Reputation can Accrue even though Use Contrary to Law
In Auckland Agricultural Pastoral and Industrial Shows Board v Royal Agricultural Society of New Zealand an Assistant Commissioner held that an opponent can establish awareness of the marks it relies on under s 17(1)(a) of the Act even when use of those marks may have been a technical breach of other legislation...
Under section 17(1)(a) of the Trade Marks Act 2002 the Commissioner must not register as a trade mark or part of a trade mark any matter the use of which would be likely to deceive or cause confusion.
The Royal Agricultural Society of New Zealand opposed Auckland Agricultural Pastoral and Industrial Shows Board’s application to register the word mark THE ROYAL EASTER SHOW. The opposition was based on the opponent’s claimed reputation in the marks ROYAL SHOW and ROYAL NEW ZEALAND SHOW dating back to the 1920’s. In 1923 the opponent obtained permission from the relevant authority to use ‘ROYAL’. The original documentation was unable to be located, but the evidence pointed towards the opponent only being granted permission to use that word in their organisation name and not in relation the marks they claim reputation in.
The applicant had run the event known as THE EASTER SHOW since 1953, and from 1989 – 2011 the event was known and promoted as THE ROYAL EASTER SHOW after the opponent granted the applicant the right to use the word ‘ROYAL’ subject to the payment of an annual fee.
In 2011 the Ministry for Culture and Heritage advised the applicant that the opponent did not have the authority to grant the applicant the right to use the word ‘ROYAL’ as this breached the Flags, Emblems, and Names Protection Act 1981. However, by the end of 2014 the applicant received the Queen’s approval to use the word ‘ROYAL’, following which IPONZ accepted the applicant’s mark.
In the subsequent opposition the applicant asserted that the opponent could not rely upon the existing rights provisions of the Flags, Emblems, and Names Protection Act 1981 in relation the marks they claim reputation in as they did not have express permission to use the word ‘ROYAL’ for that purpose.
The Assistant Commissioner noted that the focus of section 17(1)(a) is the protection of consumers and so applies a lower threshold than section 25, which protects the rights of traders. It was further noted that according to precedent the opponent only needs to show awareness, knowledge or cognisance of its mark in order to rely on its provisions, and that it applies equally to registered and unregistered marks. Given that registration is not a prerequisite for section 17(1)(a) it is distinguishable from section 17(1)(b) which prevents the Commissioner from registering any trade mark the use of which is contrary to New Zealand law. As such it cannot be implied that the intent behind section 17(1)(b) also applies in relation to establishing reputation. In light of this the Assistant Commissioner concluded that the opponent could rely on the reputation in their marks, since whether or not the opponents use of their marks was in breach of some other legislation is irrelevant to whether the opposed mark is likely to deceive or confuse consumers.
Nonetheless, the Assistant Commissioner went on to hold that the applicant’s trade mark is not likely to cause confusion or deception amongst a substantial number of consumers, and the other 5 grounds of opposition also failed.