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
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
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
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:
 ...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
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.
1Socialface Pty Limited v David Stanley
Barton Ginger1  NZIPOTM 30 (1 July 2014)
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