The Court of Appeal in Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd [2015] NZCA 602 has provided further clarity as to when registration of a trade mark will be revoked on the basis that the mark has, as a result of the acts or inactivity of the owner, become a common name in general public use for the product or services in respect of which it is registered.

Tasman, who is well known for their Pink Batt products, was the owner of the trade mark "BATT" in relation to insulation.  In 2011, a company associated with Knauf arranged for the importation into New Zealand of insulation products.  These products included the term "BATT" on the label and the words "batt" or "batts" were used elsewhere on the packaging, and other related material.  Tasman brought proceedings against Knauf, including for infringements of their trade mark.  One of the responses by Knauf was a counterclaim against Tasman seeking to revoke Tasman's trade mark under section 66(1)(c) of the Trade Marks Act 2002.

In assessing this counterclaim, the Court noted that the heart of the inquiry under section 66(1)(c) is establishing whether the trade mark at issue has become a common name in general public use such that it has ceased to distinguish the owner's goods or services from those of others.  Nevertheless, should a trade mark lose its distinctiveness due to extraneous events over which the owner has no control, the trade mark will not be revoked.  Therefore, the owner of a trade mark is only responsible for taking reasonable steps to protect its trade mark.

On the facts, Knauf fell well short of satisfying section 66(1)(c) of the Act.  While there had been some use of the word in descriptive terms, some descriptive use was not sufficient to establish loss of distinctiveness of a trade mark as a badge of origin.  Any of Tasman's failures to protect its mark had to be balanced against what it did, and what it ensured its distributors did, to promote the correct use of the brand.  Tasman had acceptably and continuously promoted the Pink Batt related trade marks in New Zealand for over 40 years, and as a result their Pink Batt branded products had become iconic in New Zealand. 

See Court decision here.