Notwithstanding the basis for Muir’s appeal, which related to an extension of time by the respondent (The Good Guys Group Limited) to file evidence in support of its revocation action, and Justice Lang’s findings that the Trade Marks Regulations 2003 contained a significant shift in emphasis so far as the Commissioner’s power to grant extensions of time is concerned, it would appear that the Trade Marks Hearings Office has not yet issued a revised practice concerning granting of general extensions of time in trade mark proceedings (eg the filing of evidence).

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>

A number of License/Copyright Agreements between the parties authorised the founder of the opponent to translate each book into English, and granted him worldwide rights to publish and market the translated books.  In 2004 the opponent also obtained a “Warranty of Authorisation” from the then-legal owner of the registered “RINGING CEDARS” trade marks in Russia, which stated that the Russian owner did not claim any proprietary right to the phrase “ringing cedars” in the English language, and authorised the opponent’s founder to make use of the phrase for either personal or commercial purposes.

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.