On 22 December 2000 the appellant applied to register the trade mark LE MANS in New Zealand for goods in class 12 including tyres.  The appellant had organised since 1923 the 24 hour car race, the Le Mans Grand Prix d’Endurance at Le Mans in North West France and owned the event.  The appellant had never used the mark in New Zealand nor had it licensed use of the mark in the jurisdiction. 

The respondent, Dunlop, was a New Zealand tyre manufacturer.  Since 1986 it had been  selling high performance tyres in New Zealand under the marks LE MANS and DUNLOP LE MANS as unregistered trade marks.  It appears that the appellant was not aware of this. 

Dunlop opposed registration on the basis that:

(i) The mark  was of geographical significance and lacked the requisite distinctiveness to be registrable;

(ii) Dunlop was the owner of the mark in New Zealand through prior use in respect of tyres;

(iii) Use by the appellant of the mark on class 12 goods would be likely to deceive or confuse and be contrary to law: s16;

(iv) The mark was identical to Dunlop’s mark that was well-known in New Zealand. 

At first instance, the Assistant Commissioner refused registration. The appellant appealed.

Held, dismissing the appeal.

Registrability

(i) There was solid and authoritative support for the Assistant Commissioner’s decision that the fact that one of the significations of the word LE MANS is geographical means that it was not registrable under s14(1)(d) [52].  This being so, the onus lay on the appellant to prove that its mark had nevertheless become distinctive of its goods in New Zealand [54].  The appellant had not offered goods for sale in New Zealand and had not come close to discharging the onus imposed by s14(1)(e) to establish that LE MANS had come to be distinctive of its goods in New Zealand [56].  The appellant’s argument that improper use of the mark by Dunlop showed distinctiveness was misplaced.  Improper use by Dunlop, even if established, would not have overcome the appellant’s failure to establish that New Zealand consumers associated the mark with the appellant’s goods.  Improper use by trader A does not automatically render a geographical term registrable by trader B [57] and [58].

(Obiter)  Dunlop’s use was not unlawful or improper.  At no time during the 20 years that Dunlop marketed LE MANS tyres in New Zealand was the appellant the registered proprietor.  The appellant at no time in those 20 years sold or marketed its goods in New Zealand so there was nothing unlawful or improper in Dunlop’s use [60]. 

Seven Up Co v OT Limited (1947) 75 CLR 203, Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Limited [1978] 2 NZLR 50 applied.

Proprietorship

(ii) The appellant’s claim to proprietorship in New Zealand of the mark LE MANS based on the international fame of its race failed.  The appellant could not and did not claim to have invented LE MANS and it conceded that Dunlop was the first person to use the mark in New Zealand [80] and [102].

Dunlop’s use of LE MANS would not convey to buyers that LE MANS tyres had a trade connection with the appellant.  It was more probable that LE MANS would convey or confirm to consumers that these particular tyres were high performance tyres. To that extent the Court accepted an association between Dunlop LE MANS branded tyres and the appellant’s race.  But it was an association descriptive or indicative of a type of tyre.  It was not a badge of origin [85]. 

Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Limited [1978] 2 NZLR 50; Malibu Boats West Inc v Catanese (1999) 51 IPR 134; Settef v Riv-Oland (1988) 12 IPR 321 referred to; Wineworths Group Limited v Comite Interprofessional du vin de Champagne [1992] 2 NZLR 327 distinguished. 

S16: Likelihood of confusion or deception 

(iii) Dunlop had discharged the initial onus of establishing that its LE MANS branded tyres had a reputation in the New Zealand marketplace [115].

The appellant had failed to discharge the overall onus of disproving the likelihood of deception or confusion.  The appellant’s own survey evidence established that.  Further, there was no evidence from the appellant that any concurrent use would not deceive or confuse [116-7].  What was fatal to the appellant was that it had never established a New Zealand reputation for goods sold by it or under licence under the LE MANS mark.  Reputation or fame unrelated to the function of a trade mark is not sufficient [118]

S17: Well-known marks

(iv) The evidence established that Dunlop’s mark LE MANS was a well-known mark in New Zealand. As deception or confusion was a likely indeed inevitable result of the concurrent use of LE MANS on tyres in New Zealand, s17(2) prohibited registration of the appellant’s mark [124-5].

McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Limited & Ors (1996) 36 IPR 11 applied.