Indtex Trading Limited v The Otago Rugby Football Union HC Auckland AP23-SW 01 [2001] NZHC 956 (10 October 2001)

Last Updated: 13 November 2013

IN THE HIGH COURT OF NEW ZEALAND
AUCKLAND REGISTRY AP23-SW 01

IN THE MATTER of the Trade Marks Act 1953
AND
IN THE MATTER of an appeal from the decision of the Assistant Commissioner for Trade Marks in respect of Trade Mark Applications No 266901 and 284921

BETWEEN INDTEX TRADING LIMITED, a duly incorporated company having its registered office at 178 Kolmar Road, Papatoetoe, Auckland, Manufacturer
Appellant

AND THE OTAGO RUGBY FOOTBALL UNION, an incorporated society having its registered office at 7th Floor, NZ Mutual Funds Building, Bond Street, Auckland
Respondent

Hearing: 10 September 2001

Counsel: Julian Miles QC and Vibeke Dale for Appellant
John Katz QC for Respondent

Judgment: 10 October 2001

JUDGMENT OF WILLIAMS J

Solicitors:
Grove Darlow, DX CP24049 Auckland for Appellant
Gallaway Haggitt Sinclair, DX YP80024 Dunedin, for Respondent
P Knipe, Ministry of Economic Development, PO Box 10-843, Wellington

Copy for:
Julian Miles QC, DX CX10258 Auckland
R John Katz QC, P O Box 1900 Auckland
Paterson J, High Court, Auckland

[1] The appellant, Indtex Trading, has appealed to this Court against a decision of the Assistant Commissioner of Trade Marks delivered on 9 June 2000 holding that its applications for registration of its marks no.266901 and no.284921 were ineligible for registration either under the Trade Marks Act 1953 s 16 or s 17.

[2] On 10 September 1996 and 17 November 1997 Indtex applied for registration of the words “Carisbrook Classic Clothing” (stylised and device) under no.266901 in Class 25 for sports clothing and for registration of the word “Carisbrook” (stylised and device) under no.284921 in Class 28 for sports equipment.

[3] On 2 May 1996 the respondent, the Otago Rugby Football Union (the “ORFU”) , applied to register the word “Carisbrook” and device including the addition “The Home of Otago Rugby” under nos. 261711 and 261712 in Classes 16 and 25. Its applications were for some reason unopposed by Indtex and were granted on 8 July 1998 with effect from the date of application.

[4] Indtex’s appeal was grounded on alleged errors in fact and law by the Commissioner in that there was no admissible evidence to support a finding that Carisbrook was a famous trade mark used by the ORFU and that there was no likelihood of deception or confusion; a failure to distinguish between the mark’s use of the word “Carisbrook” when the ORFU’s actual mark is “Carisbrook the Home of Otago Rugby”; failure to conduct a proper comparison of the respective products and uses of the various marks; mis-statement of the correct legal test to apply to the likelihood of deception or confusion; and errors in fact and law in the Commissioner’s consideration of honest concurrent use.

[5] On 1 June 2001 the Court delivered its reserved judgment granting Indtex’s application for leave to adduce additional evidence on the appeal. That judgment reviewed the factual background. For present purposes, it is sufficient simply to repeat the relevant parts of paras [2]-[22] incl which read :

“[2] Alongside this appeal is a consolidated proceeding (M 1535-00 and CP 36/01) which are infringement proceedings by . . . the Otago Rugby Union, against Indtex . . . coupled with a claim by those companies against the Otago Rugby Union seeking rectification under the Trade Marks Act 1953 s 41 by removal of the registration of the Union’s trade mark “Carisbrook, The Home of Otago Rugby” and its logo (No 261712).

[3] The relevant factual background to this application is that up to early 1996 Indtex . . . manufactured sporting apparel and equipment, mainly for established brands or companies. Amongst its customers was a company called Sports Resources Limited run by a Mr Hullena. Mr Hullena and his partner decided to manufacture sporting apparel under their own label in late December 1995 - early January 1996 and settled on “Carisbrook” as an appropriate word.

[4] On 11 March 1996 Sports Resources ordered some [100] rugby jerseys from Indtex Trading for supply to Japan under the “Carisbrook Clothing” label. Indtex ordered sample labels from a label maker on 15 March 1996 reading “Carisbrook Clothing Company - Made in New Zealand”. There were further orders from Sports Resources to Indtex and from Indtex to the label maker later that month. The initial Japanese orders with the “Carisbrook Clothing Company - Made in New Zealand” labels were delivered on 29 April 1996.

[5] At about the same time Indtex instructed its then solicitors to search the Trade Marks Register to see whether “Carisbrook Clothing” or anything similar had been registered. The Patent Office replied on 25 March 1996 saying that there was no registration likely to conflict with “Carisbrook Clothing” for sports clothing in Class 25 but going on to state that the mark appeared to be ineligible for registration as being a “non distinctive combination of the words CARISBROOK which is a famous rugby and cricket ground in Dunedin and CLOTHING which is a description of the goods.”

[6] That advice notwithstanding, Indtex instructed its solicitors on 19 April 1996 to apply to register the mark “Carisbrook Clothing”. For reasons which are not before the Court, the application was not lodged until 10 September 1996. It was allocated number 266901 and was for Class 25. The application form said that the mark was being used by the applicant. The trade mark included a stylised vertical rugby ball alongside the words “Carisbrook Classic Clothing”.

[7] In the meantime, Sports Resources had obtained and placed further orders with Indtex. In particular, on 23 June 1996, there were orders for further sales to Japan, sales to Fiji, and for the Auckland Police. Further orders from Japan and for the United States were received in late July. It appears that by this time Indtex had used up stock of its former label[s] and filled these orders with stock labelled with the “Cambridge Clothing Company” label.

[8] On 25 September 1996 a Trade Mark Examiner wrote to Indtex’ solicitors saying he would recommend acceptance of application 266901 for Part B of the Register notwithstanding that it was “merely the combination of the non distinctive words “CARISBROOK” which has geographical significance, and “CLASSIC CLOTHING” which is descriptive of classically styled clothing.” The addition of the rugby ball device made the whole capable of distinguishing the product. The letter advised that a search had found three confusingly similar marks. One, the word “CARISBROOK” was held in Class 33 by New Zealand Wines and Spirits and has little significance on the issues in this case. However, the remaining two were pending applications in Classes 16 and 25 lodged by the Otago Rugby Union under numbers 261711 and 261712 for the mark, “CARISBROOK THE HOME OF OTAGO RUGBY” (stylised and device). The examiner gave it as his view that the marks might prevent registration because of likely confusion or deception and invited Indtex to disclaim the words “CARISBROOK” and “CLASSIC CLOTHING”.

[9] The Otago Rugby Union’s applications were granted in 1998 with effect from the date of lodgment of its application, 2 May 1996. Its associated device has the word “CARISBROOK” hooped over the top of an oval shape with the word “THE HOME OF OTAGO RUGBY” around its circumference and with a stylised horizontal rugby ball on which is superimposed a pair of rugby goalposts within that legend. A horizontal interrupted line runs through the centre of the device. Its solicitors threatened infringement proceedings against Indtex in September 1998 and issued the infringement claim to which reference was earlier made shortly afterwards. . . .

[11] On 17 November 1997 Indtex filed trademark applications 284921 and 284922 seeking registration of a stylised rugby ball with the word “Carisbrook” within it for Class 28.

[12] On 20 November 1997 a trade mark examiner wrote expressing the view that the later application did not qualify under the Trade Marks Act 1953 s 16 or 17 because it was likely to be deceptive or to cause confusion, again referring to the Otago Rugby Union’s then pending application. He sought disclaimer of the rugby ball device amongst other matters.

[13] Indtex’ second application was filed by a firm of patent and trade mark attorneys and on 22 April 1998 they wrote to the Intellectual Property office suggesting that application 284921 would not cause confusion . . .

[14] On 12 May 1998 the trade mark examiner responded maintaining the s 16 objection based on the Carisbrook ground’s identification with Otago Rugby. . . .

[18] In contrast with the somewhat desultory progress of these matters, the Assistant Commissioner of Trade Marks replied on 8 February 1999 lodging a formal objection under s 26(2) of the Act to the applications 266901 and 284921 in Classes 25 and 28 proceeding to registration. The report then detailed the grounds of objection. Under s 17 the report took the view that the Otago Rugby Union’s mark was maintained against both applications because of the “CARISBROOK” and rugby ball features leading to confusing similarity with sales through similar outlets.

[19] The report then proceeded to a lengthy discussion of honest concurrent use on the assumption that the evidence submitted was intended to establish such use and thus to protect the applications against citation under s 17(5). . . .

[20] The Assistant Commissioner then concluded under s 16 that people were likely to believe that goods sold under Indtex’s mark were connected to Carisbrook or Otago Rugby and gave Indtex four months under regulation 27(2) to address the issues raised. . . .

[21] Though there was no request for a hearing, new solicitors instructed on Indtex’s behalf responded with a lengthy letter dated 4 June 1999.

[22] The Assistant Commissioner’s statement declining registration of both marks was delivered on 9 June 2000.”

[6] Analysis of the Assistant Commissioner’s decision shows :

[a] He said (pp 2-3) that s 16 was “generally used when an application has been made for a mark that is similar to a well-known or famous mark that is not registered in New Zealand . . . to protect the public interest and not the proprietary interest of other traders” and that the “earlier or well-known mark does not need to be registered” relying on Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, the relevant tests being the “awareness of the relevant New Zealand market of the other mark” which “involves determining whether or not CARISBROOK is a famous mark” and secondly whether deception or confusion were likely if registration were granted.

[b] Turning to the question of “famous mark” the Assistant Commissioner held (p 3) :

“The ORFU has owned the lease of Carisbrook Park in Dunedin since 1907. During this time the mark CARISBROOK has become a very high profile mark in New Zealand, particularly in relation to sport, rugby and associated goods and services. The awareness of the relevant New Zealand market of the earlier or well-known mark is therefore very high. This satisfies the first of the above stated tests. CARISBROOK is a famous mark in New Zealand and appears to operate as a trade mark for the ORFU.”

[c] Whether Indtex’s marks were likely to cause deception or confusion with ORFU’s famous mark was to be judged in accordance with the test derived from In re Pianotist Co’s Application (1906) 23 RPC 774, 777 applied in New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115, 139. The competing words should be judged by their overall look or sound to the likely customer of goods of that kind and nature and in the light of all the surrounding circumstances if both the marks were used in the normal way as a trade mark for the goods of the respective owners following which the Assistant Commissioner concluded (p 4) :

“The Applicant’s marks and the ORFU’s mark all contain the word CARISBROOK. The Applicant has not disputed this fact. As the word CARISBROOK is wholly contained in the Applicant’s marks, and indeed is the dominant and essential feature of those marks, the Office considers it highly likely that a substantial number of persons will be caused to wonder whether goods sold under either of the Applicant’s trade marks originate from or are endorsed by the ORFU.”

[d] The Assistant Commissioner then considered that the competitors’ goods were both likely to be associated with rugby and “are unlikely to be expensive one-off items and therefore purchasers are unlikely to be very discerning with regards to small differences between the marks” before holding (p 5) :

“The major identifying feature is the word CARISBROOK. The addition of a rugby ball device or of the words “classic clothing” are unlikely to assist the potential purchaser to distinguish the Applicant’s marks from the famous ORFU mark. A rugby ball device is non-distinctive in relation to goods associated with rugby and the words classic clothing are descriptive of the goods. An ordinary purchaser would be likely to mistake one label for the other.

The ORFU is associated with rugby. Therefore any goods or services that are closely aligned to rugby will conflict with the famous ORFU mark. The Applicant seeks protection for goods that are closely aligned with rugby, namely rugby sports wear and rugby equipment.”

[e] Considering the third test and rejecting the applications under s 16 , the Assistant Commissioner concluded (p 5)

“The mark CARISBROOK is well-known and so closely associated with the ORFU that the public would think there was an association between the sporting goods sold by the applicant and the ORFU.”

[f] Turning to s 17, the Assistant Commissioner began by noting that the section required consideration of public deception and confusion, protecting trade mark rights of the cited proprietor and, repeating the test from New Zealand Breweries said that (p 7) :

“The correct test to apply is whether there is a reasonable likelihood that a substantial number of persons will be caused to wonder whether the goods sold under the pending mark and the goods sold under the cited mark originate from the same source.”

[g] The decision noted that imperfect recall must be considered in relation to the overall impression of the marks and concluded (p 7) :

“The marks contain minor differences, such as the non-distinctive slogans CLASSIC CLOTHING and HOME OF OTAGO RUGBY, as well as differences in stylisation and representation of the rugby ball. However, as has been previously stated, the dominant features of the registered and pending marks are the word CARISBROOK and the device of a rugby ball. Both the cited mark and the pending marks are associated with Carisbrook and the idea of rugby.

In view of the dominance of the word CARISBROOK in combination with the use of the rugby ball device in all of the marks, the Office considers it highly likely that a substantial number of persons will be caused to wonder whether the goods sold under both the Applicant’s marks and the ORFU mark originate from the same source.”

[h] The decision again concluded that the competing goods were likely to be publicly regarded as related and from the same proprietor.

[i] As to honest concurrent use, the decision noted that s 17(5) allows for two identical or similar marks to be registered if an applicant makes out a case for honest concurrent use. After citing Indtex’s submissions as to product dissimilarity, the decision continued (pp 8-9) :

“The Applicant also argues that the evidence submitted by the Applicant shows prior usage of the mark. However it has been Office policy since December 1998 not to accept a later filed co-pending application on the basis of prior use. In addition, establishing prior use was only possible where the cited mark was a co-pending mark, but did not overcome a citation where the mark cited was a registered mark. The Applicant’s argument regarding prior use is therefore not relevant and it is unclear what the evidence submitted is intended to prove or support.”

[j] That notwithstanding, the decision went on to discuss honest concurrent use on the basis of the tests enunciated by the House of Lords in In the matter of an Application by Alex. Pirie & Sons Ltd to Register a Trademark (1933) 50 RPC 147 being extent of use in time, quantity and area, likely degree of confusion, whether actual confusion has been proved, honesty of concurrent use and relative inconvenience if the later mark were registered. The decision held that the period of use of the mark by Indtex was relatively short with increasing but not exceptional sales, the likelihood of confusion was the same as in the earlier conclusions as was relative inconvenience and, as to honesty (p 10) :

“The evidence supplied by the Applicant shows that their CARISBROOK marks are used in conjunction with the ORFU rugby colours, blue and gold. This indicates that the Applicant is trading on the ORFU’s reputation and that the Applicant’s marks have been adopted on the basis that they are very similar to the ORFU mark.”

[7] For Indtex, Mr Miles QC pointed to the Court’s powers on an appeal such as this. Under s 26(6) other than by leave it is to be determined on the grounds of objection to acceptance of the application and the materials stated by the Commissioner. He also pointed to the fact that the Court has the same discretionary powers as are conferred on the Commissioner (s 66(3)). He submitted that because the Commissioner has power to accept or refuse applications under s 26(2), consideration of applications such as those with which this appeal is concerned should be preliminary inquiries by the Commissioner to sort out non-qualifying applications following which, if the Commissioner accepts the application, it is advertised with both the applicant and any objector having the right to adduce evidence at any subsequent hearing. But the overall approach, he submitted, at the stage of the process from which this appeal is brought, should be as appearing in Standard Woven Fabric Co’s Application (1918) 35 RPC 53, 58 :

“Prima facie this Register is created by this Act for the purpose of enabling trade marks to be put upon it; and it would be very unfortunate if bona fide and honest applications for trade marks were to be refused on grounds which were fanciful and which, in a business sense, were unsubstantial.”

The Commissioner’s discretion must be “exercised reasonably and not capriciously” (Duckworth Turner & Co Ltd v Commissioner of Trade Marks [1959] NZLR 1341, 1345. See also Brown & Grant The Law of Intellectual Property in New Zealand para 2.13 p 28) with the onus being on the applicant (Pioneer Hi-Bred Corn 61-62).

[8] Mr Miles submitted generally that the Commissioner’s decisions in this case were, contrary to those authorities, capricious and unreasonable, relying on suggested contradictions, first, between the decision saying that an “earlier or well-known mark does not need to be registered” and the passage from the discussion on “famous mark” that “Carisbrook is a famous mark . . . and appears to operate as a trade mark for the ORFU” and, secondly, between the Commissioner’s initial view in a letter to Indtex’s solicitors dated 25 September 1996 recommending acceptance of Application 266901 for Part B of the Register notwithstanding ORFU’s pending applications which “may prevent registration of your mark because the Act prohibits registration of confusingly similar marks” going on to speak of proprietors of “registered marks” having “trade mark rights” and applicants having “priority rights”. He submitted that the Commissioner’s letter was incorrect in speaking of proprietors of registered marks as the ORFU’s mark was then unregistered.

[9] With respect to counsel, whilst there does appear to be possible contradiction between the Commissioner’s approach at the preliminary stage of investigation and the conclusions as to registrability in the decision under appeal, it is the latter against which the appeals are brought and if the Commissioner ultimately applied the correct test imprecision at an earlier stage of the matter does not lead to a conclusion of unreasonableness or capriciousness in the process or the ultimate decision. It also needs to be recalled that the letter of 25 September 1996 dealt both with the ORFU’s pending application which included the word “Carisbrook” and the registered mark CARISBROOK held in Class 33 by another party so that although the letter may have been in error in referring to “proprietors” in the plural, overall the error seems inconsequential.

[10] On the procedural aspects of the appeal, Mr Katz QC, counsel for the ORFU submitted that when the Commissioner receives a trade mark registration application such as Indtex’s, the Trade Marks Regulations 1954 Reg 26 requires a search to be made of registered marks and “marks at the time included in pending applications” to see whether s 17 applies to the mark applied for. Indtex’s marks in suit were filed on 11 September 1996 and 10 November 1997. ORFU’s applications for CARISBROOK and device were both filed on 2 May 1996 and were accordingly required to be searched for and considered in relation to Indtex’s applications when a decision came to be made.

[11] Mr Katz submitted that, in exercising that discretion, amongst the matters the Commissioner is entitled to consider are whether there are any matters which would disentitle the applicant mark to registration including registrability in the sense of distinctiveness (s 14), likelihood of deception or confusion, breach of the law or other reason which would disentitle the mark to protection (s 16 (1)), whether the applicant mark might breach s 17 (1) (2) and whether there is honest concurrent use. Mr Katz submitted that the Commissioner is also entitled to take his own general knowledge and experience and common sense into account in exercising the discretion under s 26. The Commissioner, Mr Katz submitted, is not bound by the rules of evidence and should be regarded a being entitled to make proper enquiries. He reminded the Court that the onus was on Indtex to demonstrate registrability of its marks and he submitted that it was well-established that decisions of experienced Commissioners would be accorded considerable respect on appeal, particularly where decisions are matters of discretion and judgment.

[12] Whilst the Court accepts Mr Katz’ submissions as to the extent of the Commissioner’s powers and inquiries, and the overall purpose of the required investigation, it is of course important to consider the legal and evidential foundation for the Assistant Commissioner’s conclusions. In its essence, that resolves into a consideration of the Commissioner’s views on

• famous or well-known mark including the other passages cited from the s 16 consideration;

• honest concurrent use and the other passages cited from the s 17 section of the decision;

• office policy.

[13] Turning to the first of those questions, Mr Miles submitted the Commissioner was wrong to conclude that CARISBROOK was a famous mark and operated as a trade mark for the ORFU given that the Commissioner’s decision must be as at the date of Indtex’s application (Hi-Bred Corn at 61) and the ORFU’s mark, though then pending, was not registered until nearly two years later. Mr Miles submitted that there was no evidence on which that aspect of the decision could be based and no detail as to how CARISBROOK could be a famous mark.

[14] Mr Miles submitted that had the Commissioner taken proper account of the relevant principles applying to applications under s 16 appearing in Hi-Bred Corn (at 61-62), it would have been recognised that there were major difficulties over the suggestion that ORFU’s association with Carisbrook Park for about a century could have been translated into the trade mark “CARISBOOK”.

[15] Mr Katz submitted the relevant prohibition in s 16 relates to “any matter the use of which would be likely to deceive or cause confusion”. Section 16, he noted, is broader than s 17 (Hi-Bred at 61) and the two often overlap though the latter requires an applicant to be facing opposition based on some other owner’s registered mark. Section 16 does not require registration of a competing mark, awareness or knowledge in New Zealand of such a mark is sufficient (Hi-Bred at 63) if there is a real danger of confusion or cause to wonder (Berlei (UK) Ltd v Bali Brassiere Co Inc [1969] 2 All ER 812, 827-828). It is sufficient if the possibility of deception or confusion arises from comparison with a name or a word closely associated in the public mind with another organisation. That public knowledge or awareness can be across a range of goods or services (The Council of Ivy Group Presidents v Pacific Dunlop (Asia) Ltd HC Wellington AP.42/00 3 October 2000 John Hansen J para [39] p13). Registration should only be declined under s 16 if the words used “involve a misleading allusion or a suggestion of that which is not strictly true” (Eno v Dunn (1890) 15 App Cas 252, 263 per Lord Macnaghten, Radio Corporation Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448, 453 per Latham CJ and Ivy Group Presidents para [34] p 12).

[16] It followed, Mr Katz submitted, that it was not essential for evidence to demonstrate to the Assistant Commissioner that the ORFU was involved in the manufacture or sale of clothing or other goods if he concluded that the ORFU’s association with the Carisbrook ground might deceive or confuse prospective purchasers of clothing or other goods bearing Indtex’s mark “Carisbrook” into thinking they were associated with the ORFU. Alternatively put, he submitted that it may have been sufficient for s 16 that the public is aware of the ORFU’s connection with Carisbrook and its marketing of goods or services through its use of the ground, particularly in relation to sport including rugby and cricket. He reminded the Court that it was for Indtex on whom the onus lay to refute the s 16 objection and it adduced no evidence on that topic as at the date of its application.

[17] Mr Katz submitted that the authorities demonstrate that a well-known mark is one sufficiently known to the public to sustain an action in passing-off or for breach of the Fair Trading Act 1986 (relying on Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193), even if the prior mark’s exposure is neither intense nor long. A further consideration is whether the products are in a competing field (Hi-Bred Corn; Shotover Gorge Jet Boats Ltd v Marine Enterprises Ltd [1984] 2 NZLR 154).

[18] Consideration as to the likelihood of deception or confusion in a s 16 application can include consideration as to whether a mark is so “famous” that its use will be likely to deceive the public in implying association between the two manufacturers irrespective of the goods to which it is applied (Disney) and deception or confusion arising from similarity of the applicant’s mark with a mark used by another, even if that other is then unregistered. That appears from the judgment in Hi-Bred Corn (at 61-62) where Richardson J (as he then was) held that s 16 “extends to cases where the public is likely to be deceived or confused merely by the mark in question”. The learned Judge defined the principles to be applied in the following passages :

“(1) The onus is on the applicant for registration of the trade mark to establish that the proposed mark does not offend against s 16; and that onus is discharged on the balance of probabilities (Polaroid Corporation v Hannaford & Burton Ltd [1975] 1 NZLR 566).

(2) On an application for registration the rights of the parties are to be determined as at the date of the application. The evidence as to likelihood of deception or confusion must relate to the position at that time.

(3) The concern is with the possible future use of the mark in respect of goods coming within the specification applied for: registration gives the holder protection to that extent.

(4) The section is not concerned with the particular mode of presentation of the product adopted or proposed to be adopted by the applicant, but with the use of the mark in any manner which may be regarded as a fair and proper use of it (Hack’s Application (1940) 58 RPC 91, 103; Smith Hayden & Co Ltd’s Application (1945) 63 RPC 97).

(5) In considering the likelihood of deception or confusion all the surrounding circumstances have to be taken into consideration, including the circumstances in which the applicant’s mark may be used, the market in which his goods may be bought and sold and the character of those involved in that market.

. . .

(7) It is in relation to commercial dealings with goods that the question of deception or confusion has to be considered, and the persons whose states of mind are material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark and others involved in the purchase transactions.

(8) For a mark to offend against s 16 it is not necessary to prove that there is a commercial probability of deception leading to a passing off or infringement action. Detriment or financial loss to an opponent need not be established. It is sufficient if the result of the registration of the mark will be that persons to whom the mark is addressed are likely to be deceived or confused . . . .

(9) The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck. Terms such as “a number of persons” (Jellinek’s Application), “a substantial number of persons” (Smith Hayden & Co Ltd’s Application), “any considerable section of the public” (New Zealand Breweries) . . .

(10) Where goods are sold or may be sold to the general public for consumption or domestic use, the judge or officer making the decision is entitled to take into account his own experience and his own reactions as a member of the public, as well as evidence from the public, when considering whether buyers would be likely to be deceived or confused by use of a trade mark. . . .”

[19] Normal and fair use is actual use of the cited mark under s 16 but notional use in respect of both marks under s 17 (Brown & Grant The Law of Intellectual Property in New Zealand para 2.50 p72).

[20] Pursuant to R 712 the Intellectual Property Office of New Zealand lodged in the Court copies of the whole of its files relating to Indtex’s applications. Apart from the application, search reports, examination reports, correspondence and statutory declarations, the only additional evidence seemingly before the Assistant Commissioner on which his findings as to the status of Carisbrook as a mark or a famous mark could have been based was a photocopy of the relative page from “Place Names of New Zealand” describing “Carisbrook” as a “rugby and cricket ground in Dunedin” and a two-page printout of the ORFU’s web-site about Carisbrook giving minimal detail of the uses to which the ground has been put over the past 100 plus years, including improvements effected by the ORFU first as lessee and latterly as owner. Neither publication mentions sports goods or clothing, whether marketed by the ORFU or using the name “Carisbrook”. The statutory declaration and other evidence before the Assistant Commissioner all pointed the other way.

[21] In the light of those matters, the Assistant Commissioner’s conclusions on “famous” mark cited in para [6] [b] warrant the following observations :

[a] The Commissioner had evidence as to the ORFU’s long-term involvement with the Carisbrook ground (though he appeared to overlook the information on the web-site that the ORFU has owned the ground since 1969).

[b] It may be the case that the Commissioner was relying on his general knowledge or experience for his conclusion that the ORFU, the Carisbrook ground, the provision of rugby and, perhaps, “services” in the sense of sport, have all become associated with each other in the public mind in this country, and that public awareness of all those matters is “very high”. If so, it would have been helpful had he expressed the basis for his conclusions but, in the context of this appeal, the opinions expressed are unexceptionable.

[c] However, there is nothing on the IPONZ file to support the view that the ORFU, Carisbrook and the provision of rugby and sport have all become associated in the public mind with the provision of goods. If the Commissioner was relying on general public knowledge in that respect as discussed in the authorities, the underlying basis for his conclusions should have been set out. Further, if his views on this aspect of the decision were founded on the possibility that the public would be deceived or confused into inferring that Indtex’s goods were endorsed by or associated with the ORFU because of public awareness of the ORFU’s association with the Carisbrook ground then, first, that would appear to elide the issues of “famous mark” and the tests of deception or confusion and, secondly, the decision on this topic again suffers from the lack of any express basis for the conclusions.

[d] A further difficulty is that it is unclear as to the sense in which the Assistant Commissioner was using the word “mark” in the passage under discussion. It may be the case that he was using it in the sense in which it is used in the authorities earlier mentioned but, given the use of the word “trade mark” in the last sentence, it may equally be the case that he was using “mark” as a shorthand for “trade mark” or “registered trade mark” as defined in s 2. If the last, he fell into error because, as at the date of Indtex’s applications, the ORFU’s application was pending. Put another way, given the possible imprecision in the way the Assistant Commissioner expressed himself in the passage set out in para [6] [b], there must be at least a reasonable possibility that the Assistant Commissioner when considering the “famous mark” question overlooked the fact that, at the date on which he should have been focusing, the ORFU’s application remained undetermined.

[22] It therefore follows that, notwithstanding the manner in which the Assistant Commissioner’s decision and the exercise of his discretion should be regarded, this Court’s view, with respect, is that there is no express evidential basis to support the Commissioner’s finding that “CARISBROOK is a famous mark in New Zealand and appears to operate as a trade mark for the ORFU” and that a possibility of error on the part of the Assistant Commissioner cannot be discounted. Since he reverts to those conclusions on a number of occasions and since it would be speculative to conclude what the Commissioner’s decision might have been had he set out the basis for his conclusions or the evidence which supported them and since the Court cannot be sure that the Commissioner applied the correct tests in the various steps in his decision, it follows that the decision on this aspect of the matter must be regarded as unsound. Further, since the decision on “famous mark” is under s 16 but there is no express consideration of the question of “well-known trade mark” under s 17 (2), in the Court’s view the Commissioner’s possible errors would seem to undermine his decisions under both ss 16 and 17. In the Court’s view this is not an area where the Court has the material before it on which to substitute its own conclusions for those of the Assistant Commissioner and on that ground the appeal should be allowed and the matter remitted.

[23] Even had the Court not reached that conclusion on the “famous mark” question, it would have reached the same view on the question of perception or confusion. Whilst accepting that the onus was on Indtex to persuade the Assistant Commissioner that it applications did not breach s 16 and whilst the similarity between the two marks, with or without the additions of the rugby ball, the words “Classic Clothing” or “The Home of Otago Rugby” may be supportable, no evidential basis appears on the IPONZ file as to the likelihood of confusion in the circumstances applying at the date of Indtex’s applications in the respective markets in which the ORFU and Indtex were or were likely to operate. Apart from noting that Indtex’s applications related primarily to rugby sportswear and equipment and opining that “any goods or services that are closely aligned to rugby will conflict with the famous ORFU mark” there is no consideration of the likely markets where confusion might be said to arise. Indeed, there appears to be no recognition that there was no evidence on the IPONZ file suggesting that the ORFU was actually selling goods. There therefore seems to be little if any basis for the Assistant Commissioner to reach the conclusion as set out in para [6] [e]. Whilst the ORFU may be providing sport and other activities at Carisbrook and whilst, if its applications were granted, Indtex would be selling sportswear and clothing using the word “CARISBROOK”, nothing on the file supports the view that the buying public would assume that the latter was in some way associated with the former. And if the Assistant Commissioner was relying on his general knowledge or experience, he nowhere says as much.

[24] The next question to be considered is that part of the decision dealing with honest concurrent use. Other than for honest concurrent use or other special circumstances s 17 debars registration of trade marks in respect of any goods if they are identical with or similar to a registered mark in respect of the same or similar goods or services if use of the mark applied for is “likely to deceive or cause confusion” (s 17(1)). Similarly, s 17(2) debars registration of any trade mark which is identical or similar to a trade mark “which is well-known in New Zealand” in respect of those or similar goods or in respect of any other goods if use of the applicant mark “would be taken as indicating a connection in the course of trade” between that and the well-known trade mark which would be likely to prejudice the interests of the proprietor and again “would be likely to deceive or cause confusion”. Section 17(5) provides that in the case of honest concurrent use or in other special circumstances making it proper so to do, registration of trade marks that are “identical or similar to each other’” may be permitted subject to appropriate conditions and limitations.

[25] Fundamental to s 17(5), Mr Miles submitted, was not the respective priority dates but whether Indtex could show use of its mark prior to ORFU’s application (Re Trade Mark Regency (1977) 1 NZIPR 132, 135, 143). He also submitted that the evidence as to use of the mark by Indtex at the relevant times was incomplete and that the evidence now before the Court showed decisions by Indtex to use the word “Carisbrook” and the ordering of labels and jerseys in that name with the latter delivered on 29 April 1996 - all before the ORFU filed its trade mark application on 2 May 1996 - with additional and increasing usage after that date and, at least as far as material before the Court goes, no evidence before the Commissioner of the ORFU’s use of the mark at any time. He submitted that the Commissioner failed properly to evaluate the evidence of Indtex’s use both in quantity and over time and failed to recognise that, in all the circumstances, likelihood of confusion was minimal. Mr Miles particularly stressed his submission that there was no evidence at all to support the Assistant Commissioner’s conclusion that Indtex was trading on the ORFU’s reputation and had adopted “Carisbrook” on the basis of its similarity to the ORFU’s mark. Mr Miles submitted that the decision was also flawed in that there was no consideration as to when the ORFU mark was applied for or registered when s 17 requires comparison with a trade mark registered in respect of the same goods and ORFU’s mark was not registered at the date of Indtex’s application.

[26] He also submitted that the Commissioner mis-stated the criteria for determining honest concurrent use appears in Alex. Pirie & Son. However, apart from the omission of the phrase “which is to a large extent indicative of the measure of public inconvenience” in considering likely confusion from similarity in the marks (and reversal of nos. 3 and 4) the Commissioner correctly stated the principles from Alex. Pirie & Son (or to put it more accurately, the summary of those factors appearing in Kitchin & Ors Kerly’s Law of Trade Marks and Trade Names 13th ed 2001 para 8-118 p261, Brown & Grant para 2.52 p77). The differences appear immaterial as far as these appeals are concerned.

[27] Mr Katz submitted that the onus was on Indtex to disclose fully all it knew of the ORFU’s mark (Sport International BB v Hi-Tec Sport Ltd (1987) 9 IPR 481, 490) concurrent use of the two marks must occur before the priority date of Indtex’s applications (Re Application by Simac S p A Macchine Alimentari (1987) 10 IPR 81, 90-91) and that Indtex had filed to comply with the onus on it and in particular adduced no evidence at all as to its use at 10 November 1997 in respect of its sports equipment.

[28] Mr Katz submitted that all the Commissioner needed to consider was whether there was likely to be an awareness on the part of the public of the ORFU’s mark CARISBROOK, and whether there was a reasonable possibility that such persons would be likely to think that in buying an Indtex item they were buying a product of or associated with the ORFU or were confused in that respect (Hi-Bred Corn at 76). He therefore submitted that the Commissioner had correctly considered the elements of s 17(2) even though it was in the section of the decision relating to s 16. Whilst that may be correct, a careful reading of the decision shows that although the Assistant Commissioner turned his mind to the likelihood of deception or confusion between Indtex’s and ORFU’s goods and the similarities between them under s 17(1) (2) he did not consider the additional test under s 17(2)(b) or at least not in that section of his decision. It may perhaps be the case that Mr Katz is correct and the way in which the Assistant Commissioner expressed himself was because of the way in which the matter was presented to him by Indtex, but the Court could not confidently assume that when an Assistant Commissioner deals with an issue under s 16 he was in fact intending to deal with the same issue in relation to s 17(2) and would, had the confusion not arisen, have reached the same result.

[29] Further in relation to the s 17 decision, although the Assistant Commissioner was entitled to take his own experience into account (Hi-Bred Corn ibid) it remains the case that there appears to be little, if any, evidential support for his conclusion cited in para [6] [c] above that the “Office considers it highly likely that a substantial number of persons will be caused to wonder whether goods sold under either of the applicant’s trade marks originate from or are endorsed by the ORFU”. From the IPONZ file, there is simply no evidence of deception or confusion as required by Hi-Bred.

[30] Given that the Court has already decided that this appeal must be allowed and the matter referred back to the Commissioner and that detailed examination of the evidence of honest concurrent use will be high amongst the matters to be decided, this Court takes the view that it would not be right for it to consider this aspect of the matter in detail save to note the paucity of evidential support on the IPONZ file as to public use of the two marks before the priority date of Indtex’s applications. Although part of this aspect of the decision refers to an exhibit which is not before the Court that seems to relate only to the colours used by Indtex and the ORFU. Though coming within the definition of “sign” in s 2, similarity of colours used appears to be an insufficient basis from which to conclude that any concurrent use by Indtex of its mark was not honest when the test is that it must be “deliberately surreptitious”, “accompanied by a deliberate concealment” or that commercial honesty “differs not from common honesty” (In the Matter of an Application by J R Parkington & Co Ltd (1946) 63 RPC 171, 182). The Court’s view is that those matters amount to another aspect of the decision on which the appeal should be allowed.

[31] The final aspect of the decision requiring consideration is the reference to office policy in the passage from the decision cited in para [6] [i]. With respect to the Assistant Commissioner, it is somewhat difficult to understand what the office policy means in talking about a “later filed co-pending application” and counsel, though both highly experienced in this field, were unable to assist. Mr Miles, however, submitted that the Commissioner fell into error by elevating office policy to the status of law, when that policy is, he submitted, contrary to the provisions of the Act as refined by the Courts. If the passage under discussion is intended to suggest that it has been IPONZ’ policy for nearly three years not to accept a second application claiming honest concurrent use whilst an earlier application for a mark which is identical or similar to that in the later application remains pending, then, with respect to the office, it is difficult to see how that policy would accord with the Act and the Regulations. If the office declines as a matter of policy to allow a second such application to be filed, it is problematical whether such a refusal could be justified by the Act or the Regulation given that neither appears to limit the right to lodge applications for registration. However, the IPONZ file contained no material concerning the legal justification for the suggested policy and the Court’s speculation may not be at all what is intended. However, since the decision relating to prior usage may well have been affected by office policy, and the Court cannot be sure that such policy is legally sanctioned that, too, provides a further ground on which the appeal should be allowed.

[32] In the light of all of that, though this matter has already had a lengthy and somewhat unsatisfactory history, this Court takes the view that the only appropriate course is to allow the appeal and remit the matter to the Commissioner for reconsideration and decision.

[33] If costs are to be pursued other than on a 2B basis, memoranda may be filed with counsel certifying, if they consider it appropriate so to do, that the Court may determine all questions of costs without a further hearing. If memoranda are to be filed, that from the appellant is to be filed within 28 days of the date of delivery of this decision, with that from the respondent within 35 days of that date.