Ringing Cedars author wins trade mark opposition
Ringing Cedars Press has been unsuccessful in its opposition to the registration of the trade mark THE RINGING CEDARS OF RUSSIA in class 16 in Vladimir Nikolayevich Megre v Ringing Cedars Press LLC (2009) NZIPOTM 22.
The applicant, Vladimir Megre, is the author of a series of nine books collectively known and referred to as “The Ringing Cedars of Russia” series.
The opponent, Ringing Cedars Press LLC, publishes and markets English translations of the books in New Zealand and other countries under the abridged title “Ringing Cedars” series.
The opponent based its opposition on the grounds that the use of THE RINGING CEDARS OF RUSSIA by Megre would be likely to deceive or cause confusion due to the opponent’s prior use of RINGING CEDARS in New Zealand (s 17(1)(a)). The opponent also submitted that the application was made in bad faith (s 17(2)) and that the applicant was not the rightful owner of THE RINGING CEDARS OF RUSSIA (s 32(1)).
The opposition failed on all grounds, with the Assistant Commissioner noting that the opponent’s use of the RINGING CEDARS mark in New Zealand had been exclusively in relation to the applicant’s series of books. The Assistant Commissioner held that RINGING CEDARS formed part of the content of each text for which the applicant is the sole copyright owner. Therefore, the use of RINGING CEDARS by the opponent was held to be effectively use of that mark, by the opponent, on behalf of the applicant.
The Assistant Commissioner also noted that the opponent always marketed its books as “The Ringing Cedars Series by Vladimir Megre”. Therefore, the opponent’s actions merely educated the public to recognize RINGING CEDARS as the badge of origin for the applicant’s series of books.
The Warranty of Authorisation was not considered relevant to the opposition because it did not bind third parties or their intellectual property. This highlights the importance of ensuring that all licenses concerning intellectual property are drafted carefully.