In The Premium Liquor Co. Limited v Hint, Inc. [2021] NZIPOTM 24 (30 August 2021)[1] the Assistant Commissioner of Trade Marks rejected Hint, Inc’s (Hint) opposition to registration of The Premium Liquor Co. Limited (Premium Liquor) application to register the stylised trade mark in class 33 for “ready- to-drink” beverages containing vodka. This decision reinforces the view that in New Zealand trade mark oppositions, opponents who rely upon reputation in their trade as an opposition ground must meet the high evidentiary bar applied in New Zealand, or otherwise risk their evidence being dismissed.
Reputation based evidence required
Hint relied upon four separate reputation based grounds of opposition[2]. Of these grounds, Hint’s lowest evidentiary bar related to New Zealand’s infamous “reverse onus” opposition ground set out in section 17(1)(a) – namely, that use of the opposed mark would be likely to mislead or deceive.
Under this ground, Hint only needed to establish an awareness in its trade mark before the onus shifted to Premium Liquor to prove a negative – namely that its use of the HINT mark in relation to “ready to drink” beverages containing vodka (RTD’s) would not be likely to deceive or cause confusion. Hint did not need to establish that its HINT-branded flavoured water products were “well known”, and the requisite awareness that Hint needed to establish to succeed under this ground is much lower than that required for alleged contravention of an Opponent’s common law rights in a trade mark.
In this case, the Assistant Commissioner listed a number of deficiencies in Hint’s evidence in concluding that it had not established the requisite “awareness” in its HINT trade mark in order for the onus to shift back to the Applicant to prove an absence of confusion. The deficiencies in Hint’s evidence outlined by the Assistant Commissioner included:
- Although there is evidence some of the Opponent’s products were available from Amazon for shipping to New Zealand…..there is no evidence the products were available for sale in New Zealand before the Relevant Date;
- There is no evidence of advertising directly targeting those located in New Zealand; but there can be an awareness of the brand in New Zealand without this. Modern means of promotion are equally accessible from different locations around the world. Information of an applicant’s online and social media activity may provide a basis from which to infer a reputation in a trade mark.
- No website analytics data is provided to show how many visitors may have accessed the website (whether from New Zealand or anywhere else) before the Relevant Date, nor is there any direct evidence from anyone in New Zealand who visited the site before the Relevant Date.
- No information is provided as to the number of followers of any social media accounts as at the Relevant Date, and importantly no information is provided as to the number of followers from New Zealand at any point in time. In the absence of any such information, I am not prepared to infer that any significant number of people in New Zealand were followers of promotional social media streams for products that do not appear to be have been available for purchase in New Zealand as at the Relevant Date.
- The Opponent has provided a number of media articles about the development of the company and its products… (however) .. it is not clear how many people from New Zealand regularly access any of these sites, from which I may have been able to infer a level of exposure in New Zealand.
- (re: appearance of Opponent’s products on a TV show): No figures are available for the number of people in New Zealand who would have had potential access to the show through their Sky subscription, or actual viewer numbers.
- There is also evidence the Opponent’s brand featured in mobile games such as Ingress and its successor Pokémon Go. Again, no figures are provided for downloads or users in New Zealand.
- In relying on “spillover” from an overseas reputation, the extent of use of the Opponent’s mark in overseas markets is relevant. There is a dearth of evidence as to the extent of the Opponent’s reputation in the US market as at the Relevant Date, such as details of advertising campaigns, marketing budgets, or sales. The articles refer to the popularity of the Opponent’s products (particularly among workers at technology companies, rather than visiting foreign tourists), but such unsupported and hearsay assertions can be given very little weight.
Criticisms such as these occur time and again in New Zealand opposition proceedings and this is often because a foreign brand owner simply has not provided the appropriate or sufficient evidence to support its case. In the absence of such evidence, there is little that New Zealand (or Australian) attorneys can do but work with the material they have been provided.
A novel opposition ground – proprietorship
Curiously, the Opponent relied upon an unrelated third party’s[3] trade mark application No. 105455 HINT, which covered a broad range of non-alcoholic beverages and concentrates in class 32, in relation to two separate opposition grounds:
- That the prior HINT application covered similar goods to RTD’s for a similar mark to Premium Liquor’s HINT mark[4];
- That Premium Liquor was not the owner of the HINT mark in relation to the goods for which registration is sought[5].
The Assistant Commissioner dismissed the first ground on the basis that non-alcoholic beverages and RTD’s are not similar, citing numerous authorities to support that finding.
The second proprietorship challenge is a much more curious one, as it seems to indicate that a proprietorship challenge can be based purely upon the existence of a prior trade mark registration or application, rather than upon use of a trade mark in New Zealand.
In this particular case the claim failed, as the prior application did not establish a “claim to own the HINT trade mark in respect of the Applicant’s goods”. Nonetheless, trade mark lawyers should take note. That this may a flag a potentially new or expanded opposition ground.
Finally, Hint did not establish any proprietorship-based opposition ground based upon use of its own trade marks, as no valid evidence was provided to establish the Opponent’s use of its own HINT mark prior to the relevant filing date of the opposed application.
Where does this leave us?
In this case the Opponent is left with a larger bill than normal. The Assistant Commissioner ordered an uplift of 25% over scale opposition costs, as the Opponent did not advise if any initial opposition grounds were not to be pursued. Hint was punished for relying upon reputation based opposition grounds which had a higher evidentiary onus than required in the “reverse onus” ground under section 17(1)(a). This a warning sign to trade mark lawyers that if an Opponent is relying upon the well-known “reverse onus” ground then perhaps it should not bother with the additional reputation grounds such as passing off or contravention of the Fair Trading Act 1986.
This is a curious direction for Assistant Commissioners to take, as the specific mechanics and requirements of each reputation-based opposition ground are not identical, even if they are similar in substance. There is at least a theoretical possibility that an opponent could succeed under a common law opposition ground even though it fails in the reverse onus opposition ground.
The simple take home message?
Foreign brand owners that elect to rely upon broad international evidence rather than specific New Zealand targeted evidence may as well try to beat the All Blacks in rugby – as it will rarely give rise to success.
[1] http://www.nzlii.org/cgi-bin/download.cgi/cgi-bin/download.cgi/download/nz/cases/NZIPOTM/2021/24.pdf
[2] Section 17(1)(a); Section 17(1)(b) [2 grounds]; Section 25(1)(c) – all Trade Marks Act 2002.
[3] Aquity International Limited
[4] Section 25
[5] Section 32