In Australian/New Zealand trade mark opposition proceedings, if an Opponent's prior registered trade mark is held to be similar to the opposed mark and to cover similar goods/services as those of the Opposed mark, then the Opponent will usually think that it is almost certain to win1. However in a recent New Zealand opposition to registration of the mark JULES TAYLOR, Assistant Commissioner Aldred (AC Aldred) reminded brand owners and attorneys that this is not necessarily the case. For Australian attorneys this is yet another reminder that New Zealand is not the same as Australia.
In Jules Taylor Holdings Limited v Taylor, Fladgate & Yeatman Limited [2021] NZIPOTM 12, Jules Taylor Holdings Limited (JTH) applied to register JULES TAYLOR for wines. The JTH registration was opposed by Taylor, Fladgate and Yeatman Limited (Yeatman), relying upon its prior use and registration of the trade mark TAYLORS in relation to port (wine) and related registration No. 144541 for the mark TAYLORS covering "port" in class 33.
The good old "reverse onus" opposition ground fails this time
One of New Zealand's most common opposition grounds is that "use of the opposed mark would be likely to deceive or cause confusion"2. As we have explained many times before, this is a unique opposition ground as the Opponent only needs to establish a general awareness in its trade mark (a low barrier) before the onus shifts to the Applicant to prove a negative – namely, that its use of the trade mark would not be likely to deceive or cause confusion. This "reverse onus" of proof stacks the odds greatly in favour of the Opponent in trade mark opposition proceedings, as the relevant weight of evidence falls strongly against a trade mark Applicant.
In this case Yeatman discharged its onus of establishing a reputation in its TAYLORS trade mark in New Zealand. The Assistant Commissioner also held by a narrow margin that the respective trade marks JULES TAYLOR and TAYLORS are similar "but not very similar"3. Applying the well-known "British Sugar"4 factors, the Assistant Commissioner also found that port is similar to wines other than port, although it is considered to be a distinct category of beverage.
New Zealand wine consumers are clearly a sophisticated bunch, as the Assistant Commissioner concluded that JTH's use of the JULES TAYLOR mark in relation to wines other than port, fortified wine and desert wine would not be likely to deceive or confuse consumers, as the relevant industry differentiates port from wine. It seems that Yestman's own strong evidence may have been used against it as JTH referenced some of that evidence, which showed advertising specifically confined to port, and emphasised the Portuguese origin of its TAYLORS port wine.
What about the Opponent's registered TAYLORS mark?
The opposition ground under s25 of the New Zealand Trade marks Act 2002 relates to a prior registered or pending trade mark. It is quite different to the afore-mentioned reverse onus, as the Assistant Commissioner should only consider notional fair use of both marks JULES TAYLOR and TAYLORS.
Here, AC Aldred identified three key aspects to s25, and it is here that our Australian attorneys need to pay attention. In order for the Opponent to win by reference to its prior registered/pending mark, the Opponent must establish three things:
- Are the goods and services in respect of which the opposed mark is sought to be registered the same as or similar to the goods and services covered by the marks relied upon by the opponent?
- If so, is the opposed mark similar to the mark relied upon for the same or similar goods and services identified in the first inquiry?
- If so, is use of the opposed mark likely to deceive or confuse?5
The Australian equivalent to s25 is s44 of its Trade Marks Act 1995. This Australian section does not contain an express requirement that the opposed mark is "likely to deceive or cause confusion", although it does catch deceptively similar trade marks (by virtue of the statutory definition "deceptively similar"6). Nonetheless in Australian opposition proceedings the assessment as to whether marks are "deceptively similar" is usually conducted in much the same way as the New Zealand assessment as to whether or not marks are "similar". In other words, the assessment as to whether or not an opposed mark is likely to deceive or confuse is much less of a factor in Australia then it appears to be in New Zealand.
How does the Opponent lose if its prior mark is similar to the opposed mark and covers similar goods?
Simple. Although AC Aldred found that JULES TAYLOR is similar to TAYLORS and wine (excluding port etc) is similar to port, she concluded that JTH's use of JULES TAYLOR is not likely to deceive or confuse consumers.
Be careful Australian attorneys!
This case is a good reminder to Australian attorneys that New Zealand proceedings are not the same as those across the ditch in Australia. Kiwis are prone to remind anyone who listens that they are not Australian. So it is with New Zealand trade mark opposition proceedings.
A brand owner who pursued this case merrily thinking that they could simply recite arguments used in Australia would risk facing the same outcome as anyone who bet against New Zealand winning the Word Test Championship of Cricket.
Footnotes
1. Excluding prior use or honest concurrent use by the Applicant
2. Section 17(1)(a) Trade Marks Act 2002
3. Para 36
4. British Sugar PLC v James Robertson & Sons Ltd [1996] RPC281
5. Para 50
6. Section 10, Australian Trade Mark Act 1995
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.
