Trade Marks act as a badge of origin. They are rights
that can be registered in things like brand names, logos and even
colours, to inform consumers of the source of goods or services and
therefore what sort of quality of they can expect from
In a story that hit the media today, it has been reported that
Baron Sandford of Sandford Industries Ltd sent a cease and desist
letter to the Hamilton-based online discount apparel store
Lastseason.co.nz to demand they stop selling a well-known style of
footwear by reference to the word JANDALS.
The JANDALS Trade Mark
Said to be a derivative of 'Japanese sandals', Morris
Yock (alleged to be the inventor1 of the shoe) filed to
protect the word in 1957, and it was registered as a Trade Mark on
4 January 1963. The Trade Mark was on sold to several other
companies before being bought by Sandford Industries Ltd in 1995.
The Register shows that the Trade Mark is registered for
'footwear and all types of hosiery' and 'articles of
Questions have been raised as to whether Sandford could enforce
its rights in the Trade Mark because many say the word is
The Issue of Genericism
The purpose of a Trade Mark is to be distinctive of a supplier,
not descriptive of the goods. Therefore, Trade Marks are one area
of law where a registered rights owner2 can be a victim
of its own success. Once a word becomes 'a common name in
general public use for a product or service in respect of which it
is registered' – that is, generic – it can in fact
be revoked from the Trade Marks register in New Zealand. Examples
of Trade Marks that have been revoked from registers around the
world for becoming generic include aspirin, thermos, yo-yo and
escalator. Trade Marks such as HOOVER and GOOGLE have been said to
be in danger of being revoked for genericism, as they are commonly
used to describe an action in every day language (i.e you could
Google someone hoovering).
James & Wells recently acted for Knauf Insulation in the
first case before a Court on this question under the Trade Marks
Act 2002. Among other issues,
Knauf challenged the trade mark BATTS which is owned by Tasman
Insulation New Zealand, contending that it is part of every day
Kiwi language. The High Court has reserved judgment on this case
and a decision is expected in early 2014.
Advice for businesses
If you are concerned that you might receive a letter like this
about JANDALS or any other Trade Mark, or you think someone is
misusing your Trade Mark, seek specialized legal advice from an
intellectual property3 lawyer.
You can also view Senior Associate Gus Hazel's interview
1The developer of an invention. In
the field of intellectual property the word
"inventor" is a legal term to describe the person (or
group of people) who made the inventive step to arrive at
the invention. It is important to understand that this
will not necessarily be the person who developed the invention to
proof of concept or prototype stage. If the concept itself is
inventive then the inventor will be the person who conceived the
concept. Ascertaining the correct inventor(s) is important as he or
she will need to be named in any patent application and
there could be adverse consequences for omitting an inventor or
adding someone who is not a true inventor.
2A legal term to describe a person entitled to
make an application for a patent. In New Zealand
this includes any person claiming to be the true and first
inventor, the assignee of the inventor, or the
legal representative of a deceased inventor or his/her
3Refers 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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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.
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