Tasman Insulation New Zealand Limited v Knauf Insulation Limited
[2014] NZHC 1399
•20 June 2014
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
CIV-2011-404-8141 [2014] NZHC 1399
UNDER The Trade Marks Act 2002 IN THE MATTER OF
Infringement of New Zealand trade mark registration number 105507
BETWEEN
TASMAN INSULATION NEW ZEALAND LIMITED
Plaintiff
AND
KNAUF INSULATION LIMITED First Defendant
AND
ECO INSULATION LIMITED Second Defendant
AND
BUILDFORNEXTGEN LIMITED Third Defendant
Hearing: 19 June 2014 Counsel:
J G Miles QC and K W McLeod for the Plaintiff
C L Elliott QC and I Finch for the DefendantsJudgment:
20 June 2014
JUDGMENT (NO 2) OF BROWN J
This judgment was delivered by me on 20 June 2014 at 4 pm, pursuant to r 11.5 of the High Court Rules
Registrar/Deputy Registrar
Solicitors: A J Park, Auckland
James & Wells Solicitors, Auckland
Counsel: J G Miles QC, Auckland
C L Elliott QC, Auckland
TASMAN INSULATION NZ LTD v KNAUF INSULATION LTD [2014] NZHC 1399 [20 June 2014]
[1] The orders made in my judgment dated 9 May 20141 included the following:
(2) An injunction restraining the defendants from using the name or the brand EARTHWOOL® except where that name or brand is printed immediately alongside the words “glasswool” or “glass insulation” in the same font and print size.
[2] It was particularly with that order in mind that I reserved leave to the parties to apply for revised forms of orders.
[3] Pursuant to that leave the defendants invite me to consider two points of revision to that order. The first amendment, which is not opposed by the plaintiff, is that the words “is printed” should be replaced by the word “appears”. That change is intended to cover renditions of the trade mark which are not necessarily in traditional printed form, for example when the brand appears visibly on websites or in television commercials.
[4] The second amendment sought concerns the phrase “immediately alongside”. The defendants seek to have those words replaced by the phrase “immediately proximate to”. Their reason for doing so is to provide a greater degree of flexibility as to the location of the words “glasswool” or “glass insulation” relative to the brand EARTHWOOL, for example above or below the brand name as compared with appearing “alongside” the brand name, which, it is assumed, means located on the same line.
[5] In particular the defendants wish to be able to print the word “glasswool” beneath both the EARTHWOOL brand and the tagline “the feel good glasswool insulation”.
[6] In the event that Tasman considered that the location of the word “glass wool” beneath the tagline would not constitute compliance with the phrase “immediately approximate to”, the defendants proposed as a back-up a still further
variation of order in the following terms:
1 Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd [2014] NZHC 960.
An injunction restraining the Defendants from using the name or the brand EARTHWOOL except where that name or brand [appears] immediately proximate to the words “glasswool” or “glass insulation” in the same font and print size and/or in any other manner which gives equal prominence to the EARTHWOOL brand and “glasswool” or “glass insulation” descriptor.
[7] Tasman opposed any departure from the “immediately alongside” formula of order. Mr Miles QC reminded me of the reasons in paragraph [322] of my judgment for the form of order (2):
[322] In my view the use of the trade mark EARTHWOOL® should not be objectionable if contemporaneously it is made abundantly clear to consumers what the composition of the product is such that the ambiguity inherent in the word is avoided. Consequently the form of order which I consider appropriate in this case is a prohibition on the use of the EARTHWOOL® name or brand except where the word is used in the manner of an adjective in association with a word or words identifying that composition of the product as glass or glasswool, namely:
(a) EARTHWOOL® glasswool; or
(b) EARTHWOOL® glass insulation.
[8] He maintained that it was necessary to retain the “alongside” reference in order to achieve the objective whereby EARTHWOOL was used “in the manner of an adjective” in relation to the words identifying the composition of the product. On this issue reliance was placed on the evidence of Ms Alison Roberts, Tasman’s marketing manager:
There is a difference from a perception point of view to the use of the relevant descriptor appearing alongside the EarthWool brand as opposed to immediately above or beneath the brand. Having the brand and descriptor alongside each other makes a connection between the brand and the descriptor and is the natural way the brand and descriptor would be viewed and “pronounced” by the consumer. Putting the description above or below the brand is different from a marketing/branding sense and disconnects the brand from the descriptor. Similarly, putting Knauf’s new commercial tagline between the EarthWool brand and the relevant descriptor separates the brand from the descriptor and means the descriptor may not always be associated with the EarthWool brand.
[9] As the argument developed, attention was also drawn to the television advertisement which has recently been broadcast for the defendants’ product. At counsel’s invitation I viewed both the original advertisement and a new version which the defendants have in contemplation. Viewing these advertisements led to a consideration of issues concerning whether the brand name and the words “glass
wool” were visible for the same period of time and the volume at which any oral use of the words was broadcast.
[10] After the lunch adjournment Mr Miles tendered a new formula of order designed to address separately the different instances of usage:
An injunction restraining the Defendants from using the name or the brand
EARTHWOOL except where the name or brand:
Appears alongside the words “glasswool” or “glass insulation” in the
same font and print size (if the use is in printed form);
Appears alongside the words “glasswool” or “glass insulation” in the
same font and print size (if the use is electronically displayed);
Immediately followed by the words “glasswool” or “glass insulation” said at the same volume (if the use is in audio form).
[11] As I noted at [303] the issue raised by the use of EARTHWOOL for insulation was a question of appropriate trade description, the concern being that members of the public could be led to believe that the product was something which it is not. The objective of any order responsive to that concern should be that members of the public are disabused of any erroneous assumption that they might
make on seeing the EARTHWOOL trade mark.2 I considered that that outcome was
likely to be achieved if, at the same time as the public was exposed to the EARTHWOOL name, they were also exposed to a description of the product in close association: hence my use in [322] of the phrase “in association with”.
[12] There are two components involved in achieving that state of association so as to ensure that the public is made aware of the true composition of the product. One is the requirement that the description be in the same size and font as the brand name. The second is the requirement for the degree of proximity of the description to the brand name. My intention was that the two components would work in combination.
[13] Provided that the descriptive words are in the same size and font as the brand, the requisite degree of association can be achieved where the descriptive words are
2 Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd [2014] NZHC 960 at [280].
sufficiently proximate to the brand, whether that location is beside, above or below the brand.
[14] I consider that any risk of erroneous assumption will be avoided when the descriptive words are immediately proximate, that is immediately alongside, immediately above or immediately below the brand name.
[15] However I also consider that the necessary association will be achieved where the tagline (which Mr Elliott QC assures me will contain the word “glasswool”) is positioned immediately below the trade mark EARTHWOOL and immediately above the word “glasswool”, that is where the tagline is sandwiched between the brand and the descriptive word. I am prepared to issue a revised form of order which allows for those variants.
[16] While one naturally wishes to avoid too prescriptive a form of order, it was apparent from the course of argument that in this case there are advantages in crafting a form of order which leaves the least possible room for interpretation or uncertainty as to what is required. Consequently I consider that there is merit in Mr Miles’ suggestion that the order should distinctly address the various contexts in which the EARTHWOOL name may be used.
[17] For those reasons the revised form of order (2) will be as follows:
(2)An injunction restraining the defendants from using the name or the brand EARTHWOOL except as follows:
(a) Where the use is in printed form on, for example, packaging or promotional material, the words “glasswool” or “glass insulation” are to appear immediately proximate to (beside, above or below) the name or brand in the same font and print size or immediately below the tagline when that tagline is printed immediately below the name or brand;
(b)Where the use is by display through electronic media, the words “glasswool” or “glass insulation” are to appear for the same duration immediately proximate to (beside, above or below) the name or brand in the same font and print size or immediately below the tagline when that tagline appears immediately below the name or brand; and
(c) Where the use is in audio form, the words “glasswool” or “glass insulation” are to be broadcase immediately following the name or brand and at not less than the same volume as the name or brand.
[18] I do not make any order for costs in respect of this matter.
Brown J
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