Le Cordon Bleu v Commissioner of Trade Marks [2012] NZHC 724; [2012] NZAR 524 (18 April 2012)

Last Updated: 26 April 2012

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

CIV-2011-485-002678 [2012] NZHC 724

UNDER the Trade Marks Act 2002

IN THE MATTER OF an appeal from the decision of the Assistant

Commissioner of Trade Marks dated 25

November 2011

BETWEEN LE CORDON BLEU Appellant

AND COMMISSIONER OF TRADE MARKS Respondent

Hearing: 16 April 2012

Counsel: B J Shone for Appellant

No appearance for Respondent

Judgment: 18 April 2012

In accordance with r 11.5 I direct the Registrar to endorse this judgment with the delivery time of 11.45am on the 18th day of April 2012.

_{RESERVED JUDGMENT OF COLLINS J}

Introduction

[1] Le Cordon Bleu International B.V. (the appellant) appeals a decision of the

Assistant Commissioner of Trade Marks (Assistant Commissioner) dated

_{25 November 2011.}

LE CORDON BLEU V COMMISSIONER OF TRADE MARKS HC WN CIV-2011-485-002678 [18 April

2012]

[2] In her decision, the Assistant Commissioner rejected the appellant’s application for the trade mark “Le Cordon Bleu” for use in relation to “meat, poultry and game, and meat extracts” which form part of Class 29 of the Ninth Edition of the International Trade Mark Classification System, adopted as part of the Nice Agreement.1

Background

The appellant

[3] The appellant is incorporated in the Netherlands. It has subsidiary companies in a number of countries. The appellant is in the business of:

(1) teaching culinary skills. This is achieved through the appellant’s association with approximately 40 culinary schools in Europe, North America, South America, Asia and Australasia;

(2) promoting its brand through bakeries, restaurants and food outlets in a number of countries;

(3) selling gourmet food products under the “Le Cordon Bleu” and related names throughout the world;

(4) selling cooking equipment, clothing, books and other accessories throughout the world;

(5) promoting culinary demonstrations and festivals in a variety of countries; and

_{(6) promoting culinary scholarship programmes.}

1 Trade Marks Regulations 2003, reg 3.

Origins

[4] The appellant has a remarkable history. Originally, the term “Cordon Bleu” was used in France to identify noblemen who entertained their guests with great munificence. These noblemen became members of the Order du Saint Esprit, founded in the 16th century by King Henry III. The white cross of their knighthood was attached to a blue ribbon worn around the holder’s neck.

[5] In 1895 Marthe Distel founded Le Cordon Bleu Culinary Institute in Paris. The school flourished. It attracted students from around the world. Aside from a three year hiatus during World War II, Le Cordon Bleu has operated since 1895 as a pre-eminent culinary school and promoter of fine cuisine, food products and retailer of food related products.

Trade marks

[6] The appellant has registered over 200 trade marks in over 70 countries. Those trade marks involve the words “Cordon Bleu”, “Le Cordon Bleu” or derivatives of those words.

[7] The evidence before the Court shows that the appellant has registered word trade marks for “Cordon Bleu” or “Le Cordon Bleu” in relation to “meat, poultry and game, and meat extracts” and other types of food products referred to in category 29 of the International Trade Mark Classification System in over 50 countries, including Great Britain, the United States of America and Australia. In addition, the “Cordon Bleu” device mark has been registered in a number of other countries in relation to category 29 food products.

[8] In New Zealand, the appellant applied for two word trade marks in relation to category 29 food products. Both applications were made on 26 October 2006 and were for the word trade mark “Le Cordon Bleu”:

(1) Application 757768 was for “meat, poultry and game, and meat

extracts”.

(2) Application 830239 was for “fish; preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk, butter, cheese, creams and all other dairy products, edible oils and fats, salad dressings, preserves, cooked dishes including all the aforesaid goods in preserved, frozen or deep frozen form”.

The Court was informed that the second of these trade marks has been registered, together with seven other trade marks relating to a wide variety of classes in the International Trade Mark Classification System. This appeal is therefore confined to the first of the applications referred to in this paragraph.

Key legislative provisions

[9] Section 18 of the Trade Marks Act 2002 (the Act) provides:

(1) The Commissioner must not register–

(a) a sign that is not a trade mark:

(b) a trade mark that has no distinctive character:

(c) a trade mark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services:

(d) a trade mark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.

(2) The Commissioner must not refuse to register a trade mark under subsection (1)(b), (c) or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character.

[10] “Trade mark” is defined in s 5 of the Act to mean:

(a) ... any sign capable of—

(i) being represented graphically; and

(ii) distinguishing the goods or services of 1 person from those of another person;

...

Assistant Commissioner’s decision

[11] There are four parts to the Assistant Commissioner’s decision:

(1) She accepted that s 18(1)(a) provided no barrier to the appellant’s application. The Assistant Commissioner was satisfied that because the Intellectual Property Office of New Zealand (IPONZ) confined its objections to s 18(1)(b) and (c) of the Act the application must, by implication, concern “a sign that is a trade mark”.

(2) The Assistant Commissioner accepted the appellant’s argument that s 18(1)(c) of the Act did not provide an obstacle to registration because the use of the word “Le” transformed the trade mark into a noun. Accordingly, the Assistant Commissioner concluded that the trade mark did not consist

... only of signs or indications that may serve, in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods ... or other characteristics of goods or services.

(3) The Assistant Commissioner decided the name “Le Cordon Bleu” was a laudatory term which lacked distinctive character. The Assistant Commissioner held that traders of meat, poultry and game and meat extracts might wish to use the words “Cordon Bleu” to communicate to consumers that their products are of the highest quality. The Assistant Commissioner also held that “Cordon Bleu” was similar to “Le Cordon Bleu”. This reinforced her concern that “Le Cordon Bleu” lacked distinctive character. Accordingly, the Assistant Commissioner concluded that s 18(1)(b) of the Act prevented the appellant’s trade mark from being registered.

(4) The Assistant Commissioner decided that the appellant’s application could not be salvaged under s 18(2) of the Act because:

(a) the trade mark had not previously been used in New Zealand by the appellant in relation to “meat, poultry and game, meat extracts” and because

(b) the trade mark had not acquired a distinctive character as a result of any other circumstances.

[12] This appeal is confined to those parts of the Assistant Commissioner’s

decision summarised in [11(3)] and [11(4)(b)] above.

The evidence

[13] The appellant’s evidence was in the form of a statutory declaration from Monsieur Cointreau, the “President and Chief Executive Officer” of the appellant. He explained:

(1) the historical origins of the words “Cordon Bleu”;

(2) the establishment of “Le Cordon Bleu” in Paris in 1895 by Marthe

Distel;

(3) the evolution of “Le Cordon Bleu” into an international school of

culinary art;

(4) the expansion of the “Le Cordon Bleu” brand into:

(a) restaurants; (b) food outlets;

(c) kitchen apparel;

(d) cook books;

(e) kitchen equipment and accessories;

(f) culinary festivals and other forms of promotion.

(5) the expansion of the “Le Cordon Bleu” brand into other European

countries, North America, Asia and Australasia;

(6) the intention of the appellant to open a culinary school and restaurant in Wellington in May 2012 (following its unsuccessful attempts to gain consent for a similar enterprise in Martinborough); and

(7) the appellant’s registration of its trade marks in numerous other countries, including New Zealand.

[14] The Assistant Commissioner had before her the basis of the objection from IPONZ which she said was substantially based on internet extracts showing the term “Cordon Bleu” was used in New Zealand to describe types of meat product.

Legal principles

Determining an appeal under the Act

[15] An appeal of this nature is conducted as a rehearing pursuant to s 173 of the Act and r 20.18 of the High Court Rules. The Court is not bound to accept the Assistant Commissioner’s findings of fact and is entitled to exercise any power or discretion available to the Assistant Commissioner at first instance. The Court must exercise its own judgement but, where appropriate, the Court may give weight to the expressions of opinion of the Assistant Commissioner.

[16] In Austin, Nichols & Co Inc v Stichting Lodestar, the Supreme Court said that when considering a general appeal the High Court is required to:2

2 Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [3].

... come to its own view on the merits. The weight it gives to the decision of the Commissioner is a matter of judgment [sic]. If the High Court is of a different view from the Commissioner and is, therefore, of opinion that the Commissioner’s decision is wrong, it must act on its own view.

[17] The Court went on to say:3

Those exercising general rights of appeal are entitled to judgment in accordance with the opinion of the appellate court, even where that opinion is an assessment of fact and degree and entails a value judgment [sic]. If the appellate court’s opinion is different from the conclusion of the tribunal appealed from, then the decision under appeal is wrong in the only sense that matters, even if it was a conclusion on which minds might reasonably differ. In such circumstances it is an error for the High Court to defer to the lower Court’s assessment of the acceptability and weight to be accorded to the evidence, rather than forming its own opinion.

In the present appeal there was no basis for caution in differing from the assessment of the tribunal appealed from. The case entailed no question of credibility. It turned on a judgment [sic] of fact and degree, not the exercise of discretion entrusted to the tribunal. We are of the view that the Court of Appeal was not correct to suggest that, because the decision turned on a value judgment [sic] apparently open to the Assistant Commissioner, “the High Court Judge ought not to have embarked on a reconsideration of the issue without considering, and giving weight to, the Assistant Commissioner’s conclusion”. The High Court Judge was obliged to reconsider the issue. He was entitled to use the reasons of the Assistant Commissioner to assist him in reaching his own conclusion, but the weight he placed on them was a matter for him.

Onus

[18] The appellant accepted that it bears the onus of establishing that the Assistant Commissioner was wrong and that she should have allowed the trade mark “Le Cordon Bleu” to be registered in relation to “meat, poultry and game, and meat extracts”.

Relevant date

[19] The relevant date for determining the appellant’s rights raised by the appeal is

the date of application, namely 26 October 2006.4

Analysis

[20] The issues before the Court can be conveniently explained in the following way:

(1) Does the trade mark “Le Cordon Bleu” have “distinctive character” within the meaning of s 18(1)(b) of the Act in relation to “meat, poultry and game, and meat extracts?” (Issue 1) If not,

(2) As at 26 October 2006 had the trade mark “Le Cordon Bleu” acquired distinctive character through “any other circumstances” as that term is used in s 18(2) of the Act, in relation to “meat, poultry and game, and meat extracts?” (Issue 2).

Issue 1

[21] In assessing whether or not the appellant’s trade mark has “distinctive character” I have been guided by the following authorities:

(1) In the matter of Applications by W & G du Cros Ltd for the registration of trade marks5 where Lord Parker in delivering the principal judgment of the House of Lords said:6

In my opinion, in order to determine whether a mark is distinctive it must be considered quite apart from the effects of registration. The question, therefore, is whether the mark itself, if used as a Trade Mark, is likely to become actually distinctive of the goods of the person so using it.

... The applicant’s chances of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

(2) British Sugar plc v James Robertson & Sons Ltd7 where Jacob J

asked:

What does devoid of any distinctive character mean?

His Honour answered:

I think the phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark ...

[A] common laudatory word such as “treat” is, absent use and recognition as a trade mark, in itself ... devoid of any distinctive inherently character ...

[T]he question of factual distinctive character is one of degree. The proviso really means “has the mark acquired a sufficiently distinctive character that the mark has really become a trade mark”.

(3) Intellectual Reserves Inc v Sintes8 where Baragwanath J endorsed the approach taken by Lord Parker in W & G du Cros Ltd and Jacobs J in British Sugar plc.

[22] I have concluded that “Le Cordon Bleu” has “distinctive character” when used in relation to “meat, poultry and game, and meat extracts”. My reasons for reaching this conclusion are:

(1) The word “Le” adds a distinctive element to the trade mark when it is

assessed as a whole.

(2) “Le Cordon Bleu” is a proper noun. It has been used exclusively by the appellant for in excess of 100 years.

(3) The French words that make up the trade mark introduce an exotic flavour to the trade mark, thereby adding to its distinctive character.

(4) The literal translation of “Le Cordon Bleu” is “the blue ribbon”. That phrase has no direct literal connection to “meat, poultry and game, and meat extracts”.

(5) There is no evidence before me to suggest that other traders were likely to use “Le Cordon Bleu” in the ordinary course of their business. I am mindful the Assistant Commissioner referred to extracts from the internet that IPONZ referred to her. In this Court, counsel for the appellant cautioned against reliance on the material sourced from the internet. She said that some of that material in fact concerned the appellant’s use of “Le Cordon Bleu”. In any event, if other traders have used the brand “Le Cordon Bleu” in relation to food products then they have done so to take advantage of the appellant’s reputation and the status it has created for its trade mark.

(6) The trade mark “Le Cordon Bleu” has been accepted:

(a) in Australia in relation to:

Meat; prepared foods based on meat; duck and goose foire gras; frozen foods based on meat and chicken; liver, pates, game, bacon, ham, sausage, preserved meat, meat extract, meat jellies, canned meat, charcuterie, caviar; cooked fruit and vegetables; frozen fruit and vegetables; frozen fish; fillets of fish; salted fish; canned fish.

(b) in the United Kingdom in relation to:

Meat, fish poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, eggs, milk and milk products; edible oils and fats; preserves; prepared meals and snacks.

(c) and, in many other countries, in relation to the products to which the appellant’s application related, as well as other products.

I also note that in the United States the appellant has registered the trade mark “Cordon Bleu” in relation to the products to which the appellant’s application related, as well as other food products.

[23] When these factors are assessed collectively one is inevitably drawn to the conclusion that the trade mark “Le Cordon Bleu” is distinctive when applied to “meat, poultry and game, and meat extracts”. To adopt the language of Jacobs J in British Sugar plc, the appellant’s mark has sufficiently distinctive character that, in reality, it is a trade mark.

Issue 2

[24] My conclusion in relation to Issue 1 renders it unnecessary to consider Issue 2. However, I will address Issue 2 in case it should be considered that I have erred in my decision in relation to Issue 1.

[25] The appellant has not sold “meat, poultry and game, and meat extracts” under the trade mark “Le Cordon Bleu” in New Zealand. Accordingly, the issue under s 18(2) is whether by reason “of any other circumstances” the appellant’s trade mark has acquired a distinctive character.

[26] In “Esso” Trade Mark Whitford J held that a device mark, Esso was registrable:9

so as to cover those categories of goods falling within the specification of the present application which can on a reasonable basis be fairly closely allied to the pre-existing fields of the appellant’s activities.

Esso had registered trade marks in respect of fuels, oils and hydro-carbon products. The company then diversified into producing tyres. Whitford J held that there was sufficient connection between the new products and the company’s pre-existing fields of business and that these were “other circumstances” which should properly be considered in determining whether or not the new applications were registrable trade marks.

[27] In Advantage Group Ltd v Advantage Computers Ltd the Court of Appeal referred to Esso and made the following observations:10

9 _{Esso Trade Mark [1972] RPC 283 at 292.}

10 Advantage Group Ltd v Advantage Computers Ltd [2002] 3 NZLR 741 (CA) at [19]-[21].

... A trade mark may be found to be distinctive of the goods or services of a trader even though it has been used for a short period or in a small way in relation to those goods or services. It may be another in a distinctive family of marks to which distinctiveness will readily attach. The goods or services may be close to those for which the mark already enjoys distinctiveness: see for example, “Esso” Trade Mark [1972] RPC 283. It may form part of a well-known business name but have been used to only a limited extent as a trade mark.

The circumstances of trade in the goods or services will be relevant. Proof of distinctiveness among purchasers of expensive or specialised goods may be easier than among purchasers of low-cost, widely purchased goods.

We do not understand the authorities to require registration to be limited precisely to goods or services on which the mark has been used. Reasonable generalisation does no more than recognise the reality of the marketplace. Distinctiveness proved in relation to raspberry jam will flow over to other jams. That is recognised in the amendment to the infringement provisions in the Act to capture as infringements use in relation to similar goods or services. There are limits, of course. Proved distinctiveness in relation to jam could not justify a registration covering all foodstuffs.

[28] In McCain Foods (Aust) Pty Ltd v Conagra Inc the Court of Appeal noted:11

... to be capable of distinguishing, a mark must at the date of registration have that as an inherent quality or have it demonstrated in fact by prior use or “other circumstances”. There seems no reason why subsequent events might not constitute “other circumstances” where they assist in establishing the essential quality at the time of registration.

[29] The concept “any other circumstances” as used in s 18(2) of the Act includes,

but is not limited to, the following circumstances:

(1) where goods or services “could on a reasonable basis be said to be fairly closely allied to the pre-existing fields of the applicant’s activities.12

(2) where the mark is “another in a distinctive family of marks to which distinctiveness will already attach”.13

(3) where the mark forms “part of a well known business name but has been used in only a limited extent as a trade mark”.14

11 _{McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA) at [15].}

12 _{“Esso” Trade Mark [1972] RPC 283.}

13 Advantage Group Ltd v Advantage Computers Ltd [2002] 3 NZLR 741 (CA) at [19]-[21].

(4) where subsequent events “assist in establishing the essential quality at the time of registration”.15

[30] In my assessment “Le Cordon Bleu” has acquired distinctiveness “through any other circumstances” within the meaning of s 18(2) of the Act. My reasons for reaching this conclusion are:

(1) The mark forms part of a well known business name that has been used as a trade mark in New Zealand.

(2) The mark “Le Cordon Bleu” could on a reasonable basis be said to be fairly closely allied to the pre-existing fields of the applicant’s activities, being foods in the same category as Class 29, in particular fish, cooked dishes, and fish and cooked dishes in preserved, frozen or deep frozen form.

(3) The trade mark “Le Cordon Bleu” “could on a reasonable basis be said to be fairly closely allied to the pre-existing fields of the applicant’s activities, being the same food in the same class to which the Australian and United Kingdom trade marks apply.

(4) The mark is “another in a distinctive family of marks to which distinctiveness has already attached”.16

Conclusion

[31] For the reasons set out above I have concluded that the Assistant

Commissioner erred when she:

(1) concluded that the appellant’s application could not be registered

_{because of the provisions of s 18(1)(b) of the Act; and}

15 McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA).

(2) that she also erred when she concluded that the appellant’s application

could not be salvaged by s 18(2) of the Act.

[32] For these reasons, the appeal is allowed. The appellant is entitled to an order

that the mark “Le Cordon Bleu” should be registered in Class 29 in respect of “meat, poultry and game, and meat extracts”.

_{D B Collins J}

Solicitors:

Baldwins Law Limited, Wellington for Appellant