This was an appeal against a decision of the Assistant Commissioner of Trade Marks permitting registration by Coca-Cola Amatil (NZ) Limited (Coca-Cola) of the phrase “World Famous in New Zealand” (WFINZ).  The appellant argued that, as at the date of filing for registration, the mark was not registrable under sections 18(b), (c) and (d) and 18(2) of the Trade Marks Act 2002.

The appellant was the sole shareholder and director of World Famous in New Zealand Limited, an inactive holding company, registered in 2000, which had never operated in the drinks trade [1] to [4]. 

Coca-Cola had been using the phrase WFINZ for advertising its LEMON & PAEROA softdrink product consistently since 1993.  It filed an application to register the phrase in 2004 in class 32 (“mineral and aerated waters, including soft drinks”).

Descriptiveness: Section 18(1)(c)

Woodford J held that the purpose of section 18(1)(c) is to prevent the registration of marks that are merely descriptive or laudatory of goods or services or some characteristic of them.  Such marks “must remain available for general use, since competitors have a legitimate interest in employing, without hindrance, in a descriptive manner such indications relating to the very nature of the claimed goods” (Carrier Corp’s Community Trade Mark applications [2000] ETMR 234 at [11] cited) [18].  The key question was whether an average consumer could look at the mark as a whole and read it as merely describing a characteristic of Coca Cola’s goods [20].

The appellant’s key submission on Section 18(1)(c) was that the phrase WFINZ had been adopted into New Zealand language and was now effectively a synonym used by the general public to describe all things “Kiwiana,” and therefore was no more than a descriptive phrase [21].

The Court rejected this submission.  Rather, it found that WFINZ was an “invented and fanciful slogan,” an “oxymoron that produces a quirky, original, and distinctive, incongruous and self-contradictory statement.”  The mere fact the phrase was well known in New Zealand did not equate to descriptiveness [25]. 

Section 18(1)(c) can apply to intangible as well as physical characteristics but those intangible characteristics must fall within the scope of s18(1)(c) [26]. 

The judge held that the phrase WFINZ indicated nothing about the individual elements of s18(1)(c) [27], [28], [30] to [32].  As far as “geographical origin” went – the phrase as a whole made no express or implied statement about geographical origin, (and was not akin to the phrase “Made in New Zealand” [33]).

Contrary to the appellant’s submission, it was appropriate to look at the use of the phrase “in trade,” which in this case was soft drinks trade (akin to the purpose of 18(1)(c) – to enable competitors to use ordinary descriptive words without hindrance).  The appellant had produced no evidence to indicate that the phrase was normally used or desired to be used in the soft drinks industry [29].

Generic marks: section 18(1)(d)

The intention of 18(1)(d) was to enable honest traders to use descriptions and phrases that are common in their trade (citing British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (Ch)) [35].

The Court rejected the appellant’s submission that the “customary language” consideration in 18(1)(d) was met because the phrase WFINZ had been adopted in other contexts (such as books and internet articles) – the appellant overlooked the context of s18(1)(d).  The real question was whether the phrase had become customary in the current language or practices of the relevant trade [36].  There was no evidence that anyone else in the soft drinks trade was using the phrase WFINZ.  The appellant’s suggestion that, “hypothetically,” the phrase might be applied to another similarly popular drink, was rejected [37].

Distinctiveness: section 18(1)(b)

The appellant submitted that the phrase WFINZ had no distinctive character because it was descriptive and generic so that the public could legitimately expect it to be used in relation to any product that was well known in New Zealand (but not elsewhere) [41].

The court found that phrase should first be considered on its own, assuming no use, and then should also be considered in context [42].  The phrase was original, quirky, and oxymoronic.  In the abstract it could remain meaningful as applied to other goods, but this did not mean it did not retain its distinctive character.   In context it was also distinctive – it had not been used by other manufacturers of soft drinks [43].

An average consumer would associate the phrase with the respondent’s product (L & P) more than other soft drinks more generally or other products in the relevant class.  The phrase therefore acted as a badge of origin of the respondents, distinguishing the respondent’s goods from others in the soft drinks class [44].

The appellant further submitted that WFINZ was merely a “limping mark” (i.e. that the phrase was more properly referred to as a tag line, a slogan or a catch phrase, rather than a trade mark, and that additional information conveyed in an advertisement or on a label would really be what educated the consumer regarding the goods) [45].

The Court rejected this submission: two marks may be used together in advertising the same product, and that will not necessarily mean that one is “limping” on another.  A trade mark that has only been used in combination with other marks can still be distinctive (Société des Produits Nestlé SA v Mars UK Ltd C-353/03 (ECJ)) [46], [47].

In any event, WFINZ was capable of standing on its own as a badge of origin [48].

Conclusion

The Court dismissed the appeal:  finding that WFINZ was a popular slogan but that alone was not a sufficient reason to refuse the respondent’s application for registration.  The appellant and others remained able to use the phrase outside of class 32, provided such use would not be likely to deceive or cause confusion.