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25 October, 2018 | Bret Gower
Trade mark opposition is administered as a specialist tribunal by the Intellectual Property Office of New Zealand (IPONZ) Hearing Office. Opposition is available on a range of differing grounds, in this case Trade Me opposed on multiple grounds but primarily their case relied on s 17(1)(a) of the Trade Marks Act 2002 which prevents the Trade Mark Commissioner from registering any mark likely to “deceive or cause confusion”.
Trade mark registration grants monopoly rights over the use of a word or graphic as a means for consumers to identify the origin of the goods or services associated with the trade mark – which provides a real benefit to consumers and society in general. Similarly, there is a clear public interest in preventing the granting of monopoly rights to marks that create confusion regarding the actual origin of the goods or services. In this case Trade Me claimed the opposed marks would form an association with its trade marks in the minds of consumers such that they might think the goods or services originated from a business associated with Trade Me.
The tribunal’s enquiry used a two stage approach to determine the issue. First it considered whether Trade Me had established a sufficient reputation in its Trade Me mark. If that threshold was reached then the onus would fall to NZME to show, on the balance of probabilities, that the marks would not be likely to deceive or confuse consumers.
The evidence provided by Trade Me included survey evidence showing an astonishing 99% of the 2,973 survey respondents had heard of Trade Me. NZME argued that, notwithstanding the awareness of the Trade Me mark generally, that it was not necessarily associated with the ‘extended offerings’ that NZME’s proposed marks were intended to represent.
Ultimately the tribunal found that Trade Me had established sufficient reputation in its Trade Me mark, and that NZME had failed to prove that a substantial number of people would not be ‘likely to wonder’ whether services provided under the SHOPME, DRIVEME and PROPERTYME trade marks were associated with Trade Me.
As a business or trade mark owner it’s important to consider the commercial environment when embarking on a new venture or marketing strategy. In this case NZME clearly believed its company name and internal marketing communications incorporating the word “Me” entitled them to use that approach in the marketplace. It may have been part of NZME’s strategy to coat-tail on the reputation that Trade Me clearly enjoys, and they may have been prepared to take the risks associated with a claim for trade mark infringement. It would be naïve to believe NZME had not anticipated that Trade Me would object.
It will not be surprising to most readers that Trade Me, being one of NZME’s more visible competitors in the New Zealand marketplace, would vigorously defend its trade marks. NZME’s argument, that its proposed marks were for an offering that differed to that being offered by Trade Me, was thoroughly examined by the Tribunal. This approach ought to alert trade mark owners to two important issues: the risks associated with allowing competitors to chip away at the ‘fringes’ of the product and service offerings currently being protected by their trade marks; and the opportunities available to expand their own offerings by protecting those ‘fringes’ by trade mark registrations that overlap into classes or industries not protected by their current registrations.
Subsequent to the outcome of this case NZME has proceeded to launch two new services:
A property sector offering called OneRoof (www.oneroof.co.nz) – with a registered trade mark in 4 classes; and
An employment sector offering called Yudu (www.yudu.co.nz) – with a registered trade mark in 3 classes, registered to a company ultimately owned by NZME.
28 June, 2017 | Bret Gower