Federici Brands LLC succeeded in partially opposing registration of the stylised mark in New Zealand, in WOW Colour (Guangdong) Technology Co., Ltd. v Federici Brands LLC  NZIPOTM 8 (17 March 2023). However the case reminds attorneys of just how rigorously the rules of evidence are applied in New Zealand trade mark oppositions, this time including discussion about social media influencers and the need to show spillover of the reputation of social media marketing into the New Zealand market.
Frederci Brands fails to establish reputation in "reverse onus" opposition ground
A common ground relied upon by brand owners in New Zealand trade mark oppositions is to assert that use of the opposed Mark would be likely to deceive or cause consumers (s17(1)(a), Trade Marks Act 2002, "the Act"). In practice, a brand owner needs only to establish an "awareness" in its trade mark for any goods or services in New Zealand, before the onus shifts to the applicant to establish that its use of the trademark will not deceive or cause confusion. The awareness which the opponent is to demonstrate in its brand is a relatively low bar to satisfy, much less than would be required to establish that a mark is well-known in New Zealand.
Federici failed to establish the requisite awareness in its COLOUR WOW branded hair care products in New Zealand, partly because its evidence "indicates a low volume of products sold when considering the goods of concern and extensive list of New Zealand stockists and size of the relevant market."
How influential is "influencer" evidence?
Federici also relied upon hair care industry influencers including celebrity hairstylist Chris Appleton, a claimed hairstylist to the likes of Jennifer Lopez, Kim Kardashian and Kylie Jenner. Nonetheless Assistant Commissioner of trade marks Catherine O'Donnell noted that the evidence relating to this influencer was insufficient. She observed:
While influencer marketing can be an effective channel for targeting a large audience, the Instagram posts provided by Mr Federici fall short of persuading me that these influencers have enough sway to establish a reputation for the COLOR WOW goods among New Zealand consumers. It is unclear how many followers these influencers had at the relevant date and even less so, what proportion of these followers were based in New Zealand. Additionally, while the celebrities presented on these posts would be considered A-List and widely known in New Zealand, this does not mean, for example, that someone who knew of Kim Kardashian, would also be educated as to who her hair stylist is and what products they endorse. The evidence does not show these celebrities themselves as brand ambassadors for the Opponent's Goods.
What about spillover reputation?
Federici submitted that its reputation in New Zealand for its COLOUR WOW brand was established in part due to "spillover" reputation, based upon the international notoriety of that brand overseas. However the Assistant Commissioner dismissed this claim:
While the Opponent's mark has been promoted on a number of social media accounts, international magazines and United States based talk shows I am unable to simply infer that a substantial number of persons in the relevant market were exposed to these advertisements. Further, asserting that these instances are enough to establish the desired reputation in New Zealand would amount to mere conjecture or speculation without figures to prove such a claim.
The Assistant Commissioner also cites a recent related opposition to support the succinct principle that those seeking to establish spillover reputation should keep in mind – namely that:
"There can be no inference unless there are objective facts from which to infer the other facts which it is sought to establish. If there are no positive proved facts from which the inference can be made, the method of inference fails and what is left is mere speculation or conjecture "1.
Despite the apparent success of Federici's COLOUR WOW-branded goods internationally, its evidence did not demonstrate that its international reputation had spilled over into New Zealand.
Frederici still wins, relying upon its earlier mark.
Federici established that the opposed Mark was similar to its prior registered mark COLOUR WOW, which covered hair care preparations. The Assistant Commissioner considered that those goods were similar to the following class 3 goods covered by the opposed application, such that registration should be refused for those goods, each of which was considered similar to hair care preparations:
Facial cleansers; hand lotions; essential oils; beauty masks; false eyelashes; cosmetics; cosmetic pencils; perfumes; eyebrow pencils; mascara; sunscreen creams; make-up remover.
In support of this assessment the Assistant Commissioner noted the "proliferation of mega beauty stores such as Mecca Cosmetica, Sephora and Chemist Warehouse [which] makes the purchase of a wide range of cosmetic goods in one place more accessible. Similarly, producers of personal care products are not siloed into a specific cosmetic arena. A company which produces skin care products and other cosmetics for external application may branch out into hair care products and vice versa".
Because your (trade mark case) is worth it
The dismissal of a foreign brand owner's evidence is a common theme in New Zealand trade mark oppositions. A frequent criticism of such evidence is that it relates only to evidence of use of an opponent's trade mark overseas and does not provide clear, reliable and detailed evidence as to whether that reputation exists in New Zealand.
At the risk of repeating a warning more often than some people may wash their hair, a brand owner who seeks to rely upon overseas reputation in its brand outside Aotearoa New Zealand should ensure that its evidence ties in that reputation back to the jurisdiction.
1. Assistant Commissioner Nichols when considering the possibility of spill-over reputation in Korea Ginseng Corp. v Calvin Klein Trademark Trust  NZIPOTM 1, citing Caswell v Powell Duffryn Associated Collieries Ltd  AC 152 (HL) at 169–170
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