Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd
[2024] NZHC 982
•30 April 2024
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE
CIV-2023-485-587
CIV-2023-485-589 [2024] NZHC 982
UNDER the Trade Marks Act 2022 and Part 20 of the High Court Rules 2016 IN THE MATTER OF
an opposition to trade mark applications nos. 1079021 (FIREBOX) and 1079028 (FYREBOX)
AND
IN THE MATTER OF
BETWEEN
an application for revocation of trade mark registration no. 1049845 (FYREBOX)
TRAFALGAR GROUP PTY LTD
Appellant
AND
BOSS FIRE & SAFETY PTY LTD
Respondent
Hearing: 19 February 2024 Appearances:
A J Pietras and V J Powell for Appellant G C Williams for Respondent
Judgment:
30 April 2024
JUDGMENT OF GRAU J
Introduction
[1] The appellant, Trafalgar Group Pty Ltd (Trafalgar), appeals two decisions of an Assistant Commissioner of Trade Marks, Assistant Commissioner Robb (the AC), delivered on 31 August 2023 in which the AC:
TRAFALGAR GROUP PTY LTD v BOSS FIRE & SAFETY PTY LTD [2024] NZHC 982 [30 April 2024]
(a)upheld Boss Fire & Safety Pty Ltd’s (Boss’) opposition to Trafalgar’s trade mark applications nos. 1079021 (FIREBOX) and 1079028 (FYREBOX) which, as a result, were refused registration (the 587 appeal);1 and
(b)declined Trafalgar’s application for invalidity of Boss’ trade mark registration for FYREBOX (trade mark no. 1049845) (the 589 appeal);2
[2] The basis of both decisions was the AC’s finding that Boss had the first use of the trade mark FYREBOX in New Zealand. The central issue in both appeals is the question of who, as between Trafalgar and Boss, had the first use of the FYREBOX mark (or a mark that was substantially similar) in New Zealand.
Background
A trade mark dispute in Australia
[3] Trafalgar and Boss are Australian companies involved in the manufacture of passive fire protection products. The trade marks FIREBOX and FYREBOX are used by both parties in respect of intumescent building materials for preventing the spread of fire.3 The parties have been involved in a dispute over the use of these trade marks in Australia.4
1 Trafalgar Group Pty Ltd v Box Fire & Safety Pty Ltd [2023] NZIPOTM 38 [the Registration Decision].
2 Boss Fire & Safety Pty Ltd v Trafalgar Group Pty Ltd [2023] NZIPOTM 37 [the Invalidity Decision].
3 Intumescent building materials expand in a fire. The products of both parties have intumescent building material lining metal boxes. The boxes are fitted where cables or pipes pass through a wall. In the event of a fire, the intumescent lining expands to block the passage of the fire from one side of the wall to the other.
4 In one case Boss was unsuccessful in challenging the registration of the mark FIREBOX by Trafalgar (then called Fire Containment) in Australia; Boss Fire and Safety Pty Ltd v Fire Containment Pty Ltd [2019] ATMO 43, (2019) 146 IPR 108. In another case Boss succeeded in opposing a FYREBOX mark that Trafalgar sought to register by relying on an earlier pending application it had in respect of the mark FYREBOX; Boss Fire and Safety Pty Ltd v Fire Containment Pty Ltd [2019] ATMO 107. The Federal Court of Australia considered each party’s appeal against the aforementioned trade mark decisions, as well as proceedings related to patent infringement. Patent infringement was not established. Boss succeeded in its appeal of its unsuccessful opposition to Trafalgar’s registration of FIREBOX, but Trafalgar’s appeal against Boss’ successful opposition to Trafalgar’s registration of FYREBOX did not succeed; Rakman International Pty Ltd v Boss Fire & Safety Pty Ltd [2022] FCA 646, (2022) 166 IPR 264.
Registration of trade marks in New Zealand
[4] On 30 August 2016, Boss registered FYREBOX (no. 1049845) as a trade mark in New Zealand.5
[5] On 24 October 2017, Trafalgar applied to register in New Zealand the marks FIREBOX (no. 1079021) and FYREBOX (no. 1079028).6 Boss filed notices of opposition to Trafalgar’s applications. Given Boss’ pre-existing FYREBOX mark, Trafalgar also applied under the Trade Marks Act 2002 (the TMA) to the Intellectual Property Office of New Zealand (IPONZ) for a declaration of invalidity of Boss’ FYREBOX mark and for its removal from the trade mark register.
The IPONZ decisions
[6]Trafalgar’s applications were heard together.
The application for a declaration of invalidity
[7] The IPONZ’s first decision relates to Trafalgar’s application that Boss’ FYREBOX registered trade mark be declared invalid pursuant to s 73 of the TMA.7 Trafalgar’s position was that Boss was not entitled to claim to be the owner of the trade mark in New Zealand when Trafalgar had used the trade mark in New Zealand before Boss had used it, and before Boss had filed its application to register FYREBOX as a trade mark here. Trafalgar also claimed it had a reputation for FYREBOX in New Zealand based on its earlier use of the trade mark, meaning that, when Boss filed its application, Boss’ use of FYREBOX would have been likely to deceive or confuse customers.8
[8] Trafalgar claimed first use by virtue of a 14 March 2016 LinkedIn post by Mr John Rakic, the Australian-based Managing Director of Trafalgar.9 In the post, Mr Rakic announced the launch of Trafalgar’s Fyrebox product. The post was
5 In respect of class 19 of goods. Class 19 includes mainly materials for building and construction.
6 Both trade marks were in respect of class 9 of goods. Class 9 includes mainly apparatus and instruments for scientific or research purposes, as well as safety and life-saving equipment such as fire-extinguishing apparatus.
7 The Invalidity Decision, above n 2.
8 At [4]–[5].
9 At [7] and [31].
described as a “pre-launch teaser” in evidence before the AC from Trafalgar’s General Manager, Mr Vickery. Mr Vickery noted that Mr Rakic’s LinkedIn post was “sent” to over 500 New Zealand followers, and it received “likes” from at least three New Zealand based followers.10 Mr Vickery also referred to a similar LinkedIn post on 9 June 2016 by Trafalgar’s Sales Manager, Ms Leanne Freel.11 Two people who “liked” the post provided evidence; one who did not recall liking the post, and the other who did. The person who recalled liking the post also recalled installing a Trafalgar Fyrebox product at a customer site in Hamilton (although he did not recall the customer’s name or the name of the company that supplied the product).12
[9] In support of its trade mark registration, Boss relied on evidence of its managing director, Mr Mark Prior. Mr Prior’s evidence included that he had referred to a sample product as “Fyrebox” at a meeting with Potter Interiors (Potters) in New Zealand in November 2014. Mr Prior provided information that the Fyrebox product was sold to Potters in 2015 and 2016. He said he had also discussed the Fyrebox product at a Ryman Healthcare construction site in Auckland in December 2015.13
[10] Mr Prior’s evidence also included an email exchange that followed a customer enquiry to Boss (the so-called Fisher Emails). The enquiry and the exchanges were set out by the AC as follows:14
Date: 4 December 2015
From: Dennis Fisher (Axis Professional Design in New Zealand). To: Boss – website enquiry
Message:I have tried to contact your NZ office but the phone number appears to be disconnected. Do you still have a NZ office?? I was trying to obtain some information on the Boss cable transit systems. I have been speaking with Potters and [they] advised I can get further information on your website, and whilst looking on your website I notice a NZ contact hence my enquiry.
10 At [32].
11 At [34]; Ms Freel did not give evidence for Trafalgar and seems to have previously been employed by Boss.
12 There does not appear to have been any evidence about the date of the installation either.
13 At [44].
14 At [45].
Date: 4 December 2015
From: Mark Prior
To: Daniel Bryant (Operations manager for Boss)
Message: DB
Can you call or email below re CT120 info? Ta
Date: 4 December 2015
From: Daniel Bryant
To: Dennis Fisher
Cc: Mark Prior
Message: Good morning Dennis
Thanks for your enquiry into our Fyrebox Cable Transits.
Our distributor in NZ is Potter Interiors and they can help you with prices…
Date: 4 December 2015
From: Mark Prior
To: Daniel Bryant
Message: DB
Read his enquiry, he is already talking to Potters!
He needs product info, not prices. Please call him to resolve.
Date: 4 December 2015
From: Daniel Bryant
To: Mark Prior
Message: sorry just saw that, I’m on it.
Date: 8 December 2015
From: Daniel Bryant
To: Mark Prior
Message: …
Dennis just wants prices on CTs direct from us, told him he has to go through Potters. Can you let Phil know.
[11] After dealing with evidential issues,15 the AC turned to consider Trafalgar’s first ground for invalidity; being that Boss was not the owner of the FYREBOX mark,
15 Trafalgar had applied to cross-examine Mr Prior, however the application was declined. Both parties also raised issues about the admissibility of the evidence advanced by the other. Of particular relevance in this appeal is that Trafalgar challenged the reliability of Mr Prior’s evidence in respect of his oral use of the FYREBOX mark in New Zealand. These evidential issues are discussed later in this judgment to the extent that they are relevant.
as required by s 32(1) of the TMA, on the ground that Trafalgar had first use of that mark.
[12] First, the AC was satisfied that Boss’ registered mark of FYREBOX was identical or substantially identical to the FYREBOX mark Trafalgar claimed to have used in New Zealand—given that the difference between upper case or lower case presentation was an insignificant difference.16
[13] Next the AC was satisfied both parties had used FYREBOX in New Zealand before Boss’ deemed registration date of 30 August 2016. The issue was then which party used it first.17
[14] The AC was satisfied that the Boss email exchange in December 2015 (the Fisher Emails) amounted to a use of FYREBOX as a trade mark, meaning that Boss had first use of the mark. Read as a whole, the email exchange conveyed that Boss was interested in New Zealand, had a distributor there and was prepared to provide product information to potential customers in New Zealand.18 The AC did not agree with Trafalgar’s characterisation of the exchange as Boss saying it did not want to trade in New Zealand. As the AC put it: 19
Mr Fischer [sic] is in New Zealand and he wants information on the cable transits. Mr Bryant wrongly believes it is a price enquiry for “Fyrebox Cable Transits”. Mr Prior tells Mr Bryant of his error and to follow up. This indicates an intention to deal with Mr Fischer [sic], even though the product will need to be supplied by Boss’ New Zealand distributor. The use of FYREBOX is in relation to the goods and is used in New Zealand. Mr Fischer [sic] was looking for product specifications and then to purchase product. Boss did not say they cannot help. Rather they pointed to their New Zealand sales through a distributor. I consider the reference to “Fyrebox Cable Transit” is use of the trade mark in relation to the goods in New Zealand.
[15] This finding disposed of the s 32(1) ground of invalidity. Boss was entitled to claim to be the owner of the FYREBOX trade mark when the application was made.20
16 At [84].
17 At [85].
18 At [90].
19 At [91].
20 At [92].
[16] The AC went on to explain that, had it been necessary to consider Trafalgar’s claim that the first use of that mark occurred in Mr Rakic’s LinkedIn post, his “preliminary view” was that the post was not use of the trade mark in New Zealand.21 Although the AC acknowledged that use of a trade mark on a website directed to New Zealand consumers may be considered use of the mark in New Zealand,22 the AC’s reasoning was that:
94. The post is described as a pre-launch teaser or a blast for Trafalgar’s product that was sent to 500 New Zealand followers. The basis for the claim to 500 followers is not clear. Boss is critical of the characterisation of a LinkedIn post being “sent”. I agree with that criticism. Similarly, I consider describing the post as a “promotional blast”, implying it is sent out to people, goes beyond the nature of LinkedIn posts.
…
97. Mr Rakic’s post is not directed to New Zealand. Trafalgar is an Australian business and Australian contact details are provided. There is no reference to New Zealand. The limited number of “likes” merely indicates the post has been seen by someone in New Zealand. It is similar to an Australian website that can be accessed from New Zealand. Without more it is not clear the use of FYREBOX is in relation to goods being or soon to be offered in New Zealand.
[17] The AC then turned to consider Trafalgar’s second ground of opposition; that Boss’ use of the FYREBOX trade mark at the registration date would have been likely to deceive or confuse, giving rising to both passing off and a breach of the Fair Trading Act 1986 (the FTA), and therefore being in breach of both ss 17(1)(a) and (1)(b) of the TMA respectively.23 In order to claim that Boss’ use caused deception and confusion, Trafalgar was required to establish a reputation for its FYREBOX mark to raise the possibility of the public being deceived or confused.24 The AC described Trafalgar’s evidence on its claimed reputation as “weak”.25 He was not satisfied it met the low threshold required to establish reputation, thus the s 17(1)(a) ground failed.26 It followed that the AC was not prepared to infer Trafalgar had the necessary goodwill or reputation in FYREBOX to found any issue about Boss’ use of FYREBOX in terms
21 At [93].
22 At [95].
23 At [100].
24 At [102].
25 At [107].
26 At [107]–[108].
of passing off or misrepresentation under the FTA. Accordingly, the s 17(1)(b) ground of invalidity was also unsuccessful.27
[18] The final bad faith ground of opposition under s 17(2) of the TMA was likewise unsuccessful on the basis of a lack of evidence. There was no conduct by Boss or other circumstances to indicate Boss’ application to register the FYREBOX mark was filed in bad faith.28
[19] For those reasons, the AC dismissed Trafalgar’s application that Boss’ registered mark no. 1049845 be declared invalid. Boss’ FYREBOX mark thus remains on the trade mark register.29
Trafalgar’s application for registration and Boss’ opposition
[20] The second IPONZ decision relates to Trafalgar’s applications to register the marks FIREBOX and FYREBOX in respect of class 9 of goods.30 The relevant dates for consideration of registrability were 24 October 2017 for the FYREBOX mark, and 24 May 2017 for the FIREBOX mark.31 The AC noted that the same evidence was relied on in the parallel invalidity application.32
[21] The first ground of opposition by Boss was that, pursuant to s 25(1)(b) of the TMA, use of the FIREBOX and FYREBOX marks by Trafalgar was likely to deceive or confuse when compared to Boss’ own FYREBOX registration.
[22] The AC was satisfied that the parties’ respective goods are similar in that “[b]oth sets of goods are used for controlling or suppressing fire and the users and trade channels are the same”.33 The AC was similarly satisfied that the surrounding circumstances in which the parties’ marks would be used—such as the market in which
27 At [109]–[110].
28 At [115]–[116].
29 At [119].
30 The Registration Decision, above n 1.
31 At [12].
32 At [16].
33 At [30]; citing the factors provided in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 28 at 296–297 for determining whether goods are sufficiently similar.
the goods would be offered for sale and the character of the consumers involved in that market—would be the same.34
[23] The AC also found that the marks sought to be registered by Trafalgar were the same or similar to the mark already registered by Boss.35 On that basis, the AC concluded that that “[t]he similarity of the goods and the surrounding circumstances leave no room to reasonably infer deception or confusion is not likely”.36 This finding was enough to dispose of Trafalgar’s application for registration.
[24] The AC therefore considered that he did not need to discuss the other grounds of opposition in any detail, although he made some brief comments:
(a)finding insufficient evidence as a basis for Boss’ claim (under s 17(1)(a)) of its reputation for the FYREBOX mark in New Zealand;37
(b)rejecting Boss’ claim of bad faith (under s 17(2));38 and
(c)upholding the s 32(1) ground of opposition on the grounds that the Boss registered trade mark was the same or substantially identical as the mark Trafalgar sought to register and had been used on the same or substantially the same goods. Given Boss’ first use of the mark, Trafalgar could not claim to be the owner.39
Approach on appeal
[25] Appeals from decisions of an AC are general appeals which proceed by way of rehearing.40 This Court is required to come to its own view on the merits of the case. The weight it gives to the decision of the IPONZ is a matter for its own judgement.
34 At [32]; citing the guiding principles in Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) [Pioneer Hi-Bred] at 61 as to the relevant circumstances for determining deception or confusion.
35 At [36].
36 At [38].
37 At [43].
38 At [50].
39 At [53].
40 High Court Rules 2016 (HCR), r 20.18; Trade Marks Act 2002 (TMA), s 170.
[26] The appellant, Trafalgar, bears the onus of satisfying this Court that its decision should differ from the decisions under appeal. If the Court comes to a different conclusion from the IPONZ, it is entitled to take its own view, but it is only justified in interfering with an appealed decision if the Court considers that it is incorrect.41
[27] Given the nature of these two appeals, the outcome in respect of the 589 appeal is dispositive of the 587 appeal. That is because, if this Court upholds the AC’s decision that Boss had the first use of the FYREBOX mark in New Zealand, then an appeal against IPONZ’ decision not to register Trafalgar’s marks falls away. Both parties accept that is the case.
The law: registration of trade marks in New Zealand
[28] The starting point is that a trade mark must be registered on the trade mark register administered by the IPONZ to receive protection in New Zealand. The process for obtaining registration of a trade mark is contained in the TMA.
[29] Under s 32(1) of the TMA, a person “claiming to be the owner of a trade mark” may apply for the registration of their mark in respect of particular classes of goods and/or services.42 As expanded on below, the “owner” of a mark is the person who “used” it first. “Use” of a sign or trade mark is defined in ss 6 and 7 of the TMA such that a trade mark is “used” in relation to goods when it is used on, or in physical or other relation to, the goods.43
[30] Once an application to register a trade mark is made, the Commissioner of Trade Marks (the Commissioner) must examine the application to determine whether it complies with the requirements of the TMA.44 If the Commissioner is satisfied the application meets the requirements of the TMA, it must accept the application.45 The Commissioner must then advertise it.46 At this point, another person may oppose the
41 See the discussion in Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [4]–[5].
42 If different people apply for the registration of trade marks that are identical or similar to each other and that are in respect of identical or similar goods or services, the first application received by the Commissioner has priority (TMA, s 34).
43 TMA, ss 6 and 7.
44 Section 39.
45 Section 40.
46 Section 46.
application being advertised,47 and must file a notice of opposition setting out a statement of the grounds of opposition.48 The trade mark applicant then files a counter-statement addressing these grounds.49 The Commissioner must then hear the parties, consider the evidence, and determine whether the trade mark should be registered.50 If a mark is subsequently registered, the “deemed date of registration” is backdated to the date of application.51
[31] Part 2 of the TMA sets out the requirements for registrability of which the Commissioner must be satisfied. Relevant to these appeals are ss 17 and 25. Section 17 sets out absolute grounds for not registering a trade mark. These grounds are focused on the qualities inherent in the applicant’s mark itself:
17 Absolute grounds for not registering trade mark: general
(1)The Commissioner must not register as a trade mark or part of a trade mark any matter—
(a)the use of which would be likely to deceive or cause confusion; or
(b)the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court; or
(c)the use or registration of which would, in the opinion of the Commissioner, be likely to offend a significant section of the community, including Māori.
(2)The Commissioner must not register a trade mark if the application is made in bad faith.
…
[32] Section 25 sets out so-called “relative” grounds for not registering a trade mark. It is focused on the relative interests of competing trade mark holders. The Commissioner must not register a mark if it is identical or similar to one that is already registered in respect of the same or similar goods or services where use of the mark sought to be registered would be likely to deceive or confuse.52
47 Section 47(1).
48 Section 47(2).
49 Section 48(1).
50 Section 49.
51 Section 5, definition of “deemed date of registration”.
52 Section 25(1)(a) and (b).
[33] A registered trade mark is presumed to be valid.53 Nevertheless, the Commissioner may alter the trade mark register. Trade marks may be removed from the register when an aggrieved person applies for a declaration that a trade mark is invalid under s 73 of the TMA. Generally speaking, a trade mark is invalid under s 73 where it was not registrable under pt 2 at the deemed date of registration.54 A successful application under s 73 results in the impugned trade mark being treated as if it had not been registered and the Commissioner may alter the register accordingly.55
The onus of proof
[34] Where invalidity of an already registered mark is claimed, the applicant bears the overall legal onus to establish invalidity. The applicant must establish, on the balance of probabilities, that the impugned mark did not qualify for registration at the time the application was filed.56
[35] In contrast, an application opposing the registration of a trade mark places the overall onus on the trade mark applicant to prove that their mark was registrable at the date of their application.57
Is there a qualification to the onus in this case?
[36] Trafalgar accepts it starts with the overall burden of proving its case on the balance of probabilities but submits that burdens shift depending on the evidence in play. It further contends that when a party in Boss’ position raises an affirmative defence (that Boss had first use of the mark in New Zealand), it carries the burden of proving first use on the balance of probabilities.
53 Section 162.
54 Section 73(1).
55 Section 74.
56 Fredco Trading Ltd v Miller (2006) TCLR 751 (CA) at [46].
57 The North Face Apparel Corp v Sanyang Industry Co Ltd [2014] NZCA 398 [The North Face] at [21].
[37]I do not accept that submission for the following reasons:
(a)First, Boss has not raised an affirmative defence. Affirmative defences are in the nature of facts other than those alleged which, if proven, will defeat a claim, even if all the allegations are true. In other words, they are matters of defence which do not arise in themselves from admissions or denials of allegations.58 Obvious examples are limitation claims, claims of undue influence in entering a contract, or contributory negligence. In this case, however, Boss has only denied Trafalgar’s claim of first use, by pointing to evidence that Boss had first use. That is not the same as a new positive allegation.
(b)Secondly, the submission is based on what appears to be confusion between the legal burden on a party (being what must ultimately be proved in order to win the case) and the evidential burden on a party to adduce evidence on a particular point. In this case, Trafalgar, as it accepts, has the overall burden of establishing the invalidity of Boss’s trade mark, on the basis that Trafalgar had first use. Boss’ response is that it had the first use of the mark, thus Boss needs to point to evidence of such use, otherwise Trafalgar’s evidence would be unchallenged. And, as noted above, it is for Trafalgar to persuade this Court that the decision under appeal was incorrect.
(c)Thirdly, I do not consider the High Court authority relied upon by Trafalgar, Burden v ESR Group (NZ) Ltd, is applicable.59 It concerns copyright, not trade marks, and the comments about the burden of proof arose in a case in which specific counter allegations were made that went well beyond the denial. In contrast, the Court of Appeal has considered the issue of onus in relation to ownership under s 32 of the
58 See Jessica Gorman and others (eds) McGechan on Procedure (online looseleaf ed, Thomson Reuters) at [HR5.48.01] and [HR5.48.15] and the authorities cited therein.
59 Burden v ESR Group (NZ) Ltd [2016] NZHC 1542.
TMA in The North Face Apparel Corp v Sanyang Industry Co Ltd (The North Face).60 In that case, the Court stated that:61
In order to establish ownership, the applicant [for trade mark registration] must establish that it is the first person to use the mark in New Zealand; and that, if challenged, there is no prior use by another party.
[38] Therefore, although Boss would clearly have an evidential onus to point to evidence it says establishes that it had first use of the relevant mark, the ultimate onus remains on Trafalgar to show that there was no prior use by another party. This is the case even “if challenged”.
Was the AC correct to find Boss had the first use of FYREBOX in New Zealand?
[39]As above this is the determinative issue for both appeals.
The Boss email exchange in December 2015
[40] Trafalgar’s position is that the AC erred in finding that the Fisher Emails amount to use of the FYREBOX mark as a trade mark because use of that mark in the emails did not amount to a trade or an offer to trade.
[41] Trafalgar relies on the High Court of Australia’s decision in Moorgate Tobacco Ltd v Philip Morris Ltd (No 2) (Moorgate),62 drawing an analogy with it to contend that there was no evidence of a sale or an offer to sell a FYREBOX branded product in New Zealand by Boss before Trafalgar’s first use. Trafalgar also submits that Boss’ own sale records demonstrate it had not sold any FYREBOX branded cable transits to New Zealand before Trafalgar’s first use. Before March 2016, Boss’ New Zealand’s distributor, Potters, had not made any decision to take on those products. Rather, in the relevant period, Potters was only selling Boss’ “Intu-Clamp” branded cable transits. And there was no evidence that Potters was on board with a switch from Intu- Clamp to FYREBOX at the time of the emails.
60 Above n 57.
61 At [22] (citations omitted).
62 Moorgate Tobacco Ltd v Philip Morris Ltd (No 2) [1984] HCA 73, (1984) 56 ALR 193 (Moorgate) at 433–434.
[42] Boss’ position is that it is incorrect to say there is no offer to trade shown in the Fisher Emails. Boss points to the email from Daniel Bryant (from Boss) to Mr Fisher (who made the enquiry) thanking him for his enquiry into Fyrebox cable transits, telling him who the New Zealand distributor is, and that the distributor, Potters, can help with prices. Mr Bryant is then corrected by Mr Prior (who had been copied in), who says that Mr Fisher is wanting product information, not prices. The only thing Mr Bryant got wrong was that it was a price enquiry, not that it was about the Fyrebox product. The use of the FYREBOX mark was in relation to goods that Boss could and would supply in New Zealand through its distributor, and that amounts to use in New Zealand.
[43] When the final email in the exchange is sent on 8 December 2015, the use of the FYREBOX mark has already happened. The only thing Boss is unwilling to do is to give prices directly to Mr Fisher, because Boss has a New Zealand distributor for the Fyrebox product. In other words, Boss has appointed a New Zealand distributor for its product in respect of which there is, or will be, use of a mark for the purposes of the TMA. The Fisher Emails show Boss is willing to deal with products bearing the FYREBOX mark in New Zealand, though the supply of it will be through their distributor.
[44] Boss notes too that the email from Mr Bryant to Mr Fisher on 4 December in which he refers to “our Fyrebox Cable Transits” is also copied into Potters, which indicates Potters, the distributor of the product, knows by this time that the relevant product is called Fyrebox. What is being relayed to the potential customer is that he can buy the Fyrebox product in New Zealand from Potters—otherwise there would have been no need to copy Potters in.
[45] Boss’ position is, in essence, that when the role of the appeal court is error correction, the email exchange and the AC’s interpretation of it demonstrate there is no error to correct.
[46] I agree. In my view, the Fisher Emails demonstrate, as the AC found, that Boss has a New Zealand distributor for its Fyrebox product, and Boss is willing to provide product information to potential customers in New Zealand. The New Zealand
customer has already spoken to the New Zealand distributor who advised him he could get further information on the Boss website. The customer then saw a New Zealand contact and made an enquiry about the product. Mr Bryant answers the customer enquiry but is mistaken that it is a pricing enquiry for the Fyrebox cable transits. That does not indicate any confusion about the product. It is only a mistake as to the nature of the enquiry. Mr Bryant is told of his error and to follow up, which indicates an intention to deal with the New Zealand customer. I agree the exchange read as a whole indicates an intention by Boss to deal with a potential customer in New Zealand, although the product will ultimately be supplied by its New Zealand distributor.63 I agree that Mr Bryant’s reference to “Fyrebox Cable Transits” is use by Boss of the trade mark FYREBOX in relation to goods in New Zealand.
[47] I do not agree with Trafalgar that Mr Bryant’s reference to the Fyrebox product was an assumption only. In my view, his other references to CT120s and CTs indicate reference to Boss’ cable transit system product, but the reference to “Fyrebox Cable Transits” is reference to the particular brand of cable transit system being sold by Boss. Nor do I agree that Boss was fobbing the customer off onto Potters and that Boss did not know whether the customer was after the Fyrebox product or a different product. Instead, it is clear that Boss had a distributor in New Zealand for the Fyrebox cable transit and was willing to provide product details but not pricing, which was a matter for the distributor. Put simply, I accept Boss’ submission that the words “cable transit(s)” describe the product and “Fyrebox” is the brand of such product.
[48] The short point is that, looking at the Fisher Email exchange as a whole and how the AC interpreted it, there is no error to correct on appeal.
[49] I add for completeness that I am unable to agree with Trafalgar that there is an analogy to be drawn with the Moorgate decision. In that case the distributor had not made any decision about whether to take on the product or the trade mark; there had only been preliminary discussions and material provided to show what Philip Morris might market in Australia. In contrast, in my view, the Fisher Emails in the present
63 That a particular product is to come through a distributor does not prevent a person from claiming ownership of the relevant mark: Settef SpA v Riv-Oland Marble Company (Vic) Pty Ltd (1987) 10 IPR 402 at 414–415 and 418.
case demonstrate that Boss did have a distributor for its products in New Zealand, including for the Boss Fyrebox cable transits.
[50] Because the Fisher Emails are determinative of the issue of first use, like the AC, I strictly do not need to discuss Mr Prior’s evidence about his verbal use of FYREBOX in New Zealand and issues about the reliability of his recall. However, there was much discussion at the hearing about Mr Prior’s evidence, and strong criticisms by Trafalgar both as to his reliability and that Trafalgar was not permitted to cross-examine him. Accordingly, I will make some brief comments only.
[51] I accept the general proposition that the fallibility of memory is recognised by the courts. Mr Prior’s evidence in his 2019 affidavit included claims of his verbal references to FYREBOX in relation to Boss Fire’s products, from 2014 onwards, including in New Zealand. That is some five years before his evidence was given.
[52] There is also the difficulty that Mr Prior was not cross-examined and thus his evidence was, strictly speaking, unchallenged. I am aware that cross-examination is rare in IPONZ hearings. I am also aware that Trafalgar wanted to cross-examine Mr Prior, but its application was declined. Trafalgar is nevertheless highly critical of Mr Prior’s evidence.
[53] It is not possible to resolve the issue of the reliability of Mr Prior’s recall on this appeal. However, I agree with Boss that Mr Bryant’s use of FYREBOX in the Fisher Emails tends to corroborate Mr Prior’s evidence that he had already been referring to the product as “Fyrebox” for some time prior (as his evidence set out, from around 2014). The Fisher Emails suggest that Mr Prior and Mr Bryant are both talking about the same product, and they know they are talking about the same product, whether the reference is to CT-120 or Fyrebox––from which it follows that FYREBOX must have been a term that was already generally in use at Boss for a reasonable time prior to December 2015. Importantly, how Mr Bryant refers to Boss’ product externally at this time, that is, by calling it Fyrebox when communicating with a customer, is not an ex post facto recollection of external use in the way that Mr Prior’s is.
[54] I note too that one of Mr Prior’s claimed verbal references to FYREBOX in New Zealand was during a meeting with Ryman Healthcare in Auckland on 8 December 2015, which also was the date of the final of the Fisher Emails that related to the New Zealand customer enquiry. That also tends to support the inference that Mr Bryant used FYREBOX to refer to the product the subject of the customer enquiry, because that is how the product was known by that time (including by the New Zealand distributor, Potters). I also note Mr Prior’s evidence on his use at the Ryman meeting went beyond a bare assertion, when Mr Prior said he had a particular reason for his recollection because a joke was made at the meeting about the name. To reject his evidence entirely would require me to find he was either mistaken or lying, which I cannot do. I do not place a great deal of weight on this evidence (and I do not need to in any event), but it does provide some support for Boss’ position that by the end of 2015, FYREFOX was already being used by Boss (both internally, and externally, including in New Zealand) to refer to its cable transit product.
[55] There was a significant amount of other evidence referred to by both parties. Much of it related to use of the mark in Australia, or after Boss’ first use in New Zealand (or after Trafalgar’s first use). Other evidence, for example evidence of sales to Potters, did not assist me greatly, given the widely divergent interpretations that were urged upon me. I mean no disrespect to the parties by not referring to all of this evidence, but in my view, it is simply unnecessary to do so when I have found a clear first use by Boss in December 2015.
[56] Given I have found some support for Mr Prior’s evidence that he was already using FYREBOX to refer to the product, the fact there was concurrent and residual use of the “Intu-Clamp” name in respect of cable transit products does not mean Boss was not also using the FYREBOX mark at the time of the Fisher Emails.
[57]My finding on this issue is dispositive of both appeals.
The Trafalgar LinkedIn post
[58] Accordingly, I make brief comment only on the effect of the LinkedIn post made by Mr Rakic which Trafalgar says was its first use of the FYREBOX mark in
New Zealand. Like the AC, I am not satisfied this amounts to use as a trade mark in New Zealand.
[59] Although I accept Trafalgar’s submissions that the threshold to establish use through a website is low (for example in listing New Zealand as a country to which a company ships),64 and Mr Rakic had LinkedIn followers in New Zealand who “liked” his post, in my view these matters do not suffice to establish use. As expressed by Buxton LJ in 1-800 Flowers Inc v Phonenames Ltd:65
[137] … There is something inherently unrealistic in saying that A “uses” his mark in the United Kingdom when all that he does is to place the mark on the internet, from a location outside the United Kingdom, and simply wait in the hope that someone from the United Kingdom will download it and thereby create use on the part of A …
[138] However that may be, the very idea of “use” within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area. Of course, if persons in the United Kingdom seek the mark on the internet in response to direct encouragement or advertisement by the owner of the mark, the position may be different; but in such a case the advertisement or encouragement in itself is likely to suffice to establish the necessary use …
[60] Requiring an active step be taken to show that a product is available New Zealand is confirmed in Valley Girl Co Ltd.66 Justice Miller found it was not enough to establish proprietorship where a mark used on a fashion label was advertised in an issue of a magazine sold in New Zealand. There, the advertisements were directed to the Australian market. They depicted goods together with Australian telephone numbers. The respondent’s intention to offer the goods in New Zealand at some time in the future was not sufficient to an intention to use the mark, when there was no evidence that they were “ready and willing” to respond to orders in New Zealand at the relevant date.67
64 Bonobos, Inc v Beaumanoir Asia Holding Singapore Pte Ltd [2022] NZIPOTM 17.
65 1-800 Flowers Inc v Phonenames Ltd [2001] EWCA Civ 721 (CA).
66 Valley Girl Co Ltd v Hanama Collection Pty Ltd (2005) 66 IPR 214 (HC) at [45]; citing Settef SpA v Riv-Oland Marble Company (Vic) Pty Ltd, above n 63, at 416.
67 At [41]–[46].
[61] In coming to his conclusion, Miller J cited the following (obiter) statement of Finkelstein J in the Federal Court of Australia case of Malibu Boats West Inc v Catanese:68
A use of a mark in an advertisement of goods is a use in the course of trade, and is use in relation to the goods advertised: … This is because an advertisement is a common method of indicating that certain goods are available for sale and that the vendor is soliciting orders for those goods. That is not necessarily the case when the advertisement is in a foreign publication in circulation in Australia. Many foreign magazines are available in this country covering a wide range of interests. Some of these magazines contain advertisements while others do not. Whether an advertisement is intended to solicit custom in Australia will depend upon a number of things including the nature of the magazine in which the advertisement appears, the contents of the advertisement, the type of goods that are advertised and the location of the vendor. Here I have advertisements that are clearly directed to the United States market, not to the Australian market. In the absence of further evidence, of which there is none, those advertisements do not amount to an offer to trade in the goods in Australia. This conclusion is consistent with the views of the Registrar to the effect that advertising in foreign publications will not, without more, constitute sufficient use to support a claim for proprietorship of a trade mark: …
[62] In my view, the principles set out in these authorities are applicable, despite that LinkedIn is a social media platform, not a static website.
[63] An active step is required to show the product is available in New Zealand, which is not evident in relation to the LinkedIn post, for the reasons expanded on below.
[64] I do not consider that the post was “sent” by Mr Rakic to people in New Zealand. It was posted on a social media platform. Any followers of Mr Rakic would have been notified of the post. They might either not look at it, look at it only, or look at it and “like it”. That is not the same as it being “sent” directly and purposefully to a particular known recipient (or class of recipients) with no dissemination beyond those recipients, as would be the case when something is “sent” via email for example.
68 At [39] (citations omitted); citing Malibu Boats West Inc v Catanese [2000] FCA 1141, (2000) 180 ALR 119 at [34].
[65] Mr Rakic’s post makes no reference to New Zealand at all. The only contact provided, is an Australian (“.com.au”) email address. There is nothing in this post to suggest that Trafalgar had the intention (or ability) to supply its Fyrebox product to customers in New Zealand (for example directly or through a distributor), nor that it was “ready and willing” to do so.
[66] Given there was no indication that the contents of the post or the advertisement of the new “Fyrebox” product on it was directed to the New Zealand market, a New Zealand-based person looking at that post—and seeing on its profile page that Trafalgar was an Australian-based company—would have no reason to believe the product would be available in New Zealand. Nor was there any evidence of anyone in New Zealand contacting Trafalgar to make that enquiry as a result of seeing the post. The fact that (a very small number of) people based in New Zealand saw and “liked” the post means little. There is no evidence of when they saw or “liked” the post. Nor, in my view is a “like” an active response. It falls well short of suggesting those people somehow sought the mark as a result of the advertisement (as the quotation above from 1-800 Flowers case suggests might make a difference).69
[67] For those reasons, I do not consider this post would constitute use so as to establish ownership under s 32 of the TMA. There was no error by the AC.
[68] All of the other examples of use Trafalgar pointed to post-date this LinkedIn post, therefore they cannot assist Trafalgar when I have already found Boss used the trade mark in December 2015.
Additional grounds of appeal
[69] Trafalgar raised additional grounds of appeal before this Court in the alternative to the above. However, both parties agreed that if the Court found that Boss had first use, it would dispose of both appeals. Given I have made such a finding above, I therefore do not need to consider the other arguments advanced by Trafalgar on appeal and do not do so.
69 1-800 Flowers Inc v Phonenames Ltd, above n 68, at [138].
Result
[70] The AC was correct to find that Boss had the first use of the trade mark FYREBOX in New Zealand, therefore both the 587 and 589 appeals are dismissed.
[71] Boss is entitled to costs and I see no reason to depart from scale 2B costs. The parties are to endeavour to agree as to costs. However, in the event that they cannot, counsel are to file short memoranda (of no more than five pages, not including schedules) within 10 working days of this decision for a final costs award to be determined by me on the paper.
Grau J
Solicitors:
A J Pietras & Co, Lower Hutt for Appellant
DLA Piper New Zealand, Auckland for Respondent
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