In September 2000,  the respondent, Mr Sintes, registered a New Zealand domain name “www.familysearch.co.nz” and in November 2000 began operating a New Zealand family tracing service, designed to help families reunite with other surviving family members. On 27 July 2005, Mr Sintes filed a trade mark application for a logo incorporating the words “family search” in class 45. A representation of the mark is as follows:

The appellant, Intellectual Reserve, Inc, was a non-profit organisation incorporated in Utah. Members of its Board of Trustees were appointed by the Mormon Church. Between 1994-2001, the appellant applied for and obtained registration for five marks for the words FAMILYSEARCH in classes 9, 16, and 42. 

Intellectual Reserve, Inc filed a notice of opposition against Mr Sintes’ application. The opposition was dismissed by the Assistant Commissioner, as was a further appeal to the High Court. The Court of Appeal held that two relevant issues were:

• Did the FAMILYSEARCH logo mark meet the distinctiveness required by s18(1)(b) of the Trade Marks Act 2002?
•  If so, would its use be likely to deceive or cause confusion contrary to ss 17(1)(a) and 25(1)(b) and (c), given Intellectual Reserve, Inc’s existing trade marks?

(1)        As to distinctiveness under s18(1)(b), the Court held that:

(a)   Under s18(1)(b) a sign which is capable of distinguishing the goods and services as having a particular trade origin (s5) and must actually do so: it must, at the time of application, be of such character as effects such distinction.

(b)   The best test of what form of distinctiveness is required remains the W & G du Cros test namely “whether other traders are likely, in the ordinary course of business and without improper motive, to desire to use the same mark or some other mark merely resembling it, upon or in connection with their own goods”. If so, then the sign is non-distinctive.

(c)   The distinctiveness must be both in fact and in law and must apply at the time of application.

(d)   A further element of the overall evaluation and consideration of the consequences to other traders and to consumers if registration were allowed, was the question of how the trade mark specification would be construed in enforcement proceedings. If a narrower construction of a given mark were to be taken, the risk of an unhealthy monopoly by permitting its registration would be reduced and vice versa. Such construction must be realistic from the standpoint of practical operation of the mark.

(e)   The use of a disclaimer may bear on the acceptability of a mark.

(f)   It followed from general principle and the express language of s18(1)(d) that a mark consisting just of the words “FAMILY SEARCH” whether separated or run together would be non-distinctive - either in block letters or in cursive form. The Court stated (obiter) that it was difficult to understand how the appellant, Intellectual Reserve, Inc had been earlier granted registration of the word mark FAMILYSEARCH.

(g)   In looking at a logo mark, the test is the perception of the average consumer, having regard to the various methods and practice of advertising they are likely to encounter. Such a consumer is likely to perceive a mark as a whole rather than analyse its various details.

(h)   Mr Sintes’ logo mark was distinctive. To the eye of the average consumer the Koru/Arrow wrapping around the words “FAMILY SEARCH” lent the total sign a distinctiveness which the words alone lacked. The combination made the total sign capable of being memorable to a consumer.

(2)        As to the likelihood of confusion or deception, the Court considered ss 17(1)(a), 25(1)(b) and (c) together. The Court held that Mr Sintes’ mark did not breach any of these provisions and therefore could be registered. 

Comment:

In respect of the second issue, with respect, the judgments seem to contain several errors. 

(a)   First, Baragwanath J stated [65] that s25(1)(b) (relating to the prohibition or registration of a mark that is similar to an existing registered mark) “gives procedural effect to s17(1)(a)”. That is simply not right. S17(1)(a) prohibits registration of any matter the use of which is likely to deceive or cause confusion. It covers a whole range of circumstances which might give rise to such confusion or deception including an earlier unregistered trade mark or trade name. Section 25(1)(a) or (b) cover earlier registered marks.

(b)   Secondly by dealing with all three grounds of opposition together, the Court ran the risk of eliding what are quite separate tests. For example, in paragraph [68], Baragwanath J referred to the earlier Court of Appeal decision in Anheuser-Busch v Budweiser Budvar National Corp [2003] 1 NZLR 472 where the Court referred to the notional fair use of the respective marks. That notional fair use test, of course, applies to ss 25(1)(a) and (b) i.e. where there is an existing registered mark but not to s17(1) nor s25(1)(c) (well-known marks) which require consideration of actual use of the cited mark.

It is suggested that the second part of the Court of Appeal’s judgment, while plainly correct on the facts, needs to be viewed with care when considering these two points.