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In Australian/New Zealand trade mark opposition proceedings, if an opponent’s previously registered mark is considered to be similar to the opposing mark and covers similar goods/services to those of the opposing mark, the opponent will believe generally that it is almost certain to win1. However, in a recent New Zealand opposition to the registration of the JULES TAYLOR mark, Deputy Commissioner Aldred (AC Aldred) reminded brand owners and lawyers that this is not necessarily the case. For Australian lawyers, it’s another reminder that New Zealand is not the same as Australia.
In Jules Taylor Holdings Limited v Taylor, Fladgate & Yeatman Limited  NZIPTM 12Jules Taylor Holdings Limited (JTH) applied for the registration of JULES TAYLOR for wines. The JTH registration was opposed by Taylor, Fladgate and Yeatman Limited (Yeatman), relying on its prior use and registration of the trade mark TAYLORS in connection with port (wine) and related registration No. 144541 for the trade mark TAYLORS covering “port” in class 33.
Good old “reversal of the burden of proof” ground of opposition fails this time
One of the most common grounds for opposition in New Zealand is that “use of the opposing mark would be likely to mislead or cause confusion”2. As we have explained several times before, this is a unique ground for opposition, because the opponent only has to establish a general knowledge of his mark (a low barrier) before he burden on the plaintiff to prove a negative – namely, that his use of the mark would
not be likely to mislead or cause confusion. This “reversal of the burden of proof” considerably increases the odds in favor of the opponent in trademark opposition proceedings, as the weight of the relevant evidence is strongly against the trademark applicant.
In this case, Yeatman fulfilled its obligation to establish a reputation in its TAYLORS trade mark in New Zealand. The Assistant Commissioner also narrowly concluded that the respective trademarks JULES TAYLOR and TAYLORS are similar “but not very similar”3. Apply the well-known “British sugar“4 factors, the Assistant Commissioner also concluded that port is similar to non-port wines, although it is considered a separate category of beverage.
New Zealand wine consumers are clearly a sophisticated group, as the Deputy 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 not likely to mislead or confuse consumers, as the relevant industry differentiates port from wine. It appears that Yestman’s own strong evidence could have been used against him, as JTH referenced some of that evidence, which showed advertising specifically limited to port, and pointed to the Portuguese origin of its TAYLORS port wine.
What about the Opponent’s trademark TAYLORS?
The ground for opposition under Article 25 of the New Zealand Trade Marks Act 2002 relates to an earlier registered or pending mark. This is very different from the reversal of the burden of proof mentioned above, because the Assistant Commissioner should only consider the fictitious fair use of the marks JULES TAYLOR and TAYLORS.
Here, AC Aldred has identified three key aspects of s25, and it is here that our Australian lawyers need to pay attention. For the Opponent to win by referring to his earlier registered/pending mark, the Opponent must establish three things:
- Are the goods and services for which the opposing mark is applied for identical or similar to the goods and services covered by the marks invoked by the opponent?
- If so, is the opposing mark similar to the mark invoked for identical or similar goods and services identified in the first application?
- If so, is the use of the opposite mark likely to mislead or cause confusion?5
The Australian equivalent of s25 is s44 from its Trade Marks Act 1995. This Australian section does not contain an express requirement that the opposing mark be “likely to mislead or confuse“, although it applies to deceptively similar marks (under the legal definition of “deceptively similar”6). Nevertheless, in Australian opposition proceedings, the assessment of the “deceptive similarity” of marks is generally carried out in the same way as the New Zealand assessment of whether or not the marks are “similar”. In other words, the assessment of whether or not an opposing brand is likely to mislead or confuse is much less important in Australia than it appears to be in New Zealand.
How does the opponent lose if his earlier mark is similar to the opposing mark and covers similar goods?
Simple. Although AC Aldred found that JULES TAYLOR is similar to TAYLORS and that wine (excluding port, etc.) is similar to port, it concluded that JTH’s use of JULES TAYLOR is not likely to mislead or confuse consumers.
Be careful, Australian lawyers!
This case is a good reminder to Australian lawyers that New Zealand procedures are not the same as those on the other side of the divide in Australia. Kiwis tend to remind anyone who listens to them that they are not Australian. The same applies to New Zealand trademark opposition proceedings.
A brand owner who happily pursues this case thinking they can just recite arguments used in Australia would risk facing the same result as anyone betting against New Zealand winning the Word Test Championship of Cricket.
1. Excluding Claimant’s Prior Use or Honest Concurrent Use
2. Paragraph 17(1)(a) Trade Marks Act 2002
3. Paragraph 36
4. British Sugar PLC v James Robertson & Sons Ltd  RPC281
5. Para 50
6. Section 10, Australian Trade Marks Act 1995
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.