Siasi Uesiliana Tau'Ataina 'O Tonga 'I Nu' Usila Trust Board v Free Wesleyan Church of Tonga in New Zealand Trust Board
[2024] NZHC 1725
•27 June 2024
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE
CIV-2023-485-419
[2024] NZHC 1725
UNDER the Trade Marks Act 2002 IN THE MATTER
of an appeal from the decision of the Assistant Commissioner of Trade Marks in [2023] NZIPOTM 28, dated 30 June 2023
BETWEEN
SIASI UESILIANA TAU’ATAINA ‘O TONGA ‘I NU’USILA TRUST BOARD
Appellant
AND
FREE WESLEYAN CHURCH OF TONGA IN NEW ZEALAND TRUST BOARD
Respondent
Hearing: 26 February 2024 Counsel:
B Cain for Appellant
T C Waikato, L Tuffery-Huria for Respondent
Judgment:
27 June 2024
JUDGMENT OF ISAC J
[Appeal against decision of Assistant Commissioner of Trade Marks]
Introduction
[1] This case concerns a trade mark dispute between two churches with identical names in different languages.
[2] On 28 August 2013, the appellant, the Siasi Uesiliana Tau’Ataina ‘O Tonga ‘I Nu’ Usila Trust Board, registered the following trade mark in the Tongan language:
Siasi Uesiliana Tau’Ataina ‘O Tonga ‘I Nu’ Usila
SIASI UESILIANA TAU’ATAINA ‘O TONGA ‘I NU’USILA TRUST BOARD v FREE WESLEYAN CHURCH OF TONGA IN NZ TRUST BOARD [2024] NZHC 1725 [27 June 2024]
[3] Translated into English the appellant’s mark is “the Free Wesleyan Church of Tonga in New Zealand”.
[4] The respondent is the Free Wesleyan Church of Tonga in New Zealand Trust Board. It challenged the validity of the appellant’s registration of the trade mark. In a decision of 30 June 2023, Assistant Commissioner Alley of the Intellectual Property Office of New Zealand found in favour of the respondent. She considered the appellant’s use of the mark would be “likely to deceive or cause confusion” in terms of s 17(1)(a) of the Trade Marks Act 2002. She also found that the appellant had failed to establish “ownership”—or use—of its mark prior to registration in August 2013.
[5] The appellant now challenges both of the Assistant Commissioner’s findings. The two issues I must determine are:
(a)First, whether the Assistant Commissioner was wrong to find use of the appellant’s trade mark would be likely to deceive or cause confusion. That question requires consideration of whether the respondent needed to establish on the evidence a “reputation” based on the disputed mark (arising from its continuing use) and, if so, whether use of the mark would result in confusion for a significant proportion of the population.
(b)Second, whether, as the appellant argues, the Assistant Commissioner was wrong to conclude it did not own the trade mark prior to registration. This question turns on whether the evidence establishes that the respondent abandoned or ceased using the mark prior to its registration by the appellant.
[6] As will become evident, there are five relevant marks in this case. For ease of reference, I will use the following shorthand to refer to them:
(a)The first mark is “Siasi Uesiliana Tau’Ataina ‘O Tonga ‘I Nu’ Usila”, which I will refer to as the “Tongan language mark”. This is the registered trade mark which is the focus of the appeal.
(b)The second mark is “The Free Wesleyan Church of Tongia in New Zealand”, which I will refer to as the “English language mark”. This is the registered name of the respondent.
(c)The third mark is “Siasi Uesiliana Tau’Ataina ‘O Tonga”, which I will refer to as the “shortened Tongan language mark”. I was told this is a registered trade mark in New Zealand owned by the head Church in Tonga and used by the respondent in this country.1
(d)The fourth mark is “The Free Wesleyan Church of Tonga”, which I will refer to as the “shortened English language mark”;
(e)The final mark is “Siasi Uesiliana Tau’Ataina ‘O Tonga/Vahefonua Nu’u Sila which I will refer to as the “modified Tongan language mark”.
Background
[7] The Free Wesleyan Church of Tonga was formed in 1924 and is the largest Methodist denomination in that country. Branches of the founding church operate in other countries, and it is common for branches to adopt the name of the founding church together with the name of the country where they are based. By way of example, the Australian branch of the Church is called “Siasi Uesiliana Tau’ataina ‘O Tonga ‘I Aositelelia”.
[8] In 1984, Siasi Uesiliana Tau’ataina ‘O Tonga ‘I Nu’usila was established to follow the practices of the founding Church for members in this country. The English translation of Siasi Uesiliana Tau’ataina ‘O Tonga ‘I Nu’usila is, literally, the Free Wesleyan Church of Tonga in New Zealand.2
1 While counsel made submissions on the mark during the hearing, it did not form part of the case on appeal.
2 The word “Siasi” means “Church”; “Uesiliana” means “Wesleyan; “Tau’ataina” means “Free; “‘O” means “Of”; “Tonga” means “Tonga”; “‘I” means “in”; finally, “Nu’usila” means “New Zealand”.
[9] As it is relevant to the issues on appeal, it is also helpful to understand some of the official history of the names used by the respondent.
[10] As a result of mistake, on 29 November 1985, two charitable trusts were incorporated under the Charitable Trusts Act 1957 for the respondent. The first certificate of incorporation appears to be the original name used by the respondent and is recorded as “Siasi Uesiliana Tauataina O Tonga Trust Board”, being the shortened Tongan language mark. The certificate goes on to record the respondent changed its name to Siasi Uesiliana Tauataina O Tonga I Nu’usila—being the Tongan language mark— on 8 April 1991. The certificate then records the Trust was dissolved on 22 May 2013.
[11] The second certificate of incorporation, also dated 29 November 1985, relates to a Trust Board with the name Siasi Uesiliana Tauataina O Tonga, again being a variant of the shortened Tongan language mark. The relevant certificate indicates the Trust changed its name again on 8 April 1991 to the shortened Tongan language mark, namely Siasi Uesiliana Tauataina 'O Tonga I Nu’usila, before finally changing its name to the English language mark—the Free Wesleyan Church of Tonga in New Zealand—on 6 September 1994.
[12] A letter from the respondent’s solicitors to the Registrar of Incorporated Societies of 20 May 2013 explains the background and possible cause of the apparent existence of two trusts. The correspondence notes there was always only one Church and Trust Board. However, a decision was made to change the name of the respondent from the Tongan language into English, reflected in an amended Trust Deed lodged with the Registrar on 6 September 1994. The solicitors for the respondent suggested the Registrar might wish to dissolve the “defunct” Trust Board (in the name of Siasi Uesiliana Tauataina O Tonga I Nu’usila), or merge the files as they were “in essence the same Church”.
[13] A letter from the Registrar’s solicitor in response confirmed that the Registrar had combined the entries for the two files:3
3 Italics in the original.
I refer to your letter of 20 May. After examining the registered documents for [the Free Wesleyan Church of Tonga in New Zealand Trust] Board and for the Siasi Uesiliana Tauataina 'O Tonga I Nuu Sila Trust Board, I advised the Registrar of Incorporated Societies to combine the two entries. I enclose an extract from the register.
This shows the incorporation of the Board in 1985, its name change to insert I Nuu Sila in 1991 — now described as an amendment of trust deed rather than an alteration of rules, an amendment in 1991, the restatement in the new name in 1994 and an amendment in 2011.
I found that there were spelling differences in the Tongan versions of the names. The names listed under Previous Names follow the spelling in the Amendment of 8 April 1991 that recorded the change from the original name.
The Board will thus continue as the Free Wesley Church of Tonga in New Zealand Trust Board without the implication that two Boards co-existed.
[14] In summary, the records of the Registrar of Incorporated Societies point to the following timeline:4
(a)In 1985, the respondent had two certificates of incorporation issued using both the shortened English and Tongan marks.
(b)In 1991, both the English and Tongan language names for both Trusts were changed, respectively, from the shortened language marks to the “complete” English and Tongan language marks. That is, both the names used from 1991 added a reference to “in New Zealand” to the registered names.
(c)In 1991, both certificates record that the Tongan language mark was adopted by the respondent.
(d)In 1994, consistent with the evidence of the respondent, it chose to change its name on official documentation from Tongan to the English language. This change was made because conducting business in New Zealand was difficult using the respondent’s Tongan name, including the use of a seal, which was customary at the time.
4 This is simply a summary of the position revealed by the charitable trusts’ register. There is other evidence of use of the various marks provided by the parties.
(e)Despite this, until 2013, the respondent continued to hold a second certificate of incorporation with its name recorded as the complete Tongan language mark.
[15] The decision in 2013 to change the official name of the respondent from Tongan to English was confirmed by the respondent in a rule change effected in November of that year. This and other issues caused a schism within the New Zealand congregation. One of the appellant’s principals, Mr Haniteli Tonga, as well as others, were concerned by the language change and what they say in evidence was the “removal” of the respondent’s “second” Trust from the Register.
[16] Mr Tonga and his colleagues considered the Tongan name could be used by unrelated parties, and in July 2013—a month after the respondent’s two registered trust files were merged they decided to “reserve” the name by registering a new charitable trust under the name “Siasi Uesiliana Tauataina 'O Tonga 'I Nu'usila”. In other words, Mr Tonga incorporated a new charitable Trust using the same name as the respondent (in Tongan), for what was an otherwise unrelated and separate entity. Mr Tonga deposed this was done for the benefit of the respondent, and that at the time he and his colleagues had “no intention of starting a new church”. Then, in August 2013, he applied to register the mark which is now in issue to “protect it from third parties”.
[17] When these steps came to light at a meeting of the respondent in September 2013, Mr Tonga and a like-minded colleague were excommunicated. By May 2016, they had started a new church using the Tongan language mark. It seems that since that time the appellant and respondent have operated using the same name, albeit in different languages and in different locations in New Zealand.
[18] Finally, there does not appear to be any real doubt that a significant proportion of the members of the respondent’s congregation speak Tongan as well as English.
The Assistant Commissioner’s decision
[19] Before the Assistant Commissioner, the appellant relied on five grounds of invalidity. They were that use of the mark:
(a)was likely to deceive or confuse;5
(b)was contrary to ss 9 and/or 13(e) or (f) of the Fair Trading Act 1986;6
(c)constituted passing off;7
(d)the application to register the mark was made in bad faith;8 and
(e)the mark was filed without a valid claim to ownership.9
[20] The proceeding was determined on the first ground. The Assistant Commissioner found the respondent had established reputation in the English and shortened Tongan language marks. Use of the appellant’s registered mark would therefore be likely to cause confusion, meaning the registration was contrary to s 17(1)(a) of the Act and invalid.10 Her assessment had three limbs.
[21] First, the Assistant Commissioner considered whether, on the evidence, there was awareness of the marks relied on by the respondent. There was insufficient evidence to establish that the respondent had reputation in the Tongan language mark at the relevant date. However, there was evidence of the use of the shortened Tongan language mark by the respondent, and the modified Tongan mark, “Siasi Uesiliana Tau’Ataina ‘O Tonga/Vahefonua Nu’u Sila”.11 Given the invalidity application had not specifically pleaded reputation in the modified Tongan mark, it could not be relied on by the respondent. However, although it was not pleaded, reputation in the shortened
5 Trade Marks Act 2002, s 17(1)(a).
6 Section 17(1)(b).
7 Section 17(1)(b).
8 Section 17(2).
9 Section 32(1).
10 Under the Trade Marks Act s 73(1), the Commissioner may declare a trade mark registration invalid to the extent the trade mark was not registrable under Part 2 of the Act at the fate the application was filed.
11 The English translation of Vahefouna is “district”.
Tongan language mark could be relied on. This was because this mark was “almost the same” as the one referred to in the invalidity application and was only missing the “‘I Nu’usila” part at the end of the mark”.12
[22] Second, turning to the likelihood of deception or confusion, the Assistant Commissioner found that, while the English language mark was not visually or aurally similar to the appellant’s registered trade mark, the ideas of the marks were essentially identical given the former is the English translation of the latter.13 The shortened Tongan mark looked and sounded “clearly similar” and the additional words “I’
Nu’usila” were likely to be disregarded by “prospective purchasers”.14
[23] Third, the Assistant Commissioner assessed whether the appellant’s use of the trade mark was likely to cause confusion. Here, she considered that a significant surrounding circumstance was the use of the Tongan language by those likely to use the relevant goods and services, in a country where the primary language is English. Thus, the identical ideas conveyed by the marks are likely to be understood by the relevant audience.15 With this conclusion, the first ground of invalidity was made out.
[24] The Assistant Commissioner did not need to determine the remaining invalidity grounds. However, she considered the respondent’s ownership ground of invalidity was strong and deserved brief discussion. The relevant assessment turned on whether there was any prior use of the trade mark by the respondent or prior assertion of proprietorship. This is because a person cannot claim to be the owner of a trade mark if another person has previously used that mark.16
[25] The evidence showed that not only was the respondent the first user of the Tongan language mark in New Zealand, it had continued to use that mark through to the date the trade mark was registered by the appellant.17 It followed that the respondent had not abandoned the mark under challenge. Had it been necessary, the
12 Siasi Uesiliana Tau’Ataina ‘O Tonga ‘I Nu’usila Trust Board v Free Wesleyan Church of Tonga in New Zealand Trust Board [2023] NZIPOTM 28 at [73] [IPONZ decision].
13 At [86].
14 At [87].
15 At [95].
16 At [102], citing The North Face Apparel Corporation v Sanyang Industry Company Limited
[2014] NZCA 398 at [20].
17 At [116].
Assistant Commissioner would have found the ownership ground of invalidity was also made out.
Trade Marks in New Zealand and the approach to appeals
[26] Only registered trade marks receive protection in New Zealand. The process of registration is governed by the Trade Marks Act.
[27] Under s 32(1), a person “claiming to be the owner of a trade mark” may apply for the registration of their mark in respect of particular classes of goods or services.18 Once an application is made, the Commissioner of Trade Marks must examine the application to determine whether it complies with the requirements of the Act and, if satisfied that it does, the application must be accepted for registration.19
[28] Part two of the Act sets out the requirements for registrability of which the Commissioner must be satisfied. Most relevant to these proceedings is s 17(1)(a), which provides that the Commissioner must not register as a trade mark “any matter, the use of which, is likely to deceive or cause confusion.” Trade marks that have achieved registration may be removed from the register when an aggrieved person applies for a declaration that a trade mark is invalid under s 73, which provides:
73 Invalidity of registration of trade mark
(1)The Commissioner or the court may, on the application of an aggrieved person (which includes a person who is culturally aggrieved), declare that the registration of a trade mark is invalid to the extent that the trade mark was not registrable under Part 2 at the deemed date of its registration.
(2)Despite subsection (1), the registration of a trade mark that has acquired a distinctive character after its registration must not be declared invalid even though the trade mark was not registrable under section 18(1)(b), (c), or (d) at the deemed date of its registration.
18 According to s 34, if different people apply for the registration of trade marks that are identical or similar to each other and that are in respect of identical or similar goods or services, the first application received by the Commissioner has priority. In the present case, the classes of goods and services are 16 and 45. Class 16 is paper, cardboard and goods made from these materials; printed matter; photographs; stationery; artists materials; office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes). Class 45 is personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
19 Section 41.
(3)The Commissioner or the court, as the case may be, may refuse any application for a declaration of invalidity that is vexatious.
[29] Where an application under s 73 is successful, the impugned trade mark is to be treated as if it had not been registered and the Commissioner is to alter the register accordingly.
[30] Where invalidity of an already registered mark is claimed, the overall legal onus is on the applicant for invalidity. They must establish the impugned mark did not qualify for registration at the time the application was filed on the balance of probabilities.20
[31] Section 173(1) of the Act provides that in determining an appeal from the Commissioner of Trade Marks, the Court may confirm, modify or reverse the Commissioner’s decision or any part of it. An appeal is by way of rehearing.21 The appellant bears the onus of satisfying the Court that it should differ from the decision under appeal. However, the Court has the responsibility of arriving at its own assessment of the merits of the case. The weight it gives to the Commissioner’s decision is a matter for judgment.22
The appeal
[32] The appellant’s notice of appeal identified 13 grounds of appeal. In written submissions those grounds were marshalled into three broad points:
(a)First, evidential challenges. It was said the Assistant Commissioner relied on unsubstantiated assertion and uncorroborated statements made by the respondent’s principal witness, Pastor Feki, about the respondent’s continuing use of the Tongan language mark after 1994.
20 Fredco Trading Ltd v Miller (2006) TCLR 751 at [46].
21 High Court Rules 2016, r 20.18.
22 Target Australia Pty Limited v Target New Zealand Limited [2019] NZHC 923 at [18] citing Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [3]–[5] and [13]–[16].
(b)Second, the Assistant Commissioner’s finding that the appellant’s registered trade mark was likely to deceive or cause confusion was wrong.
(c)Third, the Assistant Commissioner was wrong to conclude on the evidence that the respondent had made out continuing public use of the Tongan language mark prior to the appellant’s registration of the mark, and that the evidence established its abandonment by the respondent in 1994, when it changed its registered name.
[33] While the appellant maintained its criticisms of the respondent’s pleadings and evidence at the hearing of the appeal, these arguments were advanced in support of the second and third points above. It follows that this judgment addresses evidential and pleadings points within the two critical issues in the case, namely:
(a)Whether the Assistant Commissioner was correct to find that the appellant’s trade mark was likely to deceive or cause confusion, (under s 17(1)(a) of the Act); and
(b)Whether the Assistant Commissioner was correct to find that the appellant had not established ownership of the trade mark before registration (under s 32 of the Act).
Was the Assistant Commissioner correct to find the appellant’s trade mark is likely to deceive or cause confusion?
The case for the appellant
[34] The appellant challenges the Assistant Commissioner’s determination that the mark would be likely to deceive or cause confusion on several grounds.
[35] First, a pleadings point is raised. Before the Assistant Commissioner, the respondent first had to establish a reputation in a relevant (and competing) mark in
New Zealand at the date of registration.23 This step is necessary because an assessment of the likelihood of deception or confusion can only be made where an objector has established a reputation from a competing mark’s use.
[36] It is said the respondent had pleaded that it had a public reputation in two marks: both the Tongan and English language marks. However, the Assistant Commissioner had found that the respondent’s evidence established a reputation in and awareness of the English language mark only, but there was “insufficient evidence…to establish that [the Tongan language mark] in its entirety had the necessary awareness in New Zealand at the relevant date”.24 These findings were not challenged by either party on appeal. In addition, it is also clear from the respondent’s pleadings that it did not claim to trade under or have reputation in marks addressed in its evidence, namely the shortened Tongan language mark, and the modified Tongan language mark. Given the absence of pleadings to match the evidence, the respondent could not seek to rely on either of these marks. And, in any case, the Assistant Commissioner had declined the respondent’s application at the hearing to amend the pleading to include the modified Tongan language mark.25 Despite the lack of pleading, however, the Assistant Commissioner had relied on the shortened Tongan language mark in her invalidity decision on this ground.
[37] According to the appellant, the shortened Tongan language mark is in fact registered and owned by a third party, namely the “head Church” in Tonga. It is only the head Church which could have a reputation in the mark capable of protection in New Zealand, but it is not a party to the proceeding. Mr Cain drew my attention to a series of authorities, including the Supreme Court’s decision in Henkel KGAA v Holdfast New Zealand Ltd, which held that established principles of intellectual property law require a party to identify and lead evidence of the rights they rely on.26
23 Sexwax Incorporated v Zoggs International Ltd [2014] NZCA 311, [2015] 2 NZLR 1 at [48], where the Court of Appeal set out the approach to s 17(1)(a).
24 IPONZ decision, above n 12, at [63].
25 At [65].
26 Judare Investments Limited v Johnny Appleseed Holdings Limited [2018] NZIPOTM 2 at [35]– [39]; Dr August Wolff Gmbh & Co Arzneimittel v Combe International Limited [2018] NZIPOTM 10 at [16] and footnote 2; and Henkel KGAA v Holdfast New Zealand Ltd [2007] 1 NZLR 577; [2006] NZSC 103.
The appellant submitted the respondent could only be a licensee of the shortened Tongan mark, but it had not pleaded this derivative interest either.
[38] Second, since 1994, the only evidence to support use of the shortened Tongan language mark is survey evidence submitted by the respondent in reply. The Assistant Commissioner held this evidence was inadmissible, and it could not be considered on appeal, given the introduction of the evidence by way of reply amounted to a breach of natural justice.
[39] Turning to the real issue—the likelihood of deception or confusion between the Tongan and English language marks—the appellant accepted the Assistant Commissioner’s findings that there was a lack of visual and aural similarity but a significant conceptual similarity, given the marks are direct translations of one another. However, the appellant submitted that conceptual similarity had been overemphasised in the Assistant Commissioner’s assessment, relying on Platinum Homes (NZ) Ltd v Golden Homes (1998) Ltd. There, the High Court found the Commissioner had “paid too much attention to the idea of the mark, and too little to the distinct differences in look and sound” in denying registration of the mark “Platinum Homes” in the face of registrations for “Golden Homes”.27
[40] The appellant further submits that, in the 11 years since the trade mark was registered, the respondent had been unable to produce any evidence of actual confusion among a relevant section of the public. This, the appellant contends, is consistent with the respondent’s lack of reputation in the Tongan mark, and a lack of confusion.
Consideration
[41] As the Assistant Commissioner found, an invalidity applicant need only establish that the awareness of its mark at the relevant date was sufficient to lead to the possibility that the owner’s goods or services in the trade mark registration would be identified with the invalidity applicant.28 The threshold is a relatively low one. It
27 Platinum Homes (NZ) Ltd v Golden Homes (1998) Ltd HC Wellington, CIV-2005-485-1870, [2006] NZHC 1670.
28 Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 62.
requires only awareness, cognisance or knowledge of the relevant mark.29 The reputation need not be widespread,30 or substantial.31 Importantly, the reason the courts have adopted a low threshold of market awareness is the consumer protection focus of s 17(1)(a).32
[42] I am clearly satisfied that not only was the conclusion reached by the Assistant Commissioner on the risk of confusion open to her on the evidence and pleadings, it was also the correct decision.
[43] The issue the Assistant Commissioner had to determine under this ground of invalidity was whether the Tongan and English language marks were sufficiently similar to make it likely the appellant’s use of the Tongan language mark would be likely to deceive or cause confusion.
[44] That assessment in turn relies on a comparison of the two relevant marks and involves an evaluative exercise using inferences. The primary evidence is the marks themselves. Given the relevant section of the market likely to be affected are bilingual Tongan and English speakers, and given the meaning—or idea—conveyed by the two marks is not only similar but identical, the conclusion reached by the Assistant Commissioner was inevitable.
[45] The appellant does not doubt the respondent had a well-established reputation in New Zealand at the relevant date under the English language mark. The unique feature of the present case is that the Tongan and English language marks are the same. The only difference is the language in which they appear. This is not a new problem.
29 NV Sumatra Tobacco Trading Co v British American Tobacco (Brands) Incorporated [2010] NZCA 24, (2010) 86 IPR 206 (CA) at [77]; Pioneer Hi-Bred, above n 28 at 63.
30 Sexwax Incorporated v Zoggs International Ltd, above n 23, at [48].
31 NV Sumatra Tobacco Trading, above n 29, at [78].
32 NV Sumatra Tobacco Trading, above n 29, at [78], and see the equivalent to s 17(1)(a) of the Act, previously s 16 of the Trade Marks Act 1953.
Other jurisdictions have recognised that within a multilingual market, trade marks can and should have an exclusionary effect in other common languages within the market.33
[46] Two conclusions follow. First, the reliance of the appellant on Platinum Homes (NZ) Ltd v Golden Homes (1998) Ltd to support its contention about the risk of overemphasising the idea of a mark overlooks that in that case the relevant marks were both in the same language and involved obvious visual and aural differences.
[47] Second, and more fundamentally, the appellant’s criticisms of the respondent’s evidence and pleadings miss the mark. It was unnecessary for the respondent to establish a reputation in the Tongan language mark at the date of registration—even though the evidence in my view clearly established it. What was critical was an assessment of the English and Tongan language marks against the affected section of the market.34
[48] The fact that there may be no evidence of actual confusion may indicate only that the parties’ own members are sufficiently well informed to avoid the risk of confusion. That does not mean there is no risk of confusion, or that evidence of actual confusion or deception is the appropriate test. The question is not only the present members, but potential members, or persons overseas, who might be confused.
33 In the United States, under the doctrine of foreign equivalents, foreign-language words in trademarks may be translated into English to answer one of two questions: “(1) would consumers understand the English translation to be distinctive for the goods or services at issue; and (2) would the English translation make it likely that consumers would be confused about the source of those goods or services?”. When applied to assessing confusion, an equivalent meaning or connotation can outweigh differences in sound and look between the marks. See Anne Gilson LaLonde, “Far From Fluent: Making Sense of the Doctrine of Foreign Equivalents” The Law Journal of the International Trademark Association 112(5) (September-October 2022) 771.
The issue of whether a trade mark and its foreign language equivalents are confusingly similar has also been considered in the European Union, see for example Case 131/1999 Jesus Perez Urzay v Cana Foods Inc. (OHIM, Oppositional Division, 24 March 1999); Case: 3111/2000 Servicios y Distribuciones Discograficos S.A. (Serdiscos) v Mr. Freiherr Wolf-Manfred Von Richtofen and ors (OHIM Oppositional Division, 21 December 2000).
34 If the appellant’s argument were correct, the respondent would be required to establish a reputation from use of the respondent’s Tongan language mark, and its own use of the same name in the English language would be irrelevant.
[49] Finally, the submission that the evidence provided by the respondent that its members continue to use both the Tongan and English name for the Church interchangeably is either “hearsay” or insubstantial, also lacks an air of reality. As I have noted, the target audience or market of consumers are likely to be fluent in English and Tongan. Given those persons will inevitably recognise the name as a direct translation of the other, it seems to me that anyone who did not have pre-existing knowledge of the intricate factual background of the parties would inevitably conclude that the two bodies and the services they provide, are one and the same.
[50]For these reasons, the first ground of appeal must be dismissed.
Was the Assistant Commissioner correct to find the appellant had not established ownership of the trade mark before registration?
The case for the appellant
[51] While accepting that the respondent had used and continues to use the English language mark, Mr Cain submitted the evidence before the Assistant Commissioner established a clear inference that it had abandoned the use of the Tongan language mark as long ago as 1994. It follows that after 19 years of abandonment, there could be no basis on which the Assistant Commissioner could make a finding that the respondent had ownership of the mark.35
[52] The principle factual allegation on which this contention rests is that in 1994 the respondent changed its registered name to the English language mark, and, in doing so, had abandoned any use of the Tongan language mark.
[53] Mr Cain also submitted that evidence of members of the congregation continuing to use the Tongan language mark is insubstantial and amounts to no more than assertion without particulars or substance on which the Assistant Commissioner could base her decision. Similarly, survey evidence provided in support of Pastor Feki’s claim of continuous use was not strictly in reply and is hearsay.
35 IPONZ Decision, above n 12, at [101]. The Assistant Commissioner found that, in accordance with the pleading in the invalidity application, the only requirement of the ownership assessment which is relevant in this case is that there is no prior use or prior assertion of proprietorship.
Consideration
[54] I consider the Assistant Commissioner’s conclusion on this ground was clearly correct. As the Assistant Commissioner found, the mere change in the respondent’s registered name under the Charitable Trusts Act, for understandable business reasons, does not amount to an intentional abandonment of the Tongan language mark. A trade mark acts as a badge of origin that connects goods and services with the trade mark owner. It is not necessarily the same as the registered name of a charity or company using the relevant mark.
[55] I am also satisfied that Pastor Feki’s evidence establishes the applicant never intended the amendment of its registered name on 6 September 1994 to amount to an abandonment of its name in the Tongan language. The evidence suggests that mistakenly two trusts were registered with identical names but representing the same charitable trust. When the irregularity was brought to the attention of the respondent, it took steps to ensure that there was one “legal” name published on the Charitable Trust’s register. That does not amount to evidence of an intention to abandon its name in the Tongan language in respect of the provision of religious services, goods and products to members, or prospective members. And, as the Assistant Commissioner found, in the context of an ownership issue such as this, the threshold for establishing use is low, even lower than the threshold for establishing awareness under s 17(1)(a), “so that a single use may be sufficient”. 36
[56] The evidence also demonstrates that not only was the applicant the first user of the Tongan language mark in New Zealand, but that it had continued to use that mark through to the relevant date. Accordingly, the appellant did not have a legitimate claim of ownership of the mark, and the Assistant Commissioner’s conclusion that invalidity was made out is supported on a second ground.
[57] Finally, I note Mr Cain’s submission that, despite finding that the modified Tongan mark was not pleaded by the respondent and therefore could not be relied upon
36 Siasi Uesiliana Tau’Ataina ‘O Tonga ‘I Nu’usila Trust Board v Free Wesleyan Church of Tonga in New Zealand Trust Board [2023] NZIPOTM 28, above n 2, at [112].
in the first ground of invalidity, the Assistant Commissioner relied on the mark in relation to the second, ownership, ground of invalidity. 37
[58] I agree the Assistant Commissioner’s approach to the modified Tongan language mark does not appear to be entirely consistent between the first and second grounds of invalidity. However, given the Assistant Commissioner’s findings in relation to reputation and use of the English language mark, and my view of the inevitability of confusion between the two language marks, the criticism of the Assistant Commissioner’s approach to the modified Tongan language mark cannot affect the outcome of the appeal.
Conclusion and orders
[59] For the foregoing reasons, I am satisfied that the decision of the Assistant Commissioner was correct and the appeal must be dismissed.
[60] I would grant scale costs on a 2B basis to the respondent and certify for second counsel. The parties are encouraged to resolve costs by consent. Should they be unable to do so, they may file brief memoranda. However, this comes with a warning: I am likely to order costs on the determination of costs against the unsuccessful party.
Isac J
Solicitors:
James & Wells, Hamilton for Appellant Kāhui Legal, Wellington for Respondent
37 At [111].
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