Intellectual Reserve Inc v Sintes
[2009] NZCA 305
•16 July 2009
IN THE COURT OF APPEAL OF NEW ZEALAND
CA31/2008
[2009] NZCA 305BETWEENINTELLECTUAL 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 set up a New Zealand based web facility to help other families to reunite. In September 2000 he registered a New Zealand domain name and in November 2000 he began operating The New Zealand Family Tracing Service. Proceedings issued by Intellectual Reserve in relation to that domain name and a counterclaim by Mr Sintes were discontinued in August. In the meantime, on 27 July 2005 Mr Sintes filed an application for a trade mark incorporating the words “familysearch” which is reproduced at [8] below.
[6] Intellectual Reserve filed notice of opposition raising the two issues which require answers on this appeal:
(1)Does Mr Sintes’ mark satisfy the distinctiveness requirement of s 18(1)(b) of the 2002 Act?
(2)If so, would its use be likely to deceive or cause confusion in the marketplace contrary to s 17(1)(a) and s 25(1)(b) and (c)?
A further pleaded issue, whether the use would infringe s 17(1)(b), being contrary to New Zealand law, turns on the answer to (2). No law other than those cited in (1) and (2) was relied on.
[7] Assistant Commissioner Walden found for Mr Sintes on both issues. An appeal by Intellectual Reserve against her decision was dismissed by Winkelmann J, whose judgment is now challenged on further appeal.
Issue (1) Is Mr Sintes’ sign distinctive?
[8] What may be called Mr Sintes’ logo is as follows:
[9] The definition of a sign by s 5 includes a brand, label, letter or word. It extends to a colour, smell, sound or taste. It is undisputed that Mr Sintes’ logo is a “sign”.
[10] For a sign to be accepted as a “trade mark” it must be distinctive. That requirement is imposed by both s 5 and s 18. Section 5 provides the definition:
trade mark—
(a) means any sign capable of—
(i) being represented graphically; and
(ii) distinguishing the goods or services of 1 person from those of another person
[11] Subpart 2 of the 2002 Act contains “Absolute grounds for not registering trade mark”. Among them are those stated in s 18:
18 Non-distinctive trade mark not registrable
(1) The Commissioner must not register—
…
(b) a trade mark that has no distinctive character:
[12] Jacob J has expressed the view that there is no material difference in effect between the adverb “distinguishing” in s 5 and the adjective “distinctive” in s 18(1)(b): British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 305 (Ch D). This Court in Fredco Trading Ltd v Miller (2006) 11 TCLR 751 at [61]-[62] recognised the overlap but was minded to agree with Venning J at first instance ((2004) 65 IPR 653 HC)) that s 18(1)(b) is likely to have particular relevance where the mark may be capable of distinguishing but does not have inherent qualities that do mark it out as of distinctive character. In the latter event distinctiveness might arise by use prior to the application for registration, as occurred in Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285 at 320 per Barwick CJ, and in Fredco Trading Ltd v Miller.
[13] What is meant by “distinctive” is to be discerned from the text and purpose of the statute: Interpretation Act 1999, s 5. As to the former, the Oxford English Dictionary defines the word:
Having the quality of distinguishing; serving or used to distinguish or discriminate; characteristic, distinguishing.
[14] The question, distinguishing from what? is answered by the s 5 definition:
… any sign capable of—
…
(ii) distinguishing the goods or services of 1 person from those of another person
[15] What does that definition actually mean? In a television age, with a sufficient advertising budget, virtually any item other than the commonplace is capable of being made distinctive and thus distinguishing the goods or services from those of others. So it must at least contain the element of non-commonplace. But, as will appear, that is not enough.
[16] Section 18 adds certain public policy stipulations which shed further light on the meaning of “distinctive”:
(1) The Commissioner must not register—
…
(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.
The word “only” in (c) and (d) requires consideration of how and when those subclauses can be overridden by some addition to the items of which use by themselves is prohibited.
[17] There is then to be considered the requirement of s 18(1)(b) – “the Commissioner must not register a trade mark that has no distinctive character”. Removing the double negative, that means that a sign which is capable of distinguishing the goods and services as having a particular trade origin (s 5) must actually do so: it must at the time of the application be of such character as effects such distinction.
[18] In McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40, 43 (CA) Gault P giving the decision of this Court stated of the equivalent provisions of the 1953 Act:
[14] Since the quality of being capable of distinguishing must be present before the date of registration (it must be a trade mark), the meaning to be given to the quality of capable of distinguishing must involve an existing capacity rather than merely a capability (in the sense of potential) for becoming distinctive in the future. That must be correct; otherwise it would be possible to obtain registration and sue for infringement before a mark has realised the very quality essential to any trade mark – that of distinguishing the goods or services of the proprietor from those of competitors. Further, to grant registrations on the basis of potential would require speculation about the manner and extent of future use by which the potential will be realised.
[15] Accordingly, to be capable of distinguishing, a mark must at the date of registration have that as an inherent quality or have it demonstrated in fact by prior use or “other circumstances”…
[19] It may be added that many new products will not have been launched prior to the time of the trade mark application. They will have no actual reputation; the Act requires only that they (in the language of s 5) be capable of distinguishing the goods or services from those of another supplier. That must mean: have the ability to do so when they reach the market.
[20] Care must be taken in reading authorities on statutes other than the current Act. Unlike their predecessors in New Zealand, Australia and England, the current generation of trade marks statutes do not specify the kinds of trade marks that can be registered. So, as is observed of the current Australian Act by Davison Shanahan’s Australian Law of Trade Marks and Passing Off (3ed 2003) at [5.05], since the only requirement is that of “capable of distinguishing”, subject to that requirement, the categories of trade marks are unlimited. But I do not disagree with Ellen France J’s comment on this point at [82].
[21] Furthermore, the definition of “distinctive” contained in s 14 of the Trade Marks Act 1953 and discussed by this Court in Cadbury Ltd v Effem Foods Ltd (2007) TCLR 966 at [17]ff has not been reproduced in the 2002 Act.
[22] But despite the major changes over the years in the language of trade marks legislation, I am satisfied that the best test of what form of distinctiveness is required remains that of the leading case, In the matter of applications by W and G du Cros Ltd for the registration of trade marks (1913) 30 RPC 660 (HL), which has frequently been applied in New Zealand, albeit under former legislation, and in Australia. There the House of Lords considered two signs, one the company’s initials “W & G” printed in block type and the other the same letters in cursive form. An initial part of the test formulated by Lord Parker at 671, to which numbers have been added in parentheses, was:
(1) whether the mark…, if used as a Trade Mark, is likely to become distinctive of the persons so using it. The applicant for registration in effect says, “I intend to use this mark as a Trade Mark, i.e., for the purpose of distinguishing my goods from the goods of other persons.
It was held that neither was distinctive. The reason, which provides the second part of the test, was held to:
… largely depend upon (2) whether other traders are likely, in the ordinary course of 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.
If so, the sign is non-distinctive. The policy had been put vividly by Sir Hubert Cozens-Hardy MR in the Court of Appeal ((1911) 29 RPC 65) at 73:
… this is an illegitimate attempt to take exclusive possession of a part of the alphabet to the detriment of future traders who may honestly desire to put their own initials on their goods.
[23] The signs in that case would nowadays fall foul of s 18(1)(d). And, because the block type has no distinguishing characteristics and the cursive form is commonplace, it would also fail to satisfy the s 5 definition. The same would be the case if Mr Sintes’ sign consisted only of two words in commonplace type.
[24] The general principle is stated by Kerly’s Law of Trade Marks and Trade Names (14ed 2005) at [8-030]:
The essential function of a trade mark is to distinguish the goods and/or services of one undertaking from those of other undertakings and “distinguish” must be understood in that way…The attribute of a trade mark which gives it the necessary ability to “distinguish” is its distinctive character, but the assessment of distinctive character is really an assessment of whether the sign/trade mark can distinguish in the sense just mentioned.
It was refined by Laddie J in Yakult Honsha KK’s Trade Mark Application [2001] RPC 39 at 758-759 (Ch D):
At all times the Registry has to ask whether the design is distinctive as a badge of origin. The exercise to be undertaken was described by the European Court of Justice in Lloyd Schunfabrik Meyer & Co GMbH v Klijsen Handel BV [2000] FSR 77; Case C-342/97, [1999] ECR I-3819:
In determining the distinctive character of a mark … the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings …
[25] The distinctiveness must be both in fact and in law (meaning permitted by the statute). In Yorkshire Copper Works Limited’s Application for a Trade Mark (1953) 71 RPC 150 (HL) Lord Simonds LC took to its ultimate extreme the principle against permitting monopoly in respect of geographical origin (our s 18(c)) which must be of equal application to words in common parlance (our s 18(1)(d)). He considered that, despite 100 per cent factual distinctiveness of the appellant’s product, the fact that the mark consisted of the word “Yorkshire” in special type and between inverted commas meant that the mark could not be distinctive. That conclusion was endorsed by Lord Wilberforce, giving the leading decision in YORK Trade Mark [1984] RPC 231 (HL) where he adopted what Lord Hanworth MR had said in Liverpool Electric Cable Co Ltd’s Application (1929) 46 RPC 99 at 118 (CA) as to what could amount to “capability”:
…when you come to regard the rights of the public at large, the traders at Liverpool and the like, it appears to me that the Registrar would be quite right in holding that a word of that importance and significance ought not to be used or allowed to be treated as a word capable of distinguishing, because it has not merely to be capable in fact, but it must be capable in law.
[26] Perhaps the leading example of an unsuccessful claim for protection of a mark consisting of words in common parlance is the Shredded Wheat trio of appeals to the Privy Council from Canada, to the United States Supreme Court and to the House of Lords: The Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 (PC); Kellogg Company v National Biscuit Company 305 US 111 (1938) and The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 (HL).
[27] The point was summed up by Jacob J in British Sugar at 302:
It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader...
At 306 he offered an analysis which was adopted by Winkelmann J and with which I respectfully agree:
If a mark on its face is non-distinctive (and ordinary descriptive and laudatory words fall into this class) but is shown to have a distinctive character in fact then it must be capable of distinguishing… What does devoid of distinctive character mean? I think the phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark? A meaningless word or a word inappropriate for the goods concerned (North Pole for bananas) can clearly do so. But a common laudatory word such as ‘Treat’ is, absent use and recognition as a trade mark, in itself… devoid of any inherently distinctive character.
[28] As the late Sir Hugh Laddie has shown, there is a considerable element of general public policy. In “The Insatiable Appetite for IP Rights” (2008) 61 Current Legal Problems 400 at 408 he noted:
Recently there was a press report that the names of well known streets in London were going to be applied for as trade marks so as to prevent sellers of souvenirs from lowering the tone of the capital by selling imitation street signs. A brief search of the UK IPO website [ (accessed 1 September 2008)] shows that this was not a joke.
[29] It is important that, as confirmed by Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 61 (CA), the statutory test is to be applied at the time of the application for registration. The application may be before the goods or services have been put on the market. Distinctiveness cannot be confined to the factual position at that point; the crucial question (expressed specifically in some jurisdictions) is: what is the inherent potential of the mark to serve as a distinguishing feature? (see Blount v Registrar of Trade Marks (1998) 40 IPR 498 at 503 (FCA)). In Anheuser-Busch Inc v Budweiser Budvar National Corp [2003] 1 NZLR 472 at [30] this Court stated that the test concerns a fair assessment of the notional scope of the mark.
[30] How great must the distinctive capacity be? The second du Cros factor – the interests of others who may wish to enter the market – will concurrently protect the interests of consumers: competitors may not be inhibited by another’s monopoly of words that would assist communication of the facts relevant to competition. But nondescript words or design will not suffice to license the use of words which by themselves would not have been permitted. In In the matter of an application by FanfoldLtdto register a trade mark (1928) RPC 326 the Court of Appeal rejected as non-distinctive a mark consisting of the name of the company, a manufacturer of paper forms, files and stationery, written in bold type above a faint scroll or ribbon pattern trebly folded at each end. Looked at from a short distance the scroll did not arrest the eye and lost its identity. So in effect the non-distinctive name “Fanfold” stood alone.
[31] Use of disclaimer may also be necessary to avoid any risk of doubt by a public unversed in the niceties of trade mark law whether a monopoly of use of such words has been conferred.
[32] A further element of the overall evaluation, and consideration of the consequences to other traders and to consumers if registration were allowed, is the question of how the trade mark specifications would be construed in enforcement proceedings. If a narrow construction of a given mark were to be taken, the risk of unhealthy monopoly by permitting its registration would be reduced, and vice versa.
[33] As to that, the construction must be realistic, from the standpoint of the practical operation of the mark. The topic is revisited in the context of Issue 2 at [71]- [77] below.
[34] In Easynet Group Plc v Easygroup IP Licensing Ltd [2007] RPC 6 at [27] Mann J rejected the notion that a judgment of distinctiveness is qualified by such concepts as usualness. The mark must simply be distinctive. Since Parliament has rejected former criteria of distinctiveness ([21] above) I agree with that view.
[35] In summary, for a sign to be distinctive:
(a)it must not be commonplace. Rather it must be distinctive of the user; in the words of Sir Wilfred Greene MR in Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 162 (CA), such as “comes to be remembered by something in it which strikes the eye and fixes itself in the recollection”. In the homely language of Jacob J in British Sugar at 300 the name must tell the public what the product is and attract the public. But while it must be memorable to the extent that its essence will be recalled by the ordinary customer, it need not be unusual or extraordinary;
(b)it must not infringe the statute;
(c)it must not be such as other traders are likely to wish to use for competing goods or services;
(d)the use of a disclaimer may bear on the acceptability of a mark;
(e)there should be a realistic construction of the mark and its specification in the relevant market.
[36] It follows both from general principle and from the express language of s 18(1)(d) that a mark consisting simply of the words “family search”, whether separated or run together, would be non-distinctive, either in block letters or in cursive form. Functionally, it is precisely the language any other person entering the market for searching family records would wish to employ. Used alone it infringes both s 5 and s 18(1)(d). How Intellectual Reserve was granted registration on two occasions of a mark consisting simply of the words “FAMILYSEARCH” is difficult to understand.
[37] Here, however, it is necessary to consider how far does the s 18(1)(d) statutory expression of the du Cros prohibition of the use of such words extend, when a mark using words “customary in the current language” does so within a sign containing additional features? As well as “signs” (that is, words) that have become customary in the current language, Mr Sintes’ mark contains what the members of this Court, before reading Mr Sintes’ evidence, discerned as a koru at the bottom right extending to the left and passing around and over the underlined words, then concluding with the arrow at the top right. A koru in New Zealand parlance is “a stylised fern-scroll motif used in Maori carving, tattooing, etc”: The New Zealand Oxford Dictionary (2005); the frond with which New Zealanders are familiar begins with a catherine wheel twirl and then straightens. The font used for the words, although available on computers, is not especially commonplace. Does the combination make any difference?
[38] In In the matter of the trade mark of Clement & Cie (1899) 16 RPC 611 (CA) the respondent sold wine in bottles bearing a label which had been registered as a trade mark. It was an elaborate and distinctive label of which a component was the words “St Raphael”. Below that label appeared in block capitals the words “SAINT-RAPHAEL TANNIN WINE”. A competitor applied for an order that the mark be removed from the register or that there be added to the registration a disclaimer of any right to exclusive user of the words “St Raphael”. The Court of Appeal characterised the words on the label as “part of the mark”, which it held to be distinctive as a whole, rather than as an addition to it of geographical (and thus non-distinctive) words. But at 618 Romer LJ emphasised that registration of words is not sustainable:
…merely because some flourishes are put around them to try and make out a distinctive label – a compound label – when, in fact, what was really sought to be registered…were the words alone.
[39] In In the Matter of Wright, Crossley & Co’s Application for a Trade Mark (1900) 17 RPC 386 (Ch D) the most distinctive feature of the label for which registration as a trade mark was sought was the non-distinctive words “ROYAL BAKING POWDER”. Byrne J nevertheless held that the manner in which the words appeared, encircling a lion rampant and in turn surrounded by a border with ornamental work, met the test of distinctiveness. A similar conclusion had been reached in In the Matter of Hudson’s Trade Marks (1886) 3 RPC 155 (CA) where a label containing words not of themselves distinctive, HUDSON’S Carbolic Acid SOAP POWDER, but appearing with a small distinctive sign, was held to be distinctive.
[40] The Court in Wright regretted the lack of a power to require a disclaimer of the right to exclusive use of the non-distinctive words but made plain that such registration did not confer property rights in relation to such words. In New Zealand power to order disclaimer is conferred by s 71:
Disclaimer of trade mark for public interest reasons
If, in determining whether a trade mark is to be registered or is to remain on the register, the Commissioner or the Court considers that there are public interest reasons for doing so, the Commissioner or the Court may require, as a condition of its being on the register, that the owner—
(a) disclaims any right to the exclusive use of any part of the trade mark; or
(b) makes any other disclaimer that the Commissioner or the Court considers necessary for the purpose of defining the owner's rights under the registration.
[41] Of particular authority is the decision of the High Court of Australia in Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300. There the several components of a mark – a naked man with lines indicative of the muscle areas which must be relaxed in order to get a good sleep, the words “SPRINGWALL MATTRESS” and the hexagonal spring within which the words were enclosed – were all descriptive and thus individually non-distinctive. But the Deputy Registrar was prepared to register the mark as a whole, provided the applicant disclaimed any right to the exclusive use of the device of the spring. The High Court dismissed an appeal against the term requiring the disclaimer.
[42] On that topic it stated at 315:
A trade mark may be infringed by another trader "if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features": de Cordova v. Vick Chemical Co. [(1951) 68 RPC 103 at pp105, 106]. It would seem therefore that:
[1] the tribunal should carefully consider whether a disclaimer should not be required whenever the proposed trade mark contains parts or matter to the exclusive use of which the tribunal holds the applicant not to be entitled and those parts or matter appear to be likely to become in use regarded as essential features of the mark as a whole; but that
[2] it would not normally require a disclaimer where the parts or matter form an insignificant portion of the mark as a whole, because the risk that another trader who used such portion would infringe the registered mark would be trifling and to do so in such a case would only be to clutter up the register with unnecessary disclaimers. But
[3] where a part of a trade mark not separately registered is nevertheless itself of a distinctive character, although it is an essential feature of the trade mark, the tribunal could not hold the proprietor not to be entitled to the exclusive use of that part and therefore could only require a disclaimer if for some other reason, it thought that a disclaimer was needful for the purpose of defining his rights under the registration.
[43] It endorsed the following remarks of Lloyd Jacob J in In the matter of Ford-Werke AG’s Applications for a Trade Mark (1955) 72 RPC 191 (Ch D):
By reason of his familiarity with trade usages in this country, a familiarity which stems not only from an examination of marks applied for and of the many trade journals which he sees, but from the perusal and consideration of trade declarations and the hearing of applications or oppositions, the Registrar is peculiarly well fitted to assess the standards by which the trade and public must be expected to estimate the uniqueness of particular indications of trade origin…
[44] The latest word on the topic concerns a mark made up of two elements, each of which taken by itself would be treated as descriptive and thus non-distinctive: Easynet Group Plc v Easygroup IP Licensing Ltd, where the respondent had secured registration of the sign “easy.com” for a wide range of goods and services. The mark was opposed as being devoid of distinctive character and consisting exclusively of signs or indications serving to designate the characteristics of the goods and services provided. In dismissing an appeal to the High Court Mann J stated at [27]:
The authorities show that the true approach is … one of looking at the mark as a whole in order to see whether the mark as a whole is descriptive within the meaning of the section and, in particular, to see whether the mark as a whole produces something which is more than the mere sum of the parts. In the course of that exercise it is permissible, although probably not obligatory, to consider the descriptive nature of the separate elements, but it is an overall assessment that matters. That assessment is not qualified by such concepts as unusualness. It is a qualitative judgment as to the degree of descriptiveness of the term and the extent to which it goes beyond that which arises out of the conjunction of the two or more elements which make it up, and it does not depend on compliance with any particular adjectives of the nature of usual, unusual, ordinary or extraordinary.
[45] On the other side of the line is a case like Fanfold where the embellishments to the non-distinctive name did not make the mark as a whole sufficiently distinctive.
[46] For the moment it is enough to examine Mr Sintes’ sign by itself. He gave the following account of it:
I … tried to form the impression of a Koru … it being so entwined with New Zealand’s cultural heritage, and I did this by curling the bottom line at the end of the word search, into a simple shape that gave the feel of a fern ‘Crosier’ … representative of the bough of a canoe.
That bow of the symbolic fern construction line, leads under the mark and across the top into an offset arrowhead. I did this, not so much because the public might recognise any specific meaning (except it was obviously offset …) rather because it symbolised for me the inequity that exists between the position of the Birth child and that of the Birth parent… and the opportunity to open ‘move forward’ suggested by the arrow component and its direction …
[47] The appellant sought to rely on what Mr Sintes said about the sign:
The words [family search] are…both descriptive and generic…
The essential elements…are the words ‘family’ and ‘search’ (which are in the top 2% of the most commonly used words in the English language…
The opponents claims of contravention of their marks, relies on (their) false premise surrounding my unique design mark incorporating the descriptive words family and search, which describes a function within the body of a design…
(emphasis in original)
[48] The judgment cannot however be influenced by what its author means by the sign or indeed what a layman says concerning its legal effect (although I agree with what Mr Sintes says about the words, read alone). The test is, as counsel for the appellant submitted, one of the perceptions of the average consumer having regard to the various methods and practice of advertising they are likely to encounter (Cycling Is…Trade Mark Application [2002] RPC 37 at 744). Such a consumer is likely to perceive a mark as a whole rather than analyse its various details (Lloyd Schufabrik Meyer & Co GmbH v Klijsen Handel BV [2000] FSR 77 at [26] (ECJ)).
[49] The Assistant Commissioner made two appraisals of the mark. In the context of s 25(1)(a) (as to identity of the mark with a prior registered mark) she found that the marks are not identical, stating:
I do not regard the device elements of [Mr Sintes’] mark to be trivial embellishments.
The s 25(1)(a) argument was not pursued by Intellectual Reserve on appeal.
[50] In determining the present issue of distinctiveness she cited the du Cros test at 672:
The applicants’ 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.
She continued:
Having applied the test for distinctiveness in du Cros, I find that the objection under section 18(1)(b) of the 2002 Act to the applicant’s mark is not upheld. However, if the applicant’s mark had consisted only of the word combination “familysearch” for the services covered by the applicant’s trade mark application, then I consider that such a mark would have failed the test for distinctiveness in du Cros because it would be entirely descriptive of those services and therefore other traders would naturally wish to use the mark or a similar mark in relation to their own services. However, that is not the case here, as the applicant’s mark also consists of devices, which, in my view, gives the mark the requisite distinctiveness for the purposes of section 18(1)(b) of the 2002 Act.
Accordingly, the opponent does not succeed on this ground of opposition.
[51] In the High Court Winkelmann J began her analysis of s 18(1)(b) and s 18(2) with the passage from British Sugar plc at 306 cited at [27] above.
She continued:
[61] A trade mark possesses a distinctive character if and when it is endowed by nature or nurture with the capacity to communicate that the goods or services with reference to which it is used recurrently are those of one and the same undertaking: AD2000 Trade Mark [1997] RPC 168.
[62] I also note the IPONZ guidelines (referred to in Lexis Nexis Intellectual Property Law in New Zealand at 7.6.1) state that 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. 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. 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 (IPONZ Practice Guidelines, “Absolute Grounds: Distinctiveness”).
[63] Intellectual Reserve submits that Mr Sintes’ trade mark has a very low level of distinctiveness, and that he has not demonstrated that his application has acquired distinctiveness under s 18(2). Further, given that FAMILYSEARCH had already acquired a distinctive character attributed solely to the Church, Mr Sintes could never demonstrate such acquired distinctiveness.
[64] In considering this argument the Assistant Commissioner held that if Mr Sintes’ mark had only consisted of the word combination FAMILYSEARCH, then it would not have been capable of distinguishing Mr Sintes’ services. However, the applicant’s mark is a combination of words and devices and she considered it to be capable of distinguishing in the context of the definition of trade mark.
[65] I consider that in the form that the application has been filed, with a graphic representation of the words FAMILYSEARCH, it is capable of being distinctive of Mr Sintes’ services. The Assistant Commissioner was correct that the entire mark, which includes a device, is not a generic expression for these types of services. Accordingly, this ground of appeal must also fail.
[52] Counsel for the appellants contrasted that analysis with the Judge’s earlier discussion of the issue of similarity under s 25(1)(b) (discussed at [61]ff below) where she stated:
[22] I accept that Mr Sintes’ mark is similar to each of Intellectual Reserve’s word marks as they contain precisely the same words, and that it is also similar to the stylised marks. The same words are used, they are said the same, and the core concept of the marks is such that they are clearly similar. In respect of the stylised marks, although there are some stylistic differences, such as different font, the differences are trivial, and in some ways emphasise rather than detract from the similarity. Mr Sintes’ mark has two lines underpinning the words, divided by the letter “Y” in the middle. The opponent’s stylised marks have three lines with the letters “Y” and “S” dividing the lines.
[53] I have difficulty in reconciling the passages at [22] and [65] of the High Court’s judgment. That gives emphasis to our responsibility to make our own assessment: Austin, Nichols & Co Inc v Stichting Lodestar [2008] 2 NZLR 141 (SC). That decision accepted (at [13] and [16]) that, while the appellant must show that the decision appealed from is wrong, it is an error for the court to defer to a lower court’s assessment of the acceptability and weight to be accorded to the evidence, rather than forming its own opinion. But it also accepted (at [15]), as it has been accepted in England and Australia, that weight can properly be given to the factual findings below, if in making its own assessment the appellate court elects to do so.
[54] Here both the Assistant Commissioner and Winkelmann J in part of her judgment considered that the total mark is distinctive. I take that into account as informing my own assessment that such is indeed the case. Fairly assessed, the presence of Mr Sintes’ koru/arrow contributes more than do the nondescript and conventional items which fail to add to the mark’s distinctiveness. Rather they are a material part of what “strikes the eye and fixes itself in the recollection”.
[55] I agree with the Assistant Commissioner that Mr Sintes’ mark is distinctive. To the eye of an average New Zealand consumer koru/arrow wrapping around the words “family search” lends the total sign a distinctiveness which the words alone wholly lack. The koru is indicative of a source, a place of origin; the arrow suggests directed movement. While not obviously suggestive of the words “family search” (and thus free of a criticism of mere descriptiveness) their combination with the words makes the total sign capable of being memorable to a consumer. In forming my own view any residual doubt is removed by the common conclusion at first instance and first appeal, which it is legitimate although not necessary to consider.
[56] It follows that I find it unnecessary to lengthen this judgment to deal with the possibility, which Mr Sintes did not press, of acquisition of distinctiveness by use of his mark prior to his trade mark application. It is sufficient to recall that on or about 5 September 2000 Mr Sintes registered his website which went live later that month. It was some five months after he had begun helping to reunite families in New Zealand that on 9 April 2001 Intellectual Reserve filed its application 636396, in class 41. There followed its demand to convey the website to the respondent. Following High Court proceedings by Intellectual Reserve against him and a counterclaim he created and on 27 July 2005 filed his own trade mark application in Class 45. The proceedings were settled by mutual discontinuance on 23 August 2005.
[57] As will appear, I would uphold Mr Sintes’ argument on the second issue as well. But, to avoid any misapprehension within the market, I would impose under s 71 a disclaimer as a condition of the registration of his mark that “Registration of this trade mark shall give no right to the exclusive use of the words ‘family search”.
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] Mr Sintes’ application fell within class 45 of the World Intellectual Property Organisation Nice Classification (9ed):
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of individuals
His mark has been reproduced at [8]. Its specification reads:
(45) personal services rendered by others to meet the needs of individuals, namely, missing family research and tracing services, investigation and research on behalf of others of births, deaths and marriage records for the purpose of locating missing family including birth parents, adopted children and family; all the aforementioned services for the purposes of reuniting living family.
[59] Of the appellant’s five registered marks, one is a word mark and one a trade mark registration in class 16 of the former Trade Marks Regulations 1954, now replaced by the Nice Classification, namely:
(16) Paper, cardboard and goods made from these materials not included in other classes; printed matter; … instructional and teaching material except apparatus; …
The other word mark, referred to at [56], is a registration within class 41 of the Nice Classification:
(41) Education; providing of training; entertainment; sporting and cultural activities.
The appellant’s two further specifications are within the former classes 9 and 42:
(9) … instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers recording discs; …
(42) Miscellaneous services being services other than those included in a class referred to in another item in this Part.
[60] The appellants’ specifications for each class are as follows:
(9) pre-recorded compact discs, gramophone records; tapes and cassettes, computer software, semi-conductor memory devices, all relating to genealogy, all being goods in this class.
(16) paper, cardboard, and articles of paper or cardboard (not in other classes), printed matter, printed publications, books, stationery, instructional and teaching material (except apparatus), advertising and promotional material in this class; all connected with or relating to genealogy and family ancestral lines.
(42) wholesale services and distribution services in this class (other than delivery or transportation services) in the field of pre-recorded audio and video tapes, cassettes, compact discs and other pre-recorded media featuring information and advice on family ancestral lines genealogical indexes, family histories, and other social information on births, marriages and deaths of persons.
[61] The appellants’ word marks are for the word “FAMILYSEARCH”. Their trademarks include the words “Family Search” written in cursive script, the first word in bold, with three parallel lines beneath the words. The additions may fairly be described as nondescript and analogous to the additions in Fanfold. There is nothing distinctive about them.
[62] Counsel for the appellant did not rely on s 16, which prohibits registering as a trade mark any matter the use of which would be likely to deceive or cause confusion and whose purpose is to protect the public rather than the proprietary rights of traders involved in a dispute as to the use of a particular mark: Pioneer Hi-Bred at 61. Their submission is that the use by Mr Sintes of the same words as those of Intellectual Reserve’s registered marks infringes ss 17(a) and 25(1)(b) and (c).
[63] The former states:
17 Absolute grounds for not registering trade mark: general
(1) The Commissioner must not register as a trade mark or part of a trade mark any matter—
(a) the use of which would be likely to deceive or cause confusion;
…
Its purpose is to protect a registered mark, and the interest the proprietor has in it, from the registration of a potentially deceptive or deceiving mark: Pioneer Hi-Bred at 61.
[64] The latter states:
25 Registrability of identical or similar trade mark
(1) The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if—
…
(b) it is similar to a trade mark (trade mark C) that belongs to a different owner and that is registered … in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse; or
(c) it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand (trade mark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trade mark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trade mark D, and would be likely to prejudice the interests of the owner
[65] Section 25(1)(b) gives procedural effect to s 17(1)(a); s 25(1)(c) prohibits registration of a mark that is identical with or similar to as existing mark if its use would suggest connection between the mark and the owner of the existing mark.
[66] The terms “deceive” and “confuse” or “cause confusion” are distinct; as stated in Pioneer Hi-Bred at 62:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public (New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115, 141). Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[67] The test of likelihood of deception or confusion was stated in Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 (PC) at 18:
[A]ssuming use by the respondent of its trade mark “Polaroid” in a normal and fair manner for sunglasses, is the court satisfied that there would be reasonable likelihood of deception or confusion among a substantial number of persons if “Solavoid” was used in a normal and fair manner also for sunglasses?
[68] It has been noted that in Anheuser-Busch Inc v Budweiser Budvar National Corp this Court stated that the test concerns any notional fair use, that is, of the respective marks. It is necessary to consider how the trade marks will be regarded and how they will be pronounced and heard by those to whom they will be presented in the course of trade. The impression or idea conveyed by the marks is important in assessing how they will be recalled: at [75].
[69] The principles stated by this Court in R Jamieson & Co Ltd v J & J Abel Ltd [1926] NZLR 565 at 581-586 as now adapted to the present facts remain relevant.
(a)the onus of proof that use of the mark sought to be registered is not likely to deceive or cause confusion is upon the applicant. It will not be satisfied if the two sets of goods or services are so near the line as to render it unwise or improper to register;
(b)the test is whether the two sets of goods or services are so commonly dealt in by the same trader that his customers, knowing his mark in connection with one set and seeing it upon the other, would be likely to suppose that it was used upon them also to indicate that they were his goods;
(c)the fact that the two sets of goods or services are in different classes, though to be regarded, is not conclusive on the issue of similarity;
[70] Undoubtedly there is an element of potential overlap in the application of the respective marks: the purpose of Mr Sintes’ mark concerns research of births, deaths and marriage records and so does that of Intellectual Reserve. But Mr Sintes has satisfied me, as he satisfied the Assistant Commissioner and Winkelmann J, that he has not infringed any of the provisions relied upon by the appellant. That is because the overlap between the fields occupied by him and by Intellectual Reserve is simply insubstantial. The fact of the different classes, while not decisive, is material to that assessment.
[71] The appellant’s marks are registered in relation to genealogy, of which the primary definition in the Oxford English Dictionary is:
An account of one’s descent from an ancestor or ancestors, by enumeration of the intermediate persons; a pedigree
On a fair consideration of the notional application of the appellant’s marks their function concerns searching the past: “descent from an ancestor or ancestors”, also expressed as “family ancestral lines” and “family histories”. There is no element among their specifications of service for others that would fall within the current class 45 in which Mr Sintes’ mark is registered. Mr Sintes’ mark, by contrast, concerns the present and future: “research … of births, deaths and marriage records for the purpose of locating missing family…”. It is all to do with service to others.
[72] Francis Bacon, in a passage cited in R H Kersley (ed) Broom’s Legal Maxims (10ed 1939) at 439, stated:
… all words, whether they be in deeds or statutes or otherwise, if they be general, and not express and precise, shall be restrained unto the fitness of the matter and the person
The Broom maxim is translated from the Latin as “General words may be aptly restrained according to the matter of person to which they relate”.
[73] Where, as here, a plaintiff’s mark employs words “that have become customary in the current language” (s 18(1)(d)) the Court will not readily construe its specification so as to increase a monopoly right in those words beyond a fair scope. Rather it will seek to construe the specification as conforming with s 18. Here the analogy of s 5 of the Interpretation Act is relevant: construction begins with words but extends to purpose.
[74] In Reed Executive plc v Reed Business Information Ltd [2004] RPC 40 at 792 (CA) it was said that the public is alert to small variations in largely descriptive marks because they expect others to use similar marks and are alert for detail that would distinguish one provider from another. The effect of this tends to neutralise the common feature of the marks (the descriptive words "familysearch") and to focus on the other (distinctive) elements, although the marks must be taken as a whole.
[75] The care that consumers use when purchasing goods or services covers a spectrum. In relation to the services at issue here, consumers are likely to exercise care, so that the possibility of confusion is reduced.
[76] The fact that both parties have selected for their marks words in common parlance certainly means that enquiry may be necessary, by those searching those words, of which service they seek. But that is an inevitable consequence of such selection and of the policy of the law to resist monopolies in such language.
[77] I am satisfied that Mr Sintes has established that none of ss 17(1)(a), 17(1)(b) and s 25(1)(b) and s 25(1)(c) apply.
Result
[78] It follows that I would dismiss the appeal but subject to imposition of the disclaimer referred to in [57]. Since Mr Sintes represented himself no costs award may be made in his favour. But he is entitled to payment of his usual expenses.
ELLEN FRANCE J
[79] I have had the advantage of reading the full judgment prepared by Baragwanath J. I agree with his conclusions. I also agree that there should be a disclaimer.
[80] As to whether Mr Sintes’ mark has a distinctive character, I would respectfully adopt the reasoning of Winkelmann J and decide the matter on the basis adopted by Her Honour. Namely, that the combination of words and devices comprising Mr Sintes’ mark is such as to be capable of distinguishing. As Winkelmann J said at [65]:
The Assistant Commissioner was correct that the entire mark, which includes a device, is not a generic expression for these types of services.
[81] I add that I do not consider there is any inconsistency between the conclusion in [65] of Winkelmann J’s judgment and Her Honour’s earlier observations at [22]. As I read [22], the Judge’s observations are directed to the suggestion that Mr Sintes’ mark is so similar to Intellectual Reserve’s marks as to be confusing. The focus in [22] is not on the ability of Mr Sintes’ mark, as a combination of words and devices, to be capable of distinguishing.
[82] I make a further general point about matters of construction of the statute arising from Baragwanath J’s helpful discussion of what makes a mark distinctive. It arises from Baragwanath J’s observation that care is needed in reading authorities on earlier statutes. The suggestion is that the current generation of trade marks legislation “do not specify the kinds of trade marks that can be registered”: at [20]. However, in terms of the issues arising in this case, s 14(1)(e) of the Trade Marks Act 1953 allowed registration of “[a]ny other distinctive mark”. “Mark” was defined inclusively so that in this respect I doubt there has been any real change in the new Act.
[83] It may well be that there is nothing of significance in the point given I accept that, as Baragwanath J states, these matters are to be addressed in a realistic way.
[84] In terms of s 25(1)(b) of the Act, I agree with Winkelmann J’s conclusion that Mr Sintes’ mark is not in respect of the same or similar services as that of Intellectual Reserve. As the Judge noted at [34], none of Intellectual Reserve’s registrations are for personal services to assist in the location of lost family members. Further, although some of Intellectual Reserve’s registrations do cover services, the extent to which they do so is very limited. By contrast, Mr Sintes’ registration is for services where the needs of individuals for research and a family tracing service to enable family to reunite. The conclusion that the marks relate to different services disposes of this ground of the appeal.
[85] The outcome in terms of s 25(1)(c) is more difficult. Ultimately, I agree with the conclusion of Winkelmann J that use by Mr Sintes of his mark in connection with the personal services he intends offering would not be taken as indicating a connection in the course of trade between Mr Sintes and Intellectual Reserve. As the Judge says, first, if someone were to use “family search” or “familysearch” to search the Internet, that person is unlikely to understand or believe that the site revealed by the search result is connected to Intellectual Reserve. Secondly, the nature of Mr Sintes’ service is very different from the type of service with which Intellectual Reserve is usually linked. Finally, as Winkelmann J also says, the fact that the services are accessed through the Internet means that the enquirer will exercise some care in looking for points of difference between the sites and the services. Intellectual Reserve’s site is clearly linked to the Church whereas Mr Sintes’ site is linked to him as Director. Accordingly, I agree that the use of the mark by Mr Sintes will not be taken as indicating a connection in the course of trade with Intellectual Reserve.
ARNOLD J
[86] Having had the opportunity to consider Baragwanath J’s judgment in draft, I agree with the conclusions he has reached. In particular, I agree that Mr Sintes’ mark meets the distinctiveness requirement in s 18(1)(b) of the Trademarks Act 2002, for the reasons that he gives. I also agree that there should be a disclaimer (see Baragwanath J’s judgment at [57] above).
[87] In relation to s 17(1)(a) and s 25(1)(b) (deception or confusion) and s 25(1)(c) (connection in the course of trade that is likely to prejudice), I agree that they do not operate to prohibit registration of Mr Sintes’ mark, for the reasons given by Winkelmann J.
[88] Accordingly, I too would dismiss the appeal.
[89] Finally, in terms of s 17 and the test for confusion set out by Richardson J in Pioneer at 61-62, I agree with Winkelmann J that in this case it follows from the conclusions on s 25 that there is no risk of confusion.
[90] For these reasons, I would dismiss the appeal.
Solicitors:
Simpson Grierson, Auckland for Appellant
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