 Etiquette: What Your Business Needs to Know

With the opening ceremony for the Rugby World Cup (RWC) kicking off tomorrow in London at 6am NZST, it is safe to say that RWC fever has officially hit home. Businesses may recall that when New Zealand hosted the tournament in 2011, there were stringent guidelines via the Major Events Management Act around how and when traders could market goods and services which made reference to the RWC or the All Blacks. While the 2015 tournament is based in England, this does not mean that NZ businesses can get carried away in showing their support for the RWC. They still need to consider the potential risk of infringing the intellectual property rights of the owners of the RWC and ALL BLACKS brands.

Trade Marks

The Irish company, Rugby World Cup Limited (RWCL), is the owner of an impressive portfolio of registered trade marks in both New Zealand and internationally, in respect of the RWC brand. Marks on the New Zealand register include ‘RUGBY WORLD CUP’, ‘RWC’ and the logo:

RWC

The registrations cover a vast array of goods and services, including sporting activities, rugby balls, clothing, and even stationery and household utensils.

New Zealand Rugby Union Incorporated (NZRU) is an incorporated society which is the owner of multiple registrations in both New Zealand and internationally. Marks on the New Zealand register include ‘ALL BLACKS’ and the logo:

ALL BLACKS

These marks are registered for a variety of goods and services, including sporting activities and clothing.

The trade marks of both the RWCL and the NZRU are well known and businesses should be wary of using these trade marks in association with their own goods and services, so as not to mislead or deceive consumers into thinking that their goods are in some way associated with the RWC or the All Blacks. If this is the case, they may be liable for trade mark infringement.

New Zealand is no stranger to trade mark issues when it comes to Rugby. In 2011, Giltrap Audi was told by the NZRU during the world cup season to remove a large sign with the lettering “Go the All Blacks”. The sign was replaced with “Go the ABs”, at significant cost to Giltrap Audi. More recently, it was reported that the launch of a black burger bun by fast food chain Wendy’s became the subject of discussions between the burger chain and a “certain sports team” over whether the burger had the potential to infringe trade marks associated with that team.

In both cases, Giltrap Audi and Wendy’s were far from pleased. The chairman of Giltrap Audi described his experience with the NZRU as “bloody ridiculous”, saying he had “never heard anything so stupid in my life”. CEO of Wendy’s NZ Danielle Lendich said that the discussions around the burger “highlights the ridiculous debate that can happen around certain words and events”.

On the other hand, it is important to keep in mind that trade mark owners have often expended a considerable amount of time and resources to protect their branding. If brand owners were to acquiesce to or tolerate unauthorized uses of their trade marks, their ability to defend their trade marks against future breaches may be diminished in the eyes of the law. In the sporting context, businesses often pay large sums to become sponsors of teams and tournaments; they would have no incentive to do so if their competitors were also associating themselves with those teams and tournaments, devaluing the association which the sponsor would have otherwise received.

 Copyright

Copyright protects artistic and literary works, such as logos, shirt designs, and publications from unauthorised use. New Zealand businesses should be careful not to reproduce material associated with the RWC or other sports teams as these materials may be protected by copyright. As New Zealand and the United Kingdom are parties to the Berne Convention, the rights of copyright authors in the UK are recognized by the NZ courts. Copyright infringement can occur if a ‘substantial part’ of a work is copied.

Fair Trading & Passing Off

Businesses should also consider their obligations under the Fair Trading Act so not to mislead or deceive consumers in trade. Section 13 of the Act prohibits conduct which constitutes a false or misleading representation that a person has any sponsorship, approval, endorsement or affiliation.

The tort of passing off may also apply if as a result of misleading or deceptive conduct, a trader suffers damage to their goodwill.

Conclusion

As with any major sporting event, there are bound to be a number of intellectual property disputes regarding the RWC in New Zealand and worldwide. In addition to the rugby, we will be following this topic with close interest over the course of the tournament.

Go the ABs!

Machinery Manufacturer‘s Victory over Luxury Automobile Company

A recent decision of the New Zealand Court of Appeal (Daimler AG (“Daimler”) v Sany Group Co Ltd  (“Sany”) [2015] NZCA 418) has seen Chinese heavy manufacturing company Sany emerge triumphant from a long standing dispute with automobile manufacturer Daimler, who operates internationally under the Mercedes-Benz brand.

Background

Mercedes-Benz’s three-pointed star trade mark has been used in New Zealand since 1911. Multiple variations of the trade mark have been registered for machinery and vehicles in New Zealand:

Daimler Mercedes-Benz

In 2006, Sany applied to register its trade mark for machinery and vehicles in New Zealand:

Sany

Daimler opposed registration of Sany’s trade mark before the Assistant Commissioner of Trade Marks. The opposition was unsuccessful, so Daimler appealed to the High Court. The appeal was dismissed for a number of reasons, including that Sany’s trade mark was not so similar to Daimler’s trade mark as to be likely to deceive or confuse consumers. Daimler then appealed to the Court of Appeal.

The Court of Appeal’s Decision

It was not disputed that Daimler’s trade mark is well known in New Zealand. The main issue was whether the trade marks were similar, and therefore whether there was likelihood for deception or confusion under section 17(1)(a) of the Trade Marks Act 2002.

Daimler argued that the three-pointed star within the circle was an “essential element and dominant feature” of its trade mark. When comparing this to Sany’s trade mark, the “dominant concepts and visual appearances” of the marks were similar, and therefore confusion or deception was likely.

However, the Court of Appeal reached the same conclusion as the High Court and the Assistant Commissioner, finding that the trade marks were sufficiently dissimilar, both visually and conceptually. Notably, the Court considered that the inclusion of the word “Sany” in Sany’s trade mark did distinguish it from that of Daimler but even without its inclusion there was no risk of confusion as the trade marks were still lacking in visual similarity.

The Court further affirmed that the relevant purchasers or prospective purchasers of goods bearing the trade marks would be discerning and reasonably knowledgeable. Therefore, confusion between the two trade marks was unlikely.

This case is one part of a wider global dispute between Daimler and Sany over the use and registration of Sany’s trade mark and it is interesting to note the divergence in outcomes of the various international courts and trade mark offices. This is a reflection of the differences in the individual laws and practices of each jurisdiction.

Conclusion

 Ultimately, this case is an uncomplicated exercise in the comparison of two trade marks. A range of arguments was raised by Daimler and Sany to support their respective positions, but as is apparent from this decision, long-standing and basic concepts of trade mark law can still be strong grounds for opposition.

Recent Trade Mark Decisions

Lacoste [2015] NZIPOTM 7 (25 June 2015) lacoste1

Summary

A notice of intention to reject issued under section 43 of the Trade Marks Act 2002 in respect of trade mark application number 998331 in the name of Lacoste.  The Commissioner directed that a halt of 6 months be placed on application no. 998331 pending a decision regarding the cited trade mark owned by Crocodile International Pty Ltd.  The cited trade mark status should be reviewed 10 days before the end of that period to assess if a further halt should be put in place.

Point of Interest – the Sandwich Principle

The Commissioner considered the long-standing and ongoing proceedings between Lacoste and Crocodile International Pte Ltd in respect of the CROCODILE and lacoste2 trade marks.  Lacoste argued special circumstances applied to enable registration of the current trade mark as it is the owner of a significant number of registered trade marks in New Zealand and had provided evidence of use of its trade marks in New Zealand.  Lacoste argued application no. 998331 is registrable under section 26(b) due to special circumstances which “makes it proper for the trade mark to be registered”.  This is referred to as the “sandwich” principle (which echoes the 1953 Act argument of Equity on the Register).  The “sandwich” principle holds that a later filed application can be registered because an earlier registration creates a right despite other similar trade marks filed by others in between the two applications.

Commissioner found that current proceeding is part of the wider disputes between Lacoste and Crocodile International Pte Ltd and advised that caution should be exercised “not to ‘muddy the waters’ before the courts have had the opportunity to determine those matters”.  Regulation 28 allows the Commissioner discretion to place matter under a Halt.  Therefore, while Lacoste has declined to put this application into abeyance, the Commissioner considered it in the public interest to instil a Halt to ensure the Lacoste-Crocodile International Pte Ltd disputes are “managed in a holistic, co-ordinated and systematic fashion (which includes the cited application being determined prior to the current application)”.

Commissioner further comments that the “sandwich” principle forms part of a draft Practice Guideline not yet published by the Office.  In its present format, the requirements are that “the applicant’s earlier filed mark and the intervening (cited) mark both had to be registered, and the applicant’s later (applied for) mark had to be the same or a substantially identical mark to its earlier trade mark registration (rather than being the same or a very similar mark)… substantially identical in this context means not materially different”.

 

Anthony Christopher Gibbs v Westland Milk Products IP Limited and Easiyo Products Limited [2015] NZIPOTM 8 (8 July 2015)

Summary

Opposition by Westland Milk Products IP Limited and Easiyo Products Limited to application no. 969296 Dairy-Yo in class 29 in the name of Anthony Christopher GIBBS.  The Commissioner held that “having regard to the reputation acquired for the EasiYo markthat the Dairy-Yo mark, if used in a normal and fair manner in connection with the opposed goods, would not be reasonably likely to cause confusion or deception amongst a substantial number of persons”.  Opposition does not succeed on any grounds and the Commissioner directed that Dairy-Yo should be registered.

Point of Interest – Status of the Opponents

Preliminary issue raised regarding status of the opponents.  The notice of opposition identifies “the Opponent” as “Westland Milk Products IP Limited / Easiyo Products Limited”.  The Opponent is also claimed as the owner of trade mark registration nos. 218842 and 218843.   The registrations are registered in the name of Westland Milk Products IP Limited, struck off the New Zealand Company Register in 2011.

At the Hearing a chain of title to the current opponents was outlined including reference to a 2014 assignment recorded to correct the Register.  However, in order to lodge an opposition an opponent must be a legal person and because Westland Milk Products IP Limited was struck off on the date of opposition, it could not be a legal person and therefore could not be an opponent.  Easiyo Products Limited is also identified as an opponent and qualifies as a legal person.  The Commissioner held the opposition could continue in the name of Easiyo Products Limited.

The grounds of opposition claimed including that use of Dairy-Yo is likely to deceive or cause confusion; and/or is contrary to law because of breaches of the Fair Trading Act and passing off (section 17(1)(a) and (b)); that Dairy-Yo is similar to registered trade mark EASIYO and likely to deceive and confuse (section 25(1)(b)); and/or that Dairy-Yo is identical/similar to opponent’s well known trade mark (section 25(1)(c)).

Commissioner held that because Easiyo Products Limited does not own the trade mark registrations, it has no standing to plead the section 25(1)(c) ground.  There is nothing in the statute which requires the opponent to also be the owner of the trade marks for the remaining grounds of opposition so Easiyo Products Limited is entitled to bring the opposition on those grounds.

 

Bluebird Foods Limited v Griffin’s Foods Limited [2015] NZIPOTM 9 (9 July 2015)

Summary

Application for Removal for non-use by Griffin’s Foods Limited (“Griffins”) of registrations in the name of Bluebird Foods Limited (“Bluebird”).  Commissioner held Griffins is an aggrieved person, Bluebird has not used the marks during the relevant period and has not established that its non-use of the marks was due to special circumstances.  However, under the Commissioner’s discretion trade mark nos. 149111, 173987, 173988, 293733, 293734, 316068, 316069, 752029, and 752033 are to remain on the register.

Number 149111 173987173988 293733293734 316068316069 752029  752033
TradeMark  ccs1  ccs2 ONLY CC’S IS TASTING LIKE THESE  ccs3 CC  ccs4

Point of Interest – Exercise of Commissioner’s Discretion

Special circumstances for non-use were raised pointing to problems of supply and quality control (including because of an infestation of weevils).  The Commissioner held there was insufficient evidence to show the extent and effect of these circumstances on Bluebird and therefore no special circumstances were established.

Bluebird submitted use of the trade mark after the end of the non-use period identified in the removal action was evidence of an intention to use the trade marks and efforts to prepare for that use during the relevant period.  The Commissioner held that while this evidence did not help Bluebird establish use during the relevant period, it did go towards the exercise of discretion which was “influenced by the fact that Bluebird did not abandon its marks; the evidence that there is a residual reputation in the marks despite the period of dormancy; and the fact that no one would be deceived or confused if the marks were to remain on the register in the name of Bluebird Foods Limited – in fact, the opposite may be true”.

The Commissioner also referred to allegations from Bluebird that Griffins had no bona fide intention to use the CC’s trade mark in good faith, however found that in the face of no evidence filed by Griffins, that allegation could not be assessed.