Trade mark registration denied in "purely defensive" application

Defensive trade marks are a thing of the past in New Zealand following the abolition of defensive registrations under the Trade Mark Act in 2002 but, as illustrated in a recent High Court case, this hasn't stopped applicants from trying to achieve the same result through a different route.

Background

Cadbury Enterprises Pte Ltd (Cadbury) filed an application to register the EARTH trade mark on 15 May 2003.  The application was filed in class 30 to cover “chocolates, chocolate and sugar confectionery (all being non-medicated), chewing gum; biscuits, cakes, wafers, flour and preparations made from cereals, snack foods; food drinks; ice cream and ice confections”.  The application was filed on the basis of proposed use, but as the evidence established, Cadbury’s purpose was to protect its MOTHER EARTH trade mark (which it also holds registrations for).

The application proceeded to acceptance and was opposed by Effem Foods Limited (Effem) on the grounds that (i) it had made use of the EARTH trade mark and therefore had prior rights in the trade mark and that it sought to assert its claim by filing an application to register the EARTH (stylised) trade mark; and (ii) that there was no evidence that Cadbury had used the EARTH trade mark or intended to do so.

Effem asserted its prior rights on the grounds that it used the EARTH trade mark in a television advertisement for Effem’s MARS chocolate bar which commenced on 27 April 2003 (prior to the date of the Cadbury application).  The advertisement depicted a bar in MARS getup, carrying the stylised word EARTH instead of MARS.  The advertisement ended with a voiceover stating “Earth.  What you’d eat if you lived on Mars”.

At the opposition, the Assistant Commissioner of trade marks found on the facts that Effem had not used EARTH as a trade mark, rather it was a clever way of advertising the MARS bar.  In order to meet the requirements of trade mark usage, it is necessary that goods bearing the trade mark be available in trade, or that there is an existing intention to make such goods available.  In this case, there was no evidence that the goods bearing EARTH as a trade mark was available (or an existing intention to make them available).

While the Assistant Commissioner found that Cadbury’s use of MOTHER EARTH was not tantamount to use of EARTH given that the two are not identical, she found that Effem failed to establish that Cadbury had no intention to use EARTH and it was enough that Cadbury intended to use the mark at the time it filed its application.  Therefore, the opposition failed.

Effem appealed the Assistant Commissioner’s decision to the High Court on the following grounds:

• that the Assistant Commissioner erred in finding that Effem had not used EARTH as a trade mark;

• that the evidence showed that Effem used EARTH in the television commercial for several months, before the date of Cadbury’s application and that, by contrast Cadbury made no use of the EARTH mark; and

• that there was no evidential basis for establishing that Cadbury intended to use EARTH as a trade mark on its own; rather, it sought to register EARTH to protect MOTHER EARTH.

High Court’s Decision

At the appeal¹, counsel for Cadbury contended that Effem did not use EARTH in a trade mark sense; rather as a part of a slogan intended to market the MARS bar and that such use is not capable of distinguishing the MARS bar.  He accepted that while there is no actual evidence that Cadbury intended to use EARTH, its application for registration established intention to use and that the onus was on Effem to establish that Cadbury had no intention to use the mark.

Did Effem use EARTH in a trade mark sense?

In deciding this point at the appeal, Justice Miller stated that that the only goods being sold or promoted was MARS bars and that there were no EARTH bars being offered for sale.  He stated that the issue was whether EARTH conveyed trade mark significance to the consumer, or whether EARTH was capable of distinguishing the MARS bar.  He reached the same conclusion as the Assistant Commissioner and found that there was no evidence that Effem used EARTH in a trade mark sense in the advertisement and that Effem failed to establish prior rights to the EARTH trade mark in New Zealand.

Intended use of EARTH by Cadbury

The judge agreed that use of MOTHER EARTH was not tantamount to use of EARTH as the two marks are distinct.

The judge found that apart from the application filed by Cadbury, it provided no evidence before the Assistant Commissioner to establish that it intended to use EARTH as a trade mark.  A director of Cadbury deposed that the application for EARTH was filed to protect the substantial goodwill and reputation that Cadbury has in the MOTHER EARTH trade mark and it appears Miller J placed considerable weight on this evidence. 

The judge accepted that Cadbury’s application for the EARTH trade mark inferred a prima facie intention to use.  However, he stated that in the case of a trade mark opposition, the question is whether the applicant had established that it has used or intends to use the mark.  In the present case, Miller J held that any inference of intention to use which arose from the application itself was displaced by Cadbury’s own evidence that the purpose of registration was purely defensive (i.e. the director’s evidence that the application was filed simply to protect Cadbury’s goodwill and reputation of the MOTHER EARTH trade mark). 

In allowing the appeal, Justice Miller found that Cadbury failed to establish an intention to use EARTH as a trade mark and that the Assistant Commissioner should have rejected the application.  He did agree with the Assistant Commissioner that Effem failed to establish prior use of the EARTH trade mark.

Commentary

The above case establishes that traders cannot use other provisions in the Trade Marks Act to try and obtain a defensive registration indirectly.  Filing an application to protect a trade mark would be considered a prima facie intention to use, and it is not for the Registrar of Trade Marks to enquire as to the applicant’s intention.  However, when the application becomes the subject of an opposition, or if it is challenged, it will now become necessary for the applicant to establish an intention to use.  If a trade mark registration is sought for purely defensive reasons, with no intention to use the trade mark, it may be rejected, on the basis of this decision. 

Advice and information This case note is by Bell Gully solicitor Jeanette Singh. Bell Gully’s Intellectual Property team can advise you on all types of IP issues, including the registration and maintenance of trade marks. Contact the team for more information.

¹ Effem Foods Ltd v Cadbury Ltd (unreported Judgement, HC Wellington, Miller J., CIV 2005-485-1487, 7 February, 21 March 2007)

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