Tomtom Communications Ltd v Tomtom International B.v

JurisdictionNew Zealand
CourtHigh Court
JudgeWoodhouse J
Judgment Date18 December 2015
Neutral Citation[2015] NZHC 3333
Docket NumberCIV-2015-404-948
Date18 December 2015

[2015] NZHC 3333

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2015-404-948

Under the Trade Marks Act 2002

In the Matter of an appeal from the decision of the Assistant Commissioner of Trade Marks dated 27 March 2015

And in the Matter of New Zealand Trade Mark Applications Nos. 848087 and 848088

BETWEEN
Tomtom Communications Limited and Gaylene Ruth Hosking
Appellants
and
Tomtom International B.V.
Respondent
Appearances:

E C Gray and K E Tidbury for the Appellants

G C Williams and T C Kirk for the Respondent

Appeal from a decision of the Assistant Commissioner of Trade Marks allowing the respondent to register “TOMTOM” — the appellant was the owner of the registered trade mark “TOM TOM” — the appellant's business was a communications consultancy — the respondent was a multinational company, which specialised in computer satellite navigation systems — it had sought to register the marks previously but withdrawn after opposition from the appellant — whether the mark would be contrary to s17 Trade Marks Act 2002 (TMA) (absolute grounds for not registering trade mark: general — likely to deceive or cause confusion) — whether in cases where there was evidence of actual confusion or deception, the Smith Hayden test did not apply — whether the Assistant Commissioner had been incorrect to conclude that “wrong way round” deception or confusion was not sufficient to meet an objection pursuant to s17(1)(a) TMA (use would be likely to deceive or cause confusion) — whether registration would be contrary to s17(1)(b) TMA (would amount to passing off and breach of the Fair Trading Act 1986) — whether under s17(2) TMA the trade mark had been applied for in bad faith.

The issues were: whether the mark would be contrary to s17 TMA (absolute grounds for not registering trade mark: general – likely to deceive or cause confusion); whether in cases where there was evidence of actual confusion or deception, the Smith Hayden test did not apply; whether the Assistant Commissioner had been incorrect to conclude that “wrong way round” deception or confusion was not sufficient to meet an objection pursuant to s17(1)(a) TMA; whether registration would be contrary to s17(1)(b) TMA in that it would be misleading or deceptive conduct under s9 Fair Trading Act 1986 (misleading and deceptive generally); and, whether under s17(2) TMA, TomTom Communication's trade mark had been applied for in bad faith.

Held: Sexwax Inc v Zoggs International Ltd did not suggest that if there was actual evidence of confusion, the Smith Hayden test, or at least the full scope of the Smith Hayden test, did not apply. The single sentence from Smith Hayden, expressly adopted by the Court of Appeal in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, and applied in the later cases, encapsulated both stages of the enquiry — the threshold issue relating to awareness of the opponent's mark and the main enquiry with the onus on the applicant. The principles stated in those cases applied to all applications under s17(1)(a) and, therefore, to all applications where there was evidence of actual confusion or deception. There were statements on specific aspects of the enquiry which implicitly indicated that the principles, and more specifically the Smith Hayden test as expanded in subsequent cases, were of general application.

This view was supported by interpretation of s17(1)(a). Section 17(1)(a) TMA prevented registration where the use of the mark “would be likely to deceive or cause confusion”. The provision was forward-looking, whether there had actually been confusion or deception was not of itself determinative. Evidence of actual confusion was just one factor to be adopted. There was no statutory separation between hypothetical cases and others. In other words, s17(1)(a) was inherently a hypothetical assessment, and actual evidence of confusion was only relevant insofar as it coloured an assessment of whether confusion or deception was likely to occur in the future. There was no statutory separation between hypothetical cases and others.

Although the evidence was not particularly strong, and the assessment was reasonably close, TomTom Communications had established the necessary awareness, or reputation. The focus was on the awareness of the appellants’ mark of prospective purchasers of the services to which the mark attached, and who were also likely to be exposed to the respondent's mark. The prospective purchasers of TomTom Communications services were small, and coming from segments of the public, not from the purchasing public as a whole. It was a specialist service used for specific projects. The registration of the domain name, the presence of the website, the Google search function and the hits on the website were not strong evidence of reputation. The number of times a website was visited was not necessarily demonstrative of a reputation of the owner or operator of the website.

Overall, it was a close call. However, the threshold was low and it was an evidential burden of a preliminary nature. Looking at the evidence in the round, the Assistant Commissioner had not erred in this regard.

The English authorities as to the relevance of wrong way round confusion were not relevant to New Zealand. The evidence relied on by the appellants was not evidence of confusion, whether actual confusion or likelihood of confusion, of the nature clearly described in three decisions of the Court of Appeal and the Supreme Court. Those who were confused, or even deceived, were not aware of the appellant's marks.

In any event any event, the evidence fell well short of demonstrating confusion as required by s17(1)(a); that is, confusion as to the origin of the respondent's goods. In its essence the confusion was simply a failure by people to make contact with the organisation they were trying to make contact with. This was not confusion as to the origin of the respondent's goods and services.

The goods and services were different to the extent that the respective users of each were not likely to be the same, at least in terms of substantial numbers, they were not in competition with each other, and the goods and services of TomTom International could not be a substitute for the services of TomTom Communications. If TomTom International's marks were registered, the use would not be likely to deceive or cause confusion.

The issue in practical terms was whether it is likely that a substantial number of people would be caused to wonder whether the goods and related services of the respondent, bearing the respondent's mark, might come from the appellants (confusion) or lead people to thinking that goods bearing the TomTom International's mark came from the appellants. The section was not concerned with hypothetical possibilities of deception or confusion, but with practical business probabilities (Pioneer).

In her s17(1)(b) analysis, the Assistant Commissioner referred to “confusion”. The FTA was concerned with misleading or deceptive conduct, and not confusion. This was a case where it would be necessary for there to be a misrepresentation from conduct by the respondent, with the conduct giving rise to the misrepresentation being use of the respondent's marks. There was no evidential foundation for what amounted to an express misrepresentation. There was no evidence sufficient to conclude that there had been the equivalent of a misrepresentation from conduct by TomTom International up to the date of its application, and in particular at that date, and that use following registration would not constitute a misrepresentation.

Section 9 was for the protection of consumers, and the consumers in this category were those who mistakenly contacted the appellants. This did not come close to misleading or deceptive conduct by the TomTom International. The fact that some of those who mistakenly contacted TomTom Communications might have become argumentative did not change these events into misleading or deceptive conduct by the respondent.

The fact that TomTom International had withdrawn a previous application did not bring the case within s17(2) (trade mark has been applied for in bad faith). This at best warranted an assessment to see whether an adverse inference could properly be drawn, but it could not be. The contention to the essential effect that TomTom International was attempting to game the system, or to grind TomTom Communications down, had no evidential foundation.

The TMA did not define “well known in New Zealand”. It was sufficient to say that, on any interpretation of the words used, the level of awareness to be well known in NZ required substantially more than what would be sufficient to establish the low threshold of awareness under s17(1)(a) TMA. The evidence fell well short of establishing, on the balance of probabilities, that the mark was well known in NZ.

The significant differences between the appellants’ services and TomTom International's goods and related services were such that the likelihood of material prejudice to the appellants was remote.

Appeal dismissed.

JUDGMENT OF Woodhouse J

Introduction
1

The respondent applied to register two trade marks – “TOMTOM” and

Full particulars of the applications are in appendix 1 to this judgment.

2

The application was opposed by the appellants. The appellant Gaylene Ruth Hosking is the owner of the registered trade mark “TOM TOM”. Full particulars of the registrations, in three classes, are contained in appendix 2. The appellant company, TomTom Communications Ltd, uses the marks under licence from Ms Hosking.

3

The respondent's applications were granted. 1 The opponents have appealed against that decision.

Grounds of opposition
4

In their opposition the opponents relied on five provisions of the Trade...

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