The New Zealand Court of Appeal has largely upheld the decision of the High Court in the trade mark dispute involving Tasman Insulation's Pink Batts® product.

Background

The case involving rival building products companies, Tasman Insulation New Zealand and Knauf Insulation, dates back to 2011.

Knauf had begun selling an insulation product under the brand Earthwool. Tasman claimed Knauf was infringing its BATTS® trade mark by using the term 'batt(s)' or 'BATT' in online marketing and packaging materials for its Earthwool product.

Tasman also alleged that Knauf had breached the Fair Trading Act 1986, by engaging in misleading and deceptive conduct around the marketing of the Earthwool product. In particular, it claimed Knauf was giving the false impression that its product was made from natural wool, when it was made from recycled glass.

Knauf's response was to apply to revoke Tasman's trade mark on the ground that 'batts' was purely descriptive, and had become a common name in general public use. Knauf also countered Tasman's claim that use of the word 'batts' or BATT in the marketing and packaging of its Earthwool product constituted trade mark infringement, suggesting neither would be viewed as 'use as a trade mark' under s 89(2) of the New Zealand Trade Marks Act 2002.

The Appeal Court's decision

Justice Brown of the High Court dismissed Knauf's application to revoke Tasman's BATTS® trade mark. He found in favour of Tasman's claim that Knauf had engaged in misleading and deceptive conduct, but dismissed the infringement claim with one exception, that relating to Knauf's online marketing.

Yesterday's Court of Appeal decision largely upheld the High Court decision, finding that the word 'batts' was not a common name in public use, and was strongly associated with Tasman Insulation's Pink Batts® products. It noted that even if the word 'batts' had become a name in common use by the public, Tasman had strongly promoted its Pink Batts® product and trade mark over several years and done all it reasonably could to ensure the its correct promotion by distributors.

A survey showing that a majority of people thought Earthwool was made from wool and not recycled glass, helped support the Court's decision to uphold Justice Brown's finding that Knauf had engaged in misleading and deceptive conduct in its brand and online marketing.

The Court found that Knauf's use of the word 'batt(s)' on the Earthwool label, packaging, and website was descriptive and not trade mark use, therefore did not infringe Tasman's mark.