Intellectual Reserve Inc v Sintes - [2009] NZCA 305

IN THE COURT OF APPEAL OF NEW ZEALAND
CA31/2008
[2009] NZCA 305
BETWEENINTELLECTUAL RESERVE INC

Appellant

ANDROBERT SINTES

Respondent

Hearing:25 March 2009

Court:Arnold, Ellen France and Baragwanath JJ
Counsel:R C Watts and J Shackleton for Appellant

Respondent appears in person

Judgment:16 July 2009 at 10.30am

JUDGMENT OF THE COURT

A THE APPEAL IS DISMISSED.
B It is ordered that that registration of the respondent’s mark be amended to state: “Registration of this trade mark shall give no right to the exclusive use of the words ‘family search”.

C        THE APPELLANT MUST PAY THE RESPONDENT’S USUAL DISBURSEMENTS.
____________________________________________________________________
REASONS
Baragwanath J  [1]
Ellen France J  [79]
Arnold J  [86]
BARAGWANATH J
Table of Contents

Para No

CONTEXT  [3]
ISSUE (1) IS MR SINTES’ SIGN DISTINCTIVE?  [8]
ISSUE (2): WOULD THE USE OF MR SINTES MARK BE LIKELY TO DECEIVE
OR CAUSE CONFUSION IN THE MARKETPLACE CONTRARY TO S 17(1)(A)
AND S 25(1)(B) AND (C)?  [58]
RESULT  [78]
[1]       Intellectual Reserve Inc challenges on appeal the entitlement of the respondent Mr Sintes to his registration under the Trade Marks Act 2002 as a trade mark of a sign which contains the commonly used words “family search”. The primary issue concerns the requirement that, for him to sustain the registration, his sign must be distinctive.
[2]       A further issue is whether the respondent’s sign, using the same words as the appellant’s registered marks, albeit accompanied by a somewhat different surround, is likely to deceive or cause confusion in the relevant marketplace.
Context
[3]       The appellant Intellectual Reserve Inc is a non-profit corporation of Utah, United States. The members of its Board of Trustees are appointed by and serve at the pleasure of the First Presidency of the Church of Jesus Christ of Latter-day Saints, widely known as the Mormon Church. The Church is growing rapidly; in 2004 it had some 400 million members worldwide. The importance of the family structure is central to Church doctrine and among its practices is that of vicarious baptism of the dead by living church members. The practice was originally reserved for ancestors of Church members. The archives include detailed biographical information of 400 million people going back centuries.
[4]       Between 1994 and 2001 Intellectual Reserve filed applications under the New Zealand Trade Marks Act 1953 for registration of trademarks employing the words “family search”, which were duly granted. Their specifications are all expressed to relate to genealogy. By s 208 of the Trade Marks Act 2002 the registration of such trademarks under the 1953 Act remains valid unless declared invalid under s 74. No challenge to their validity has been made.
[5]       The respondent Mr Sintes, who had come to New Zealand as a child in 1949, felt a deep desire to establish contact with his English family. Having written letters and searched documents for 20 years, in the late 90s a friend assisted him to place on the internet a listing which led him to surviving family members. The resulting sense of fulfilment led him to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2009] NZCA 305
Decision Date: 16 July 2009

CaseChat Overview and Summary

Intellectual Reserve Inc, a non-profit corporation of Utah, United States, appealed against the decision of Winkelmann J dismissing its opposition to the registration of a trade mark by Robert Sintes. Sintes had registered a trade mark using the words "familysearch" within a sign which included a koru and an arrow. The appeal raised two issues: (1) whether Sintes' sign satisfied the distinctiveness requirement of s 18(1)(b) of the 2002 Act; and (2) if so, whether its use would be likely to deceive or cause confusion in the marketplace contrary to s 17(1)(a) and s 25(1)(b) and (c). The Court of Appeal dismissed the appeal. It found that Sintes' sign was distinctive because it combined words in common parlance with distinctive design elements. It also found that the use of Sintes' sign would not be likely to deceive or cause confusion because the services provided by Sintes were distinct from those of Intellectual Reserve. The Court ordered that registration of Sintes' mark be amended to state that "Registration of this trade mark shall give no right to the exclusive use of the words 'family search'."

Orders