The Fight for Batts
JAWS IP1 lawyers Ben Cain and Sarah Tallon are quoted in recent media articles published2 in Business Day and Waikato Times regarding whether Tasman Insulation New Zealand should lose its trade mark registration for BATTS on the basis it is a generic term in relation to insulation material.
Tasman, the Penrose-based manufacturer and supplier of PINK BATTS and a Fletcher Building subsidiary, is defending an attempt by Knauf Insulation, a subsidiary of German building materials giant Knauf, to revoke its registered trademark for "BATTS" which it has held since 1973.
Click here for the full published article.
Click here for the Waikato Times article
See extract quotes from JAWS IP lawyers Ben Cain and Sarah Tallon below (sourced from the Business Day published article) on this trade mark case.
Ben Cain, solicitor at Knauf's law firm James & Wells, said trademarks were used as a "badge of origin" to signal to consumers that goods were from a particular source.
If a term came to describe the product, rather than indicate a source, "then it can no longer be a trademark". Similar cases had been heard overseas but there was little case law in New Zealand, Cain said.
The Radler case last year, in which the Society of Beer Advocates failed to have DB Breweries' "Radler" mark revoked was of little help, as he believed it had not addressed the meaning of the 2002 Trade Marks Act.
The act changed the threshold for whether a trademark could be revoked, allowing it to be scrapped if it became a common name in public use - rather than in the trade - through the owner's acts or inactivity. Cain said the Radler case did not answer "how is it that a trademark becomes generic? What does common in public use mean? What do we mean by action or inaction?"
The Batts case was "probably the most significant piece of trademark law, certainly in relation to genericism, for a long time, possibly ever".
"This will set the benchmark for years to come," Cain said.
James & Wells Associate Sarah Tallon advised businesses to avoid using their trademarks as descriptive terms, as that would encourage people to use the term when describing similar products.
"If you can't think of any other logical way that people would refer to it, then your trademark is in danger," Tallon said.
Businesses should also be careful to use the "TM" and "R" signs to denote the word or term was a registered trademark, she said, and to strictly police any infringement3.
"When it's become a common term it's much harder to claw it back," she said.
Geography mattered, Tallon said, as a term might be generic in one country but distinctive in another.
For example, in the Radler case the term was deemed to be common overseas but not in New Zealand.
"Businesses should also choose unique, non-descriptive terms or brands to trademark, such as the made-up brand Fonterra, as then competitors would have no reason to use it in marketing their products," Tallon said.
However, in some instances descriptive words and terms could become distinctive trademarks, through a business brand building.
The Warehouse - on the face of it a generic, descriptive brand name - was an example, Tallon said.
"The reputation they have generated means that now if anyone says: 'I'm popping to The Warehouse', everyone knows exactly what they mean."
1Refers to the ownership of an intangible
thing - the innovative idea behind a new technology, product,
process, design or plant variety, and other intangibles such as
trade secrets, goodwill and reputation, and trade marks. Although
intangible, the law recognises intellectual property as a form of
property which can be sold, licensed, damaged or
trespassed upon. Intellectual property encompasses
patents, designs, trade marks and copyright.
2At some point a patent application is published, meaning its contents are available for anyone to read. In New Zealand publication occurs when a patent application is accepted. However, in most countries publication occurs 18 months after the application is filed.
3Refers to the commission of a prohibited act with respect to a patented invention without permission from the patentee. In New Zealand, the Deed of Letters Patent confers on the patentee a monopoly to make, use, vend or exercise the invention in New Zealand. Performing any of these acts without the permission of the patentee will amount to an infringement if the patent is current and in force. Permission will typically be granted in the form of a license. Remedies for infringement can include an injunction to restrain further infringement, payment of damages suffered by the patentee as a consequence of the infringement or payment by the infringer of any profit he/she/it made by virtue of the infringement, and legal costs.
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James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.