New Zealand High Court confirms 'wrong way round' confusion is not sufficient to ground an opposition

Article  \  11 Jan 2016

The New Zealand High Court has upheld the IPONZ decision of early 2015 in relation to 'wrong way round' confusion in TomTom Communications Limited v TomTom International B.V.[1]

TomTom International applied to register the TOMTOM mark in word and stylised forms in relation to its well known portable navigation devices and systems.

Those applications were opposed by TomTom Communications, a small New Zealand company that has used the TOM TOM mark in New Zealand since 1998 in relation to PR and communications services. This use preceded any use of the TOMTOM mark by TomTom International.

Since TomTom International began using its mark there has been confusion around the TOMTOM mark in the New Zealand market. TomTom Communications received enquiries from customers looking for TomTom International (two to three incoming calls per day in some instances), misdirected mail, and difficulties with potential clients assuming the companies are connected, or assuming that TomTom Communications has used TomTom International's mark.

This decision considered whether confusion stemming from a later user of a mark having a very strong reputation in the mark, is sufficient to protect a smaller, earlier user of the mark from that confusion.

The High Court confirmed that the pre-existing established law in New Zealand also applies to cases such as this, even when there has been an actual confusion in the marketplace. As a result, TomTom Communications was required to establish that it had a reputation in the TOM TOM mark, and that as a result of that reputation consumers were confused or deceived. TomTom Communications was able to establish that it had a reputation in the mark, but given the difference in goods and services provided by the parties, it was held that no deception or confusion was likely to occur.

The actual confusion that has occurred in the marketplace was not as a result of any reputation TomTom Communications has in the mark, but simply consumers intending to contact TomTom International mistakenly contacting TomTom Communications.

The High Court also confirmed that TomTom International had not breached the Fair Trading Act, as any consumers being misled by the use of the TOMTOM mark was not as a result of any action by TomTom International.

Accordingly, this decision confirms that the law in New Zealand does not protect small, pre-existing users of a mark against a later larger user of the same mark.

It is open to TomTom Communications to appeal this decision to the New Zealand Court of Appeal.

[1] [2015] NZHC 3333.