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 them.
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 clothing'.
Questions have been raised as to whether Sandford could enforce its rights in the Trade Mark because many say the word is 'generic'.
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 Examples of Trade Marks that have been revoked from registers around the world for becoming generic include aspirin, thermos, yo-yo and escalator.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 with TV3 here
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 assignee.
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.