Comite International Olympique v Tempting Brands Netherlands B.V
[2019] NZHC 2476
•30 September 2019
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE
CIV-2019-485-177
[2019] NZHC 2476
BETWEEN COMITE INTERNATIONAL OLYMPIQUE
Appellant
AND
TEMPTING BRANDS NETHERLANDS B.V.
Respondent
Hearing: 23 September 2019 Counsel:
R C Watts and R H Etherington for Appellant G F Arthur and E J Szentivanyi for Respondent
Judgment:
30 September 2019
JUDGMENT OF CHURCHMAN J
Introduction
[1] This case is another chapter in the international saga of litigation between the appellant and respondent over the trade mark PIERRE DE COUBERTIN (the Mark).
[2] The respondent, Tempting Brands Netherlands B.V. (TBN), sought to extend to New Zealand protection of its international registration of the Mark.
[3] The appellant, Comite International Olympique (IOC), opposed registration of the Mark. It is the registered owner of the Mark in Switzerland and has applications pending in the European Union and Australia.
[4] On 28 February 2019, Wendy Aldred, Assistant Commissioner of Trade Marks, issued a decision rejecting IOC’s opposition and granting registration to TBN of Trade Mark Application No. 1039981.
COMITE INTERNATIONAL OLYMPIQUE v TEMPTING BRANDS NETHERLANDS B.V. [2019]
NZHC 2476 [30 September 2019]
[5] Registration of the Mark was granted in relation to a number of products.1 The sorts of products covered including cleaning and laundry products; scientific, nautical, surveying, photographic and optical products; jewellery; animal hides, sausage skins, and umbrellas; clothing and footwear, fair ground and playground apparatus; and sporting articles and equipment.
[6] TBN has obtained registration of the Mark in various jurisdictions around the world, most notably the European Union. IOC has successfully opposed registration in other jurisdictions or, as a result of its opposition, TBN has withdrawn its applications. In a number of jurisdictions, challenges to registration decisions are still pending.
[7] Although both parties were granted leave to file updated affidavit evidence as to the status of the registrations around the world, the fact that TBN has or has not been successful in other countries is not determinative of this appeal. The focus of the Court is on whether or not the tests set out in the Trade Marks Act 2002 (the Act) are met.
The appeal
[8] IOC has appealed the decision of the Assistant Commissioner of Trade Marks, challenging her findings in relation to ss 17 and 32 of the Act.
[9]The issues on appeal are:
(a)whether there is sufficient awareness of the Mark in New Zealand to meet the threshold requirement of reputation under s 17(1)(a) of the Act;
(b)whether there is sufficient evidence of goodwill or reputation in the goods or services bearing the Mark that the ground of opposition is made out under s 17(1)(b);
1 Classes 3, 9, 14, 18, 25 and 28.
(c)whether there is sufficient evidence to support a finding of improper exploitation of IOC’s reputation in the Mark in New Zealand, and whether bad faith is made out under s 17(2); and
(d)whether the evidence establishes any use in New Zealand by IOC of the Mark that would entitle IOC to proprietorship of the Mark in terms of s 32 of the Act.
The law
[10] This is an appeal by way of a rehearing. Both parties acknowledged that the decision of the Supreme Court in Austin, Nichols & Co Inc v Stichting Lodestar governs the approach that the Court should take.2 However, each party emphasised different aspects of that decision.
[11] Mr Watts, on behalf of IOC, submitted that the Court is required to come to its view on the merits and that the weight it gives to the decision of the Assistant Commissioner is a matter of judgement. Mr Arthur, for TBN, emphasised that the appellant bears an onus of satisfying the appeal court that it should differ from the decision under appeal, and that it is only if the appellant court considered that the appealed decision is wrong, that it is justified in interfering with it.
[12] All of the factors listed by counsel are relevant to the Court’s task on appeal. As was acknowledged by the Supreme Court in Crocodile International Pte Ltd v Lacoste, where an appeal in relation to a trade mark raises issues such as the aural, visual and conceptual qualities of a trade mark containing a device and a stylised word, an appellate court should hesitate to depart from the Commissioner’s qualitative assessment unless ultimately satisfied that the Commissioner’s view is wrong.3
[13] Counsel for TBN submitted that, as the Assistant Commissioner makes a wide range of trade mark decisions about what extent of use is sufficient to establish a reputation and what type of conduct constitutes bad faith, the Assistant Commissioner
2 Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141.
3 Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, [2017] 1 NZLR 679 at [65]-[66].
could be said to have a technical expertise which means that the Court should hesitate to conclude to the findings of fact, or fact and degree, are wrong.
[14] In the present case, the Court is not called upon to make a qualitative assessment of the trade mark but is called upon to assess issues of reputation and bad faith. Before I interfere with the findings of the Assistant Commissioner in that regard, I will need to be satisfied that her findings are wrong.
Registration of trade marks
[15] The Act provides for the registration of trade marks. Registration confers various exclusive rights.4 Those rights include the right to exclusive use of the registered trade mark and to authorise other persons to use the registered trade mark.
[16] The procedure for obtaining registration of a mark is set out in s 32 of the Act. Applicants can apply for registration in respect of particular goods and/or services within one or more classes. The applicant does not have to be using the trade mark in order to apply for registration provided that, at the date of application, they have the intention of using it.
[17] In International Consolidated Business Pty Ltd v S C Johnson & Son Inc, the Court of Appeal noted that “the underlying philosophy of the Act is that a registered owner must use the trade mark or risk losing the registration”.5
[18] The Act provides for revocation of trade marks that are not being used and s 66(1)(a) says that registration of a trade mark may be revoked if:
… at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered.
[19] The justification for such a “use it or lose it” provision was described by Jacob J in Laboratoire De La Mer Trade marks as being:6
4 Trade Marks Act 2002, s 10(1).
5 International Consolidated Business Pty Ltd v S C Johnson & Son Inc [2019] NZCA 61 at [7].
6 Laboratoire De La Mer Trade Marks [2002] FSR 51 (Ch) at [19(a)].
There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstruction for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.
[20] The Act specifies what are described as “absolute grounds” for not registering a trade mark. These are set out in s 17 and include registration of a trade mark where:
(a)the use of which would be likely to deceive or cause confusion; or
(b)the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court.
[21] Section 17(2) also prohibits the registration of a trade mark, “if the application is made in bad faith”.
[22] All of these provisions are engaged in the present appeal, as is s 32 of the Act. Section 32(1) provides that a person claiming to be the owner of a trade mark may apply for registration within one or more classes.
[23] The Act sets out the priority given to competing applications. In this case, TBN filed their application in New Zealand on 21 December 2015, but because they had previously filed an application in the Belgium, Netherlands and Luxemburg office on 22 June 2015, they were able, pursuant to s 36 of the Act, to claim priority as of that date. The date of 22 June 2015 therefore becomes a relevant date in terms of assessing the application against the provisions of the Act.
Facts
[24] The applicant is a Dutch company that creates brands, licences those brands, engages in marketing and related activities such as acquisition of Internet domains and registration of trade marks.
[25] IOC, which is headquartered in Lausanne, Switzerland, is the entity responsible for the Olympic Games. Its 95 current active members are drawn from throughout the world and include two New Zealanders.
[26] Pierre de Coubertin is a historic figure who was born in 1863 and died in 1937. He was a French educational reformer who played an important role in the revival of the Olympic Games in 1896. He was a founding member of IOC and its second president.
[27] Neither TBN nor IOC have any authorisation from Pierre de Coubertin’s estate to use his name, although TBN has entered into an agreement with an entity known as “Fondation de Coubertin” in relation to the use and registration of the PIERRE DE COUBERTIN Mark. The Fondation was said to have been founded by the niece of Pierre de Coubertin and is primarily concerned with the promotion of practical training through apprenticeships.
[28] IOC said that it used the PIERRE DE COUBERTIN Mark in relation to merchandise (t-shirts, key rings, books, stamps and postcards) available at the Olympic Museum in Lausanne, and also in relation to the Pierre de Coubertin Medal which it noted was awarded in 2004 to All Black Tana Umaga. It said that various countries’ National Olympic Committee also used the name Pierre de Coubertin in respect of their activities.
[29] IOC acknowledged that it had not registered or used the Mark in trade in New Zealand but submitted that New Zealanders would have obtained knowledge of its use of the Mark overseas in the following ways:
(a)by visiting the Olympic Museum in Lausanne;
(b)from reading about the awarding of the Pierre de Coubertin Medal (especially when it was awarded to Tana Umaga); or
(c)from coverage of the activities of various overseas National Olympic Committees (particularly those in France and Poland) who had used the Pierre de Coubertin name in relation to their activities.
The Assistant Commissioner’s decision
[30] In relation to the likelihood of deception or confusion under s 17(1)(a), the Assistant Commissioner held that there was insufficient awareness in the New Zealand market of IOC’s PIERRE DE COUBERTIN trade mark at the relevant date to meet the threshold requirement of reputation. She held that IOC had failed to demonstrate the necessary awareness of its Mark by the prospective purchasers of goods and services in New Zealand.
[31] She noted that the usual method of demonstrating awareness of a mark is for an opponent to provide information about New Zealand market share, including sales figures, or information about advertising expenditure or consumer uptake of promotional material, and that no such evidence had been adduced. She dismissed the relevance of articles published in New Zealand about Pierre de Coubertin on the basis that they did not constitute use of PIERRE DE COUBERTIN by IOC as a trade mark. She also held that none of the publicity about Tana Umaga receiving the Pierre de Coubertin Medal referred to IOC, and that the only two articles that pre-dated 22 June 2015 were on overseas sites.
[32] In relation to IOC’s evidence that it used the Mark on merchandise sold in its Lausanne store, she noted that some of the claimed evidence did not actually show use of the opposed Mark on merchandise, or that there was sufficient knowledge by New Zealanders of the claimed use of the Mark. She also held that there was no evidence that New Zealanders were aware of any merchandise produced by the French National Olympic Committee, or of the French language Gazette Coubertin magazine.
[33] She also concluded that there was no actual evidence of New Zealanders’ awareness of the significance of Pierre de Coubertin in Olympic history.
[34] As a result of this factual finding, she concluded there was no need for her to go on and consider the likelihood of deception or confusion.
[35] In relation to the challenge under s 17(1)(b), the Assistant Commissioner noted that the Courts have recognised that the threshold for establishing grounds for opposition under s 17(1)(b) (contrary to law), is higher than that for s 17(1)(a), and
that where an opponent has not succeeded with an argument under s 17(1)(a), it is unlikely to succeed under s 17(1)(b), at least in relation to allegations of breach of the Fair Trading Act and passing off.
[36] IOC’s argument had been that the attempt to register the Mark was contrary to New Zealand law because it would amount to passing off at common law. The Assistant Commissioner dismissed this argument on the basis that the opponent had failed to produce evidence of the requisite goodwill or reputation in goods or services bearing the Mark.
[37] In relation to the s 17(2) (bad faith) allegation, the Assistant Commissioner rejected the allegation of bad faith. She stated that she was “not particularly persuaded by the applicant’s account of its decision to use the opposed Mark” (and specifically that it was not interested in exploiting any association with Pierre de Coubertin or the Olympic Games). She concluded though, that there was simply insufficient evidence to support any objective of improper exploitation of IOC’s reputation in the opposed Mark in the New Zealand market.
[38] In relation to the s 32(1) argument (wrongful claim to ownership), the Assistant Commissioner held that the evidence tendered by IOC did not establish any use in New Zealand by IOC of the Mark. She noted that TBN’s claim that it intended to use the Mark in New Zealand would only be rebutted by evidence establishing an absence of such intention and that there was no such evidence. She also concluded there was no evidence of bad faith or fraud.
Section 17(1)(a) – Would registration be likely to deceive or cause confusion?
[39]The purpose of the predecessor to s 17(1)(a) was described by Richardson J in
Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:7
The object is to protect the public interest by refusing to accord monopoly rights to a mark, the use of which is likely to deceive or confuse those in the market for the goods. The concern is with the protection of the relevant New Zealand buying public, not with the protection of the applicant’s competitors.
7 Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 63.
[40]IOC attacks the Assistant Commissioner’s decision on two grounds:
(a)that it has acquired a reputation in the Mark in New Zealand and therefore use of the Mark by TBN is likely to deceive or cause confusion; and/or
(b)the use of the Mark is inherently likely to deceive or cause confusion.
[41] In assessing whether s 17(1)(a) has been breached, the Court begins its inquiry by assessing whether IOC had a reputation in the Mark New Zealand as at 22 June 2015.
[42] The question of likelihood of deception or confusion is assessed against IOC’s reputation, considering the fair, notional use on the goods.8
[43] As counsel for IOC acknowledged, it was for IOC to establish that it had a reasonably substantial reputation in, or that there was an awareness of, the Mark as at 22 June 2015. It was only once this was established that the onus shifted to TBN to establish that the Mark did not offend against s 17(1)(a).
[44] The Assistant Commissioner correctly acknowledged that the threshold for establishing knowledge of a reputation was a relatively low one.9 However, it does require an evidential foundation. Assertions or statements of belief that a trade mark has acquired a reputation in New Zealand can be given little weight.10
[45] I endorse the finding of the Assistant Commissioner that the usual method of demonstrating awareness of a mark is to provide information about New Zealand market share, including sales figures, or information about advertising expenditure or consumer uptake of promotional material.
[46] IOC has not provided any such information. I do not accept IOC’s submission that it has established knowledge of reputation by reference to publications overseas
8 See Sexwax Inc v Zoggs International Ltd [2014] NZCA 311, [2015] 2 NZLR 1 at [46] and [48].
9 Tempting Brands Netherlands BV v Comite International Olympique [2019] NZIPOTM 3 at [24].
10 Unilever Plc v McPherson’s Consumer Products Pty Ltd [2013] NZHC 1458 at [31]-[32].
or overseas use of the Mark. The cases consistently indicate that, without evidence of trading in New Zealand, it is difficult to establish evidence of a reputation in New Zealand.11
[47] The clearest evidence of the use of the Mark by IOC related to merchandise sold at its store in Lausanne. However, even that evidence was equivocal and related to material other than the Mark such as images of Mr de Coubertin, or of his moustache.
[48] I accept the submission of TBN that the examples given by IOC in relation to merchandise sold at its store in Lausanne show very little, if any, use of PIERRE DE COUBERTIN as a trade mark.
[49] Although IOC claimed that goods available in its Lausanne store could be purchased by New Zealanders online, there was no evidence at all that this had ever occurred.
[50] IOC’s reliance on the fact that Tana Umaga was awarded the Pierre de Coubertin Medal is in a similar category. While the Medal bears the name of Pierre de Coubertin, it is not used in any trade mark sense.
[51] I conclude that the Assistant Commissioner was correct that IOC had failed to discharge the onus of demonstrating there was sufficient awareness in the New Zealand market, at the relevant date, of its use of the Mark to meet the threshold requirement of reputation under s 17(1)(a).
[52] Mr Watts advanced a variation of this argument by submitting that, in relation to the concept of general confusion, it was not necessary to establish knowledge of a reputation in relation to the use of the Mark in connection with particular goods, by New Zealand consumers. This argument also fails for lack of any evidence that New Zealand consumers, or a relevant group of them, actually know enough about
11 See Philip Morris (NZ) Ltd v Liggett & Myers Tobacco Co (NZ) Ltd (No 3) (1978) 1 NZIPR 195 at 203; VB Distributors Ltd v Matsushita Electric Industrial Co Ltd (1999) 9 TCLR 349 at [38]- [39]; Lacoste v Crocodile International Pte Ltd HC Wellington CIV-2009-485-2536, 1 March 2011.
Pierre de Coubertin or his connection with IOC so as to be confused as to the origin or connections of goods sold with that trade mark.
[53] Perhaps in order to circumvent the lack of evidence about knowledge in New Zealand, Mr Watts advanced an argument that s 17(1)(a) was expressed to be forward-looking and would cover the situation where:
Even those New Zealand consumers who do not currently know of Pierre de Coubertin and his historical significance to the Appellant are likely to be deceived by the Respondent’s Mark in the future. As Pierre de Coubertin is a unique name, New Zealanders that are not familiar with the historical figure are likely to look up the source of the name. All online references to Pierre de Coubertin will link the Respondent’s Mark to the Olympics, the IOC and the Pierre de Coubertin Medal. Consumers are then likely to be, at a minimum, caused to wonder whether there is an association between the goods branded with the Respondent’s Mark and these entities when in fact none exists.
[54]This submission is pure speculation.
[55]The proposition is also problematic for other reasons. The Court of Appeal in
Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd said:12
It is in relation to commercial dealings with goods that the question of deception or confusion has to be considered, and the persons whose states of mind are material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark and others involved in the purchase transactions.
[56] The relevant knowledge of prospective or potential purchasers is their knowledge at the time of purchase. It is not knowledge that they might subsequently gain through undertaking research at some unspecified time in the future.
[57] IOC argues that this case is similar to Moreira v EUIPO.13 However, that case is not authority for the proposition that registration of a trade mark that might result in future deception should not be allowed. In that case, the applicant claimed that his application to register the name ‘Neymar’ as a trade mark had nothing to do with the Brazilian footballer of that name and was merely coincidental. The European Court of Justice rejected these claims. It found that, as at the date of registration, the
12 Above n 7, at 61.
13 Moreira v EUIPO EU:T:2019:329 (14 May 2019), Case T-795/17.
footballer was already famous in Europe and that, despite his protestations to the contrary, the applicant was well aware of who Neymar was and could not pretend to the contrary.
[58] IOC’s argument about future confusion is a novel one unsupported by any authority. For it to be credible, the Court would need to have some evidence that potential consumers in New Zealand would be likely to engage in the type of post- purchase research upon which it is predicated. There is no evidence to that effect.
[59] Mr Watts submits that “the correct test is merely ‘would a reasonable segment of New Zealanders be aware that Pierre de Coubertin was associated with IOC?’”. He then argues that, because he says such a factual situation exists, those New Zealanders would be confused by thinking that the goods to which the Mark was affixed were authorised or licensed by IOC.
[60] Quite apart from the fact that there is no evidence that any significant number of New Zealanders would associate Pierre de Coubertin with IOC, it is speculation to think that anyone would assume that the goods were licensed by IOC. Apart perhaps from t-shirts, there is no obvious overlap between the goods for sale in the Olympic Museum shop in Lausanne, and the classes of goods in respect of which TBN has pursued registration in New Zealand.
[61] The nature of the class of products which TBN seeks registration of the Mark for is also relevant.
[62] Famous people, including dead ones, do not have a monopoly on the use of their name as a trade mark.14 It also cannot automatically be assumed that the public would regard a product bearing the name of a famous person as having an endorsement from that person or their estate.
14 See Elvis Presley Enterprises Inc v Sid Shaw Elvisly Yours [1999] EWCA Civ 964, [1999] RPC 567.
[63] However, where there is a strong connection between the product and the activity for which the person is famous, the Courts may more readily infer that the public might suppose such an endorsement.15
[64] As counsel for TBN correctly submits, there is no obvious connection between the goods which the trade mark is intended to apply to, and either Pierre de Coubertin or IOC.
[65] The absence of any compelling link between the classes of product in respect of which registration is sought and either Pierre de Coubertin or IOC, significantly reduces any possibility for confusion or deception.
[66] The appellant has not demonstrated any error in the findings of the Assistant Commissioner in relation to s 17(1)(a).
Section 17(1)(b) – Use contrary to New Zealand law
[67] It was submitted on behalf of IOC that TBN’s registration of the Mark would be contrary to ss 9, 13 and 16 of the Fair Trading Act 1986 (FTA) and would amount to passing off.
[68] Mr Watts accepted that the threshold for confusion is higher under s 17(1)(b) than under s 17(1)(a) but submitted that the threshold for confusion under the FTA is different from the s 17(1)(a) standard. It was submitted that there was no requirement for assessment of the likelihood of deception or confusion against awareness of the opponents’ Mark. It was submitted that whether the FTA has been breached is answered by analysing the deception that has occurred in the marketplace.
[69] IOC’s submission that the FTA had been breached, or that there was passing off was based on the factual submission that:
The evidence shows the strong likelihood that the public would be misled to believe that the Respondent produces official merchandise on behalf of the IOC, or is otherwise connected to the IOC. This is due to the public’s understanding that Pierre de Coubertin is inherently linked to the IOC and therefore the public is likely to be led to believe that any products produced
15 At 597.
under the PIERRE DE COUBERTIN name are produced by or on behalf of the IOC.
[70] In light of the factual findings that I have made earlier, this submission is untenable.
[71] In relation to passing off, Mr Watts submitted that it was well established that falsely representing that a product was endorsed by a celebrity amounts to passing off.
[72] There is no evidential basis for a submission that, by registering the trade mark, TBN will be falsely representing that the products in question were endorsed by the late Pierre de Coubertin, or IOC.
[73] The submissions, on behalf of IOC, lose any air of reality when it is submitted that:
… the IOC is concerned that the prestigious Pierre de Coubertin Medal that has been bestowed upon some of the world’s greatest sportspeople, including New Zealand’s Tana Umaga, would be devalued. Those who have been awarded genuine Pierre de Coubertin medals would be harmed by the sale of PIERRE DE COUBERTIN branded jewellery, clothing and other goods that are not officially produced and sold by the IOC or National Olympic Committees.
[74]Such a submission is fanciful.
[75] I also note in passing that, while IOC awards the Pierre de Coubertin Medal, there is also a Pierre de Coubertin trophy. There is reference to this trophy (which is something different to the medal) in the common bundle of documents at pp 364 and
370. The trophy was won by former All Black coach, Graham Henry, in 2008. As the press articles in the common bundle indicate, that trophy is awarded by the CIFP (International Fair Play Committee). The newspaper report at p 370 of the common bundle describes the CIFP as “an international non-governmental organisation recognised by the United Nations and the International Olympic Committee”.
[76] The material in the agreed bundle of documents would indicate that, even amongst sport journalists, there is little clarity of understanding about the difference
between the medal and the trophy, and IOC and CIFP, with one article wrongly claiming that Tana Umaga had won the trophy awarded by the CIFP.
[77] A lack of understanding by people in New Zealand who are presumably specialists in matters related to sport, as to the nature of the Pierre de Coubertin Medal, would indicate that few ordinary New Zealanders would be likely to leap to the conclusion that jewellery sold under the Mark somehow devalued the medal (or for that matter the trophy).
[78] No error in relation to s 17(1)(b) on the part of the Assistant Commissioner has been made out.
Section 32 of the Act
[79] Section 32 provides that a person claiming to be the owner of a trade mark may apply for registration. IOC submits that the person who first came up with or used the trade mark in New Zealand is entitled to claim proprietorship in it. That proposition is uncontroversial.16
[80] It then submits that the threshold for establishing prior use for the purposes of showing that IOC is the true owner of the Mark is a low one. It is submitted that the use need not be sufficient to establish a reputation in New Zealand and that as little as one advertisement of the services in New Zealand can be sufficient to show proprietorship of the trade mark in New Zealand.
[81]IOC submits that:
In particular, the IOC has used the IOC Mark in New Zealand extensively since at least 1920 when New Zealand first competed in the modern Olympic Games, including in respect of a wide range of merchandise such as clothing and books.
[82] The factual basis supporting that proposition is said to be [17] and [23] of the statutory declaration of Howard Stupp dated 1 June 2017. Neither of those paragraphs provide any support for use by IOC of the Mark in New Zealand. At [17], it simply
16 See Chettleburgh v Seduce Group Australia Pty Ltd [2012] NZHC 2563 at [38].
records that New Zealand has sent teams of athletes to the Olympic Games since the 1920 Summer Olympics, and [23] says that IOC sells merchandise featuring the Pierre de Coubertin name or his imagery at the Lausanne Museum store.
[83]IOC also submits:
… that the Pierre de Coubertin Medal, and the media interest surrounding the award, has provided significant brand awareness to the IOC Mark that far exceeds the low threshold required to make out the section 32(1) ground of opposition.
[84] The answer to that submission is that the description of the medal as being the Pierre de Coubertin Medal involves no use of the Mark. The reference to Pierre de Coubertin in relation to the Medal is simply a reference to the person after whom the medal is named.
[85] Such evidence as is available in the common bundle of documents would also indicate that references to the medal are not all in uppercase (like the wording in the Mark) but use conventional upper and lowercase letters as are normally used in describing someone’s name.
[86] As noted by the Court of Appeal in North Face Apparel Corporation v Sanyang Industry Company Ltd:17
In order to establish ownership, an applicant must establish that it is the first person to use the mark in New Zealand; and that, if challenged, there is no prior use by another party.
[87] The attendance of New Zealand athletes at the Olympic Games or the availability of a limited range of merchandise connected with the name or image of Pierre de Coubertin in Lausanne, does not amount to use of the Mark by IOC in New Zealand.
[88] The Assistant Commissioner was therefore correct in her conclusion in relation to s 32(1).
17 North Face Apparel Corporation v Sanyang Industry Company Ltd [2014] NZCA 398 at [22] (citations omitted).
Section 17(2) – Bad faith
[89] Section 17(2) of the Act states: “The Commissioner must not register a trade mark if the application is made in bad faith.”
[90] As Mr Watts submits, bad faith is not confined to dishonesty but may be established by dealings that fall short of reasonable standards of commercial behaviour.18
[91] Mr Watts acknowledged that allegations of bad faith should not be brought lightly but submits that:
… the Respondent has knowingly attempted to hinder the IOC by attempting to obtain a monopoly in a brand that the Respondent knows the IOC uses in New Zealand, is inherently linked with the IOC and the Olympic movement in New Zealand and globally, and that the IOC intends to continue using going forward.
[92] The finding that IOC does not, and has not, used the Mark in New Zealand disposes of this argument.
[93] IOC also claims that bad faith can be inferred from the fact that TBN sent a letter to IOC in October 2015 referring to IOC’s rights in the PIERRE DE COUBERTIN brand in Europe.
[94] Mr Arthur responds by saying that the letter of October 2015 in fact asserted that IOC had no rights in the PIERRE DE COUBERTIN trade mark it had registered in Europe because IOC had not used the trade mark, and the letter required IOC to cancel the registration. He also notes that the ultimate outcome of that correspondence was that TBN successfully applied for revocation of IOC’s trade mark.
[95] I am satisfied that there is nothing in that correspondence that justifies an assertion of bad faith.
[96]IOC’s submissions on this point reach their zenith with the claim:
18 See Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 at 379.
The IOC submits that the Respondent has attempted to speculatively freeload off the reputation of Pierre de Coubertin, his inherent connection to the IOC and his prestigious connection to the Olympic Games by applying to register the Respondent’s Mark.
[97] There is simply no evidential foundation for such a claim. Nor is there any foundation for describing TBN as “unscrupulous” or as having engaged in conduct which “falls well short of reasonable standards of commercial behaviour”.
[98] An application to register a trade mark in New Zealand is assessed against the provisions of the Act. The factual findings that IOC has never used the Mark in New Zealand, and that there is no evidence that the New Zealand public would be deceived or confused by use of the Mark, mean that TBN is lawfully entitled to apply to register the Mark.
Outcome
[99] As the appellant has failed to establish any error in the judgment of the Assistant Commissioner, the appeal is therefore dismissed.
Costs
[100] I invite the parties to agree costs but failing agreement, the respondent is to file a memorandum of submissions of no greater than five pages in length within 10 working days of the receipt of this decision, with the appellant to file its submissions in reply of no greater than five pages in length no later than 10 working days after receipt of the respondent’s submissions.
Churchman J
Solicitors:
Simpson Grierson, Auckland for Appellant Avid Legal Ltd, Wellington for Respondent
1
8
0