Is 'Batts' a generic trade mark, or a badge of origin?

A major development in trade mark law is on its way. Jandal wearers, frisbee players and lycra-clad rollerbladers will be watching with baited breath, lawyers will put down their biros and dictaphones, children their plasticine, and scientists their perspex glasses. Because two insulation companies are preparing to square off in the High Court about whether "batts" has become a generic term that can no longer be protected by a trade mark.

Tasman Insulation (which is a Fletcher Building subsidiary) is the maker of Pink Batts. "Batts" has been a registered trade mark of Tasman in New Zealand since 1973. Knauf Insulation is a German company that supplies insulation in various countries across the world, including in Europe, the United States and Australia. Certain products manufactured by Knauf that were imported into New Zealand described the insulation product as batts, which Tasman claims is improper use of its trade mark. After some discussion between the two companies about the use of the word batts, Knauf applied to have the trade mark revoked on the grounds that batts is a generic term used to describe insulation products (in particular those that are manufactured in rectangles), and as such should not be able to be claimed as a protected trade mark by just one company. Tasman responded by beginning legal proceedings against Knauf for infringing its trade mark.

Trade marks are commonly used as a badge of origin to signal to consumers that a product comes from a particular source. The law draws a distinction between true trade marks that identify the origin of goods, and descriptive marks that could describe any product of a certain type, regardless of source. Section 18(1) of the Trade Marks Act provides that the Commissioner of Trade Marks must not register a trade mark that has no distinctive character, or that serves 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. The Commissioner must not register a trade mark that has become customary in the current language or in the bona fide and established practices of trade.

The word batting or batt has been used for a very long time to describe a particular type of insulation, and derivatives of the word are recognised as insulation products in countries across the world. The question for the courts to decide will be whether the word batts is (or has become) generic in New Zealand, or whether consumers identify it with a particular manufacturer (in this case Tasman).

The batts trade mark case is due to be heard in September 2013, and we will be following it as it develops. Whatever the result, if this case proceeds it will set a major precedent in New Zealand as to when and in what circumstances trade marks become too generic to continue being protected.

If you have a trade mark that you think may be at risk of becoming descriptive or generic, please contact us to fund out how best to protect it.