A trade mark may not be registered if it is likely to cause confusion or deception with another trade mark on the trade marks register or being used in the marketplace. This is often a hypothetical assessment, as more often than not, one or more of the trade marks is not actually being used in the New Zealand market.
Evidence of actual confusion between trade marks operating in the market is to intellectual property cases what a smoking gun is to criminal cases. There is authority to the effect that evidence of actual confusion and deception is a complete answer to the question of whether trade marks are likely to deceive or confuse the public. Like all matters legal, that evidence needs to be scrutinised in order to assess whether it proves what it is alleged to prove.
In 2011 the Dutch navigation company known as TomTom (“TomTom International”) applied in New Zealand to register two trade marks – “TOMTOM” and a logo (shown). Gaylene Hosking is the owner of an earlier filed mark for TOMTOM in New Zealand. Ms Hosking licences the company which she controls, TomTom Communications Limited, to use that trade mark.
Ms Hosking and TomTom Communications Limited (Hosking) provide communications, marketing, promotion, brand development, website development and critique, media strategies, training, advertising, research and analysis, lobbying and reputation management services under the trade mark TOMTOM and have done since 1998 in New Zealand.
TomTom International’s trade mark applications were accepted by the Intellectual Property Office of New Zealand and Hosking opposed on the basis that use by TomTom International would be likely to deceive or confuse under the Trade Marks Act 2002. The test for likely to deceive or confuse is, having regard to the opponent’s reputation, use of the applicant’s mark likely to deceive or confuse prospective or potential purchasers of the applicant’s goods?
Wrong way round
One of the key issues in the opposition was what was referred to as “wrong way round confusion”. Wrong way round confusion occurs when members of the public are confused into thinking that an opponent to registration is associated with an applicant for a trade mark; in this case, a belief by members of the public that TomTom Communications was associated with TomTom International. In fact what was occurring was that customers and potential customers of TomTom International were contacting TomTom Communications.
Since TomTom International’s launch in New Zealand in 2006 Hosking had been receiving enquiries, by telephone, email and postal mail intended for TomTom International. Hosking also said that it had become difficult to promote her own company and services because people assumed her company was TomTom International.
One of the major contributing factors to people contacting Hosking when they were looking for TomTom International was that TomTom International did not have a New Zealand specific website and did not list any New Zealand contact details on its international website.
In the opposition before the Intellectual Property Office of New Zealand, the Assistant Commissioner ruled that not all of the instances of confusion arose simply as a result of similarities between the marks and/or the respective goods and services, and people contacting the wrong company, and not because of TomTom Communication’s reputation, and the evidence of confusion must be viewed in this light. The opposition was dismissed.
Hosking appealed the opposition decision to the High Court – TomTom Communications Limited & Hosking v TomTom International B.V.  NZHC 3333. The judge ruled that most, if not all of the evidence, was of people who knew of TomTom International, but had no knowledge of Hosking and her business, and hence the description “wrong way round” confusion. The evidence therefore did not meet the test set out in Pioneer Hi-Bred Corn Company v Hy-line Chicks Pty Ltd  2 NZLR 50 (CA) at  that having regard to TomTom Communication’s reputation, the use of TomTom International’s mark would be likely to deceive or confuse prospective or potential purchasers of TomTom International’s goods.
The judge referred to authority that potential customers and customers must be aware of the opponent’s mark, in this case, aware of TomTom Communications. Because those who were confused, or even deceived, were not aware of Hosking’s marks, the evidence of confusion and deception was not relevant. The judge agreed with the Assistant Commissioner that the confusion that was occurring was not in the way that the Trade Marks Act is generally understood to operate, that is, that an opponent points to its own reputation and says that because of that reputation, confusion or deception is likely to arise. The confusion that was occurring here was said to be simply a failure by people to make contact with the organisation they were trying to make contact with.
As a final blow to Hosking, the Judge also ruled that the marks had only just met the threshold for having a reputation and fell short of being well known in New Zealand.
The moral of the story is that it is not just any evidence of confusion that will do and the evidence of confusion and deception must be carefully analysed as to the cause of it. Hosking has a right of appeal to the Court of Appeal.
Kate Duckworth is an intellectual property lawyer and patent attorney at Catalyst Intellectual Property. She practises mostly in dispute resolution and trade mark portfolio management.