The Assistant Commissioner of Trade Marks has issued a decision confirming that the fact New Zealanders look at, ‘like’ or even follow your branded Facebook, Twitter or LinkedIn accounts is not enough to establish ‘ownership’ of a trade mark in New Zealand.
Instead, the Assistant Commissioner in the case (Socialface Pty Limited v David Stanley Barton Ginger1) – the Socialface decision – in which we acted for the successful opponent), confirmed that ownership hinges on whether you directed your use of the trade mark to the New Zealand public.
That ‘directed at New Zealand’ requirement highlights a difference in approach between cases where the issue is ‘ownership’ and cases where the issue is whether use is likely to give rise to confusion with an existing mark.
In ‘confusion cases’ the court has shown a willingness to accept that New Zealand and Australia are one market, with use in Australia being relevant to the question of whether a party has a reputation in New Zealand (most recently in the High Court decision in Muzz Buzz Franchising Pty Ltd v JB Holdings2). Whereas in ownership cases (which involve competing claims over identical or near identical marks) the Socialface decision makes it clear that there needs to be some use directed at New Zealand for a claim to succeed.
Details of the Socialface decision
The main issue to be decided in the Socialface case was whether the opponent or applicant was the owner of the mark SOCIALFACE in New Zealand. The opponent was a New Zealand individual trading as Socialface; the applicant was an Australian based company with social media followers in New Zealand who claimed to have had received a franchise query from a New Zealander and preliminary discussions with prospective New Zealand customers.
In finding that the applicant was not the owner of the SOCIALFACE mark in New Zealand the Assistant Commissioner held that:
- Twitter accounts, LinkedIn profiles and Facebook pages must be specifically aimed at New Zealander’s to constitute use of a trade mark in New Zealand.
- Single use may suffice to establish first use (and therefore ownership) but such use must be aimed at the New Zealand market.
- Communications concerning setting up a franchise model in New Zealand and any other preliminary matters for establishing a presence in New Zealand do not amount to actual use or proposed use of the trade mark.
In particular the Assistant Commissioner held:
[58] …the fact that the applicant’s website, Facebook page etc. may be, and has been accessed by persons in New Zealand, does not, by itself amount to use of the opposed mark by the applicant in relation to the opposed services in New Zealand.
In relation to the franchisee query and preliminary discussions with New Zealand customers, no franchise model was in place at the time of the query and the preliminary discussions progressed no further than an initial stage of enquiry. The Assistant Commissioner relied on Moorgate Tobacco Co Limited v Philip Morris Ltd (No 2)3 where it was held that mere preliminary discussions and negotiations were not enough to establish use of the trade mark in New Zealand.
- Socialface Pty Limited v David Stanley Barton Ginger1 [2014] NZIPOTM 30 (1 July 2014)
- Muzz Buzz Franchising Pty Ltd v JB Holdings2 (2010) Ltd & Ors [2013] NZHC 1599.
- Moorgate Tobacco Co Limited v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 435 and 436.
For more information please contact:
Dan Winfield, Partner
d +64 4 471 9411
m +64 27 704 5179
dan.winfield@duncancotterill.com
Annika Tombleson, Solicitor
d +64 4 471 9404
annika.tombleson@duncancotterill.com
Disclaimer: the content of this article is general in nature and not intended as a substitute for specific professional advice on any matter and should not be relied upon for that purpose.
