eBay Inc subsequently opposed the registration of the three trade marks however, in a decision by a Delegate of the Registrar of Trade Marks, the UBAY marks were found not to be substantially identical with, or deceptively similar to any trade marks within eBay’s family of 12 Australian trade marks. The Delegate said that whilst there were similarities between the marks, he “could not be satisfied that there would be a real tangible danger or likelihood of confusion amongst a substantial number of consumers”.

Attempts by eBay to argue against registration of the UBAY marks on the basis the online auction giant had acquired a reputation in Australia, and that because of that reputation use of the UBAY marks would be likely to deceive or cause confusion also failed. It relied in part on evidence of a 2004 US survey showing 58 per cent of respondents would associate a website using the word “bay” within its name or on its website with eBay, to argue deception or confusion between the UBAY and eBay marks was likely to arise.

However, the Delegate agreed with UBAY’s argument that the ‘brand recognition’ of eBay reduced the likelihood of confusion between the marks with consumers unlikely to believe eBay would vary its well-known trade mark. The Delegate found use of the UBAY trade marks was not likely to deceive or cause confusion and eBay’s opposition failed, which absent the Federal Court appeal, would have resulted in the UBAY trade marks being registered.

A directions hearing is set down for the appeal later this month.

The Court held that “neither the words “Malt Balls”, the red colour nor the depiction of the product in the whole and in cut through are used as a trade mark by Sweet Rewards. They are not used to distinguish the malt balls as the goods of Sweet Rewards, nor do they represent that the goods are Maltesers, that they are equivalent to Maltesers or that they are otherwise the goods of Mars.  Further, the words “Malt Balls” have been used by Sweet Rewards on products sold other than under the Delfi brand and have been used on the packaging of a product sold by a confectioner in Melbourne.  The packaging of the latter was in red, described the product as malt balls and showed the product both in the whole and in cross-section.

The distinguishing feature of the Sweet Rewards product is the Delfi trade mark.” [28] and [29]

Our report on the initial case is here.

To establish a ground of opposition under s 25(1)(c) the opponent must show that:

• the opposed mark, or an essential element of it, is identical or similar to, or a translation of, a trade mark that is well known in New Zealand;
• the use of the opposed mark would be taken as indicating a connection in the course of trade between the goods/services of the opposed application and the owner of the well known mark;
• the use of the opposed mark would be likely to prejudice the interests of the owner of the well known mark.

Importantly, the goods/services of the opposed application can be the same, similar, or unrelated to the goods/services in respect of which the well known mark has acquired a reputation.

In two recent decisions from the Intellectual Property Office of New Zealand (reviewed below), the owners of the well known trade marks HIGGINS and OMEGA successfully opposed the registration of marks under s 25(1)(c):

Higgins Coatings Pty Limited v Higgins Group Holdings Limited (2009) NZIPOTM 26

Higgins Coatings Pty Limited applied to register the word mark HIGGINS COATINGS and the composite mark shown below in respect of a range of construction, repair, installation and painting services in class 37:

Both applications were opposed by Higgins Group Holdings Limited, which is the parent company of Higgins Contractors Limited, Higgins Aggregates Limited and Higgins Concrete Limited.

The opponent relied on its prior reputation in the mark HIGGINS and a stylised version of this word.  The Assistant Commissioner found that through almost 50 years of use, the opponent’s marks were well known in respect of the provision of civil construction services and the provision of asphalt and ready-mix concrete.  The HIGGINS brand was also considered to be high in profile as it is in the eye of the public, appearing on vehicles, machinery and equipment.

In comparing the marks, the Assistant Commissioner held that in all of the marks, the dominant and distinctive element HIGGINS conveyed the same idea (of a family name).

At the hearing, the applicant proposed to narrow its specification of services to a range of painting services.  The Assistant Commissioner considered that such services could be complementary to the opponent’s services.  Further, given the opponent’s history of expanding and diversifying its business, she considered that the use of the opposed marks in respect of painting services was likely to be perceived as connected with the opponent.

The opponent also provided evidence of several instances of actual deception and confusion.  Accordingly, the opposition succeeded under s 17 (1)(a) (likely to deceive or confuse). Nonetheless, the Assistant Commissioner did not consider that the risk of confusion met the threshold required for a breach of the Fair Trading Act or for passing off under s 17(1)(b) (contrary to law).

The opposition also succeeded under 25(1)(c) (prejudice to owner of well known marks).  In considering this ground, the Assistant Commissioner found that use of the opposed marks was likely to prejudice the interests of the opponent because:

• Use of the marks would blur the distinctiveness of the opponent’s marks;
• The opponent would be denied real and valuable licensing and brand-extension opportunities;
• The opponent would be deprived of the right to sue for trade mark infringement;
• The reputation for the opponent’s marks would be tarnished if there were negative associations with the applicant;
• There is the risk of the opponent suffering delays, undue expense and inconvenience due to the public, consumers and other traders confusing the source of the services.

Elan Polo Australia Pty Ltd v Omega S.A. (2009) NZIPOTM 25

Omega S.A. opposed the registration of the marks OMEGA and OMEGA THE POWER OF PERFORMANCE in respect of “shoes, boots, slippers and sandals”.

It was held that Omega S.A.’s trade marks OMEGA and are well known in New Zealand in relation to high-end watches.

“Watches” and “footwear” were found to be different goods and as a result the opposition did not succeed on the s 25(1)(b) grounds (prior registered mark).

Nonetheless, the Assistant Commissioner considered that a substantial number of persons may assume a connection between the goods which would result in deception or confusion.  Accordingly, the opposition succeeded under s 17(1)(a).   The reasons behind this included that:

• The opponent is well known for providing official timekeeping services at high profile sports events such as the Olympics.  Running shoes (covered by the opposed applications) are complementary to athletic events held at the Olympic Games;
• Both sets of goods were articles of personal wear, and esteemed brands often sold both sets of goods;
• The opponent has used its trade marks on various promotional merchandise, including clothing, bags, wallets and luggage.

The opposition also succeeded under 25(1)(c) (prejudice to owner of well known marks), with the Assistant Commissioner finding that prejudice was likely because:

• The opponent’s goods are high-end watches whereas the applicant’s goods are available at K-Mart.  This juxtaposition in the market may tarnish the opponent’s reputation;
• The opponent has an after-sales network to ensure customer satisfaction.  However, the opponent will have no control over the after-sales services for the applicant’s goods;
• If the opposed marks are registered then the opponent will be denied real and valuable licensing and brand-extension opportunities.

The creative reasoning applied in this case should encourage practitioners to “think outside the square” when running oppositions.</div>

Before any of the grounds of invalidity raised by Bausch & Lomb could be considered, it was first necessary to satisfy the “gateway” requirements of section 234(2)(e) of the Trade Marks Act due to the mark having been registered in Part A of the register under the 1955 Act. Accordingly, Bausch & Lomb need to show that the trade mark did not distinguish the goods of Alcon from those of other traders.

In support of its contention that the trade mark did not distinguish the goods of Alcon, Bausch & Lomb sought to rely on a number of publications showing use of the letters BSS in relation to balanced salt solutions. However, Foster J upheld objections by Alcon to the admissibility of many publications on the basis that they were published overseas. His Honour considered that:

it is a long bow for the Court to draw to find that use in the relevant trade in Australia can be established by the availability here of journals, dictionaries and textbooks published overseas which, to some extent, may have been read or looked at by persons participating in that trade.

As to those articles published in Australia, Foster J concluded that:

when used in those articles, the letters “BSS” were almost always being used by the authors as an editorial abbreviation for “balanced salt solution”. This does not prove lack of distinctiveness. The letters “BSS” never appear on their own in those journal articles without a prior reference to “balanced salt solution”. The contents of the journal articles are, at best, neutral on the question of whether the letters “BSS” were used descriptively by December 2006. If anything, they tend to suggest that those letters were not used in that way at that time. This is because, in every case, it was necessary to refer to the product by its full name (“balanced salt solution”) before the acronym “bss” could sensibly be deployed.

Accordingly, Bausch & Lomb failed to satisfy the “gateway” requirements of section 234(2)(e), resulting in failure of its validity challenge. Foster J nevertheless went on to consider the grounds of invalidity raised finding that none of those grounds were made out. In particular, his Honour considered that the letters BSS were not used as a descriptive acronym for “balanced salt solution” at the priority date and that the letters were at that time adapted to distinguish the goods of Alcon. Further, the trade mark had not since that time become a generic description of the goods in respect of which it was registered, namely a balanced salt solution.

In relation to Alcon’s claim of infringement, Foster J found that despite the Bausch & Lomb product bearing the trade marks BAUSCH & LOMB and AQSIA, the letters BSS were nevertheless being used as a trade mark rather than merely descriptively, noting that “[i]f all that was being done was to describe the contents of the bottle, the full expression “balanced salt solution” would have done nicely.” Perhaps more controversially, his Honour also consider that a factor relevant to whether Bausch & Lomb was using the letters as a trade mark was that ”[t]he letters “BSS” have brand significance in the relevant trade in Australia. They are known to be the applicant’s trade mark. The applicant has a reputation in the product identified by reference to the mark”. This seems to suggest a presumption that use of a well known sign is use as a trade mark rather than descriptive use.