Coombe v Coca-Cola Amatil (NZ) Ltd
(CIV 2010-485-816, 8th April 2011)
Coombe was unsuccessful in appealing an Assistant Commissioner’s decision that allowed registration of the phrase WORLD FAMOUS IN NEW ZEALAND in class 32 by Coca-Cola. Coca-Cola has made substantial use of the phrase in relation to the relevant goods since 1993 and applied to register it in 2004.
Coombe submitted that the phrase is a descriptive slogan that has entered everyday language in New Zealand. It is now used and understood in a variety of situations and is not solely associated with Coca-Cola’s product.
The Judge considered the relevant market to be the public at large. However, taking account of experiences and views of the public should not result in the distinctiveness test being applied in the abstract. Rather, the Court must consider the distinctiveness of the phrase as it applies to the relevant goods.
The Judge held that being well known and having other applications is insufficient to make the phrase descriptive. Descriptiveness needs to be evaluated from use of the phrase in trade, and in particular whether competitors would be hindered in their use of descriptive or laudatory words for their products. Here, the evidence did not establish the phrase to be descriptive or generic in the relevant trade. Neither is the phrase laudatory, indicative of quantity, value or time of production or indicative of an intended purpose.
The Judge noted that being meaningful when applied to other types of goods does not make the phrase devoid of distinctive character. The Judge held that the phrase is a fanciful oxymoronic slogan that produces a quirky, original and distinctive incongruous and self-contradictory statement. It stands on its own as a badge of origin that distinguishes Coca-Cola’s goods and is not a limping mark. Hence, the mark was allowed to proceed to registration.