AJPark

This mark has been used since 1993 by the applicant, Coca-Cola Amatil (Coca-Cola), to promote its soft drink L&P.  While L&P is a popular drink in New Zealand, it is not widely known or available elsewhere.  Coca-Cola has long used the mark, but only applied to register it in 2004.  Coca-Cola’s application was opposed by a local man, Anthony Coombe, who claimed the phrase was part of everyday New Zealand language and should not be registrable as a trade mark.  Mr Coombe had previously been involved in a dispute with Coca-Cola over his use of their L&P trade mark in relation to his cafe services.

Grounds of opposition

Mr Coombe opposed the registration of WORLD FAMOUS IN NEW ZEALAND under s 18 of the Trade Marks Act 2002 (the Act). Section 18 of the Act deals with non-distinctive trade marks. Mr Coombe alleged the mark had "no distinctive character" (which would make it non-registrable under s 18(1)(b) of the Act), that the mark consisted "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" (which would make it non-registrable under s 18(1)(c) of the Act) and that the mark consisted "only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade" (which would make it non-registrable under s 18(1)(d) of the Act).  Furthermore, Mr Coombe contended that this was not an instance where a mark not inherently distinctive had acquired distinctiveness through use (which would make it registrable under s 18(2) of the Act).

Assistant Commissioner’s decision

Descriptiveness

The Assistant Commissioner first addressed the contention the mark was descriptive (s 18(1)(c) of the Act).  Mr Coombe had argued the mark WORLD FAMOUS IN NEW ZEALAND was "laudatory, descriptive of the geographical origin and descriptive of a particular quality of the applicant’s goods" because it "describes the fact the goods form (or are claimed to form) an essential part of New Zealand popular culture yet are (most likely) largely unknown outside the country".

Coca-Cola responded by arguing the mark was clearly not a sign or indicator of the kind, quantity or value of their beverages.  Furthermore, given the self-contradictory nature of the mark, it could not be taken as an indicator of quality, in the way that, for example, WORLD FAMOUS or FAMOUS IN NEW ZEALAND could be.  The applicant also argued that although their mark included the words NEW and ZEALAND it did not consist only of signs or indications that may serve, in trade, to designate the ’geographical origin’ of the goods (as per s 18(1)(c) of the Act).  Rather, the geographical indicator formed only a part of the trade mark.  The applicant further argued that "the manner in which [the words NEW and ZEALAND] are used makes no express or implied statement about the geographical origin of the goods" and "the geographical location has no special relevance to the goods".

The Assistant Commissioner agreed with the applicant, holding that "the evidence before me indicates that the applicant’s use of WORLD FAMOUS IN NEW ZEALAND is not a reference to the kind, quality, quantity, value or geographical origin of its goods.  Furthermore, in my opinion, the applicant’s mark is an invented and fanciful slogan; it is oxymoronic in that it produces a quirky, original and distinctive incongruous and self-contradictory statement". 

Non-distinctiveness

The Assistant Commissioner next considered whether the mark had a distinctive character (s 18(1)(b) of the Act).  The applicant filed evidence the mark had been invented by its advertising agency in 1993 and used extensively to promote its goods ever since.  The applicant argued that "given its fanciful, quirky, and contradictory nature, clearly had an inherent capacity to distinguish the applicant’s goods without first educating the public that it was a trade mark.  The applicant’s mark is not laudatory or in any manner descriptive of the goods in respect of which it is used and it had the innate ability to act as a badge of origin as at the application date".
The opponent filed evidence of internet searches showing use of the mark by parties other than the applicant.  These uses included use on a compilation of New Zealand music, as the title of a book, and a television series.  The opponent also asserted "the slogan world famous in New Zealand is commonly understood as meaning someone, somewhere or something that is very well known in New Zealand but not particularly well known outside New Zealand" and "the slogan has a generic meaning and should not be the exclusive property of any one party".  
The Assistant Commissioner agreed with the applicant’s submissions, finding no evidence to support the opponent’s assertions about the alleged generic meaning of the mark.  The Assistant Commissioner noted that none of the use of the mark shown by the opponent related to goods covered by the application and that the use dated from after the application date.

Customary in trade

In arguing the trade mark was customary in trade (s 18(1)(d) of the Act), the opponent asserted the mark was generic and as evidence referred to the use of the mark "in a number of different contexts such as a title for a book, as a title for music, as a title for a television programme, to describe Kiwiana [items associated with New Zealand popular culture], to describe prominent persons".  
The applicant argued there was nothing in the opponent’s evidence to suggest the mark was customarily used in relation to the relevant goods, pointing out that none of the use shown by the opponent related to the goods for which the applicant was seeking coverage.  
The Assistant Commissioner agreed with the applicant holding, "there is no evidence before me that establishes that the applicant’s mark was, at the relevant date, or has since that date become a customary way of referring to qualities of beverages in the current language or in bona fide and established practices of trade".

Acquired distinctiveness

Because the Assistant Commissioner found the trade mark registrable under s 18(1) of the Act, there was no need to consider acquired distinctiveness under s 18(2) of the Act.  Interestingly, the trade mark had initially been allowed by the Intellectual Property Office of New Zealand with evidence of use under s 18(2) of the Act.  The examiner had considered WORLD FAMOUS IN NEW ZEALAND "a common trade slogan or by-line" which only had the capacity to distinguish the applicant’s goods because of the applicant’s acquired reputation in the mark.

Significance of the decision

The decision confirms again that slogan marks are not to be held to higher standards of distinctiveness than other marks.  Unfortunately, at least until recently, New Zealand examiners often have been holding slogan marks to higher standards of distinctiveness, as shown in this case where the examiner had only allowed the mark, held to be inherently distinctive by the Assistant Commissioner, on the basis of acquired distinctiveness. 
This decision also shows that parties opposing a mark on the ground it is "customary in trade" or "has a generic meaning" will need to show use, or a likelihood of use, on relevant goods rather than merely use in other contexts.

An edited version of this article was published in the International Law Office newsletter, 26 April 2010

• 

  Jude Antony

  Executive

  
  

  Damian Broadley

  Partner