Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd

The case of Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd was heard in the High Court of Australia. The dispute involved the registration of the trade mark "Knauf Batts" for insulation products and the contention by Tasman Insulation that the term "batt" had become generic and thus, the trade mark should be revoked under section 66(1)(c) of the Trade Marks Act 1995 (Cth). The primary issue for the court was to determine the scope of the term "in general public use" as it appears in section 66(1)(c) of the Trade Marks Act. The court needed to interpret whether this term includes the general public, trade professionals, or both, and to what extent the term "batt" had become generic in the context of insulation products.

The court addressed the issue by examining the legislative history and international jurisprudence, particularly the interpretation of similar provisions in the United Kingdom and Singapore. It was noted that the relevant sections in both jurisdictions, as well as the European Trade Mark Directive, have been interpreted to include a broad range of stakeholders in determining whether a trade mark has become generic. The court considered that the views of consumers and end users are often decisive, but the influence of trade intermediaries and their perceptions also play a significant role, depending on the specific market characteristics. The court acknowledged that in markets where trade professionals are involved in the purchasing process, their views can be more critical. The decision in Björnekulla Fruktindustrier AB v Procordia Food AB by the Court of Justice of the European Union was referenced, which emphasised that the perception of consumers or end users plays a decisive role, but the influence of intermediaries must also be considered.

In conclusion, the court held that the term "in general public use" includes both the trade and the general public, and that the use of the term "batt" by various sectors, including trade professionals, the news media, and academic bodies, was relevant in determining whether the term had become generic. The court found that the term "batt" had indeed become generic in the context of insulation products, leading to the revocation of the trade mark "Knauf Batts". The decision underscored the importance of considering a wide range of stakeholders and contexts in assessing the generic nature of trade marks.