Intellectual Property - Trademarks and Passing Off

Intercity Group v Nakedbus [2014]

- [70] These authorities show that the essential function of a trade mark is to guarantee to the consumer the identity of the origin of the trade marked goods or services by enabling that consumer to distinguish the goods or services from others which have a different origin. With this in mind, I turn to whether, in relation to the keyword 'intercity' and variations, there has been a 'use' in terms of s 89(3) by Nakedbus.

Section 17: Absolute grounds for not registering trade mark: general

- (1) The Commissioner must not register as a trade mark or part of a trade mark any matter— o (a) The use of which would be likely to deceive or cause confusion; or o (b) The use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court; or o (c) The use or registration of which would, in the opinion of the Commissioner, be likely to offend a significant section of the community, including Māori. - (2) The Commissioner must not register a trade mark if the application is made in bad faith. - (3) Despite subsection (1)(b), the Commissioner may register a trade mark even if use of the trade mark is restricted or prohibited under the Smoke-free Environments Act 1990

Requirements for registration: s 18

- (1) The Commissioner must not register— o (a) A sign that is not a trade mark: o (b) A trade mark that has no distinctive character: o (c) A trade mark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services: o (d) A trade mark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade. - (2) The Commissioner must not refuse to register a trade mark under subsection (1)(b), (c), or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character.

Dominion Rent A Car Ltd

- 406 per Cooke P: o "In accordance with what appears to be the general trend of judicial opinion, I think an Australian company's goodwill can extend to NZ (and vice versa) and, at least if here is a sufficient business connection with this country, will be entitled to protection here." o "Except in special cases, such as the Star Industrial Company case, it seems to me artificial to analyse such a state of affairs by stating that the company has one goodwill in Australia and another in NZ. Rather the goodwill transcends territorial boundaries." - 420 per Somers J: o "There has been much debate as to the degree of activity sufficient to justify the finding that a plaintiff with an international reputation has a sufficient business connection with the jurisdiction to which goodwill can attach." o "In the end the question of the existence and extent of reputation and of goodwill must be a matter of fact. In the case of a business having an international reputation which extends to NZ not much in the way of activity in NZ would I think be required to establish a goodwill. In such cases, the reputation itself may be almost tantamount to goodwill, activity having importance in localising that reputation in NZ."

Passing off in Australia

- Abandoned notion of having business activity requirement almost entirely - Conagra v McCain Foods (1992) Australia: o It was held it was not necessary to have carried on any business at all in Australia, or even have an immediate intention to do so o It was sufficient if plaintiff could prove that a 'substantial number' of people were aware of the plaintiff's products and were therefore potential customers o But the plaintiff in this case was not able to satisfy the court as to that - i.e. could not point to evidence of it and the action failed o This case establishes that do not need customers - just a level of awareness of the products amongst people in the jurisdiction - Arguably immigrants bring their knowledge of these products o And spill over advertising - pick up foreign magazine or go on foreign website and there will be advertising for products that we cannot get in NZ o Through that, increasingly get a level of reputation and awareness We have not gone as far as Australia.

Le Cordon Bleu [2012]

- Although found mark 'Le Cordon Bleu to be inherently distinctive and entitled to automatic registration under s 18(1), also considered s 18(2) - But have not used it in NZ bit so cannot get use in s 18(2) o What about any other circumstances? - Found 'Le Cordon Bleu' had acquired distinctiveness through any other circumstances o Mark forms part of well known business name that has been used as a trade mark in NZ o The mark could on a reasonable basis be said to be fairly closely allied to the pre exiting fields of the applicant's activities, being foods in the same category as Class 29, in particular fish, cooked dishes, and fish and cooked dishes in preserved, frozen or deep frozen form. o Could on a reasonable basis be said to be fairly closely allied to the pre existing fields of the applicant's activities, being the same food in the same class to which the Australian and UK trade marks apply o The mark is "another in a distinctive family of marks to which distinctiveness has already attached"

Mitre 10

- Brochure case from copyright - S 94 Trade Marks Act excludes comparative advertising from infringement - If section applies, no injunction can be issued - Satisfied that Benchmark's use of Mitre 10 trade marks constitutes comparative advertising within the section

Wineworths on misrepresentation causing damage to goodwill

- CA had found that the Australian producers had misrepresented that its product had the same attractive attributes that we associate with champagne - Some misrepresentation here - What is the damage that has been suffered by the French champagne producers? - Judges thought it likely that Australian champagne makers' activity had diverted some customers o Impossible to quantify o But a reduction of sales of the French product around this 1986/7 period o Court could infer that some damage to trading goodwill was likely o Quite generous without precise evidence that there had been a diversion of customers - But that is not the only damage to the goodwill that the CA relied on - Clearly they considered that the dilution of the goodwill through the erosion of the distinctiveness of the name champagne is enough o No doubt the fact that the distinctiveness became diluted and the name became eroded would give rise to some damage to the goodwill - Plaintiff's had established that 'champagne' was not a generic words and it served to distinguish wine from the Champagne district of France from other white wines - What was the representation that caused consumers to be misled? o Plaintiffs had not misrepresented origin or source of wine - clearly labelled as Australian champagne o D had not misrepresented nature or composition of the product they were selling - no representation as to the kind of product o So not misleading about source or tangible property - Seems that the only thing that is misrepresented is something intangible - the intangible attractiveness and characteristics that are attributed to French champagne o Notion of some ambiance, aura of sophistication and luxury o Nothing substantive o Consumers would be misled into thinking this is what champagne is after purchasing the Australian product o Would come to associate the less desirable Australian product with the more sophisticated French product - No representation about tangible quality or where it came from - only a misrepresentation about all that is tied up in the idea of drinking French champagne

Wineworths on distinctiveness

- CIVC was a semi-official body established by French law to protect the name "Champagne" for the sparkling wine produced in the Champagne area of France - In 1987, an Australian winemaker reached an agreement with Wineworths to export to NZ a wine called "Australian Champagne" o Which they marketed first as "Australian Champagne" and then as "Brut Champagne" - CIVC and some French winemakers assert that they had a proprietary right in the name "Champagne" which was a wine of high prestige and reputation o I.e. Wineworths were passing off a sparking wine (being Australian Champagne) as if it was "Champagne" - CA wondered if the name Champagne is now generic and no longer distinctive o Held that it had not lost its distinctiveness and had not become generic o Continued to distinguish wine from France of that sort o Plaintiffs retained goodwill in the name "Champagne" - This would suggest that you could be almost indistinct but still maintain some distinctiveness

The application process

- Can apply for registration for a trade mark in respect of "goods and services" that already use or propose to use - There are 45 classes of "goods and services" - Application can be rejected if it appears that no genuine intention to use the trademark (s 32(2) or opponent can object) - No registration if s 17 applies - Commissioner of Trademarks makes an assessment as to whether or not it is registrable - notification in the IP Office Journal - If objection, Commissioner hears the parties and makes a decision - full right of appeal on the merits to the HC

Lord Diplock in Advocaat

- Clearly labelled that are getting Keelings, so no misrepresentation that the goods were those of the plaintiff - Lord Diplock says that the tort has already been extended in the well-known Champagne case - issue involving French champagne producers there o This extended the tort to the geographic region of the goods - could cover misrepresentation as to the geographical source o Away from who made the thing to where it was made - Judge in HC in Advocaat applied the champagne case and found defendant liable - CA in England reversed this and said it required a further extension of champagne principle - No misrepresentation to geographical source here as said 'Old English Advocaat' - Deception here is instead to the nature and quality of the product o Was some evidence that people went into wrong store and brought wrong product o But EW more concerned that goodwill regarding the quality of the product attached to the name had been tarnished o Real complaint is in the debasement of the goodwill in advocaat - Lord Diplock gives story of how the tort has some roots in it that are bigger than we might think - Discusses Spalding and Harrods

Daimler Chrysler v Alavi

- Daimler owner of the TM "Mercedes" - Mr Alavi operated a shop in London selling clothes and footwear aimed at skinheads named "Merc" - Daimler sues for passing off and trademark infringement - Judge finds no evidence of consumer confusion or deception o Disposed totally of claim on the equivalent of 89(1)(c) o Similar mark, but clothing quite dissimilar - Plaintiff claimed clothing was aimed at disreputable end of the market that people buying Mercedes' did not want to be associated with - Judge said that to establish this tarnishing, it must at least be shown that the relevant public think there is some sort of connection between clothing and trademark owner o Courts being a little circumspect o Need some evidence of actual tarnishing going on

Damages in Tot Toys

- Defendant in Tot Toys committed a breach of s 9 because some consumers would have been confused/deceived to think that they were getting the BB when they first saw KB - False impression at that point, and for FTA, did not matter that customers worked out the difference between the bees - was still deception - Since D's product was a better quality bee, the judge refused to prevent the D from trading - P. 371: Fisher J "I do not think that the interests of a plaintiff in securing an injunction are sufficient to outweigh the interests of consumers against one. I conclude that notwithstanding the possibility of technical breaches of the FTA, their nature would not warrant a remedy" o Bit of a Russian Roulette - though was a breach, no remedy issued

Bravado

- Defendant wrote a book about a pop group called 'Wet Wet Wet' - Wet Wet Wet had taken trademark in their name, and in respect of printed matter, books and book covers - The book that the defendant wrote had the band's name in its title - Was that an infringement? No it was not - Defendant was using registered trademark honestly to indicate what their book was about - Indicating to the consumer the content of the book was honest practice (s 95)

Erven Warnink (Advocaat)

- EW made a liquor product in the Netherlands called Advocaat o They sold it in England, and it was made with eggs, sugar and brandy - An organisation called Keeling made a product called 'Old English Advocaat' o It is made out of dried egg powder and wine o It manages to capture a substantial part of the English market for Advocaat, the product made in the Netherlands - EW go to Court to try to say that the product is being demeaned and diluted by this competing product - Chances are that consumers did not think they were getting the plaintiff's product, and thought they were getting someone else's - But does appear to be evidence that Advocaat brand was being diminished by this cheaper, nastier product

Discussing character merchandising in Tot Toys

- Fisher J is very sceptical about this approach and does not want to go too far - He insisted that the tort of passing off requires: a. Proof of a misrepresentation causing deception and b. Resulting damage to goodwill - Doubted whether those requirements were satisfied in the Australian cases Fisher J's issues with misrepresentation: - He is critical of the Australian approach of imputing knowledge of licencing practices to the public generally and then artificially constructing a misrepresentation of a licencing appropriation - Happy to accept it may be satisfied where D induces people to believe there is some commercial connection, but that has to be positively proved o Have to show that they told the viewers this o Cannot infer that viewer would have thought that without any evidence - This is a much better view o Australian courts too ready to infer deception with virtually no evidence - Fisher J thought most members of public would not know about or care about licencing practices - Onus continues to be on plaintiff to show deception. This may take the form of inducing the public to falsely believe that there is a commercial connection between the defendant and/or his goods and the plaintiff and/or his but there can be no predisposition towards any particular finding on that essentially factual issue. o No basis for inferring a misrepresentation - it has to be established in some way through the facts - Distinction between artificial creations and actual, real life persons is not an unreasonable distinction because different rights will attach to these things - When we are thinking about real life people, it would seem reasonable to think that they might possibly have made some arrangement to endorse a product or such like o But the damage requirement would still provide an obstacle

Business activity in the jurisdiction for goodwill

- Goodwill is the property right that is protected in passing off - The goodwill does not exist without the notion of there being a business to which it is attach - This ties in with the concept of actionable damage o If plaintiff does not have any customers, then they cannot be diverted so would not be able to show the required level of damage

Taylors

- HC held the name Taylors Linen Hire would lead people to think there is a business connection between the two - HC judge also found that there was some minimal damage to Taylors Wellington's current trading goodwill o Some evidence that some customers had moved across o And some possible loss of reputation because the D's linen hire was not quire so good - But the major hit of damage was the dilution of goodwill through loss of control of the name Taylors o Some sort of depreciation in the economic value of the name itself - HC said, and CA agreed, that a point would come when plaintiff no longer recognised by own name but was seen by the public to be part of the Taylors group, and that the goodwill attached to the name Taylors could be diluted to the point where the sale price of the name diminished and perhaps sharply - CA approves of this view on appeal o The acceptance of the Lego principle in NZ - Cooke P in CA: the attitude of courts of what amounted to sufficient damage for action in passing off had changed, and the concept of actionable damage to goodwill has been extended - McGechan J: "In some cases it is legitimate to infer damage for a tendency to impair distinctiveness. For instance, in the Lego case, although the parties were not in a common field of activity and although there was no allegation against the quality of the defendant's products, the plaintiff succeeded in a passing off action." o "As to damage, Falconer J attached weight to the factor that the unusual name was so well known that the plaintiff might be supposed to have licenced the defendant's use, and also to the factor that the plaintiff would be unable to control future use by the defendant." o "Lego is perhaps an extreme case, but it seems the same considerations can apply in principle when a name, although less widely distinctive, is distinctive of the plaintiff in a particular field of activity in a particular area." o Accepting the notion of the Lego case - If the group are permitted to use the name in Wellington, albeit in a special branch of cleaning business in which Taylors Wellington do not engage, there will be not only a natural tendency to treat the parties as associated, but also a loss of control and licencing capacity (and therefore revenue) of the same kind as illustrated in the Lego case o At some point will not be able to sell name o Will be of less value to licence or sell o This is the actionable damage satisfactory for the claim - Accepting that the name has a value kind of independent of the business o Related to the business but independent of the customers

Idea behind s 25(1)(c)

- Idea that if someone has particularly well known brand, that trademark can be misused if it is used on goods that are similar or not similar - It has been thought that it is probably somewhat difficult to prove a likelihood of prejudice to the owner of the trademark in goods that are sufficiently dissimilar so protection in s 25(1)(c) is somewhat illusory o Will only apply if goods are pretty much the same o Otherwise consumers are not likely to be confused or deceived - In practice, this section is most unlikely to block registration of similar mark where the goods are dissimilar

Pacific Dunlop v Hogan

- In first case, D's (Dunlops) made an ad in which the main character was dressed like Crocodile Dundee (CD) - Mr Hogan sued for passing off - Full Federal Court in Australia concluding that a substantial number of viewers would have identified the character in the ad as being like CD and would assume that the makers of the advertisement must have got Hogan's, or a directors/producers permission - Would think Hogan had commercial relationship with the ad - Court inferred that public had general knowledge of merchandising processes and would assume the image was authorised and licence - And the damage that they find is that the ability to licence CD to other people has been diluted in a sense because someone has done this in an unauthorised fashion - Lost some of that because someone has taken that image

Why might people still try to use passing off over FTA?

- In some cases, if you can prove all the elements of passing off, as of right you are entitled to an award of damages o If plaintiff has suffered damage, passing off will be better claim for them - On the other hand, all remedies for breach of FTA are discretionary - the judge decides the remedy o So do not automatically get a remedy o This discretionary nature can be seen in Tot Toys - Frequently people will plead both passing off and FTA to cover bases - So no reason for NZ court to create new torts or change passing off to change it into something it was not

Crocodile International v Lacoste

- Lacoste owns registered trademark of image of crocodile with word crocodile written in italics above. Crocodile International applied to revoke the mark under s 66 on ground it had not been used for three years - Lacoste acknowledged had never used the trademark, but has used other marks which it says constitute use of the mark for the purposes of s 66(1)(a) by virtue of the Act's extended definition of "use of trade mark" o Definition of extended use of trade mark is in s 7 and includes "use in a form differing in elements that do not alter the distinctive character of the trade mark in the form in which it was registered; - Decided it was used under the extended definition as central idea and message in the contested mark and the marks that they used was the crocodile, and various images of crocodile are similar - Application to revoke was not granted - Note that leave to appeal to SC has been granted

We know from Advocaat

- Misrepresentation o Misrepresentation as to the trade or geographic origin of the goods (Champagne) o Misrepresentation as to the quality of goods (Spalding, Advocaat) o Misrepresentation as to business connection (Harrods) - Actionable damages includes: o Appropriation of trading goodwill by diversion of customers from plaintiff to defendant o Tarnishing or debasing of goodwill through association with an inferior product or service

Sintes

- Mr Sintes had a logo which said 'family search' - It had a koru on the bottom and an arrow surrounding it - this was enough to give it a level of distinctiveness - Putting something around the words gave it sufficient distinctiveness to be registerable as a trade mark

Distinctiveness

- Must have notion of distinctiveness in order to be registered as a trade mark - Something like a made up name is inherently distinctive - Something that is not inherently distinctive can acquire a secondary meaning and become distinctive through extensive use in trade o Capable in principle of distinguishing one trader's good from those of another o Would also qualify for trademark registration under s 5 and s 18(1)(a) - Some things are incapable of distinguishing one persons' goods from another o Words like 'best; o Or like soap, detergent etc. - S 18(1)(c) and (d) discuss classes of marks deemed to lack distinctive character so cannot be automatically registered as trade marks

Muzz Buzz

- Muzz Buzz in 2002 started drive-in coffee shops in Western Australia - Expanded to Victoria, Queensland and South Australia - In 2007, registers Muzz Buzz trademark in NZ - In 2010, JITTA Buzz starts in Auckland who also run drive in coffee shops - Has Muzz Buzz got some goodwill in NZ that is actionable? - MB succeeded on an action for infringement of registered trademark, and also in passing off - Toogood J satisfied that MB had a lot of reputation in NZ prior to 2010 when JB started - MB sponsored a Basketball team (the Perth Wildcats) and they advertised during the games that were shown on TV in NZ - MB had website that was accessible to NZ - NZ and Australia are one market so can say there is goodwill - Seems do not need much business activity at all o Only activity in NZ here was registering the name - Need some connection to business but virtually nothing → Perhaps should get rid of need for business activity in modern world

N V Sumatra Tobacco Trading Co

- NZ Sumatra company applied for its brand ANGKOR to be trademarked in NZ for tea, coffee, chocolate flavourings, non-dairy creamer, biscuits, confectionary - Milk Brands is the owner of ANCHOR brand (have trademark in this) which has been in NZ since 1886 for wide range of dairy products - argued that Sumatra's brand could not be trademarked under s 17(1)(a), and s 25(1)(b) and (c) - CA: two words similar, make essentially same sound (look different but sound the same) o The beverages and the non-dairy creamer were similar to some of the goods that Milk Brands could use trademarks over, in particular their flavoured milk drinks o Consumers would be confused as to the trade source of Sumatra's similar goods and that would cause prejudice to Milk Brands' interests - CA concluded registration banned by ss 25(1)(b) and (c) for similar products - However, ANGKOR was not precluded from using that trademark in relation to cereal, biscuits and confectionary because those were not similar to any of the goods on which Milk Brands used their ANCHOR trademark o ANCHOR was only well-known in relation to dairy products o Using ANGKOR on the other goods would be unlikely to cause deception to meet s 17(1)(a) o The trade connection and prejudice requirements could not be met either - CA considered that ANCHOR was only well known for dairy products and thus a connection in trade and likelihood of prejudice would not be established

Section 9 FTA

- No person shall in trade engage in conduct that is misleading or deceptive or is likely to mislead or deceive

L'Oreal SA v Bellure NV

- On the English equivalent of s 89(1)(d) - To show unfair advantage have to show a. Consumers must make a link between the two marks - more than a calling to mind of the famous mark b. Must be strong evidence that the defendant deliberately set out to exploit the reputation or image of the famous mark - Pretty high bar - Looks very close to a general prohibition on unfair competition o Generally, common law courts have been very reluctant to go there o There has been a lack of interest in prohibiting competition o Can see the English Courts here are showing that continued reluctance to actually prohibit unfair competition

Pepsico v Kettle Chip

- Plaintiff had registered trademark in the word "Kettle" - The defendant described its own product as being "Double crunch kettle cooked potato chips" - Use of the TM "kettle" was held to be merely descriptive of the production process - and would not have been taken by consumer's as indicating the source/origin of the defendant's potato chips - Indicates that have to be using the mark as a trademark (to show origin)

Lego

- Plaintiff here is Danish maker of Lego (brightly coloured block toy) - Defendant was Israeli company that made irrigation equipment and garden sprinklers o They marketed them under the name of Lego in English garden shops o Brightly coloured garden sprinklers made of plastic - The only thing they have in common is that hey are both made of plastic and both brightly coloured - HC judge finds that the misrepresentation requirement is made out - some members of public would be misled into believing there was some business association between Lego and this gardening equipment - What is the damage to the toymaker's goodwill? o Clearly no common field between the two parties - no possibility that the Lego block customers would be directed to the garden shops - So there was no question of diversion of people to the garden equipment o So none of the classic form of damage to goodwill - No question that D's goods were of inferior quality o Would not be tarnishing block maker's trading goodwill o Garden equipment was top notch - However, judge accepted expert evidence that the name Lego was so well known that the plaintiff's would have had an opportunity to licence that name to other people for quite unrelated goods and because somebody had taken that name, they had lost the opportunity to licence people as they chose o Such a distinctive name that could have ability to licence others to make unrelated goods o By losing this ability, have lost something of value - Plastics area would be a likely area to exploit this licencing ability and garden implements would be an ideal market for franchising Lego because the same people who are likely to buy Lego (parents and grandparents) are likely to be purchasers of garden equipment o Not saying that they are confused and would buy wrong product o But people who associate Lego with quality and come to see it in another product they might be buying, this might make them want to buy it - Possibility of licensing of gardening equipment area would be lost if Ds can continue to use the name - Losing the opportunity to do something with goodwill o To sell it, licence it, get reward for it - Loss has been caused in the loss of the ability to control the use of their product in an economic sense - to use the name Lego in relation to relatively dissimilar goods o There is an economic value in the name Lego o And this loss qualifies as damage to goodwill as have lost control of the name and ability to licence as someone has taken that from you - That was enough to support an action for passing off

Midas

- Plaintiff was a US company that operated a whole bunch of franchise outfits all over the US that sold car parts and car services o Also in Canada, Australia and parts of Europe - HC held they had established a reputation in NZ through spill over advertising in motoring magazines in NZ o Tourists and immigrants would be familiar with it - Against that factual backdrop, HC held that these circumstances, very slight business activity in NZ would be enough to establish goodwill - Here, that very slight business activity consisted of them having begun some negotiations to establish a franchisee relationship in NZ - Even though no business or customers or sales in NZ, they had enough given the factual context with spill over advertising to establish they had enough of a business presence in NZ to meet that part of goodwill

Star Industrial

- Pre 1965, plaintiff, who was a company in Hong Kong, marketed toothbrushes under the name 'Ace' in Singapore - Somewhere around 1965, they stopped selling these in Singapore - About three years later, defendant began marketing its toothbrushes in Singapore under a similar name - The plaintiff failed in its attempt of a passing off action because it was not carrying on any business in Singapore o Its goodwill did not exist because it did not do any business there - Lord Diplock: "A passing off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one person's goods as the goods of another." o "Goodwill, as the subject of proprietary rights, is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each." o "So when the business is abandoned in one country in which it has acquired a goodwill the goodwill in that country perishes with it although the business may be carried on in other countries." - So when Hong Kong company abandoned the business in Singapore, goodwill in Singapore perished

NZRFU

- Safe publishing used photograph of Anton Oliver on the cover of their calendar without his consent or consent of NZFRU - HC held consumers would likely be misled into believing that Oliver or NZFRU had authorised use of that image for that particular purpose - Clearly a finding of misrepresentation which was likely to mislead or deceive consumers - At that point, judge entitled to issue injunction preventing publication - Sufficient that the public would be misled → Clearly easier to establish FTA than passing off - In many cases, the injunction remedy is all you want - stop D from their action - Taylors, Wineworths - both held liable for breach of s 9 in those cases as well

Advantages of s 9 FTA

- Section 9 has some distinct advantages over passing off o All you need is that you have some reputation o Do not have to have any business activity or any goodwill o You must still prove that D has misrepresented those goods and services so consumers will be misled o But no need to find that person had some business goodwill that has been impacted on - Just have to show some reputation in the jurisdiction o Proof of reputation alone is enough o No need to prove actual business activity with s 9 as with passing off - Singapore toothbrush case - Star Industrial would be able to say they have a reputation in the jurisdiction despite no business activity as the providers of good quality toothbrushes, someone has misrepresented that their toothbrushes are Star's, so could claim under s 9 - Traders who have reputation from spill over advertising like in Muzz Buzz will be able to establish reputation in jurisdiction despite no business - Under s 9, do not have to prove any actual or likely damage o If consumers confused or deceived, s 9 is breached - Anybody can seek an injunction to stop it - Primary purpose of s 9 is consumer protection

FTA compared to passing off

- Sometimes, all you want is to stop someone using your image o So there is a real advantage in using s 9 for these two important reasons 1. Proof that plaintiff has a reputation in the jurisdiction enough for s 9 (no need to establish goodwill) 2. Proof of actual or likely damage of any kind not necessary element under s 9 - Consumer protection is primary purpose of s 9

Du Cros

- The applicant's chance of success must I think largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trademarks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trademarks Act a monopoly in what others may legitimately desire to use.

Hogan v Koala Dundee

- The essence of the wrong done is not a misrepresentation that there is a licensing or sponsorship agreement between the applicant and the respondent (who has used the image of a character developed/owned by the applicant). What is wrongful is the appropriation of a reputation, or wrongful association of goods with an image that properly belongs to the applicant

Distinctiveness for goodwill

- The name, the mark or the get up for which the plaintiff claims protection must be distinctive o The goodwill must be distinctive of business or product or service - And a substantial number of consumers in relevant market must associate particular name, mark etc. with the plaintiff so that it serves to distinguish the plaintiff's goods and services from that of their competition - An unregistered mark can also become generic o May come to be used for a broad class of goods which include other traders as well as that plaintiff o At that point, it will cease to have the capacity to distinguish your goods from somebody else's

Goodwill

- The property right that is protected in passing off is the goodwill - Traditional view of goodwill as protected by passing off has two parts a. Distinctiveness/reputation b. Business activity in the jurisdiction - Second element of business activity in the jurisdiction is particularly important in more recent times where can have goodwill in a company where you have never done business o Can read about products that are not sold in NZ online, see them on TV etc. o So still has goodwill in globalised world despite not being sold in NZ o How relevant is this element going to be?

Irvine v Talksport

- UK sports radio station promoted its coverage of Grand Prix racing by circulating a photograph of a man called Eddy Irvine holding a radio up to his ear with the name of the radio station on it - Irvine was a well known racing personality - if looked at ad, thought that he gets his information about the race from this radio station - But he had not given his image to be used by the radio station - A better more principled approach can be found here → Laddie J: - A misrepresentation via an unauthorised statement of endorsement - likely to deceive customers into believing there is a business connection between the celebrity and the supplier o Specific statement that this is best radio station to listen to o As opposed to merchandising that associates a product or service with an attractive image and some implicit endorsement o Difference between person X endorsing product compared to some lower level association o In those cases, court can take judicial notice the fact that it is common for people to exploit their name and images by way of endorsement o No need for evidence to prove that - we just take it as read (which is what judicial notice is) o An unauthorised statement of endorsement clearly would amount to misrepresentation and would deceive consumers into thinking there was business connection - Damages lies in the fact that the celebrity engages in the business of endorsement and unauthorised endorsement will erode the distinctiveness etc. of the celebrity's image and reputation and will therefore dilute his/her goodwill in the business of endorsement - Thus the elements of passing off remain intact - So might say this is a principled way of dealing with the celebrity issue within the traditional tort of passing off

Issues with the classic form of the tort of passing off

- You do not get any protection for your mark until you have some goodwill associated with it - It takes a long time to get the goodwill - it does not happen overnight - You have no immediate protection for a new mark - Investing in a new mark and promoting it might cost a lot of money and it will take quite some time before the tort of passing off gives you some protection - Once plaintiff has established good will, enforcing the rights is not cheap or easy - Plaintiffs had to prove positively that you have existing trade reputation and goodwill - And have to show likelihood of consumer damage to that will every time a competitor used an identical or similar mark

Wistbray v Ferrero

- [43] That is a useful contemporary analysis on the requirements under s 25(1)(c). Considering the concerns of Ferrero in the present circumstances, I find the dissimilarity of the goods relevant on these issues, as it was in the s 17(1)(a) analysis. That dissimilarity is a strong indication against there being a trade connection between TICK TOCK tea and TIC TAC mints. Just as with the appreciation attributed to Irish consumers that Jaguar watches are not necessarily offered for sale by a company with connections to Jaguar motor cars, so I consider NZ consumers might well have TICK TAC brought to mind when confronted with TICK TOCK tea, but not go on and assume from the similarity of name there was a connection between the producers of the dissimilar products. A connection in the course of trade requires more than a tenuous association such as this extent of similarity in the names.

Useful functions of classic tort of passing off

1. By protecting a trader's reputation in its established business in a particular market, the action gives incentives to people to develop and maintain a representation for quality and good service to ensure that your products and services continue to meet those standards 2. The action also protects consumers by enhancing competition by preventing deception a. Ensures consumers are actually receiving accurate information as to the source of the products b. Consumers can then make informed choices in the market place

Tarnishing of reputation of mark under s 89(1)(d)

1. Dilution/detrimental effect to distinctive character of brand o Defendant's unauthorised use of brand dilutes it o Notion that the distinctiveness of the brand is blurred o The hold on the mind of customers is weakened o Erodes ability to identify particular goods and services 2. Economic effect o Plaintiff must show not only that it might dilute its brand, but that is having or is likely to have an effect on the economic activity of the average customer o Plaintiff has to demonstrate that consumers will buy less of its goods as a result of D's use of trademark o Will be reasonably hard to do o Links back to s 25(1)(c) - ability to block registration of similar mark in relation to dissimilar goods or services 3. Question of unfair advantage o Not harming economic interests o But taking an unfair advantage of the distinctive character o Free riding

US development of 2 new tort actions to deal with appropriation of real people

1. Unauthorised appropriation of personality - based on the recognition of a property right in a real person's name or image 2. Breach of a broad right to control publicity

Duration of registration of trade mark

10 years (s 57)

Tot Toys

Buzzy bee case. - First, plaintiff says that by copying the shape of the original BB, the defendant had passed her product of as being their product o On seeing D's toy, consumers would thing they were buying BB from original source - But Fisher J disagreed - held defendant had taken sufficient steps to distinguish her toy from the plaintiffs o Gave it new name, put it in different package, and colours were different o While prospective buyers might initially think it was an original BB, these factors would mean that before they bought it, they would knew they were getting a KB not a BB - So Fisher J held no actionable misrepresentation or deception for copying shape - Secondly, passing off by associating plaintiff's product with D's inferior product o This fails on the facts o Plaintiff failed to prove that KBs were inferior to BBs - in fact, the opposite seemed to be the case - So no diversion, and no issue with being associated with poorer quality goods - Thirdly, question of character merchandising o Plaintiff says by using image of BB, D has falsely represented that they have been licenced by the plaintiff o Plaintiff says have already licenced the name BB for merchandising purposes and plan to expand that aspect of the business o By inferring that KB is licenced, then the goodwill and ability to licence other people to use the BB trademark has limited the plaintiff's ability to make money through this o Prejudicing plaintiff's opportunity to licence others - The plaintiff relies on a line of Australian cases - Australian courts have widened scope of passing off to provide legal protection for character merchandise - did that by stretching misrepresentation requirement and diluting damage requirement

Section 89

Infringement where identical or similar mark used in course of trade. Two thresholds for infringement: - Has to be in trade, and - Have to be using it as a trademark

AMI Insurance Ltd

Looking at s 17(1)(a). o Judge looked at application to register 'Life Assist' by AA o Was an existing trademark held by AMI for the phrase 'AMI Assist' o Both were to be used for same kind of service - 0800 number with someone at the end to help with insurance issue (help line for insurance policy holders) o Judge concludes that that would lead to confusion amongst customers as to the source of the service in question

McCain Foods

McCain wanted to register expression "healthy choice" o It was held to lack distinctiveness in food production o Combination of the words appeals as descriptive of products of desirable nutritional character. As such, without evidence of actual distinctiveness acquired through use it does not have the quality of being capable of distinguishing the goods of the applicant so as to be registrable

Section 66

Revocation of registration

Fredco

Plastic tie for tying kiwifruit wires. - CA accepts shapes should not be registrable - But CA also accepts relevance of policy concern about functional marks creating monopolies - CA did not need to make up their mind here - finding by original judge that the mark was largely functional, not only functional o Leave open possibility that something purely functional might satisfy requirements for trade mark - Decided it also had an aesthetic quality with there being other ways to achieve the functionality o If get a trade mark, will not have monopoly over tying vines to wires - CA upheld judge's finding that shape was capable of distinguishing it because had an aesthetic quality so satisfied s 18(1)(a) - Trial judge then found it did not satisfy s 18(1)(b) as main features dictated by function so had no distinctive character so was not automatically registrable - HC judge found under s 18(2) it had acquired this kind of distinctiveness because there was enough evidence that the mark had acquired distinctive character through a long and extensive use in trade - CA on acquisition of distinctiveness: o Authorities suggest following matters to be taken into consideration in determining whether a sign has acquired a distinctive character by use: • Market share held by the mark • How intensive, geographically widespread and longstanding use of the mark has been • The amount invested by the undertaking in promoting the mark • The proposition of the relevant class of persons who, because of the mark, identify the goods as originating from a particular undertaking, and • Statements from chambers of commerce and industry or other trade and professional associations o Evidence that plaintiff had promoted product based on shape o Evidence that consumers used shape to identify plaintiff's product - So could be registered for trade mark

Section 25

Registrability of identical or similar trade mark

Remedies

Section 106: Types of relief available for infringement of registered trademark: - If an application is made to the court for relief, the relief that the court may grant includes o (a) An injunction on any terms that the court thinks fit: o (b) Either damages or an account of profits

The modern form of passing off

a. Plaintiff has goodwill in a particular name, mark, logo, or get up that it seeks to protect b. Defendant has made a misrepresentation which is likely to deceive customers o This does not have to be into making customer think that the defendant's goods are those of the plaintiffs as in the classic form of the tort o Is wider than that now - see below c. That misrepresentation and resulting deception has already or is likely to cause damage to the plaintiff's goodwill

The classic action for passing off - plaintiff must prove

o (i) Established goodwill in a distinctive mark, name, or "get up"; o (ii) A misrepresentation by the defendant likely to deceive consumers into thinking that defendant's goods are those of the plaintiff - viz deception as to the origin or source of goods; o (iii) The misrepresentation and the resulting deception has caused, or is likely to cause, damage to the plaintiff's goodwill by diverting trade from the plaintiff to the defendant

Harrods

o Lord Diplock also finds this money lending case o Here, it was held there was a misrepresentation about a business connection that was sufficient to support an action of passing off o Harrod was a money lender (this was a disreputable business), and Harrods as a department store o Judge found a number of people that went to the department store would think somehow the two businesses were connection, and that the department store was associated with this disreputable business o That misrepresentation as to business connection supported passing off

Spalding

o Lord Diplock discusses this case about footballs o It was held in Spalding that there was a misrepresentation about the nature and quality of the footballs o Misrepresentation that bad balls were of superior quality - Five requirements from Spalding and later cases that must be present for valid claim of passing off: 1. Misrepresentation 2. Made by a trader in the course of trade 3. To prospective customers of his or to ultimate consumers of goods or services supplied to him 4. Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and 5. Which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so

Charlie's Trading Co

wanted to trademark 'honest' in relation to fruit juice and fruit drinks - this also lacked distinctiveness - "Life Assist" in relation to a helpline system was not of a distinctive character (AA Insurance wanted to register this)

Section 18(2)

→ Even something that is not inherently distinctive, and lacks inherent distinctive character, and so is not entitled to automatic registration, it might be later - If person can positively prove that as a result of either the use made of it, or any other circumstances, then that person may be able to get a registration for that thing on the basis the trade mark has acquired a distinctive character - In practical terms, a work that is not inherently distinctive will be declined the primary advantage of the registration system over the tort of passing off (can get it straight away) - This acquired distinctiveness is similar to what you need to show for tort of passing off - In case of mark lacking inherent distinctiveness, onus on applicant to find evidence to show to Commissioner that as a result of extensive use, consumers have been educated to associate mark with your particular goods and services exclusively - This is dealt with in s 18(2) → The less inherently distinctive something is, the stronger the evidence will have to be