TomTom Communications Limited v TomTom International B.V

[2015] NZHC 3333

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2015-404-948 [2015] NZHC 3333

UNDER

the Trade Marks Act 2002

IN THE MATTER

of an appeal from the decision of the Assistant Commissioner of Trade Marks dated 27 March 2015

AND IN THE MATTER

of New Zealand Trade Mark Applications
Nos. 848087 and 848088

BETWEEN

TOMTOM COMMUNICATIONS LIMITED AND GAYLENE RUTH HOSKING

Appellants

AND

TOMTOM INTERNATIONAL B.V. Respondent

Hearing:	9 September 2015
Appearances:	E C Gray and K E Tidbury for the Appellants G C Williams and T C Kirk for the Respondent
Judgment:	18 December 2015

JUDGMENT OF WOODHOUSE J

This judgment was delivered by me on 18 December 2015 at 5:00 p.m. pursuant to r 11.5 of the High Court Rules 1985.

Registrar/Deputy Registrar

……………………………………

Solicitors/Counsel :

Mr E C Gray, Simpson Grierson, Solicitors, Auckland
Mr G C Williams, Barrister, Auckland

Mr M A Lowndes (respondent’s instructing solicitor), Lowndes, Solicitors, Auckland

TOMTOM COMMUNICATIONS LIMITED v TOMTOM INTERNATIONAL B.V. [2015] NZHC 3333 [18

December 2015]

Introduction

[1]      The  respondent  applied  to  register  two  trade  marks  –  “TOMTOM”  and

.    Full  particulars of  the applications  are in  appendix  1  to  this

judgment.

[2]      The application was opposed by the appellants.  The appellant Gaylene Ruth Hosking is the owner of the registered trade mark “TOM TOM”.  Full particulars of the registrations, in three classes, are contained in appendix 2.   The appellant company, TomTom Communications Ltd, uses the marks under licence from Ms Hosking.

[3]      The respondent’s applications were granted.1    The opponents have appealed against that decision.

Grounds of opposition

[4]      In their opposition the opponents relied on five provisions of the Trade Marks

Act 2002 (the Act). The opponents maintain these grounds on the appeal.

[5]      The grounds of opposition were conveniently summarised by the Assistant

Commissioner as follows:

Ground no.	Summary of the allegations	Act reference
1	Use  of  the  opposed  marks  would  be  likely  to deceive or cause confusion.	Section 17(1)(a)
2	Use of the opposed marks is contrary to New Zealand law because it would amount to passing off and breach of the Fair Trading Act 1986.	Section 17(1)(b)
3	The applications were made in bad faith.	Section 17(2)
4	The opposed marks are similar to the opponents’ trade marks, which are registered in respect of the same or similar goods, and use of the opposed marks is likely to deceive or confuse.	Section 25(1)(b)

1      TomTom International BV v TomTom Communications Ltd [2015] NZIPOTM 2 [IPO decision].

Ground no.	Summary of the allegations	Act reference
5	The  opposed  marks,  or  an  essential  element  of those marks, are identical to the opponents’ trade marks that are well known in New Zealand, and use of the opposed marks would be taken as indicating a connection in the course of trade between the applicant’s goods and the opponents, and would be likely to prejudice the interests of the opponents.	Section 25(1)(c)

Relevant date

[6]      The relevant date for determining whether the opposed marks  should be registered is 23 August 2011.

The nature of this appeal and the onus

[7]      This is a general appeal by way of rehearing.2    I am bound to come to my own  conclusion,  and  the  weight  to  be  given  to  the  Assistant  Commissioner’s decision, and her reasons for particular decisions, are matters for my judgment.3

[8]      On the appeal the onus is on the appellants to satisfy this Court that it should differ from the Assistant Commissioner’s decision.   But the general onus, on the merits, was and is on the respondent to establish that its applications are eligible for registration.

The appellants

[9]      Ms Hosking started trading under the name TomTom in 1998.  She made the three applications to register the trade mark Tom Tom on 12 May 1998.  The marks were registered on 9 March 2000.

[10]     TomTom Communications was incorporated in September 2001.  It has used the mark since then.  Ms Hosking is its sole director.  TomTom Communications is a

Wellington-based  communications  consultancy.    It  provides  a  range  of  services

2      Trade Marks Act 2002, s 173.

3      Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [3] and

[5].

including public relations, communications, marketing, promotion, brand development, website development and critique, media strategies, training, advertising, research and analysis, lobbying and reputation management services.

[11]     Further  particulars  are  outlined  later  when  discussing  the  application  of s 17(1)(a).

The respondent

[12]     Background  facts  relating  to  the  respondent  were  summarised  by  the

Assistant Commissioner as follows:

17.The applicant is a multinational company, with its head office in the Netherlands.  It has over 3600 employees in 35 countries, and it is the global leader in navigation and mapping products and services.

18.The  applicant  was  founded  in  1991  as  Palmtop  Software,  and changed its name to TomTom International B.V. in 2001.   It first applied to register TOMTOM as a trade mark in Benelux Registry on

27 January 2000. The mark is now registered all over the world.

19.Since  2004,  the  applicant  has  sold  over  70  million  portable navigation devices (PNDs), and it provides a real-time traffic information service in 36 countries.  Its maps cover 114 countries.

20.The  applicant  officially  launched  its  PNDs  in  New  Zealand  in September   2007.      The   New   Zealand   launch   comprised   the TOMTOM  ONE  (third  edition),  which  at  the  time  was  the applicant’s entry-level PND and the world’s top-selling PND, and also  the  applicant’s  larger  PND,  the  TOMTOM  ONE  XL.    In addition, the purchasers of these products were given access to TOMTOM HOME, a software application for managing content on any TOMTOM PND.

21.Since 2007, the range of goods and services sold in New Zealand has expanded beyond PNDs and now includes GPS-enabled sports watches,  real-time  traffic  information  services,  and  fleet management products and services.

[13]     Further   evidence  concerning  the   respondent’s   products,   activities   and reputation in New Zealand, which does not appear to have been contested in any material respect, and taken from submissions for the respondent, are as follows:

[The respondent] has received significant recognition for its products and services in the New Zealand media and publications that are available in New Zealand.  Its range of TOMTOM trade mark goods and services sold in New Zealand has expanded beyond the core PNDs and now includes GPS-

enabled sports watches, real-time traffic information services, and fleet management products and services.   Its products are distributed in New Zealand by Ingram Micro New Zealand, which company supplies them to Noel Leeming, Harvey Norman, Dick Smith, The Warehouse, and JB Hi-Fi. Its  products  are  also  advertised  for  sale  and  sold  from  websites  of independent retailers such as Mighty Ape, Fishpond and PriceMe.  It is one of the largest suppliers of PNDs in the New Zealand market with a 39.3% market share.  It has sold over 155,834 PNDs in New Zealand having a value of over NZ$38.7M.  It spent over NZ$5.97m on marketing its products and services in New Zealand in the period 2007 to 2013.   “Very significant” numbers of people with New Zealand IP addresses have visited the respondent’s website.4    The website has a “Contact us” page with contact information for the applicant.

Section 17(1)(a)

The legal framework

[14]     Section 17(1)(a) provides:

The Commissioner must not register as a trade mark or part of a trade mark any  matter  …  the  use  of  which  would  be  likely  to  deceive  or  cause confusion.

[15]     In New Zealand for many years the assessment under s 17(1)(a), where an application has been opposed by the owner of another mark (in contrast to issues of deception or confusion arising from something intrinsic in the mark) has involved a two-stage process.  The first stage – often referred to as the threshold test – places an evidential burden on the opponent to establish some reputation for, or awareness of, the opponent’s mark.  If such is established the second stage arises.  This involves the main enquiry as to whether, having regard to the reputation acquired by the opponent, use of the mark sought to be registered would be likely to deceive or cause confusion, with the onus on the applicant to establish the negative.  The appellant contended  on  this  appeal  that  the  full  scope  of  this  two-stage  approach  is  not required on the facts of this case; in essence because there is actual evidence of deception  or  at  least  confusion.    Given  this  argument  it  will  assist  to  set  out statements of principle of the Court of Appeal on the approach to s 17(1)(a).

[16]     In Sexwax Inc v Zoggs International Ltd, the Court of Appeal said:5

4      The particulars are: April to December 2011 – 107,995; January to December 2012 – 738,340; January to December 2013 – 552,719; January to 9 April 2014 – 81,076.

5      Sexwax Inc v Zoggs International Ltd [2014] NZCA 311, [2015] 2 NZLR 1 [Sexwax].

The correct approach to s 17(1)(a)

[48]      To shed light on how this section should be approached, we make the following comments. When applying this section,  the Commissioner begins by inquiring whether the opponent’s mark has a reputation in New Zealand at the relevant date. Such reputation need not be widespread; it all depends on the nature of the marks and the goods to which it is applied. Where  marks  are used  in respect  of  goods  with only a  very narrow or specialised use or purpose, the mark may be known only to a small number of people.6 Pioneer Hi-Bred is a good example: the opponent to registration sold hatching eggs and breeding poultry, goods purchased only by those in the poultry breeding industry. It was only those in that industry who were aware of its existence, and therefore only among persons in that class that a reputation needed to be established.7   In other cases, a mark may be applied to goods sold very broadly or applied to numerous different goods under a brand's penumbra.8     This is the initial inquiry into the “circumstances of trade”, against the background of which the marks are regarded as notionally in use.9

[49]     Next, the Commissioner assesses the likelihood of deception and confusion. This is a fact-specific inquiry. It is a matter of assessing “practical business probabilities”, having regard to all the surrounding circumstances and the degree of similarity of the marks.10     Judicial decisions have established a materiality threshold for confusion or deception, requiring the applicant to prove that registration will not cause deception or confusion amongst a “substantial number of persons”.11   As courts in subsequent cases have noted, however, the terminology used in the judgments varies with the setting, and is ultimately a question of significance of the numbers in relation to the awareness of the marks in question.12

[17]     Sexwax  was  an  application  to  register  a  mark  which  was  opposed  by  a company which had a distinctive mark which was unregistered.  Virbac SA v Merial is another recent Court of Appeal decision with parties in the same position as the parties  to  this  appeal  –  the  opponent’s  mark  was  registered.13      There  was  no

suggestion that the principles were any different.  The Court said that the question

6      See, for example Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1975] 2 NZLR 422 (SC) [Pioneer SC], at 429 and 434 per Cooke J; see also Re Transfermatic Trade Mark [1966] RPC

568 (Ch) at 578.

7      Pioneer Hi-Bred Corn Company v Hy-line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) [Pioneer

CA] at 60 per Richardson J.

8      New Zealand Breweries Ltd v Heineken's Bier Browerij Maatschappij NV [1964] NZLR 115 (CA), for example, concerned beer sold into the retail market to the public at large. The marks

concerned had broad recognition due to the widespread basis on which the products were sold: at

131. Products featuring the brand name “MERCEDES” are an example of the latter category mentioned above — the mark is applied to a wide variety of very diverse products and therefore brand recognition is extensive.

9      Pioneer CA, above n 7, at 63 per Richardson J, citing Re Gaines Animal Foods Ltd’s Application

(1951) 68 RPC 178 (Ch) at 180.

10     Pioneer CA, above n 7, at 76.

11     Re Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 (EWHC) at 101 [Smith Hayden].

12     Pioneer SC, above n 6, at 429.

13     Virbac SA v Merial [2014] NZCA 619, [2015] NZAR 427 [Virbac].

posed by s 17(1)(a) was the question as earlier articulated by the Court of Appeal in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd14 which in turn applied Re Smith Hayden & Co Ltd’s Application.15   Both had been followed in Sexwax.

[18]     One of the appellants’ grounds of appeal is that the Assistant Commissioner was in error in applying what was referred to as “the Smith Hayden test”.  That test, expressed in general terms, rather than by reference to one of the parties in the case, is as follows:16

Having regard to the reputation acquired by the opponent’s mark, is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?

[19]     In Virbac the Court, following Pioneer’s application of Smith Hayden, said that the question was that contained in the Smith Hayden test.  It then said:

[13]     This is ultimately a question of fact which is treated as a practical business matter and answered by reference to all the circumstances.17    In a case such as this one, where an opponent alleges that the new mark will cause confusion or deception affecting its own existing mark, the Assistant Commissioner takes the following approach:

(a)       The opponent must first establish awareness of its mark in New Zealand at the application date. Such awareness or reputation must be sufficiently substantial to make confusion a reasonable possibility.18

(b)       The opponent’s reputation having been  established, the  applicant must show that its mark does not offend against s 17(1)(a).

(c)       The Assistant Commissioner decides what is likely to happen if each mark is used in New Zealand in a normal way as a trade mark for the respective owners' goods.19   Evidence about use overseas is relevant only insofar as it informs the assessment of what will happen here.20

14     Pioneer CA, above n 7, at 57.

15     Smith Hayden, above n 11.

16     Smith Hayden, above n 11, at 101.

17     Pioneer CA, above n 7, at 76 per Richardson J; Anheuser-Busch Inc v Budweiser Budvar

National Corp [2003] 1 NZLR 472 (CA) [Anheuser-Busch Inc] at [74].

18     Pioneer CA, above n 7, at 62.

19     Anheuser-Busch Inc, above n 17, at [30]; cited in TKS SA v Swatch AG (Swatch SA) (Swatch Ltd) [2012] NZHC 2642 at [37]. See also, New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV, above n 8, at 139 and Re Pianotist Co Ltd's Application (1906) 23 RPC 774 (Ch) at 777.

20     Pioneer CA, above n 7, at 61.

(d)       The Assistant Commissioner compares the impression conveyed by the marks, taking into account the idea of each mark and how it looks and sounds.21   Recognising that goods bearing the marks need not be sold side by side, allowance is made for imperfect recollection.22

(e)       The Assistant Commissioner also considers the goods to which the marks are or – in the applicant’s case – will be applied, the market or markets23  in which those goods are or will be sold, and the characteristics of market participants.24

(f)       A person is “deceived” when misled by the applicant’s mark into thinking that the goods bearing the mark come from some other source, and “confused” when caused to wonder whether that might be so.25

(g)       The number of persons at risk of deception or confusion must be substantial or significant. That assessment being hypothetical, the Assistant Commissioner treats it as a matter of judgement, not calculation.  The  decision  is  made  having  regard  to  the  class  of persons potentially at risk. That class comprises those people who will be exposed to goods bearing the  applicant’s mark and  who know, as at the application date, of the opponent’s reputation in its mark.26    Where the goods are sold in the same market, the relevant class is ordinarily the entire market.27

[20]     In relation to the second stage – the main enquiry – Richardson J in Pioneer set out ten propositions as matters that were clearly settled.28   Including some points already touched on, these propositions are as follows:

(1)       The onus is on the applicant for registration of the trade mark to establish that the proposed mark does not offend against s 16; and that onus is discharged on the balance of probabilities (Polaroid Corporation v Hannaford & Burton Ltd [1975] 1 NZLR 566).

21     New Zealand Breweries Ltd, above n 8, at 139 per Turner J.

22     De Cordova v Vick Chemical Co (1951) 63 RPC 103 (PC) at 106.

23     We use the plural because markets have product, supply chain level and geographic dimensions, and the decision maker’s choice among them is instrumental in nature; that is, market definition is not an end in itself but an aid to analysis. In Pioneer, for example, the market was a small one

because the product concerned (breeding poultry) was a raw material in a supply chain, and the

relevant consumers were not the general public but poultry farmers.

24     New Zealand Breweries Ltd, above n 8, at 139. See also Anheuser-Busch Inc, above n 17, at [75] where the test is put this way: “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”.

25     Pioneer CA, above n 7, at 62.

26     Sexwax, above n 5, at [54]; Pioneer SC, above n 6, at 429; and New Zealand Breweries Ltd, above n 8, at 134.

27     Pioneer CA, above n 7, at 62 and Sexwax, above n 5, at [55]-[58].

28     Pioneer CA, above n 7, at 61-62.

(2)       On an application for registration the rights of the parties are to be determined as at the date of the application. The evidence as to likelihood of deception or confusion must relate to the position at that time.

(3)       The concern is with the possible future use of the mark in respect of goods coming within the specification applied for: registration gives the holder protection to that extent.

(4)       The   section   is   not   concerned   with   the   particular   mode   of presentation of the product adopted or proposed to be adopted by the applicant, but with the use of the mark in any manner which may be regarded as a fair and proper use of it (Hack’s Application (1940) 58

RPC 91, 103; Smith Hayden & Co Ltd’s Application (1945) 63 RPC

97).

(5)      In considering the likelihood of deception or confusion all the surrounding circumstances have to be taken into consideration, including the circumstances in which the applicant’s mark may be used, the market in which his goods may be bought and sold and the character of those involved in that market.

(6)       But,  it  is  the  use  of  the  mark  in  New  Zealand  that  has  to  be considered and association of a similar mark with another trader in overseas countries or market is irrelevant, except in so far as it bears on the likelihood of deception or confusion in the New Zealand market.

(7)       It is in relation to commercial dealings with goods that the question of deception or confusion has to be considered, and the persons whose states of mind are material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark and others involved in the purchase transactions.

(8)       For a mark to offend against s 16 it is not necessary to prove that there is a commercial probability of deception leading to a passing off  or  infringement  action.  Detriment  or  financial  loss  to  an opponent need not be established. It is sufficient if the result of the registration of the mark will be that persons to whom the mark is addressed are likely to be deceived or confused. “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.

(9)       The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck. Terms such as “a number of persons” (Jellinek’s Application), “a substantial number of persons”

(Smith Hayden & Co Ltd’s Application), “any considerable section of the public” (New Zealand Breweries Ltd v Heineken's Bier Browerij Maatschappij NV), and “any significant number of such purchasers” (Polaroid Corporation v Hannaford & Burton Ltd) have been used. As Cooke J put it in his judgment in this case:

“The varying terminology in the judgments is a reminder that it is not always necessary that large numbers of people should be, or should probably be, of the state of mind in question: rather it is a question of the significance of the numbers in relation to the market for the particular goods” ([1975] 2 NZLR 422, 429).

(10)      Where  goods are sold  or may be  sold to the  general  public for consumption  or  domestic  use,  the  judge  or  officer  making  the decision is entitled to take into account his own experience and his own reactions as a member of the public, as will [sic] as evidence from other members of the public, when considering whether buyers would be likely to be deceived or confused by use of a trade mark. But where the goods are of a kind not normally sold to the public at large, but are ordinarily sold and expected to be sold in a specialist market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential (GE Trade Mark [1973] RPC

297, 321; [1972] 2 All ER 507, 515).

The Assistant Commissioner’s decision on s 17(1)(a) and the grounds of appeal

[21]     The Assistant Commissioner applied the two-stage process outlined in the leading cases.

[22]     On the threshold issue she was satisfied, having regard to evidence for the appellants summarised in the decision, that there was sufficient awareness of their marks at the relevant date for the main enquiry to proceed.29

[23]     On the main enquiry the Assistant Commissioner applied the Smith Hayden test as explained and expanded on in subsequent decisions.  In terms of appearance, the Assistant Commissioner concluded that the marks “are near identical or closely similar”.   On a comparison of the goods or services of the appellants and the respondent, the Assistant Commissioner referred to the factors outlined in British

Sugar Plc v James Robertson & Sons Ltd.30   She then said:

29     IPO decision, above n 1, at [25]-[29].

30     British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (Ch) at 296-297.

41.In my view, there is very little similarity between the goods and services provided by the parties. The fact that both parties’ goods and services can (arguably) be described as “communications” says more about the breadth of that term than about the realities of the goods and services provided by the parties.

42.      TomTom Communications does not supply goods of any description.

It  provides  services  such  as  PR,  marketing  and  communications services.

43.The applicant does not provide PR, marketing or communications services of the type provided by the opponents. Its core focus – reflected in its trade mark specifications – is computer hardware and software to be used with satellite navigation systems, telecommunications services, and other similar goods and services.

44.      The parties’ goods and services are sold through different channels,

and are in no way competitive with each other.

[24]     The Assistant Commissioner dealt at some length with evidence adduced by the appellants and which the appellants submitted was actual evidence of confusion or deception.31   It is on the basis of this evidence that the appellants contend that the Smith Hayden test does not apply.  The evidence falls into two broad categories.  The first is that, from July 2006, before the respondent’s products were launched in New Zealand, TomTom Communications, or Ms Hosking personally, have received a

reasonably substantial  number  of  enquiries,  by  telephone,  email  or  postal  mail, which were in fact intended for the respondent company.  Numbers of those making enquiries expressed frustration or surprise that they had not contacted the respondent or its representative.   The other category was summarised by the Assistant Commissioner as follows:

53.When  Ms  Hosking  and/or  TomTom  Communications  attempt  to promote TomTom Communications or otherwise communicate with third parties, this also gives rise to confusion because of the immediate assumption that TomTom Communications is associated with the applicant.

54.Ms  Hosking  says  that  the  majority  of  her  clients  are  obtained through networking and word of mouth. However, this method of obtaining clients has been disrupted by confusion between TomTom Communications and TomTom International.

55.In  the  past,  the  trade  mark  TOMTOM  was  very  valuable  in networking situations, and elicited an instant and positive response. Now,   however,   Ms   Hosking   spends   all   of   her   networking

31     IPO decision, above n 1, at [45]-[70].

opportunities explaining that she is not from, or associated with, TomTom International.

[25]     The  Assistant  Commissioner  provided  numbers  of  examples  from  the evidence and then said:

57.Ms Hosking says that in addition to affecting her ability to promote and sell her business, this confusion has been detrimental as people incorrectly assume that her company has copied the name from TomTom International. She says that a copycat assumption is damaging for any company, but particularly so for her company, as it offers branding services.

[26]     The appellants’ argument on appeal that the Smith Hayden test did not apply in this case had been argued before the Assistant Commissioner.  It is convenient at this point to record part of Mr Gray’s submissions for the appellant on the appeal, before outlining the Assistant Commissioner’s conclusion.  Mr Gray submitted:

22.In cases where there is evidence of actual confusion or deception, the Appellants submit that it is not necessary to apply a hypothetical like that in the Smith Hayden Test in order to determine whether there is a likelihood of deception or confusion.   The likelihood of deception or confusion arising from fair and notional use of the applicant’s marks in the context of the opponent’s actual use of its marks is answered by the fact of actual confusion.  Using the Court of Appeal words in Sexwax, the Smith Hayden Test is useful “absent empirical or actual evidence of confusion”.32

…

25.Where, as here, the extra requirements of the Smith Hayden test are not required, there is no requirement that the likelihood of deception or  confusion  be  considered  in  the  context  of  the  opponent’s reputation in its mark, and there is no need to adopt the approach taken by the Court of Appeal on the facts in Virbac and Sexwax.  In the words of the Assistant Commissioner, there is no need to “begin with a threshold  enquiry as to  whether  or  not the opponent  has established sufficient awareness of its mark in New Zealand to make confusion a reasonable possibility”.33    The fact of the confusion or deception is itself sufficient to show that confusion is a reasonable possibility.

[27]     In anticipation of my evaluation of this issue I note now, in relation to Mr

Gray’s inclusion of the quote from Sexwax, at the end of his paragraph 22, that the quote in isolation takes the matter out of context.   There was no suggestion in

32     Sexwax, above n 5, at [72]

33 IPO decision, above n 1, at [81].

Sexwax that, if there is actual evidence of confusion, the Smith Hayden test, or at least the full scope of the Smith Hayden test, does not apply.

[28]     On this contention, the Assistant Commissioner said that she agreed that “actual evidence of confusion and deception will often be a complete answer to the issue of ‘likelihood’ of confusion or deception based on fair and notional use of the marks”.   But she also said, in essence, that the nature of the evidence required analysis to determine the extent to which it assisted, if at all, in answering the questions that need to be answered under s 17(1)(a).   One particular question she posed was: “Is it the use of the marks that is giving rise to the deception and confusion or something else?”   She said that “at least one contributing factor”, to confusion or deception, was the difficulty for customers of the respondent in New Zealand to contact the respondent, “especially in the first few years after its launch in

2007”.  She concluded:

67.I  consider  that  if  Tomtom  International  had  provided  readily accessible contact details and had been easier to reach, then much of the confusion described above would have fallen away, despite the similarities between the marks.

…

70.I do not believe that all of the instances of confusion in this case arose simply as a result of similarities between the marks and/or the respective goods and services, and the evidence of confusion must be viewed in this light.

[29]     The appellants’ second ground of appeal is directed to this conclusion.  The

contention was:

[The] Assistant Commissioner erred in fact and in law by finding that … the Respondent’s  ineptitude  in  its  conduct  meant  that  the  deception  and confusion caused by the Respondent’s use of the TomTom Marks did not satisfy s 17(1)(a).

[30]     The remaining issue considered by the Assistant Commissioner was whether “wrong way round confusion” was confusion of a type contemplated by s 17(1)(a). The appellants’ third ground of appeal is that the Assistant Commissioner was wrong to conclude that “wrong way round” deception or confusion was not sufficient to meet an objection pursuant to s 17(1)(a).

[31]     Wrong  way  round  confusion  occurs  when  members  of  the  public  are confused into thinking that an opponent to registration is associated with the applicant; in this case, a belief by members of the public that the appellant TomTom Communications was associated with the respondent TomTom International.   The appellants accept that much of the evidence relied on is wrong way round confusion.

[32]     The  Assistant  Commissioner,  after  reference  to  some  authorities  and submissions of counsel, said that she accepted that this sort of confusion can be relevant for some purposes; for example, it may tend to show there is a similarity between two marks.  But she said that she had “some difficulties” with the concept. She set out a number of reasons for what is, in essence, a conclusion that wrong way round confusion did not assist the appellants as opponents in the case before her.34

[33]     In the result the Assistant Commissioner concluded, on application of what is appropriately described as the orthodox approach to s 17(1)(a), that the respondent had  met  the  onus  on  it  to  establish  that  it  was  not  likely that  there  would  be confusion or deception.  The appellants’ fourth ground of appeal under s 17(1)(a) is that, on the assumption that the Smith Hayden test does apply, the Assistant Commissioner was in error in this conclusion.

The Smith Hayden test: submissions

[34]     The heart of the appellants’ submissions on the argument that the  Smith Hayden test did not apply were recorded above.  Mr Gray submitted that the need to consider what he referred to as “the hypothetical” was, in effect, a gloss on the actual words of s 17(1)(a), but that this was introduced and was applicable only where there was need to consider the hypothetical.  He cited an observation of Richardson J in Pioneer that s 17(1)(a) is “concerned not with hypothetical possibilities of deception

or confusion, but with practical business probabilities”.35   That statement, however,

is not concerned with the hypothetical to which the appellants’ submissions are

directed.

34     The full discussion is in the IPO decision, above n 1, at [71]-[87].

35     Pioneer CA, above n 7, at [76].

[35]     For the respondent, Mr Williams submitted that the principles outlined in the leading cases, and as recorded earlier in this judgment, apply to all applications under s 17(1)(a) where there is opposition by the owner of another mark.  He also gave some emphasis to a statement in Sexwax that it is important not to conflate the tests for establishing an awareness or reputation of the opponent’s mark with the test for establishing that a substantial number of those persons are likely to be deceived

or confused.36   Each aspect requires separate consideration.

Applicability of the Smith Hayden test: evaluation

[36]     I am satisfied that the Assistant Commissioner’s approach was correct as a matter of principle having regard to the decisions of the Court of Appeal to which I have referred, and to which the Assistant Commissioner referred.

[37]     The single sentence from Smith Hayden, expressly adopted by the Court of Appeal in Pioneer, and applied in the later cases, encapsulates both stages of the enquiry – the threshold issue relating to awareness of the opponent’s mark and the main enquiry with the onus on the applicant.   Mr Gray sought to distinguish the decisions, binding on the Assistant Commissioner and on this Court, on the basis that evidence said to constitute relevant evidence of confusion or deception was available in this case but not in those cases.  Mr Gray did refer to some other cases which refer to evidence of actual confusion or deception,  but  these do not suggest that the

principles stated in the Court of Appeal cases are not of general application.37

[38]     Although the Court of Appeal cases did not give rise to the issue that has now been raised by Mr Gray, I am satisfied that the principles stated in those cases apply to all applications under s 17(1)(a) and, therefore, to all applications where there is evidence of actual confusion or deception.  There are statements on specific aspects of the enquiry which implicitly indicate that the principles, and more specifically the Smith Hayden test as expanded in subsequent cases, are of general application.  I will

come to those aspects in a moment.

36     Sexwax, above n 5, at [70].

37     Mr Gray referred to Wineworths Group Ltd v Comité Interprofessionel du vin de Champagne [1992] 2 NZLR 327 (CA) at 342; Bourne v Swan and Edgar Ltd [1903] 1 Ch 211 (Ch)at 227; Nortel Networks Corporation v Telecom Corporation of New Zealand HC Wellington CIV-2003-

485-2631, 24 June 2004; Neutrogena Corp v Golden Ltd [1996] RPC 473 (EWCA) at 482.

[39]     I  was  not  referred  to  any  case,  in  New  Zealand,  or  in  a  comparable jurisdiction, which suggests that the Smith Hayden test is not of general application. Roby Trustees  Ltd  v Mars  New Zealand  Ltd  is  another recent  Court  of Appeal decision dealing with evidence said to demonstrate actual confusion.38   The evidence sought to be relied on in that case was rejected, but the Court, which reiterated the Smith Hayden test, did not suggest that actual evidence of confusion, if admissible and probative, would mean that the orthodox approach should not apply.39

[40]     On the basis of authority I therefore reject the appellants’ argument as to the applicability of the Smith Hayden test.   For the avoidance of doubt, I expressly record that I am satisfied that the Smith Hayden test, as explained and developed in the leading New Zealand cases, applies to both the threshold test and the main enquiry.   In consequence, I reject the appellants’ specific submission that, where there is actual evidence of confusion or deception, “there is no requirement that the likelihood of deception or confusion be considered in the context of the opponent’s reputation in its mark, and there is no need to adopt the approach taken by the Court of Appeal on the facts in Virbac and Sexwax”.

[41]     This  conclusion,  based  on  the  way  in  which  the  leading  decisions  are expressed, is reinforced by interpretation of s 17(1)(a) and specific observations in the authorities on particular aspects of the enquiry.

[42]     Section 17(1)(a) prevents registration where the use of the mark “would be likely to deceive or cause confusion”.  The provision is forward-looking.  Whether there has actually been confusion or deception is not of itself determinative.

[43]     The forward-looking approach is confirmed in Pioneer, where the Court held that “the concern is with the possible future use of the mark … the persons whose states of mind are material are the prospective or potential purchasers”.40    Further, and as a natural consequence to this, evidence of actual confusion is just one factor

to be adopted amongst all of the “surrounding circumstances” which have to be

38     Roby Trustees Ltd v Mars New Zealand Ltd [2012] NZCA 450, (2012) 98 IPR 353 at [44].

39 At [12].

40     Pioneer CA, above n 7, at 61.

taken into consideration in considering the future likelihood of a significant number of people being deceived or confused.41

[44]     In other words, s 17(1)(a) is inherently a hypothetical assessment, and actual evidence of confusion is only relevant insofar as it colours an assessment of whether confusion or deception is likely to occur with regards to a significant number of people in the future.  There is no statutory separation between hypothetical cases and others.  Section 17(1)(a) requires a future assessment.

[45]     As  the  Assistant  Commissioner  said,  actual  evidence  of  confusion  and deception  will  often  be  a  complete  answer,  although  in  her  opinion  it  was  not because of the nature of that evidence.   In Wineworths Group Ltd v Comité Interprofessionel du vin de Champagne, Gault J said that: “Evidence of actual deception is not essential.   It is, of course, the best evidence of likely future deception”.42     Both the House of Lords and High Court of Australia have also confirmed that actual confusion is a “strong indication that continued confusion is likely”.43      On the other hand,  absence of  evidence of  actual  confusion  may be

considered to indicate that the likelihood of confusion is not high.44  And that general

proposition  necessarily  applies  to  evidence  of  actual  confusion  which  is  not confusion of the type to which s 17(1)(a) is directed.  The Assistant Commissioner’s conclusion to the essential effect that the evidence relied on by the appellants in this case was not relevant, or at least of limited probative value, is a conclusion I agree with, for reasons  I will  come to.   But this also illustrates the issue now being considered in relation to the applicability of the Smith Hayden test, as has been discussed in other cases.

[46]     In  Anheuser-Busch  Inc  v  Budweiser  Budvar  National  Corp  the  Court  of

Appeal said:45

Evidence of what actually is occurring in the marketplace reflects particular forms of use and cannot fully answer the question. Evidence of the absence

41     At 61-62.

42     Wineworths Group Ltd v Comité Interprofessionel du vin de Champagne, above n 37, at 342.

43     General Electric Co v General Electric Co Ltd [1972] 1 WLR 729 (HL) at 737; Australian

Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641 at 658.

44     Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 (PC) at 18.

45     Anheuser-Busch Inc, above n 17, at [66].

of actual confusion might be explained by reference to particular factors such as additional label features or market circumstances that will not always be present. By way of example, in the present case, when the Judge dealt with the passing-off claim (in which actual usage is at issue) the Judge said that even if he had found the trade marks deceptively similar he could still have rejected passing off because of the distinguishing market factors such as market sectors, likely customers, and promotion strategies. Those factors might explain the absence of confusion but have no relevance in the trade mark comparison by reference to any fair use of the marks.

[47]     In Virbac the Court of Appeal confirmed that the question is “simply whether use of the applicant’s mark is likely to deceive or confuse the public”; while the “Commissioner assesses the opponent’s reputation and the risk of deception and confusion at the application date”, and does this by “reference to actual use of the opponent’s mark and any fair use of the applicant”, the inquiry is “nonetheless

forward-looking and factual in nature.”46

[48]     In Higgins Coatings Pty Ltd v Higgins Group Holdings Ltd, Simon France J was reluctant to give too much weight to actual evidence of confusion.47     It was proof that some confusion had happened, but it fell short of persuading the Judge that the applicant had failed to discharge its onus to show absence of likelihood of confusion.

[49]     For  these  various  reasons  I  am  satisfied  that  the  Smith  Hayden  test,  as explained  and  developed  in  the leading  cases,  is  of  general  application  and,  in particular, applies even though there may be evidence of some type of actual confusion or deception.  An opponent is bound to meet the evidential burden arising from the threshold test if the main enquiry is to be undertaken, and on the main enquiry the principles stated in the leading cases also apply.

The threshold enquiry: awareness of the appellants’ mark

[50]     There   was   a   cross-appeal   by   the   respondent   against   the   Assistant

Commissioner’s decision that there was sufficient threshold awareness of the appellants’ marks at the relevant date.

46     Virbac, above n 13, at [17].

47     Higgins Coatings Pty Ltd v Higgins Group Holdings Ltd HC Wellington CIV-2009-485-2594, 30

June 2010 at [19]. See also Unliever PLC v McPherson’s Consumer Products Pty Ltd [2013] NZHC 1458 at [13].

The threshold enquiry: evidence

[51]     The Assistant Commissioner provided a succinct summary of the evidence relied on by the appellants to establish the reputation or awareness of the appellants’ marks.   It is convenient to reproduce this summary.   There was no issue on the appeal that there was any additional evidence.   The approach of counsel on the appeal on this issue was to address each of the items and advance their competing contentions that each item did or did not establish sufficient awareness.

[52]     The summary is as follows:48

(a)       On 12 May 1998, Ms Hosking applied to register the trade mark

TOM TOM in classes 35, 41 and 42. The marks were registered on 9

March 2000.

(b)      On 26 June 1998, Ms Hosking registered the domain name and subsequently assigned this to TomTom Communications. TomTom Communications’ website was launched in November 2005.

(c)       Since 1998, the opponents have used the mark TOMTOM on office stationery,   such   as   business   cards   letterheads,   envelopes   and invoices.

(d)      The mark TOMTOM has been used in TomTom Communications’

email signatures and email addresses since before the relevant date.

(e)       In 2002, TomTom Communications advertised in the Dominion Post for consultants. The response was “huge”. The advertisement included the mark TOMTOM and the words “hear the beat, feel the rhythm, let’s dance”.

(f)       TomTom Communications has had a business entry in the White

Pages telephone directory since 1999/2000.

(g)       In 2008, TomTom Communications was listed in the Yellow Pages and Yellow Pages Online, although it was forced to withdraw this listing only three months later due to “increasing misdirected enquiries and confusion”.

(h)       According to Ms Hosking’s evidence dated 1 March 2011, at that time a Google search listed TomTom Communications as the first hit.

(i)        As at the application date, TomTom Communications worked with clients such as BioVittoria, McDouall Stuart Securities Ltd, Citizens Advice  Bureau,  New  Zealand  Transport  Association,  Antipodes

48     IPO decision, above n 1, at [27] (footnotes omitted).

Beauty, Snapper Services, Wright Wool Ltd, H. Dawson Ltd and

Konaka Co Ltd.

(j)        Ms Hosking has attended a significant number of networking events each year for the last 15 years, examples of which are set out in her evidence.

(k)      Media coverage in relation to the long-running dispute with the applicant over the use of the name “TomTom” in New Zealand has also raised awareness of TomTom Communications.

The threshold enquiry: evaluation

[53]     I have taken account of the submissions in this evaluation.  As earlier noted, in large measure Mr Gray submitted that each of the items recorded in the Assistant Commissioner’s items supported the appellants’ argument that it had met the threshold test, with Mr Williams arguing to the contrary.  The submissions were not confined to that approach and additional points made, particularly from Mr Williams, have also been taken into account.

[54]     In  my  view,  although  the  evidence  is  not  particularly  strong,  and  the assessment is reasonably close, the appellants have established the necessary awareness, or reputation, as at August 2011, the relevant date.

[55]     The  focus  is  on  the  awareness  of  the  appellants’  mark  of  prospective purchasers of the services to which the mark attaches, and who are also likely to be exposed to the respondent’s mark.  In my opinion, the prospective purchasers of the appellants’ services are small, and coming from segments only of the public, not from the purchasing public as a whole.  I disagree with Mr Williams’ submission that the service sector in which the appellants operate is large, and embraces the entire communications industry.  In my judgment Mr Gray’s submission is more accurate: it is more of a specialist service used for specific projects including, for example, national marketing and promotional campaigns.  This sets the broad parameters for assessment in this case.   In particular, having regard to the limited numbers who might consider using the appellants’ services, awareness amongst a small number may be sufficient, as illustrated by the facts in Pioneer, although the size of the “market” for the appellants’ services is no doubt larger than the one in question in Pioneer.

[56]     I  do  not  consider  that  registration  of  the  appellants’ marks  supports  the appellants’ case to any relevant extent.  In NV Sumatra Tobacco Trading Co v British American Tobacco  (Brands) Inc,  Glazebrook J  suggested, obiter, that  awareness could be established by registration because registration is notice to the world.49   In my respectful opinion the legal consequence of registration does not bare on the evidential question of actual awareness and the extent of that awareness.

[57]     The registration of the domain name, the presence of the website, the Google search function and the hits on the website are not, in my view, strong evidence of reputation.  The number of times a website is visited is not necessarily demonstrative of a reputation of the owner or operator of the website.  In particular there is nothing to indicate whether the hits were from the relevant prospective purchaser group, whether they were hits from New Zealand computers, and whether the results provided come from more than a year after the application date (late 2012 to late

2013).  Further, given the context, it is possible that a significant proportion of the “hits” were from people, possibly around the world, clicking on the website when they intended to click on the respondent’s website.   On the other hand use of the website by established or prospective clients, with that website featuring the trade mark, can be said to have increased the reputation amongst that group.  The fact that the appellants’ website turned up on a Google search provides little evidence of reputation.   There is  nothing to  suggest  that  this  would  increase the  reputation amongst the relevant people.

[58]     I do not think the evidence of listing in the White Pages assists the appellants. The White Pages lists contact details in alphabetical order.  This includes personal and residential contact details.  It is not a form of promotion nor would it serve to increase the marks’ reputation.  The Yellow Pages, on the other hand, is a form of promotion.  However, the entry was only in 2008, and only for three months, and whether or not it resulted in increased exposure at the time, the listing is only of limited relevance (at best) considering it was some three years before the relevant

date.

49     NV Sumatra Tobacco Trading Co v British American Tobacco (Brands) Inc [2010] NZCA 24, (2010) 86 IPR 206 at [80].

[59]     The advertisement in the Dominion Post is of very little relevance in my opinion given that the advertisement was nine years before the relevant date.  The same can be said of the single news item about the present dispute.  I doubt that the relevant persons would recall either the advertisement or the news item.

[60]     Materially in support of the appellants on the threshold issue is the evidence of  the  appellants’ client  base  and  of  the  long  term  use  of  the  mark  on  office stationery and electronic communications.

[61]     The range of the appellants’ clients, coupled with the type of people likely to be involved, and what the evidence indicates is an established role in providing services to Government organisations, suggests a level of reputation sufficient at a general level for the appellants to meet the threshold.  On the other hand, with the exception of Wright Wool Ltd, there is little direct evidence that these client relationships existed at the relevant date. This evidence is equivocal.

[62]     Finally, there is evidence of networking from Ms Hosking, and presentations given at various events, conferences and functions.  Again, there is little evidence of Ms Hosking’s involvement in these during 2011 and at the relevant date.  The only evidence exhibited appears to be the programme from the Network of Public Sector Communicators Conference 2013.  While the fact that this occurred after 2011 does not render this evidence irrelevant, it is still not abundantly helpful in establishing reputation during August 2011.

[63]     Overall, I think it is a close call.  I have, in fact, given more emphasis to the matters which are against the appellants.  However, as I have indicated several times, the threshold is low and it is an evidential burden of a preliminary nature.  Looking at all of the evidence relied on in the round, and drawing reasonably inferences from it, I am not persuaded  by the respondent on the cross-appeal that the Assistant Commissioner’s assessment of this was wrong.   Accordingly, the cross-appeal is dismissed and focus shifts to the main enquiry.

The main enquiry: the likelihood of confusion or deception

[64]     A  substantial  part  of  the  appellants’  case  under  this  heading  was  their argument that the likelihood of confusion or deception is established by the evidence of actual confusion or deception.  The strength of this argument in turn depends, in considerable measure, on the validity of the appellants’ second and third grounds of appeal: that is, that the Assistant Commissioner was in error in concluding, in effect, that the evidence of actual confusion or deception was of marginal relevance, and that wrong way round confusion was not confusion as contemplated by s 17(1)(a).  I will therefore deal with those two grounds of appeal under one heading, with the main focus being on the wrong way round confusion issues.

Wrong  way  round  confusion  and  relevance  of  evidence  of  actual  confusion:

evaluation

[65]     The appellants presented a body of evidence said to be evidence of actual confusion or deception of the sort with which s 17(1)(a) is concerned.   In very substantial measure this was evidence of contact with one or both of the appellants by members of the public who were well aware of the respondent’s goods and the respondent’s mark, but who had no knowledge of the appellants’ mark.   In these cases knowledge of the appellants’ mark only arose at the point where these people were endeavouring to contact the respondent or a representative of the respondent. The other category of evidence of confusion or deception was essentially the same as to its nature if not its genesis – people approached by Ms Hosking who already knew about  the  respondent’s  mark,  and  presumably  with  knowledge  of  some  of  its products,  but  without  prior  knowledge  of  the  appellants  or  their  mark.    The appellants appear to accept that most, if not all, of the evidence they rely on, if it is evidence of the sort of confusion with which 17(1)(a) is concerned, is wrong way round confusion.   In any event, I am satisfied that almost all of the evidence is appropriately described as evidence of wrong way round confusion.   (I will refer only to confusion, rather than confusion or deception, because the distinction is not material for this appeal.)

[66]     I am satisfied that this evidence does not assist the appellants.   I am in

general agreement with the Assistant Commissioner’s reasons for her conclusion that

wrong way round confusion is not relevant under s 17(1)(a).  Her reasons were as follows:

81.I note, for example, that an assessment under s 17(1)(a) of the Act always begins with a threshold enquiry as to whether or not the opponent has established sufficient awareness of its mark in New Zealand to make confusion a reasonable possibility. If non-linear, wrong way round confusion could suffice, there would be little point in conducting such an enquiry – the awareness could arise at a later point in time.

82.Nor is a “wrong way round” approach consistent with the wording of the longstanding test in Smith Hayden, i.e. “having regard to the

reput at i on  acquired  f or  t he  opponents’ marks  , is the Court satisfied that the opposed marks, if used in a normal and fair manner, will not be reasonably likely to cause deception and confusion”.

83.      In this case, much of the “wrong way round” confusion evidence is

also of a low-level, administrative nature, such as mis-directed mail.

84.To  the  extent  that  more  significant  issues  arise,  such  as  when TomTom Communications attempts to promote itself to potential new customers, difficulties arise precisely because the opponents do not have a major existing reputation in New Zealand.

85.This is not the way in which s 17(1)(a) of the Act is generally understood to operate. Usually, an opponent points to its own reputation, and says that because of that reputation, confusion or deception is likely to arise. The larger the opponent’s existing reputation, the higher the risk of confusion.

86.If it were the opponents whose mark was famous or well known, they would have special, additional protection under s 25(1)(c) of the Act. The converse does not apply. A small trader is not entitled to special, additional protection on the basis that the other party’s mark is famous or well known and that the small trader’s reputation is being swamped as a result.

87.As mentioned above, s 17(1)(a) of the Act is concerned with “fair and  notional”  use  of  the  mark  by  the  applicant;  the  size  and reputation  of  the  particular  applicant  company  should  not  be relevant.

[67]     There  are  further  statements  of  principle  in  the  leading  cases  which  are contrary to the appellants’ argument.  There is, for example, proposition (7) in the summary  of  settled  principles  stated  by  Richardson  J  in  Pioneer,  which  I  will

repeat:50

50     Pioneer CA, above n 7, at 61.

It is  in relation to commercial dealings with goods that the question of deception or confusion has to be considered, and the persons whose states of mind are material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark and others involved in the purchase transactions.

(emphasis added)

[68]     In Sexwax the Court of Appeal said:

[30]     … The requirement that a “substantial number” of individuals be at risk of deception or confusion is a judicial gloss, establishing that the s 17 threshold involves the exercise of judgment having regard to the commercial setting, comprising those who will be exposed to the applicant’s mark and those who know of the reputation the opponent’s goods enjoy.51

…

[46]     Section 17(1)(a) prohibits the Commissioner from registering an applicant’s mark, the use of which would be likely to deceive or cause confusion by leading people to wonder whether goods or services bearing the mark are those of the opponent.  By focusing on use of the applicant’s mark, the legislation inquires whether those exposed to the applicant’s goods are likely to be confused. It is enough if members of the public are caused to wonder whether goods bearing the applicant's mark are related or connected in trade to the opponent’s goods.

(footnotes omitted)

And:

[54]     These authorities demonstrate that the risk of confusion is properly measured by reference to those who may be exposed to the applicant’s goods and are aware of the opponent’s mark. …

[69]     There was an application for leave to appeal against the Court of Appeal’s decision in Sexwax. In dismissing the application for leave the Supreme Court said that the Court of Appeal statement at [54] was a correct statement of the law.52

[70]     In  Virbac,  the  Court  confirmed,  as  earlier  more  fully  recorded,  that  the

decision as to confusion “is made having regard to the class of persons potentially at risk”, and that this class “comprises those people who will be exposed to goods

51     A view emphasised by Cooke J in the Supreme Court in Pioneer SC, above n 6, at 429.

52     Zoggs International Ltd v Sexwax Inc [2015] NZSC 16 at [5].

bearing  the  applicant’s  mark  and  who  know,  as  at  the  application  date,  of  the

opponent’s reputation in its mark”.53

[71]     Mr Gray cited three statements in decisions of the High Court of England and Wales which he submitted provide support for the appellants’ submission.54     The observation of Mr Roger Wyand QC, sitting as a Deputy High Court Judge in the Comic Enterprises case comes closest to a direct statement that wrong way round confusion is sufficient.  Arnold J in the Enterprise Holdings case appears to express some reservation as to the correctness of the statement of Mr Roger Wyand QC in

the Comic Enterprises case.  In any event, I am satisfied that the statements in these cases that wrong way round confusion is, or may be, sufficient to establish a likelihood of confusion in the United Kingdom are not persuasive having regard to the authorities in New Zealand.

[72]     The  evidence  relied  on  by  the  appellants  is  not  evidence  of  confusion, whether actual confusion or likelihood of confusion, of the nature clearly described in the three decisions of the Court of Appeal and the Supreme Court.  Those who were confused, or even deceived, were not aware of the appellant’s marks.

[73]     In any event, the evidence falls well short of demonstrating confusion as required by s 17(1)(a); that is, confusion as to the origin of the respondent’s goods. Putting the matter this way brings the enquiry to the related conclusion reached by the Assistant Commissioner as to the real nature of the confusion.  I agree with her that  in  its  essence it  was  simply a failure by people to  make contact  with  the organisation they were trying to make contact with.   The Assistant Commissioner

reached conclusions recorded earlier in this judgment.55   This was not confusion as

to the origin of the respondent’s goods and services.

53     Virbac, above n 13, at [13].

54     Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2014] EWHC 185 (Ch) at [123]- [125]; Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch) at [159]; Enterprise Holdings, Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch) at [117].

55     Above at [28] and citing [67] and [70] of the IPO decision.

The likelihood of confusion or deception: other considerations

[74]     The respondent accepted the Assistant Commissioner’s conclusion that the marks are near identical or closely similar. The focus of the remaining arguments for the parties was on the appropriate definition of the types of goods and services of the parties.

[75]     The respondent supported the Assistant Commissioner’s conclusion to the effect that the parties operated in such different fields that there was no material risk of confusion or deception as contemplated by s 17(1)(a).  The appellants argued that the  parties  trade  and  use  their  marks  in  the  same  field  of  activity,  which  the appellants defined as “communications”.   In respect of the argument on the main enquiry the parties in substantial measure reversed the positions they had adopted for the threshold enquiry.

[76]     The nature of the goods and services of the applicant and the opponent is one only of a range of circumstances that may be required to be taken into account, and to the extent that there are other relevant circumstances I have taken them into account.  But as the Court of Appeal said in Sexwax, the enquiry is fact specific.  I am satisfied that the facts relating to the nature of the goods and the services are determinative.  And I am satisfied that they are determinative against the appellants even if I am wrong that the evidence of confusion is not relevant because it is wrong way round confusion and because it is not confusion of the sort contemplated by s 17(1)(a).

[77]     The issue in practical terms is whether it is likely that a substantial number of people would be caused to wonder whether the goods and related services of the respondent, bearing the respondent’s mark, might come from the appellants (confusion) or led into thinking that goods bearing the respondent’s mark came from the appellants.  As Richardson J said in Pioneer, the section “is not concerned with

hypothetical  possibilities  of  deception  or  confusion,  but  with  practical  business

probabilities”.56

[78]     In my opinion it is in fact most unlikely that there will be confusion or deception of a substantial number of people with requisite knowledge of the goods and services of both parties.

[79]     I agree with the Assistant Commissioner’s summary of differences which

underpins her ultimate conclusion.57

[80]     I also agree with Mr Williams’ submissions that the goods and services are different to the extent that the respective users of each are not likely to be the same, at  least  in  terms  of  substantial  numbers,  the  goods  and  services  are  not  in competition with each other, and the goods and services of the respondent cannot be a substitute for the services of the appellants. The low likelihood of confusion is also indicated, with some emphasis, by the extent of the reputation of the respondent’s marks in New Zealand as well as internationally.

Result on s 17(1)(a)

[81]     For these reasons I am satisfied that the Assistant Commissioner came to the correct conclusion.  The respondent established that, if the respondent’s marks were registered, the use would not be likely to deceive or cause confusion.

The second ground of opposition: s 17(1)(b)

The legal framework

[82]     Section 17(1)(b) provides:

The Commissioner must not register as a trade mark or part of a trade mark any matter—

…

56     Pioneer CA, above n 7, at 76. The reference to “practical business probabilities”, was cited by the Court of Appeal in Sexwax, above n 5, at [49]. This is the sense in which Richardson J was eschewing hypothetical possibilities, not in the manner suggested in the submission from Mr Gray on the argument about the applicability of the Smith Hayden test.

57 Cited in this judgment above at [23].

the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court.

[83]     In their opposition the appellants contended that use of the applicants’ mark would be contrary to law because it would amount to passing off and it would be in breach of ss 9, 13 and 16 of the Fair Trading Act 1986.   The Fair Trading Act contention is pursued on the appeal, but not passing off.

[84]     The appellants’ referred in general terms to ss 9, 13 and 16, but the focus seems to be on s 9 of the Fair Trading Act.  There was no analysis of the provisions of ss 13 and 16 of the Fair Trading Act in Mr Gray’s submissions.   Section 13 is concerned with false or misleading representations of 10 carefully defined types, and I am satisfied that none of those have any application in relation to the evidence in this case.  The same conclusion applies to s 16 which is concerned with forging a trade mark, falsely applying a mark to goods, or falsely using a mark in the provision of services.

[85]     Section 9 provides that “no person shall, in trade, engage in conduct that is misleading or deceptive or is likely to mislead or deceive”.

The Assistant Commissioner’s decision

[86]     The  Assistant   Commissioner’s   reason   for   dismissing   this   ground   of

opposition was succinctly stated as follows:

92.A higher threshold of confusion is required to establish passing off or a breach of the Fair Trading Act 1986 than is required under s

17(1)(a)  of  the Act.  Section  17(1)(b)  of  the Act  is expressed  in

absolute terms (“is contrary to law” and “would be disentitled to protection”). This can be contrasted with the language of s 17(1)(a) of the Act (“would be likely to deceive or cause confusion”).

Submissions

[87]     I note that the Assistant Commissioner referred to “confusion” but s 9 of the Fair Trading Act is concerned with misleading or deceptive conduct, not confusion. However, nothing would appear to turn on this point.  The use of the expression “a higher threshold of confusion” may be taken to refer compendiously to what is actually required, whether in relation to passing off or the Fair Trading Act.  Mr Gray

appears to have implicitly acknowledged this when noting that “the appellants do not dispute that the threshold for confusion is higher under s 17(1)(b)”.   Mr Gray’s submission was that there was error by the Assistant Commissioner in failing to recognise that “the threshold for confusion”, although higher, is also different from that under s 17(1)(a), and that this difference required analysis which it did not receive from the Assistant Commissioner.

[88]     Mr Gray submitted, in particular, that there is no need for an assessment as to whether there has been misleading or deceptive conduct by considering the extent of the reputation or awareness of the opponents’ mark, because the Smith Hayden test does not apply to s 17(1)(b).  From this it was submitted that the evidence of actual “confusion” (and  Mr Gray at  this  point  continued  to  refer to  “confusion”) was sufficient to meet the higher threshold of misleading or deceptive conduct under the Fair Trading Act.   It was submitted that the evidence established that “the public believe that the goods and services offered by the appellants are those of the respondent”.

[89]     Mr Williams’ relied in substantial measure on authority, to which I will come. He also submitted that the marked difference between the goods and related services offered by the respondent and the services offered by the appellants meant that the practical likelihood of the public being misled or deceived was “implausible”.

Section 17(1)(b): evaluation

[90]     In Neumegen v Neumegen & Co in the Court of Appeal, Blanchard J said, for himself and Richardson P:58

Generally, indeed it may be thought in virtually all cases, a defendant’s conduct will not be deceptive or misleading unless it amounts to a misrepresentation.  The  misrepresentation  may  be  express  or  arise  from silence or from conduct. It need not be intentional and often will not be. (Bonz Group Pty Ltd v Cooke (1996) 7 TCLR 206.)

However, there will be no misrepresentation by means of the adoption of a trading name unless the name has already acquired a reputation amongst a class of consumers as denoting the goods or services of another trader, so that members of that class will be likely mistakenly to infer that the goods or

58     Neumegen v Neumegen & Co [1998] 3 NZLR 310 (CA) at 317. There was a dissenting judgment of Thomas J.

services are connected with the business of that other trader (Chase Manhattan Overseas Corp v Chase Corp Ltd (1986) 8 IPR 69 at p 78 and Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) ATPR 40-303). The more unusual the name, the more likely it will be that its use by another trader has given rise to a secondary signification.

[91]     In my opinion this is a case where it would be necessary for there to be a misrepresentation from conduct by the respondent, with the conduct giving rise to the misrepresentation being use of the respondent’s marks.   There is no remote evidential foundation for what amounts to an express misrepresentation.   I am satisfied that there is no evidence sufficient to conclude that there has been the equivalent of a misrepresentation from conduct by the respondent up to the date of its application, and in particular at that date, and that use following registration would not constitute a misrepresentation.

[92]     That  conclusion  is  sufficient  to  dismiss  the  appeal  on  s 17(1)(b).    It  is nevertheless  appropriate  to  consider  whether  the  respondent’s  use  of  its  marks would, in terms of s 9, be “likely to mislead or deceive”.  I am satisfied that this is not likely, for the following reasons.

[93]     In the Neumegen case, in a passage following the paragraph cited above, the

Court continued:59

It is not necessary to show that any consumer has suffered economic loss nor that a rival trader has lost custom because of the defendant’s conduct.

However, in our view, if the number of affected members of the public is or will be very small and the impact upon those persons is or will be minimal a Court may be justified in taking the view that, looked at in the round, the conduct of the defendant is not properly to be characterised as deceptive or misleading or that, even if it has to be so characterised, what has occurred or is likely to occur is so lacking in real importance to any consumers who may be affected that the Court’s discretion may fairly be exercised against the granting of a remedy. In considering these questions the Court will make a judgment about whether the conduct is of a kind which it is the object of the legislation to curb.

59     Ibid, at 317.

[94]     The Supreme Court considered the scope of s 9 of the Fair Trading Act in Red Eagle Corp Ltd v Ellis.60     Blanchard J, giving the reasons of the Court for its unanimous decision, said:

[28]     It is, to begin with, necessary to decide whether the claimant has proved a breach of s 9. That section is directed to promoting fair dealing in trade by proscribing conduct which, examined objectively, is deceptive or misleading in the particular circumstances. Naturally that will depend upon the context, including the characteristics of the person or persons said to be affected. Conduct towards a sophisticated businessman may, for instance, be less likely to be objectively regarded as capable of misleading or deceiving such a person than similar conduct directed towards a consumer or, to take an extreme case, towards an individual known by the defendant to have intellectual difficulties. Richardson J in Goldsbro v Walker said that there must be an assessment of the circumstances in which the conduct occurred and the person or persons likely to be affected by it.61  The question to be answered in relation to s 9 in a case of this kind is accordingly whether a reasonable person in the claimant’s situation – that is, with the characteristics known to the defendant or of which the defendant ought to have been aware

– would likely have been misled or deceived. If so, a breach of s 9 has been established.  It  is  not  necessary  under  s  9  to  prove  that  the  defendant’s conduct actually misled or deceived the particular plaintiff or anyone else. If the conduct objectively had the capacity to mislead or deceive the hypothetical reasonable person, there has been a breach of s 9. If it is likely to do so, it has the capacity to do so. Of course the fact that someone was actually misled or deceived may well be enough to show that the requisite capacity existed.

(other footnotes omitted)

[95]     In this case there are the two categories of evidence of confusion relied on by the appellants, and  as  earlier described.   The first category consisted  of people contacting the appellants, thinking they were the respondent, and with some of these people then becoming argumentative.   Section 9 is there for the protection of consumers, and the consumers in this category are those who mistakenly contacted the appellants.  This does not come close to misleading or deceptive conduct by the respondent.   The fact that some of those who mistakenly contacted the appellants may have become argumentative does not change these events into misleading or deceptive conduct by the respondent.  The other group of “consumers” dealt with in the  appellants’ evidence  were  those  approached  by  Ms  Hosking  who  were  not existing clients of the appellants.  There is no evidence suggesting that any of these

people were misled or deceived.  In addition, as made clear in the statement from the

60     Red Eagle Corp Ltd v Ellis [2010] NZSC 20, [2010] 2 NZLR 492 (some footnotes omitted).

61     Goldsbro v Walker [1993] 1 NZLR 394 (CA) at 401.

Red Eagle case, the responses of both groups are to be judged objectively.   In the circumstances of this case the objective standard applies generally, even if some in the first group may have been unsophisticated or unduly irascible, because there is no reasonable basis for assessing the respondent’s liability by references to unreasonable people of whom they had no knowledge.  In other words, in respect of this unreasonable group, there was no conduct by the respondent towards the particular people who may have responded in that way.

[96]     The  second  statement  from  the  Neumegen  case,  cited  above,  is  also applicable.  The appellants’ evidence of what occurred, and being the only evidence for an assessment of what might in the future occur, is so lacking in real importance to any consumers who may be affected, that I am satisfied that this would not be something that the Fair Trading Act is intended to guard against.

[97]     I am  satisfied  there  was  no  error  by the Assistant  Commissioner  in  her conclusion that opposition under s 17(1)(b) was not made out.

The third ground of opposition: s 17(2)

[98]     Section 17(2) provides that the Commissioner must not register a trade mark if the application is made in bad faith.

[99]     What is meant by “bad faith”, and the applicable test, are well established. This was summarised by the Assistant Commissioner as follows:

95.Bad faith is not confined to dishonesty, and may be established by dealings that fall short of reasonable standards of commercial behaviour.62

96.The  test  for  bad  faith  combines  a  subjective  element  (what  the particular applicant knew) and an objective element (what ordinary persons adopting proper standards would think).63  The subjective element of the test relates only to the applicant’s knowledge. The fact that the applicant thinks his or her behaviour is acceptable is no defence.64

62     Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 (Ch) at 379.

63     Newman v Sons of a Desert SL HC Auckland CIV-2007-485-212, 5 November 2007 at [33].

64     See, for example, Barlow Clowes International Ltd v Eurotrust International Ltd [2005] UKPC

37, [2006] 1 WLR 1476.

Submissions

[100]   The  appellants’ case  on  s 17(2)  arises  from  the  fact  that  the  respondent applied to register the same marks in 2006 and 2007, withdrew those applications following opposition from the appellants, and then made the present application. Bad faith is said to arise not from the mere fact of abandonment and re-filing, but abandonment and re-filing for the same core goods and services with knowledge that there was a substantial amount of evidence of what is said to be deception and confusion.   This is amplified by a submission that the fresh applications failed to address “the underlying issue of substantial and ongoing confusion” between the marks.   There is a further contention that the respondent “was well aware that it would benefit from filing fresh applications by putting the appellants to significant cost and that its size and resources meant that the appellants would be swamped in the market place”.

[101]   The respondent’s submissions are taken into account in the evaluation that follows.

Section 17(2): evaluation

[102]   The following observations in Royal Enfield Trade Marks are apposite:65

An allegation that a trade mark has been applied for in bad faith is a serious allegation.  It is an allegation of a form of commercial fraud. A plea of fraud should not lightly be made (see Lord Denning MR in Associated Leisure v Associated Newspapers [1970] 2 QB 450 at 456) and if made should be distinctly alleged and distinctly proved. It is not permissible to leave fraud to be inferred from the facts (see Davy v Garrett (1878) 7 Ch D 473 at 489).

[103]   There  are  differences  between  pleadings  in  a  conventional  civil  action alleging fraud and those required in opposition to an application for a trade mark. But I am nevertheless satisfied that the observations as to what is required having regard to the gravity of the allegation are applicable.  The observation concerning inference is directly applicable.  This is because the appellants’ case depends entirely

on inferences to be drawn from the direct evidence, and not only in relation to the

65     Royal Enfield Trade Marks [2002] RPC 24 at [31].

subjective element (where inference may often be required) but also the objective element.

[104]   The Assistant Commissioner’s conclusion was as follows:

100.In my view, nothing sinister or untoward can be drawn from the mere fact that, having encountered difficulties with obtaining registration of its marks, the applicant chose to file fresh trade mark applications in respect of a narrower range of goods and services.

[105]   I agree.  There is no evidence justifying the inference that would have to be drawn. The fact of filing successive applications, with the earlier applications giving rise to some knowledge, at best warrants an assessment to see whether an adverse inference could properly be drawn, but it cannot be.  The contention to the essential effect that the respondent was attempting to game the system, or to grind the appellants down, has no evidential foundation.

The fourth ground of opposition: s 25(1)(b)

[106]   Section 25(1)(b) is as follows:

The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if … it is similar to a trade mark (trade mark C) that belongs to a different owner and that is registered, or has priority under section 34 or section 36, 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.

The Assistant Commissioner’s decision

[107]   The Assistant  Commissioner  rejected  this  ground  because  of  her  earlier conclusions  that  the use of the marks  would  not be likely to  deceive or cause confusion and the substantial dissimilarity between the respondent’s goods and services and the appellants’ services.

Evaluation

[108]   The essence of the submissions for the parties can adequately be captured in the evaluation  which  follows.   The evaluation  is  directed to  the three  essential elements of s 25(1)(b) as identified by Mr Gray.

[109]   The first question is whether there is similarity between the marks.  There is, as earlier noted.

[110]   The second question is whether there is similarity between the goods or services  of the  applicant  and  those  of  the opponent.   This  issue  also  has  been addressed and the conclusion is against the appellants.   The goods, and related services, of the respondent are markedly different from the services of the appellants.

[111]   The third question is whether use of the applicants’ mark is likely to deceive

or confuse. The Assistant Commissioner commented:

104.There  is  usually  a  considerable  overlap  in  the  assessment  of confusion under s 17(1)(a) and s 25(1)(b) of the Act unless, for example, an opponent’s actual use of its marks and the goods and services for which the marks are registered are not aligned.

There are some points of difference as to the approach to this question under each of the provisions, as implicitly recognised by the Assistant Commissioner.   However, these do not assist the appellants.  When the evidence relied on by the appellants is assessed at a general level, leaving aside particular elements of the Smith Hayden test and the approach to s 17(1)(a) discussed in the New Zealand cases, I am satisfied that use of the respondent’s mark is not likely to deceive or confuse.

The fifth ground of opposition: s 25(1)(c)

[112]   Section 25(1)(c) is as follows:

The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if … 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.

The Assistant Commissioner’s decision

[113]   The Assistant Commissioner rejected this of ground of opposition because, although there was sufficient awareness of the appellants’ mark for the threshold test under s 17(1)(a), the mark was not well known in New Zealand at the relevant date.

Evaluation

[114]   As with the preceding ground of opposition, I will note relevant submissions in this evaluation directed to the essential elements of this provision.

[115]   The first question is whether the appellants’ trade mark was well known in New Zealand at the relevant date.  The appellants submitted that it was, with this established by the evidence also relied on for the threshold enquiry under s 17(1)(a). The respondent submits that the evidence falls well short of what is required.

[116]   More is required to establish that a mark is well known in New Zealand than to establish the threshold test of awareness under s 17(1)(a). The Act does not define what is meant by “well known in New Zealand”.  It has been suggested that a party relying on this provision needs to demonstrate a level of reputation similar to that required  to  establish  the  tort  of  passing  off.    This  opinion  was  expressed  in Automobile Club de L’Ouest ACO v South Pacific Tyres New Zealand Ltd.66    The authority relied on a decision of the South African Supreme Court in McDonald’s Corp  v  Joburgers  Drive-Inn  Restaurant  (Pty)  Ltd.67      This  approach  has  been

followed in subsequent decisions of this Court.68

[117]   As noted by the authors of Intellectual Property Law: Patents and Trade

Marks,69   the South African  decision  may not  be directly applicable.   And  it  is suggested  that  to  equate  the  test  under  s 25(1)(c)  with  the  passing  off  test  is

66     Automobile Club de L’Ouest ACO v South Pacific Tyres New Zealand Ltd (2006) 70 IPR 639 (HC) at [124]-[125].

67     McDonald’s Corp v Joburgers Drive-Inn Restaurant (Pty) Ltd (1996) 36 IPR 11 (SCSA (AD)).

68     See, for example, Prada SA v The Farmers Trading Co Ltd HC Auckland CIV-2010-485-58, 21

September 2010 at [31], [44] and [46]; Intellectual Reserve Inc v Robert Sintes HC Wellington CIV-2007-404-2610, 13 December 2007 at [41]; New Zealand Milk Brands Ltd v NV Sumatra Tobacco Co HC Wellington CIV-2007-485-2485, 28 November 2008, at [48].

69     Brown  and  Others  Intellectual  Property  Law:  Patents  and  Trade  Marks  (looseleaf  ed, LexisNexis) at [TMA25.11](f).

simplistic.  For this appeal it is unnecessary to decide whether it is sufficient simply to say that the test is similar to the passing off test, and in this case both counsel, as well as the Assistant Commissioner, equated the test to that in passing off.  Fuller analysis is best left for a case where the decision turns on a precise definition of the meaning of “well known” as it is used in the section.   For present purposes it is sufficient to say that, on any interpretation of the words used, the level of awareness to be well known in New Zealand requires substantially more than what will be sufficient to establish the low threshold of awareness under s 17(1)(a).

[118]   The evidence relied on by the appellants, which has already been analysed, falls well short of establishing, on the balance of probabilities, that the appellants’ mark  is  well  known  in  New  Zealand.    Indeed,  the  evidence  relied  on  by  the appellants to seek to establish confusion or deception supports a positive conclusion that the appellants’ mark is not well known at all.  That observation is not intended in any way to disparage the appellants’ business.  There can be a successful business with barely any public reputation.   But that does not meet the statutory test under s 25(1)(c).

[119]   I therefore agree with the reason for the Assistant Commissioner’s rejection of this ground of opposition.   Given this conclusion it is strictly unnecessary to consider the other elements of s 25(1)(c). And the remaining provisions in s 25(1)(c) have a degree of ambiguity.70   However, both counsel made submissions on the other elements of the section, and in case  I am wrong on the first conclusion  I will consider at least some of the other elements, or at least note my conclusion.

[120]   For reasons already outlined, the appellants’ mark does not have a reputation in respect of goods or services which are the same as or similar to those of the respondent.

[121]   I am also satisfied that use of the respondent’s trade mark (“trade mark A”) would not be taken as indicating a connection in the course of trade between the respondent’s goods and Ms Hosking as the owner of the other mark, (“trade mark

D”).

70     This also is discussed by the authors of Copyright and Design, above n 69, at [TMA25.11](f).

[122]   In Intel Corporation Inc v CPM United Kingdom Ltd, Jacob LJ discussed the equivalent provision in the United Kingdom Trade Marks Act 1994, as follows:71

[29]     … I would hold that a “link” requires more than such a tenuous association between the two marks. If a trade mark for particular goods or services is truly inherently and factually distinctive it will be robust enough to withstand a mere passing bringing to mind when it or a similar mark is used for dissimilar goods or services. The average consumer is a reasonably sensible individual.   He is used to lots of trade marks in different fields – some of which may resemble trade marks for other fields.  In this country for example, for a long time Jif lemon juice and Jif washing up liquid co-existed happily, not to mention Jiffy for padded bags and condoms.  Sometimes, but perhaps not surprisingly, trade mark owners of big brands want more protection than they really need.

…

[35]     Turning to question 2, the further factors which I think should be taken into account are:

(a)       Whether, having regard to the nature of the goods or services for which the later mark is used, the average consumer would consider that there is an economic connection between the owners of the two marks, and

(b)       Whether the distinctiveness or repute of the earlier mark for the goods or services for which it is registered is really likely to be affected if the later mark was used for the specific goods or services covered by its registration…

[37]      … it is very important that the harm or prospect of harm must be real and tangible.  A mere possibility or assertion of damage is just too remote and would leave trade mark owners in too monopolistic a position.  Trade mark law is there to protect a proper system of competition, not to provide trade mark owners with overreaching rights which may obstruct trade.

[123]   In  Wistbray  Ltd  v  Ferrero  SpA,  Dobson  J  cited  those  observations  and described  them  as  “a  useful  contemporary  analysis  on  the  requirements  under s 25(1)(c)”.72   I agree.

[124] I also agree with Mr Williams’ submission, made in the light of the observations of Jacob LJ in particular, that the “connection” must be such as to give rise to the impression that the owner of the well known mark is involved in the production of the goods or services in question, or offering the goods or services, or

that the production or offering was licensed or sponsored by the owner of the well

71     Intel Corporation Inc v CPM United Kingdom Ltd [2007] EWCA Civ 431, [2009] RPC 15.

72     Wistbray Ltd v Ferrero SpA HC Wellington CIV-2007-485-460, 11 December 2008 at [40]-[43].

known mark.  In other words, that the appellants, assumed at this point to have a well known mark, associated with its business activities already described, were also involved in some way in the production or supply of the respondent’s goods.  There is no sufficient evidential foundation for that conclusion.

[125]   There is also the question of prejudice.   I am satisfied that the significant differences between the appellants’ services and the respondent’s goods and related services are such that the likelihood of material prejudice to the appellants is remote.

Costs

[126]   The respondent is entitled to costs on a category 2B basis as already fixed. There were no submissions on the appropriate time allocation under schedule 3, but there does not appear to be any reason why costs should not be fixed on a 2B basis. Unless the respondent contends that costs should be fixed on some other basis, there will be an order that the appellants pay the respondent’s costs on a 2B basis, together with reasonable disbursements with any issue as to particular items or the reasonableness of disbursements to be determined by the Registrar in the first instance.

[127]   If the respondent contends that they are entitled to costs on some other basis a memorandum in that regard should be filed and served by 29 January 2016 with any memorandum for the appellants in response to be filed and served by 19 February

2016.

Result

[128]   The appeal is dismissed.

[129]   There is an order that the appellants pay the respondent’s costs on a 2B basis

together with reasonable disbursements but subject to [127] above.

Woodhouse J

APPENDIX 1

Details of opposed marks

Trade mark application number 848087

Trade mark

TOMTOM

Trade mark name

TOMTOM

Trade mark type

Word

Classes

8, 38 and 39 [Nice Classification Schedule 9]

Goods/services

Class 9

Computer hardware and software; hardware and software to be used with (satellite and/or GPS) navigation systems; hardware and software for travel information systems for the provision of rendering of travel advice and/or information concerning service stations, car parks, multi- storey car parks, restaurants, car dealers and other information regarding travel   and   transport;    hardware   and   software   for   information management for the transport and traffic industries; hardware and software for the use of electronic maps; hardware and software to be used with electronic maps; electronic maps; hardware and software for route planners; hardware and software to be used with route planners; route planners (being hardware and software); hardware and software for digital dictionaries; digital dictionaries; hardware and software, in particular positioning, orientation and navigation-apparatus and ‘Global Positioning Systems’ (GPS) as well as parts thereof, components and accessories for these, such as, but not limited to, connecting cables, (GPS and/or satellite) receivers and holders for pocket personal computers, not included in other classes; satellite and radio transmission and receiving apparatus; telecommunication installations, networks and apparatus; computer terminals, all in particular to be used with and for the use of navigation systems, route planners and/or digital maps, magnetic data carriers and recording discs; audio and video apparatus; hand-held personal computers; personal digital assistants; electric and electronic   apparatus   and   instruments   for   providing   information regarding maps, navigation, traffic, weather and interesting locations; alarm apparatus and instruments to be used for tracking and tracing vehicles.

Class 38

Secured   or   not   secured   telecommunication   services,   such   as transmission, storage and passing-on of digital data, light, sound, data, information  and  image  signals,  as  well  as  providing  and  making available the (tele)communication infrastructure necessary for this, including cable, radio and satellite networks, all in particular for navigation  systems,  route  planners  and  the  use  of  electronic  maps;

telecommunication and (wireless) data communication, by means of

multimedia or otherwise, including videotext, the internet, GSM (global system for global communication), and WAP (wireless application protocol); wireless transmission of digital data; communication by way of computer terminals; telecommunication services for the communication with means of transport; rental of telecommunication apparatus; providing access to computers as part of telecommunications infrastructure, especially for navigation systems, route planners and the use of electronic maps, technical consultation concerning all services mentioned above.

Class 39

Navigation services; information services regarding traffic and traffic congestion; provision of information regarding travel; provision of data regarding the positioning of goods flows, transports, means of freight transports and vehicles (tracking and tracing); provision of information to travellers regarding fares, time tables and means of public transport; services of a travel agency, namely the booking of rental services of cars, boats and other vehicles; all of the aforesaid services also provided via  a  communications  network or  a  mobile telephone  or a  wireless navigation device.

Applicant

TomTom International B.V.

Statement of use

The mark is being used or proposed to be used, by the applicant or with his/her consent, in relation to the goods/services

Status

Under opposition

Filed on

23 August 2011

Trade mark application number 848088

Trade mark

Trade mark name

TOMTOM

Trade mark type

Combined

Classes

9, 38 And 39 [Nice Classification Schedule 9]

Goods/services

Class 9

Computer hardware and software to be used with satellite and/or GPS navigation systems for navigation purposes; computer software to be used with route planners, electronic maps, and digital dictionaries for navigation and translation purposes; software for travel information systems   for   the   provision   of   rendering  of   travel   advice  and/or information  concerning  service  stations,  car  parks,  restaurants,  car dealers and other travel and transport related information; software for information  management   for  the  transport  and  traffic  industries; software  to  be  used  for  viewing  electronic  maps;  downloadable electronic maps; software for operating route planners; route planners in the nature of handheld personal computers; software for operating electronic digital dictionaries; electronic dictionaries; location, orientation and navigation, and global positioning systems (GPS) consisting of computers, computer software, transmitters, GPS and/or satellite receivers, network interface devices, connection cables, and parts  and  fittings  thereof;  holders  for  pocket  personal  computers, satellite and radio transmission apparatus technology, namely, processors, mobile telephones and receivers; telecommunications installations, networks and apparatus, namely, mounting racks for telecommunications hardware, telecommunication switches; computer terminals, all in particular to be used with navigation systems, route planners and/or digital maps; blank magnetic and disc shaped data carriers; audio and video apparatus namely, audio and video receivers and   processors;   handheld   personal   computers;   personal   digital assistants.

Class 38

Secured or unsecured telecommunication services, namely, transmission and delivery of digital data, light files, sound files, data, information and image signals by means of computer, cable radio and satellite, transmissions, all in particular for navigation systems, route planners, and the use of electronic maps; wireless transmission of data, by means of videotext, the internet, GSM (global system for mobile communication) and WAP (wireless application protocol); wireless transmission of digital data; electronic transmission of data and documents via computer terminals; rental of telecommunication equipment; technical consultation with all of the aforesaid.

Class 39

Providing navigation and information services, namely, information regarding traffic and traffic congestion; provision of information regarding travel; provision of data regarding the tracking and tracing of goods; transport services, including freight transportation; provision of information  to  travellers  regarding  fares,  time  tables  and  means  of public transport; services of a travel agency, namely the booking of rental services of cars, boats and other vehicles; all of the aforesaid services also provided via a communications network or a mobile telephone or a wireless navigation device.

Applicant

TomTom International B.V.

Statement of use

The mark is being used or proposed to be used, by the applicant or with his/her consent, in relation to the goods/services

Status

Under opposition

Filed on

23 August 2011

APPENDIX 2

Details of opponents’ New Zealand trade mark registrations

Trade mark registration number	292250
Trade mark	TOM TOM
Classes	35
Goods/services	Marketing and advertising services; business communications services; public relations services; planning and implementation of public awareness campaigns; launches of products or services
Priority date	12 May 1998

Trade mark registration number	292251
Trade mark	TOM TOM
Classes	41
Goods/services	Planning   and   facilitation   of   conferences,   seminars   and   training programmes
Priority date	12 May 1998

Trade mark registration number

292252

Trade mark

TOM TOM

Classes

42

Goods/services

Visual communications and design services, creative writing services;

editing and proofing services

Priority date

12 May 1998