Catwalk case - why opposing trade mark applications just got harder

COMMENT: What business can learn from a recent High Court case involving opposition to a trade mark application for 'catwalk'.

The Trade Marks Act 2002 provides protection for trade mark owners to prevent the registration of other similar or identical trade marks.  Some protections are afforded to owners of trade marks regardless of whether or not their trade mark is registered.

Under the Act, if a trade mark is accepted for registration (Mark X) that is arguably confusingly similar to another trade mark (Mark Y), the owner of Mark Y has the opportunity to oppose the registration of Mark X.  The owner of Mark Y has this opportunity regardless of whether or not its trade mark is registered.  

The catch, however, is that an owner of an unregistered trade mark must first prove that there is an "awareness" of its trade mark in the relevant market before the owner can argue the new trade mark is confusingly similar to its trade mark.

This requires establishing that a substantial number of people in the relevant market are aware of the trade mark.  In the past, simply filing evidence of some presence in the market has generally satisfied this requirement.  This is no longer the case.

In the last year or so trade mark decisions from the Intellectual Property Office of New Zealand and, most recently, the High Court show that the standard of assessment of awareness has increased.

A recent High Court case involved an opposition to a trade mark application for CATWALK for various goods including hair and beauty implements.  The opponent (Unilever, Plc) also used a trade mark for CATWALK (for goods including hair care products) in New Zealand, although its trade mark was unregistered.  Unilever, concerned about use of the identical CATWALK trade mark for arguably similar goods, opposed the application.

On appeal from the Intellectual Property Office decision, the High Court held that Unilever had not established an awareness of its trade mark in the marketplace. 

Because Unilever couldn't establish threshold awareness of its trade mark, the Court did not consider whether the new trade mark was deceptively or confusingly similar to its unregistered trade mark.

This was not a case where there was no evidence.  Rather, in the words of Justice Wylie, it was a case with evidence in favour of awareness that was "long on assertion and generalisation, but short on specific evidence and detail". 

Unilever produced a reasonable amount of evidence but it was considered insufficient. Or, again borrowing from the word of Justice Wylie, some of the evidence showed "infinitesimal" sales or marketing expenditure.

The default position appears now to be that establishing awareness in the relevant market requires evidence that a substantial number of people would be aware. 

This should be of real concern to those businesses where the relevant market comprises the general purchasing public (eg a business in the market for common consumables), particularly where there are niche parts of the market that are difficult to define.

Being the first to use a trade mark in New Zealand does not count for as much as it used to.  Rights in a trade mark, without registration or establishing substantial awareness of the trade mark, may often not be enough to successfully oppose a potential competitor's trade mark application.

The evidence of awareness needed to be confident of success is now more complex and expensive, and may require the further cost of evidence from the trade, survey evidence and evidence from experts.

This development also means that, although there are still benefits to proving awareness and reputation in a trade mark for the purposes of trade mark oppositions, businesses should reconsider whether it is worth the risk of not investing in registered trade mark protection.

Earl Gray is a partner and James Maxwell is a solicitor at Simpson Grierson.