AA Insurance Ltd v AMI Insurance Ltd HC Wellington CIV-2010-485-2427
[2011] NZHC 1453
•2 November 2011
For a Court ready (fee required) version please follow this link
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
CIV-2010-485-2427
BETWEEN AA INSURANCE LIMITED First Appellant
ANDIAG NEW ZEALAND LIMITED Second Appellant
ANDVERO INSURANCE NEW ZEALAND Third Appellant
ANDTOWER INSURANCE LIMITED Fourth Appellant
ANDAMI INSURANCE LIMITED Respondent
Hearing: 29-30 June 2011
Counsel: B Brown QC and J Rudkin-Binks for Appellants
A Brown QC and Charlotte Henley for Respondent
Judgment: 2 November 2011
JUDGMENT OF WILLIAMS J
In accordance with r 11.5, I direct the Registrar to endorse this judgment with the delivery time of 1:30pm on the 2nd November 2011.
AA INSURANCE LIMITED V AMI INSURANCE LIMITED HC WN CIV-2010-485-2427 2 November 2011
[1] A trade mark must communicate the origin of a product in trade. If it does not, it will not be entitled to the monopoly advantages that trade mark registration provides.
[2] AMI Insurance Limited (AMI) seeks registration of a series of marks comprising, for the most part, purely descriptive words – insurance, car insurance, house insurance etc1 – preceded by the possessive adjective “my”. Thus, MY INSURANCE, MY CAR INSURANCE, MY HOUSE INSURANCE and so on. Such marks are known in trade as “my marks”. A great number have been registered in New Zealand in relation to goods and services other than those
connected to insurance. Their registrability has not yet been tested.
[3] The appellants are competing insurance companies. They say AMI‟s marks do not identify the origin of the product; rather they are purely descriptive of generically available personal insurance products. The appellants say registration of these marks will privatise ordinary words that belong in the public domain to be freely used by all, including AMI‟s competitors in the insurance trade.
[4] AMI says the words it wants to register are not used in the way its competitors would use them. Rather they are a simple but clever technique for connecting to the market by speaking in the consumer‟s voice. AMI says the opposition it faces from competitors reflects the fact that AMI is the first insurer to employ this clever technique. AMI says that in the modern insurance market, “my marks” are not seen as prosaically descriptive of a product all insurers sell in common; rather they are now seen by consumers as a genuine badge of origin.
Background
[5] Formal appeals are by AA Insurance Limited (AA), IAG New Zealand Ltd
(IAG), Vero Insurance New Zealand Limited (Vero) and Tower Insurance Limited
(Tower) against a decision of the Assistant Commissioner of Trade Marks rejecting:
1 There are two sets of marks which deviate from this pattern: those that contain additional descriptive or laudatory terms, such as MY ADVANCED CONTENTS COVER; and the MY freeB series. See [6] for the complete list.
(a) their opposition to AMI‟s application for 15 trade marks; and
(b)AA and Towers applications for a declaration of invalidity in respect of MY MULTI QUOTE series (registered).
[6] The relevant trade marks are word marks. They are:
MY INSURANCE
MY CAR INSURANCE MY HOUSE INSURANCE
MY CONTENTS INSURANCE MY FARM INSURANCE
MY LIFESTYLE INSURANCE MY freeB series
MY ADVANCED CONTENTS COVER MY PREMIER CONTENTS COVER MY STANDARD CONTENTS COVER MY PRIVATE VEHICLE COVER
MY THIRD PARTY FIRE & THEFT COVER series
MY THIRD PARTY COVER
MY PREMIER HOUSE COVER
MY MARKET VALUE HOUSE COVER
[7] AMI applied for the registration of those marks on 19 January 2007.
[8] The services covered by AMI‟s marks are in Class 36. With the exception of MY FARM INSURANCE and MY LIFESTYLE INSURANCE, the services covered are “insurance, financial, monetary, investment and real estate services …”. For MY FARM INSURANCE and MY LIFESTYLE INSURANCE, the services
covered are „insurance, financial insurance, [and] real estate services …”.2
2 The MY FARM INSURANCE specification includes the “and”, but the MY LIFESTYLE INSURANCE specification does not. This appears to be an oversight as there is no other difference between the two specifications.
[9] The grounds of opposition and invalidity3 varied slightly between appellants, but the common grounds are contained in s 18(1)(b)-(d) of the Trade Marks Act
2002 (Act). I conclude that those grounds are made out so it is unnecessary to consider the remaining differentiated grounds.
[10] I will briefly set out the legal framework for opposition under s 18(1), the
Assistant Commissioner‟s decision, and then my own analysis in this case.
Section 18(1)
[11] Section 18(1) provides that the Commissioner must not register:
(a) a sign that is not a trade mark:
(b) a trade mark that has no distinctive character:
(c) a trade mark … that consists 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:
(d) a trade mark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.
[12] A “trade mark” is relevantly defined in s 5 as “any sign capable of … distinguishing the goods or services of 1 person from those of another person”. This definition reflects the purpose of a trade mark at common law as “an indication of the origin of the goods”.4 The capacity to distinguish, for the purpose of ss 5 and
18(1)(a), may be inherent to the sign, or may have been acquired by use or other
circumstances.5
[13] Put simply then, for the purposes of s 18, AMI‟s marks are not unregistrable if they cannot distinguish AMI‟s products from those of other insurers; are not
3 The applications for declarations of invalidity require the Commissioner or the court to determine whether the trade mark was registrable at the date of the application for registration. Trade Marks Act
2002, s 73. In this case, the MY MULTI QUOTE series will be assessed by reference to the same grounds of opposition as the 15 unregistered marks.
4 Villa Maria Wines Ltd v Montana Wines Ltd [1984] 2 NZLR 422 (CA) at 426; Fredco Trading Ltd v
Miller (2006) 11 TCLR 715 at [12].
5 McCain Foods (Australia) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA) at [15]; Intellectual
Reserve Inc v Sintes [2009] NZCA 305 at [18] per Baragwanath J.
distinctive in themselves; are purely descriptive of those products; or are marks that are, in their entirety, already used in the language or practices of the insurance trade. I will further discuss each of these grounds of opposition (and the relationship between them) in the course of my analysis.
Assistant Commissioner’s decision6
[14] The Assistant Commissioner began with s 18(1)(a). She concluded that the inclusion of MY made each of the marks, as a whole, capable of distinguishing AMI‟s services because none of the marks was a generic expression for those services, unlike SOAP, for example.7
[15] The Assistant Commissioner then turned to s 18(1)(c), presumably on the basis that this is a more specific ground of opposition than s 18(1)(b) (the so-called
„sweeping up‟ provision8). As a result, the Assistant Commissioner‟s discussion of
this ground contains the bulk of her reasoning on overall distinctiveness (an approach which I will not follow). The Assistant Commissioner rejected the opposition under s 18(1)(c) on the basis that:9
(a) the average consumer will be towards “the very observant and circumspect end of the spectrum”. The relevant services can be distinguished from fast-moving consumer goods; acquiring insurance typically requires effort, a good faith contract, and considerable cost;
(b)MY will call to mind the ordinary meaning of “my”, as a possessive adjective, and the average consumer will perceive the use of that adjective as awkward and unusual:
i)as a possessive adjective for the insurer, MY does not make sense unless the insurer is a sole trader, which is unlikely;
6 AMI Insurance Ltd v AA Insurance Ltd IPONZ T21/2010, 8 November 2010.
7 At [30.2].
8 See [66] below.9 At [36] and [39].
ii)as a possessive adjective for the consumer, MY does not make sense because the consumer may not have acquired insurance from AMI, and the average consumer is unlikely to perceive insurance as a personalised product. At best, personalisation is an allusion that is not caught by s 18(1)(c);
(c) given that, the average consumer is likely to be receptive to the possibility that MY is distinctive because of the consumer‟s exposure to certain other MY trade marks in use (for example, MY SKY);
(d)while MY INSURANCE is wholly descriptive when used by a consumer who has acquired the insurance product, it is not descriptive use by a trader; and
(e) a consumer‟s acquisition of a product is not a descriptive
characteristic of that product.
[16] Turning then to s 18(1)(d), the Assistant Commissioner concluded that:10
(a) MY adds a distinctive element to the otherwise generic phrases.
Accordingly, it is unlikely that the average consumer will perceive the marks as a whole as being generic terms in the insurance industry; and
(b) there is no evidence that insurers use MY to describe their services.11
Such use would be unusual and awkward, and could potentially cause communication difficulties for an insurer.
[17] And finally, as to s 18(1)(b), the Assistant Commissioner held that:12
(a) MY adds a distinctive element to the otherwise generic or descriptive phrases for the reasons already given;
10 At [43].
11 The Assistant Commissioner held that the use of MY in FAQs (as in “my insurance”) is clearly
distinguishable and limited to that narrow context.
12 At [52].
(b) other traders are not likely to want to use the same or similar marks in
good faith because:
i)
ii)
the marks are not descriptive;
when an insurer communicates in a plain English way it uses
“we”, “us” or “our”, not “I” or “my”. Use of “my” by an
insurer is imprecise and confusing; and
iii)
MY only makes sense when used by a consumer, whereas the relevant test is concerned only with use by a trader.
[18]
Accordingly,
the Assistant Commissioner dismissed the grounds of
opposition and invalidity under s 18.
Approach on appeal
[19] This is a general appeal by way of rehearing,13 and accordingly I am required to arrive at my own assessment of the merits. If I conclude that the Assistant Commissioner was wrong, I must act on my own view.14
The distinctiveness ground
The essential principles
[20] As I have said, under s 18(1)(b), a trade mark cannot be registered if it has no distinctive character. That is because a non-distinctive mark or sign does not perform the primary function of a trade mark – identifying the origin of a product.
[21] The generally accepted test for distinctiveness is that set out by Lord Parker in Registrar of Trade Marks v W & G du Cros Ltd (du Cros):15
13 Trade Marks Act 2002, s 170.
14 Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141at [5] and
[16].
15 Registrar of Trade Marks v W & G du Cros Ltd [1913] AC 624 (HL) at 634-635.
The applicant for registration in effect says, “I intend to use this mark as a trade mark, ie, for the purpose of distinguishing my goods from the goods of other persons,” and the Registrar or the Court has to determine before the mark be admitted to registration whether it is of such a kind that the applicant, quite apart from the effects of registration, is likely or unlikely to attain the object he has in view. The applicant‟s chance of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.
[22] The du Cros test asks:
(a) whether the trade mark, on its face, can achieve the goal of
distinguishing that trader‟s product from competitors‟ products; and
(b)as an important guide, whether other traders are likely, in good faith, to want to use the same or a similar mark in relation to their own products.
[23] The Court of Appeal in Fredco Trading Ltd v Miller accepted that “there may well be overlapping considerations” between s 18(1)(a) and (b), and “in some cases very little, if any, difference in the inquiry undertaken”.16 Section 18(1)(a), it will be remembered, contains the „capable of distinguishing‟ test. On the other hand, the different tests may have some significance “where the trade mark may be capable of distinguishing [for example, because of prior use] but does not have inherent qualities that mark it out as of distinctive character.‟17
[24] I accept the submission from both sides that such esoteric distinctions do not arise in this case: the inquiries under s 18(1)(a) and (b) are essentially the same, because there is no question of acquired distinctiveness. The distinctiveness, if any,
will be inherent to the mark.
16 Fredco Trading Ltd v Miller CA20/05, 3 July 2006 at [61].
17 At [62]. In Fredco Trading Ltd v Miller Venning J found that the mark (a sign representing a kiwifruit vine tie) was capable of distinguishing, because consumers had, in fact, distinguished
between the relevant tie and a competitor‟s tie based on shape. But Venning J went on to conclude
that the sign representing the tie had no distinctive character, because the shape of the tie was largely functional. The sign was saved, however, by s 18(2), which expressly allows the registration of trade marks that have acquired distinctive character through use or other circumstances prior to registration. The decision was upheld on appeal. See also Intellectual Reserve Inc v Sintes [2009] NZCA 305 at [12].
[25] Further guidance is provided by “Cycling IS ...” Trade Mark Applications (Cycling IS).18 The IPONZ Practice Guidelines usefully summarise the Cycling IS principles as follows:19
(a) the question whether a particular sign possesses a distinctive character cannot be considered in the abstract. It must be considered in relation to the goods or services for which registration is sought;
(b)the mark must possess enough of a distinctive character to be regarded as an indication of trade origin by the relevant class of persons or at least a significant proportion thereof;
(c) the relevant class of persons consists of the trade and average consumers of the specified goods and services in the territory covered by the application for registration;
(d)the average consumer of the goods or services concerned is to be regarded as reasonably well-informed and reasonably observant and circumspect;
(e) it is to be remembered that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(f) the average consumer‟s level of attention is likely to vary according to
the category of goods or services in question; and
(g)the perceptions of the average consumer must be assessed in context, with due regard for the realities of the market place. It will be relevant to have regard to the various methods and practices of marketing that the average consumer of the relevant goods or services
is likely to encounter under normal and fair trading conditions.
18 “Cycling IS ...” Trade Mark Applications [2002] RPC 37.
19 Intellectual Property Office of New Zealand IPONZ Trade Mark Act 2002 Practice Guidelines (online ed) “05 Absolute grounds distinctiveness” at [3.2.3]. See also Coombe v Coca-Cola Amatil (NZ) Ltd (2011) 9 NZBLC 103,195 (HC) at [40].
Arguments
[26] The appellants say that MY INSURANCE and its variations have no distinctive character:
(a) leaving MY to one side, the marks simply describe the product being sold in a generic plain English way: insurance, car insurance, contents cover etc. It is a feature of the insurance industry that plain English, subject-matter descriptions are used by both insurers and consumers when communicating about insurance products;
(b)laudatory terms such as ADVANCED and PREMIER are equally generic and descriptive. Such terms cannot distinguish one trader‟s product from another‟s;
(c) the introduction of MY does not transform these generic, descriptive phrases into something distinctive. MY is a grammatical construct that simply replicates the consumer‟s voice: the ordinary way that consumers in this industry communicate about their insurance products;
(d)existing MY registrations, both in New Zealand and overseas, including MY SKY and MY MONEY, are of limited relevance. In most cases, the examples are obviously distinctive for reasons other than their use of MY;
(e) in this case, MY INSURANCE and its variations say nothing about the origin of those products, and are unable, on their face, to distinguish those products from the comparable products of other insurers. They are also phrases which other insurers would legitimately want to use to communicate in plain English terms with their consumers.
[27] AMI responds that:
(a) consumers of insurance and financial services are towards the very observant and circumspect end of the spectrum;
(b)the use of MY by a trader is unusual and awkward. There is no evidence that other insurers are likely to use MY INSURANCE and its variations to refer to their products;20 insurers do not refer to themselves using “I” or “my”; insurance is “yours” or “ours”. While consumers use “my” when referring to their insurance products, that is qualitatively different to use by an insurer. Consumers will recognise
the different contexts and uses;
(c) prominent, existing MY marks, such as MY SKY and MY MONEY in New Zealand, demonstrate that MY plus a descriptive term can be distinctive of one trader‟s product. Those marks have also conditioned consumers to see MY marks as distinctive;
(d)MY adds a distinctive element to the marks, so that the marks, taken as a whole, are distinctive and not merely descriptive or generic and registrable.
My view on the distinctiveness ground
[28] The Assistant Commissioner‟s view was that MY marks are distinctive even when the noun that follows is generically descriptive. She accepted AMI‟s evidence that the term MY is the crucial ingredient by making what follows awkward or unusual to the observer because the mark is cast from the perspective of the insurer itself while speaking in the voice of the consumer. The Assistant Commissioner accepted that the awkwardness introduced by the use of MY made the mark
distinctive when it would not otherwise be.
20 Outside of the narrow FAQ context where insurers are clearly replicating the consumer‟s voice.
[29] I do not agree with that reasoning. It is my view that MY does not make distinctive what would otherwise be a descriptive or generic mark. It cannot, of itself, denote the origin of a product. Rather, something more than that is needed. I take this view for two related reasons:
(a) in breach of Lord Parker‟s principle in du Cros, AMI‟s competitors are likely, in the ordinary course of their business and without any improper motive, to want to use my-oriented phrases in connection with their own products;
(b)the authorities in relation to distinctiveness suggest that using a possessive adjective to qualify an admittedly purely descriptive noun will not, in any event, be sufficiently distinctive to qualify under s 18(1)(a) and (b).
Lord Parker’s test in du Cros
[30] The essence of Lord Parker‟s test is whether the mark is so generically descriptive that AMI‟s competitors will genuinely want to use it as a natural description of their own products. In my view, it is very likely that they will.
[31] The evidence from the appellants was that several of the marks are used by them and other insurance providers in their marketing and contractual material. For example:21
(a) in FAQs: “How soon will my insurance cover take effect?” (AA), “Who (apart from me) is covered by my contents policy?” (AA) “How can I save on my insurance?” (AMI), “Do I get a no claim discount on my home or contents insurance? (IAG), “Will my car insurance premium increase if I make a claim?” (IAG), and “When
does my insurance expire?” (IAG); and
21 This is only a selection.
(b)in contractual material: “I have made alternative insurance arrangements for my: [motor/house/contents] insurance” (AA, formal notices of policy cancellation), and “Failure to provide the information sought may result in ... my/our insurance being void from the beginning” (Mooney & Associates, insurance proposal).
[32] I note at this point that the du Cros test does not require actual evidence of use of the marks:22
The test is whether other traders are likely to wish to use the mark. Actual use may be relevant to likelihood, but it is not the test.
[33] The appellants also provided evidence of consumers using several of the marks when communicating with the appellants;23 and of the appellants‟ general preference for personal pronouns and plain English in their marketing and contractual material.24 They say that registration of AMI‟s marks would restrict them and other insurance industry participants from communicating in everyday terms that are meaningful to their customers.
[34] AMI‟s response was that the instances of “my” all occur naturally in the voice of the consumer – that is the point of FAQs and the declarations quoted – and that this is a fundamental distinction between AMI‟s proposed use of those phrases and their use in the hands of the appellants. The appellants‟ contractual and marketing material clearly demonstrates that the appellants use “you” and “your” to refer to consumers, and “we” and “our” to refer to themselves; and registration of
AMI‟s marks will not intrude on that practice.
22 Effem Foods Ltd v Cadbury Ltd HC Wellington CIV-2004-485-2127, 12 December 2005 at [18].
23 For example: during calls to AA, customers said “Can I cancel my car insurance?”, “in regards to my car insurance”, “I‟ve got my house, contents and car insurance with you”, and “I want to know if
her personal effects and laptop are covered by my home contents insurance”; during calls to IAG,, customers said “I want to increase my home insurance please”, and “I want to do my car insurance”; and in emails and letters to AA, customers wrote “I would like to cancel my insurance”, “I need to update my insurance policies”, “in regards to my insurance”, “I would like to cancel my car and home
insurance”, “I cancelled my third party insurance”, “Please increase my house insurance”, and “Please
add to my contents insurance”.
24 For example: the appellants use “you”, rather than “the customer”, “the insured” or “the policy holder”, in marketing and contractual material; and use subject matter descriptions of the insurance product, as discussed in [39] below.
[35] It is true, as Cycling IS confirms, that the actual context of use must be considered and the realities of modern marketing techniques must be understood. FAQs are a distinct form of promotion and reasonably circumspect25 consumers may well be able to differentiate between branding and FAQs. Nonetheless, one cannot help feeling that if the appeal had succeeded, all incidents of my plus product in the appellants‟ FAQs especially will now need to be carefully checked for the possibility of infringing against AMI‟s marks. This could well have an inappropriately chilling effect on the appellants‟ marketing and promotion strategies.26
[36] There are however more important and direct points of conflict. Insurers, like all traders, regularly promote their products and services through the use of people who stand in the shoes of consumers. Sometimes they are actual customers, sometimes they are actors pretending to be customers. Whether on screen, radio or in print, those individuals are likely to be required to refer to the promoted product
using the first person possessive adjective. Thus:
“AA Insurance is my insurance”;
“My insurance is great ... I got my insurance from AA”; “My farm insurance from State gives me peace of mind”;
“My third party fire & theft cover comes from Tower Insurance”;
“Getting my house and contents insurance from Tower was easy”.
would all be perfectly natural and unforced uses of “my” by AMI‟s competitors in
the course of their trade. It is possible, even probable, that they will want to promote their products using lines such as these.
25 AMI argued, and the Assistant Commissioner accepted, that the average insurance consumer was towards “the very observant and circumspect end of the spectrum”. Although it has no impact on the result in this case, I do not agree. I prefer the appellants‟ evidence that most consumers have some form of insurance, and so there are consumers across the entire spectrum of circumspectness. The average consumer is likely to be no more than “reasonably well informed and reasonably observant and circumspect”. But, I do not think that matters because in the words of Cycling IS, I do not think that „extra attention to detail‟ will change consumer perceptions of MY INSURANCE in the way AMI argues.
26 See Cadbury Ltd v Effem Foods Ltd [2007] NZCA 303, (2007) 11 TCLR 966 at [32].
[37] Another scenario suggested by counsel for the appellants could occur if one of the appellants decided to offer non-insurance products. It would naturally subdivide its website or other marketing material accordingly. This is commonly done through interactive tabs or drop-downs for the customer to click onto. These would be naturally couched in the customer‟s voice thus: “My Insurance” and “My Savings”, “My Finances” or “My Real Estate” etc.
[38] These uses would surely breach AMI‟s registered marks. It cannot be said that they occur in a narrow context which a circumspect customer would readily distinguish from AMI‟s mark. The risk of confusion between AMI‟s and the competitor‟s product is obvious. AMI‟s competitors should not have to rely on the defence of honest use for protection.27
[39] Insurance products are prone to these difficulties because the insurance industry routinely uses plain English generic descriptions when promoting products to consumers. A burger franchise may refer to its hamburgers as “quarter pounders” but car insurance is almost always referred to simply as “car insurance”. Thus, the combination of the way insurers routinely describe their products, and the purely descriptive nouns used by AMI take the conflict scenarios I have described out of the realm of mere fantasy or conjecture. These problems are likely to occur.
[40] Finally, it is not an answer to this analysis to argue that MY can be used both descriptively and distinctively.28. For example, AMI says that MY INSURANCE is an allusion to acquisition or to personalisation that is not caught by s 18. In some circumstances it will be. But in other circumstances, MY INSURANCE will be purely descriptive from the consumer‟s perspective. As I have said, AMI‟s competitors have a legitimate interest in using that phrase in the voice of the
consumer. And so, despite other available interpretations, registration of AMI‟s
marks will prevent AMI‟s competitors from using the phrases descriptively.29
27 Cadbury Ltd v Effem Foods Ltd at [26] and [29]; AD2000 Trade Mark [1997] RPC 168 at 176.
28 See McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA) at [55]; Bach and Bach
Flower Remedies Trade Marks [2000] RPC 1 (CA) at [45].
29 See McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA) at [55].
Authorities
[41] The courts in New Zealand, Australia and the UK have, over the years, considered a number of signs and marks where distinctiveness was in issue. Trade Mark legislation is somewhat different in Australia (though almost identical in the UK), and domestic New Zealand cases generally pre-date the current 2002 Act. Nonetheless, distinctiveness has been a common and core requirement over time and between jurisdictions. No parties suggested that foreign or pre-2002 decisions were
inapplicable to the current case by reason only of those characteristics.30
[42] The authorities are clear that words that simply describe the product or service are not distinctive. Thus, SOAP can never be a trade mark for soap. Nor can HAMBURGER be a mark for hamburgers. The cases are also clear that laudatory epithets are not, in themselves, registrable. Thus, best, biggest, fast, tasty and so forth are disqualified unless accompanied by some other distinctive characteristic.
[43] On the other hand, an unusual, catchy or striking allusion or skilful reference in a mark in which meaning is conveyed in an indirect way or with less precision is likely to qualify.
[44] The New Zealand examples that illustrate this divide are Mainland Products Ltd v Bonlac Foods (NZ) Ltd31 and McCain Foods (Aust) Pty Ltd v Conagra Inc32 – both decisions of Gault J in the Court of Appeal (the second as President).
[45] In the first case, Mainland argued that its use of VINTAGE to describe its tasty cheeses was distinctive. The court agreed. VINTAGE related literally to grapes and applying it to cheeses to denote age and quality was:33
… a skilful allusion conjuring up laudatory notions of fine wine to which the word normally applied. ... Vintage tells us something about the attributes such as taste of a Cheddar cheese only by drawing upon our knowledge of
30 In relation to pre-2002 decisions, I also note the discussion in Intellectual Reserve Inc v Sintes
[2009] NZCA 305 at [20] - [22] per Baragwanath J and at [82] - [83] per Ellen France J.
31 Mainland Products Ltd v Bonlac Foods (NZ) Ltd [1998] 3 NZLR 341 (CA).
32 McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA).33 At 346.
what the word tells us about wine. But it no more describes the character or quality of cheese than it does of chocolate or ball-bearings.
[46] It was according to Gault J, like using ROCKET as a mark for golf balls or
TORNADO as a mark for fans.34
[47] In the second case, the court rejected McCain‟s submission that HEALTHY CHOICE qualified for registration in relation to prepared supermarket meals. The court found that the phrase was directly descriptive and merely laudatory. In Gault P‟s words:35
We see nothing unusual in selecting two adjectives in combination to refer to food products. A particular food item could quite ordinarily be described as both healthy and choice. We see nothing catchy, striking or unusual in putting them together. The same would apply to a combination of “wholesome” and “fresh” when applied to a meat product.
[48] An older Australian example can be found in Mark Foy’s Ltd v Davies Coop
& Co Ltd.36 In that case, at issue was a range of washable clothing sold under the mark TUB HAPPY. Dickson CJ reasoned that the words were too indefinite to amount to a direct description. The fact that buyers had to pause to think about it before drawing the conclusion that the mark communicated easy washability, was enough to make it distinctive.
[49] On the other side of the line was the mark TREAT for dessert sauces and syrups. Jacob J in British Sugar Plc v James Robertson & Sons Ltd, held that the word TREAT by itself lacked any inherent distinctive character.37 What is more, he found that it is very difficult for such descriptive words to acquire distinctiveness over time if they do not have it to start with:38
… the question of factual distinctive character is one of degree. The proviso really means “has the mark acquired a sufficiently distinctive character that the mark has really become a trade mark.” In the case of common or apt descriptive or laudatory words compelling evidence is needed to establish this. And in particular mere evidence of extensive use is unlikely to be enough on its own. Of course the power of advertising may be able to turn almost anything (save a pure description) into a trade mark, but it must be
34 Ibid.
35 At [54].
36 Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190.
37 British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (Ch).38 At 306.
shown in a case of this sort that the mark has really become accepted by a substantial majority of persons as a trade mark – is or is almost a household word.
[50] I have already referred to the decision of Geoffrey Hobbs QC in Cycling IS.39
There he rejected the application for registration noting that although the mark cryptically invited people to add their own meaning to it, that did not prevent it from being non-distinctive. Mr Hobbs QC concluded:40
… I think that the signs in question would be perceived by the relevant class of persons as pronouncements identifying cycling as the raison d‟ệtre for the marketing of the goods and services to which they related. That is a message that the members of a consortium of bicycle retailers might naturally be interested in putting across to customers and potential customers.
[51] In short, all cycle retailers will naturally use this phrase in their trade.
[52] Three further decisions warrant mention at this point, even though they are not high authority, because they relate to the use of MY marks in different contexts.
[53] In MY MUMS COLA Trade Mark, William Aldous QC held on appeal that the mark was distinctive.41 Other traders would not naturally wish to use the phrase MY MUMS in his view. Though, he considered, the term had strong laudatory elements, it was nonetheless distinctive rather than simply descriptive.42
[54] MYDOCTOR was considered by a Trade Marks Hearing Officer, Mr Nancarrow, of the Australian equivalent of IPONZ.43 Registration was upheld. Crucial to Mr Nancarrow‟s reasoning was that MYDOCTOR is not actually a doctor. Rather, it was an online health portal that provided access to lists of healthcare professionals (i.e. „find a doctor‟), and to information that doctors would normally supply. Thus, it was not purely descriptive.
[55] In Sara Lee Corporation v My Size Pty Ltd, an Australian Trade Marks
Hearing Officer, V Zars, considered a range of women‟s clothing sold under the
39 “Cycling IS ...” Trade Mark Applications [2002] RPC 37.
40 At 746.
41 MY MUMS COLA Trade Mark [1988] RPC 130.
42 At 135.43 My Doctor Online Pty Limited v MIMS Data Systems Limited [2002] ATMO 18 (26 February
2002).
mark MY SIZE.44 The officer accepted that “size” is well understood in the clothing industry and among consumers. Nonetheless it was found that MY SIZE was a sufficiently indirect reference to clothing of a particular size range to be capable of distinguishing.45
[56] No decision addresses the use of MY plus a direct descriptor of a purely generic product, but the McCain decision suggests that in the New Zealand context, at least, careful account will be taken of the way language is actually used in marketing:46
In considering descriptiveness that others might, without improper motive, wish to use it is necessary to consider not simply whether others might wish to employ the word combination on product labels. Modern marketing involves extensive promotion through oral and visual media and not always confined to strict grammatical usage. Accordingly, there is no answer to a descriptiveness objection to say that the mark is not a description of a particular product. If it is a description that might reasonably be used in relation to products of the kind in question it should not be monopolised by one trader.
[57] Indeed Gault P signalled that in this respect, New Zealand may well hold a tighter rein than the UK, affected as the UK is by EU directive:47
On the approach we have set out it would be unlikely that the word combination BABY DRY for disposable nappies would qualify for registration in New Zealand. That mark has recently been held eligible for registration by the European Court of Justice: Case C-383/99 P Procter & Gamble Company v Office for Harmonisation in the Internal Market [2002] RPC 16. That decision reflects the shift from the previous English law.
[58] It might be said that if BABY DRY is purely descriptive in New Zealand, MY INSURANCE will struggle. Nonetheless, as a matter of first principle, doing nothing more than transposing the consumer‟s purely descriptive voice into the mouth of the insurer cannot be catchy, striking, unusual or a skilful allusion. I disagree with the evidence of Mr McLauchlan and Mr Boot who suggest that this technique is unusual or awkward. Traders have always set out to communicate with consumers in the consumers‟ own voice. They all, one way or another, wish to
capture the consumers‟ voice in order to have them declare that the trader‟s product
44 Sara Lee Corporation v My Size Pty Ltd (1998) 42 IPR 245
45 At 253.
46 At [49].47 At [50].
is “my choice”. It is not the possessive adjective that carries the true meaning of the mark in the MY marks, it is the noun that follows. If that noun is directly descriptive, MY will not change that fact.
[59] It is true that both McCain and Cycling IS require the court to have due regard to marketplace realities including the various methods and practices marketers use to communicate with consumers. It is true also, as argued by AMI, that MY marks are increasingly common in the marketplace to denote personalised products. Consumers are used to seeing them. The fallacy in this argument is the suggestion that a retail market comfortable with the use of MY marks would therefore see MY followed by generic direct descriptors as distinctive to a particular trader or product. It seems to me that logically the opposite could equally be true. A generic MY mark would be seen for what it is – a generic description in the voice of the consumer.
[60] In any event, most of the existing MY marks referred to in argument did not use generic product names. AMI referred to a series of MY trade marks currently in the market place. They included for example MY MONEY, a mark for a BNZ account; MY REWARDS, a membership benefits programme; and MY SKY, an advanced satellite pay TV system. All, in my view, are consistent with the foregoing analysis. MY MONEY is not literally money. A direct descriptor would be MY BANK ACCOUNT. Similarly MY REWARDS is indirect. MY BENEFITS PROGRAMME would be the direct description. Similarly, the Sky in MY SKY is not a description of a satellite television system. It is an established mark in its own right.
[61] This distinction between generic MY marks and inherently distinctive ones is the subject of direct comment in the UK Manual of Trade Mark Practice:48
“My” plus the name of such personalised goods or services will be likely to be unacceptable. ... Services of a personalised nature, e.g. pet insurance, colour analysis and wedding planning may also attract an objection.
Not all “my” marks will necessarily face an objection; practice should not be
applied in a blanket-fashion, without due regard to the merits of each case.
48 Intellectual Property Office Manual of Trade Marks Practice (online ed) “The Examination Guide: Addendum” at “„MY‟ and „MY FIRST‟ marks”. This is the UK equivalent of the IPONZ practice guidelines.
For example, “MY TRAVEL” is acceptable for travel agency services and “MY PLACE” is acceptable for night-club services: their imprecise meanings create a distinctive impression.
[62] I generally agree with that analysis.
[63] Finally, the addition of laudatory or other descriptive terms in certain of the marks does not save them from this analysis. ADVANCED, STANDARD, PREMIER, THIRD PARTY and MARKET VALUE each aptly describe the kind or quality of the insurance product. They are terms that other insurers would legitimately want to use in combination with the otherwise generic product names.49
[64] For the foregoing reasons, I am of the view that all marks other than the respondent‟s MY freeB and MY MULTI QUOTE series fail the tests in s 18(1)(a) and (b).
MY freeB and MY MULTI QUOTE series
[65] On the foregoing reasoning, there is a serious argument that the MY freeB and MY MULTI QUOTE series are distinctive. FreeB, however, raises a further point of contention as the phonetic equivalent of “freebie”: something received for no cost. MULTI QUOTE, as a quote for multiple insurance products, could be a common, generic or descriptive term, or could be a catchy phrase coined by the respondents. I have only limited material on those issues; the argument and the Assistant Commissioner‟s decision understandably focused on the 16 marks as a whole. Accordingly, I am not in a position to properly resolve them. The appeal will also be allowed in respect of those marks but those matters will need to be
reheard by the Assistant Commissioner in light of my reasons here.50
49 See PROFITMAKER Trade Mark [1994] RPC 613 at 616. See also Trade Marks Act 2002, s
18(1)(c).
50 While s 173 of the Act does not provide an express power to order a rehearing in whole or in part,
r 20.19(1) of the High Court Rules states that after hearing an appeal, the High Court may direct that the decision-maker (1) rehear the proceedings concerned; or (ii) consider or determine (whether for the first time or again) any matters the court directs. See Chee v Stareast Investment Ltd HC Auckland CIV-2009-404-5255, 1 April 2010 at [139]-[145].
Section 18(1)(c) and (d)
[66] The specific requirements in s 18(1)(c) and (d) are subsets of the overall requirement of distinctiveness. Although s 18(1)(b) comes first, it is described as the “sweeping up” provision,51 and s 18(1)(c) and (d) as “certain policy stipulations which shed further light on” its meaning.52 Purely descriptive and generic trade marks are prohibited by s 18(1)(c) and (d) because they are no different from the
usual, legitimate way of designating the relevant goods or services or their characteristics,53 and accordingly they cannot be distinctive to, or monopolised by, one particular trader. I have already concluded that all but two of the AMI marks are purely descriptive and entirely generic, in at least one sense. There is no point now in retraversing that ground. It is sufficient to formally conclude that as a result of my analysis in relation to s 18(1)(a) and (b), all AMI marks except MY freeB and MY MULTI QUOTE also fail the s 18(1)(c) and (d) tests.
Non-insurance services
[67] The appellants raised the possibility that the marks could be registrable in relation to some services (i.e. financial or real estate) in Class 36 but not insurance. The appellants‟ position was that that possibility arose under s 18(1)(c) and (d) but not (a) or (b), because the objections under (a) or (b) applied regardless of the services in question. I am not sure that that necessarily follows, and the respondents did not pursue this course.
[68] Accordingly, the appeal will be allowed but, if it wishes, AMI may pursue registration of the marks before the Assistant Commissioner in relation to non-
insurance services.
51 Procter & Gamble Ltd’s Trade Mark Applications [1999] RPC 673 at 679 (CA).
52 Intellectual Reserve Inc v Sintes [2009] NZCA 305 at [16] per Baragwanath J. That distinctiveness underlies s 18(1)(b) - (d) is also shown by s 18(2), which provides that: The Commissioner must not
refuse to register a trade mark under subsection (1)(b), (c), or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character. [Emphasis added]
53 Procter & Gamble v OHIM [2002] RPC 17 (ECJ). See also Coombe v Coca-Cola Amatil (NZ) Ltd
(2011) 9 NZBLC 103,195 (HC) at [19].
Orders
[69] The appeal is allowed:
(a) the applications for declarations of invalidity in respect of the MY MULTI QUOTE series, and the opposition to registration of the MY freeB series should be reheard by the Assistant Commissioner in light of these reasons;
(b)registration of the remaining marks is refused. If AMI wishes to pursue registration of those marks in relation to non-insurance services, it may do so before the Assistant Commissioner.
[70] The appellants will be entitled to costs. If they cannot be agreed, brief memoranda may be filed.
Williams J
0
6
0