The recent New Zealand Trade Mark Office decision in Torea Wines Limited v Delegat Limited [2024] NZIPOTM 24 demonstrates some of the problems brand owners can face when relying upon “honest concurrent use” to try to overcome prior marks as obstacles to registration of a trade mark.
The case was effectively a second attempt by the applicant, Torea Wines Limited (Torea), to register its mark OYSTER CATCHER for wines in class 33. In 2011, the parties’ predecessors were involved a similar opposition to the trade mark OYSTERCATCHER (one word)[1]. This time, Torea came armed with counsel and evidence of honest concurrent use of its OYSTER CATCHER mark.
What happened in the 2011 Opposition?
Delegat Limited’s predecessor, Delgat’s Wine Estate Ltd (Delegate WE), succeeded in its 2011 opposition to registration of OYSTERCATCHER on the basis that:
- use of OYSTERCATCHER would give rise to deception or confusion of consumers, given the Delegat’s WE reputation in the OYSTER BAY and other OYSTER trade marks;[2]
- OYSTERCATCHER was similar to the Delegat’s WE registered trade mark OYSTER (but not OYSTER BAY);[3] and
- OYSTERCATCHER was similar to the Delegat’s WE well known unregistered trade mark OYSTER BAY, and use of OYSTERCATCHER would be likely to prejudice the interests of Delegat.[4]
How was this 2024 case different?
For Delegat, not much had changed. It relied upon essentially the same grounds upon which Delegat’s WE succeeded in 2011. However, this time around counsel filed written submissions and appeared on behalf of Torea at a hearing – steps that were not taken in the 2011 case.
Torea also filed evidence of honest concurrent use to try to address those grounds under s25 of the Trade Marks Act 2002 (Act) relating to Delgat’s registered and unregistered OYSTER family of marks, most notably OYSTER BAY.
Was it déjà vu for the parties?
Assistant Commissioner Robb noted that he was not bound to reach the same conclusions as Assistant Commissioner Walden in 2011. However, the result was largely the same, as Delegat succeeded in establishing the same three grounds upon which Delegat’s WE succeeded in 2011.
However, if Torea were able to establish its claim of honest concurrent use of OYSTER CATCHER, then this would override any s25 opposition grounds. Specifically, s26(b) of the Act provides that the Commissioner must register a trade mark if the Commissioner considers that a case of honest concurrent use exists.
Does honest concurrent use defeat a s17 opposition ground?
No. Whilst Torea’s counsel did not argue otherwise, AC Robb referred to Brands Ltd v Bed Bath ‘N’ Table Pty Ltd[5], in which Ellis J concluded succinctly, “honest concurrent use is not available as a shield to unregistrability or invalidity under s 17.”[6]
Was Torea able to establish honest concurrent use?
No. AC Robb’s decision demonstrates the problems brand owners face when trying to establish a claim of honest concurrent use. As AC Robb demonstrated, at its heart the doctrine of honest concurrent use involves an holistic assessment as to whether or not the mark applied for can coexist alongside a prior mark without confusion.
In this case, whilst Torea did establish honest adoption and use of its mark and that no instances of confusion with Delgat’s mark had occurred, AC Robb noted that the likely reason for this absence of confusion is that Torea’s “use of OYSTERCATCHER has been in a subsidiary or descriptive way along with the dominant TOREA and bird device. This is not an indication that use of OYSTER CATCHER in any normal and fair way would not cause confusion”.[7]
Torea’s problem was that its evidence of use of the OYSTER CATCHER mark showed use of the mark in close combination with the house mark TOREA. This led AC Robb to conclude that “any use of OYSTERCATCHER has been inextricably linked to the main brand TOREA, as well as the bird device and messaging by Torea that TOREA means Oystercatcher”.[8]
What can help brand owners to establish honest concurrent use?
The key for brand owners and their IP lawyers when assessing whether they have a good claim to honest concurrent use is to assess clinically how much they have used their trade mark on its own as an independent trade mark, not “limping” alongside a house mark or other indicia.
Can brand owners do anything else to obtain trade mark rights?
Often brand owners in Torea’s position will seek to register their house mark alongside the product mark, as in TOREA OYSTER CATCHER. Whilst this will not provide right to exclusive use of OYSTER CATCHER solus, it still provides some IP protection and may at least prevent registration of another mark containing the word “oyster catcher” for the same goods. It may be prudent to take that step initially, whilst still seeking to register the specific product mark subsequently.
[1] Oystercatcher Wines Ltd v Delegat’s Wine Estate Ltd [2011] NZIPOTM 1
[2] Trade Marks Act 2002, s17(1)(1)(a)
[3] Trade Marks Act 2002, s25(12)(b)
[4] Trade Marks Act 2002, s25(1)(c)
[5] [2023] NZHC 1766
[6] Ibid at [277]
[7] [2024] NZIPOTM 24 at [114(d)]
[8] Ibid at [113]