Trade mark owners – make sure your trade mark does not become “generic”!

In a recent Court of Appeal decision (Tasman Insulation New Zealand Limited v Knauf Insulation Limited [2015] NZCA 602), the Court considered whether the word “batts” had become generic and therefore, if the registered trade mark should be revoked under the Trade Marks Act.

Facts

Since 1973, Tasman Insulation New Zealand Limited (Tasman) has manufactured and sold Pink Batts insulation, and owns the BATTS trade mark. Knauf Insulation Limited (Knauf) exports insulation products throughout the world, including into New Zealand.

Tasman claimed that Knauf:

  • was infringing Tasman’s trade marks by using the term “batt(s)” or “batt” on its packaging and instructions for its EarthWool products and in its online marketing; and
  • had engaged in misleading and deceptive conduct under the Fair Trading Act by giving the false impression in its marketing that EarthWool was made from natural wool when it was actually made from recycled glass.
  • Knauf responded by applying to revoke Tasman’s trade mark on the basis that the word “batts” had become a common name in general public use.

Knauf also claimed that its use of the word “batts” or “BATT” on its packaging and in its marketing of the EarthWool product would not be viewed as “use as a trade mark” in terms of s 89(2) of the Trade Marks Act, and therefore it was not infringing Tasman’s trade mark.

Law

Section 66(1)(c) of the Trade Marks Act provides that the registration of a trade mark may be revoked if “in consequence of acts or inactivity of the owner, the trade mark has become a common name in general public use for a product or service in respect of which it is registered”.

Outcome

The Court found the following:

  • The word “batts” was strongly associated by the public with Pink Batts insulation and was not a common name in general public use. Even if it had become a common name in general public use, this was not due to any acts or inactivity by Tasman – Tasman consistently promoted its trade marks and took all reasonable steps to ensure its distributors correctly promoted its product.
  • However, it did not follow that whenever the term “batt(s)” was used, it was to be taken as use as a trade mark. The use of the word “batt” on Knauf’s label, packaging and website was descriptive rather than trade mark use. Accordingly, Knauf was not infringing Tasman’s trade mark.
  • Knauf’s EarthWool brand and online marketing were misleading and deceptive. The evidence presented to the Court (including survey results) showed a majority of people thought that EarthWool was made from sheep’s wool.

Possible Implications for your Trade Marks

This case is a timely reminder for all trade mark owners to promote and protect your trade marks. It is vital that you actively promote your trade mark so that the trade mark continues to be associated with your particular products/services. It is also important to take action against competitors who breach your trade marks (whether by writing to them demanding they stop using your trade mark or taking further court action). Although it might feel excessive to issue “cease and desist” letters for even seemingly immaterial trade mark infringements, this case confirms that if you don’t, you could lose the efficacy of a trade mark altogether, which may be critical when it comes to combatting more serious infringement.

Image courtesy of melissa jonas.

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