The importance of having an intention to use a trade mark
A recent decision of the New Zealand High Court has confirmed that a sign can be used as a trade mark when it is not used on the goods themselves and there is no intention to sell goods physically bearing the sign. The Judge also held that the applicant must establish that it is using or intending to use the trade mark. The inference of intention to use that arises from the application itself can be displaced by evidence – including the applicant’s own evidence.
In Effem Foods Limited v Cadbury Limited (High Court, CIV 2005-485-1487, 21 March 2007), Cadbury Limited applied to register the word EARTH as a trade mark for a range of confectionery and related goods. The application was opposed by Effem Foods Limited on the grounds that Cadbury was not the true proprietor of the trade mark EARTH, because Effem had made prior use of EARTH in relation to confectionery. Effem also alleged that Cadbury did not intend to use EARTH as a trade mark.
The use relied on by Effem was a television commercial which screened three weeks before Cadbury’s application. The commercial features a large billboard depicting a bar in MARS get-up, but with the word “EARTH” instead of MARS. A voiceover concludes the commercial by intoning “EARTH. What you’d eat if you lived on Mars”.
In its evidence, Cadbury said that it filed the application to protect its MOTHER EARTH trade mark.
The Assistant Commissioner of Trade Marks found that there was no prior use and the opposition accordingly failed. The Assistant Commissioner held that Effem had not used EARTH as a trade mark in the commercial because there was no actual trade or offer to trade in goods bearing the mark or intention to offer or supply goods bearing the mark in trade. As Effem had never offered to supply EARTH bars in New Zealand, it had not made prior use of the trade mark EARTH and could not therefore claim proprietorship.
On appeal, Justice Miller held that on the facts Effem had not used EARTH as a trade mark, but Cadbury’s application should be rejected because of a lack of intention to use.
The Judge referred to the definition of “sign” in the Act, and to section 2(2) which reads:
“References to the use of a sign in relation to goods shall be construed as references to the use of the sign upon, or in physical or other relation to, goods:”
He concluded that the legislation did not require that there be goods physically bearing the trade mark, or an intention to offer such goods. Nevertheless, he held that Effem had not used EARTH in a trade mark sense. He held that there was no evidence that EARTH, used alone, was capable of indicating that Effem was the trade source of MARS bars.
The Judge agreed with the Assistant Commissioner that “use of MOTHER EARTH was not tantamount to use of EARTH.” He noted that the “intention to use must be a settled purpose, and absence of a bona fide intention to use the mark prevents it from being a trade mark.” He accepted that an application is prima facie evidence of intention to use. However, the legislation required that the applicant demonstrate use or intention to use. He held that “the inference of intention to use that arose from the application itself was displaced by Cadbury’s own evidence, which established that the purpose of registration was purely defensive.”
The decision has not been appealed.
Henry Hughes Limited represented Effem Foods Limited in this matter.
Barbara Sullivan - May 2007
