Australia: Tasman Insulation New Zealand Limited v Knauf Insulation Limited [2015] 3 NZLR 145; (2015) 116 IPR 352; [2015] NZCA 602

Last Updated: 11 February 2017
Article by Michael Deacon and Chris Bevitt

The Parties

Tasman Insulation New Zealand Limited (Tasman Insulation) is the registered trade mark owner. Knauf Insulation Limited (Knauf) is the alleged infringer of the trade mark. In response to the infringement claim, Knauf sought to revoke registration of the trade mark on the basis that it had become generic and was not being used by Tasman Insulation as a trade mark. This New Zealand Court of Appeal judgment (Randerson, French and Cooper JJ) relates to appeals by both parties from various aspects of the earlier High Court judgment of Brown J in this case.

Note that unlike in Australia, New Zealand's High Court is not the court of final recourse. The New Zealand Supreme Court performs that function.

The Trade Mark

The New Zealand trade mark in issue was BATTS (No. 105507), registered in class 17 for "insulating materials".

Background and Issues

Tasman Insulation has been the owner of the New Zealand trade mark registration for BATTS in respect of insulating materials since 1973. Knauf was importing into New Zealand insulation products under the primary brand "Earthwool", but was also using "batts" on its product packaging, labels, instructions and in the HTML code for an image on its website relating to the products.

Tasman Insulation claimed that Knauf's use of "batts" for its insulation products and in the HTML code infringed Tasman Insulation's BATTS trade mark. In response, Knauf applied to revoke Tasman Insulation's BATTS trade mark registration on the basis that "batts" had become generic in New Zealand and Tasman Insulation was not using "batts" as a trade mark. Knauf also sought to defend the trade mark infringement claim by asserting that it had not used "batts" as a trade mark but had used the name honestly and merely to describe the nature or quality of its products.

Both parties also made claims under the Fair Trading Act 1986 (NZ), including in relation to misleading and deceptive conduct, but those claims are not discussed here.

Previous Decision

Revocation – generecism and non-use

Section 66(1)(c) of the Trade Marks Act 2002 (NZ) provides that a trade mark may be revoked for becoming generic only if it has become a common name in general public use for the relevant goods or services as a result of the trade mark owner's acts or inactivity. Justice Brown confirmed that the applicant carries a heavy burden of proof in order to establish not only that the mark has become a common name but has done so as a result of its owner's acts or inactivity.

For the purposes of section 66(1)(c), "acts" include positive acts to protect the trade mark or encourage its use by others as a trade mark while "inactivity" includes a failure to take measures to protect the mark. Importantly, Brown J noted that inactivity must be considered by reference to unauthorised trade mark use by others. For example, a failure to act in response to descriptive use of a mark by a third party that would not infringe the trade mark would not amount to inactivity because the trade mark owner would not be legally entitled to take action against such use.

The evidence showed that third parties had been using "batts" descriptively. However, the evidence also showed that Tasman Insulation had taken a number of positive steps in connection with protecting BATTS, managing its use as a trade mark by others and/or indicating that it was being used as a trade mark, including: (i) using ® with BATTS; (ii) using BATTS® as an adjective in advertising materials to indicate the origin of its insulating materials (being use as a trade mark); (iii) issuing branding style guides to control use of the mark, including by requiring the mark to be used as an adjective only and encouraging its use with an already generic name such as "product" or "insulation"; (iv) notifying customers in writing of its trade mark rights in connection with BATTS; and (v) taking action for infringement in some cases.

Considering that Tasman Insulation was not obliged to take action against descriptive use of "batts" by others and that Tasman Insulation had been taking positive steps to protect its BATTS trade mark registration, Brown J held that Knauf had failed to prove that "batts" had become a common name as a result of Tasman Insulation's acts or inactivity. In any case, Brown J was not convinced that "batts" had become generic based on the evidence before him.

Justice Brown also held that the evidence showed Tasman Insulation had used "batts" as a trade mark.

As a result, Knauf failed in its bid to revoke Tasman Insulation's BATTS trade mark registration.


Justice Brown held that the use of "batts" by Knauf on its product packaging, labels and instructions was not use as a trade mark and therefore did not infringe Tasman Insulation's BATTS trade mark. Noting that Knauf had been using "batts" in lower case without any other distinctive features and taking into account all the circumstances surrounding its use, including the additional "Earthwool" branding, the nature of the market and customers of insulation products, Brown J considered that the relevant public would view Knauf's use of "batts" as describing its products rather than as a trade mark indicating the source or origin of the products.

However, Brown J held that Knauf's use of "batts" in the HTML code was use as a trade mark which infringed Tasman Insulation's BATTS trade mark. In that instance, "batts" would be visible to relevant internet users in a manner which did not simply describe the products but rather acted to identify the source of the products on the website. Knauf's defence that it was merely using "batts" honestly to describe its products failed, with Brown J deciding that "batts" had been used with the intention of diverting consumers to Knauf's website.

The Decision

The Court of Appeal upheld all aspects of the High Court's decision except for the finding that Knauf's use of "batts" in the HTML code infringed Tasman Insulation's BATTS trade mark. Instead, the Court of Appeal took the view that use of "batts" in the HTML code did not amount to use as a trade mark and therefore could not be infringing use, primarily on the basis that HTML code would appear random to consumers and would not convey the meaning necessary for "batts" to operate as a trade mark or be recognised in that manner by consumers.

As a result, both the revocation actions by Knauf and the infringement actions by Tasman Insulation were ultimately dismissed.

The Significance

This case reinforces well-understood principles that a trade mark owner with a trade mark which is at risk of becoming generic must actively manage its own use of the trade mark and use by distributors and customers, and also actively defend the trade mark against infringement. Somewhat ironically, such infringement action by Tasman Insulation in this case was to no avail due to the Court's finding that Knauf's use was not use as a trade mark.

Read full Tasman Insulation v Knauf judgment

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.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.