Wearing a red nose has never been so controversial.

In Australia, the National SIDS Council of Australia (NSCAL) runs Red Nose Day to raise money for research into Sudden Infant Death Syndrome.  In New Zealand, Cure Kids (CK) is an organisation that raises money for various diseases that affect children.  Recently, CK has revived its Red Nose Day campaign which it originally ran from 1989 to 1997.  This revival has sparked a trade mark dispute between the two charities.

It appears from media reports that NSCAL has recently been selling its Red Nose stock to CK but is now concerned that the co-existence of the two charities could cause confusion.  NSCAL’s position appears to be that it would like to align the two charities by having CK’s marks assigned to NSCAL. 

Accordingly, on 29 June 2010, NSCAL filed five applications for revocation of CK’s marks for variations of the words "Red Nose Day".  The grounds for revocation are section 66(1)(a), (b) and (e) of the New Zealand Trade Marks Act 2002 (as it stood at the application date).  These sections relate to non-use and deception or confusion.  As a part of this strategy, around the same time NSCAL also filed its own trade mark for Red Nose Day on the New Zealand register.  This mark is on hold pending the resolution of the current proceedings. 

Interlocutory decisions in this dispute have been made by the New Zealand Intellectual Property Office here (15 April 2011) and here (13 August 2012) regarding NSCAL’s request for the production of certain documents allegedly demonstrating non-use.  

The ultimate decision will be an interesting one.  If non-use cannot be shown, it appears that the Intellectual Property Office of New Zealand will need to consider deception or confusion in relation to a ‘brand’ developed by a charity organisation.  This is a task not to be sneezed at.