Under section 17(1)(a) of the Trade Marks Act 2002, an opponent in a trade mark opposition (who claims to have prior rights in a similar or identical trade mark) is required to establish "awareness" of the trade mark(s) it relies on. If awareness is established, the section provides an opponent with one of the broadest grounds in the Act on which to base its opposition. As a result, it is one of the most commonly pleaded sections in trade mark proceedings.
In the past, the threshold for an opponent to establish awareness has been viewed as being relatively low.
However, over the past year, the Intellectual Property Office of New Zealand (IPONZ) has been raising the bar for evidence establishing awareness. Last year, of the 29 decisions in which evidence of awareness of a trade mark(s) was submitted, 48% of opponents were found not to have met the required threshold.
The recent High Court decision in Unilever PLC v McPherson's Consumer Products Pty Limited  NZHC 1458 continues to raise this bar.
For the purposes of section 17(1)(a) of the Act, an opponent is required to identify the relevant market for the goods/services in question, and provide evidence showing that a substantial number of persons in that market have awareness of its trade mark. What a substantial number of persons is, will depend in each case on the market in question.
In 2010, McPherson's Consumer Products Pty Ltd filed a trade mark application for CATWALK for, among other things, hair brushes, hair bands and hair clips. Unilever Plc, having previously used its unregistered CATWALK trade mark on goods in New Zealand (including hair care products), opposed the application. Unilever's main ground of opposition was that registration of the opposed trade mark by McPherson's would be likely to deceive or cause confusion in the market (section 17(1)(a)).
Before the Assistant Commissioner of Trade Marks, Unilever was unsuccessful on all of its grounds of opposition. Unilever appealed.
The High Court case
Unilever needed to initially establish awareness of its CATWALK trade mark before the Court would be required to assess whether there would be deception or confusion in the marketplace from use of CATWALK by McPherson's.
On appeal, the key question was whether Unilever had provided enough evidence to overcome the initial evidential onus to show awareness of its trade mark. Unfortunately for Unilever, the High Court found that it had not.
The High Court considered that there was not enough evidence to establish awareness to the required threshold. The Court identified numerous difficulties with Unilever's evidence, including that the evidence:
- provided little by way of factual basis against which beliefs of its witness could be tested and assessed;
- did not clearly identify how the trade mark was used at the date of application (or relevant date);
- provided limited detail of how products bearing the trade mark were actually sold to the relevant market;
- did not detail the percentage of the total market of available hair salons, or stockists, to which Unilever sold;
- showed that Unilever's sales were "infinitesimal" (average sales for its CATWALK products being $167,000 per annum), given the large size of the relevant market for hair care products;
- included limited information regarding promotional products, how the trade mark was used for them, and how these resulted in an increase in awareness;
- did not include information showing how many individuals from the relevant market purchased its goods from the Internet, or accessed the Internet sites to acquire CATWALK products, before the relevant date; and
- did not provide details of promotions.
In summary, the evidence was found to be "long on assertion and generalisation, but short on specific evidence and detail".
The decision highlights that an opponent can no longer merely identify a few labels or promotional materials to evidence awareness of its trade marks. In the words of Dennis Denuto from The Castle, simply claiming "it's the vibe of the thing", is definitely out.
At a basic level, what is required is to link the trade mark to a substantial section of the relevant market at or before the relevant date.
In reality this can be challenging. As the relevant date in opposition proceedings is the date the opposed trade mark is filed, the opponent is often required to establish its evidence of awareness as at a date before the opponent learns of the rival trade mark application.
So, is "awareness" of my trade mark essential in an opposition?
If you have a registered trade mark, no. If you have an unregistered trade mark and you are opposing on the ground that the application is confusingly similar to this unregistered trade mark, yes.
Owners of registered trade marks can also benefit from relying on section 17(1)(a). The benefit of establishing awareness and having the section considered by the decision-maker is that this ground often offers a broader scope on which to base an opposition than other sections in the Act.
In future ...
We are already seeing an increase in trade mark applications from overseas applicants as a result of New Zealand becoming a party to the Madrid Protocol (which allows parties to file in multiple countries from one centralised application). This increase means more applications in New Zealand that may be confusingly similar to your brands, for identical or similar goods or services, which may result in more oppositions.
So what proactive measures can you take?
First, register your important brands. The owner of a registered trade mark is able to argue an opposition to a trade mark application based solely on its registration - without any need to establish awareness of the trade mark. This will be important if the decision-maker does not consider there to be substantial awareness of your trade mark in New Zealand.
Secondly, consider what evidence you would have available if you found out tomorrow that a trade mark application, that is arguably confusingly similar to your brand, was applied for on say, 1 June 2012. Would you be able to gather evidence of awareness of your trade mark in the relevant market in New Zealand as at that time? For example, have you set up systems for collating this evidence, and keeping it refreshed?
To be able to provide sufficient evidence of awareness of your trade mark, you will have to be able to access evidence relating to use of your trade mark that includes:
- Website hits (and demographic of users);
- Readership details for print media;
- Viewership details for television media;
- Event attendance (and how this links to the relevant market);
- Quantities of a product sold / available for sale;
- Geographical spread of sales;
- Evidence of the size of the relevant market (and sub-markets) and percentage share;
- Evidence about the factors that influence awareness in your market;
- Evidence from the relevant trade about awareness of your trade mark.
Also, are you willing to invest in survey and expert evidence? How fool-proof can that type of evidence be for your brand in your market?
Those examples are self-evidently not exhaustive, but are an important starting point. Each case will have its own specific requirements. We suggest you contact us if you would like specific guidance on the practical things your business can do to establish evidence of awareness. This evidence may be all that stops you tripping at the first hurdle when strutting your trade mark on the IPONZ opposition catwalk.