TOMTOM COMMUNICATIONS LTD v TOMTOM INTERNATIONAL B.V.
9 September 2015, 18 December 2015
 NZHC 333
Trade mark opposition – applicability of “Smith Hayden” test where claimed evidence of confusion exists – reputation and awareness in appellants’ marks – whether “wrong way round” confusion establishes confusion or deception – well known mark not made out.
The respondent, TomTom International B.V, applied to register the marks TOMTOM and . It was founded in 1991 and changed its name to TomTom International B.V in 2001 in classes 9, 38 and 39. It launched its portable navigation devices in New Zealand in 2007.
The appellants, TomTom Communications Ltd and Ms Hosking, opposed the respondent’s application. Ms Hosking owned registered trade marks for TOM TOM in classes 35, 41 and 42 and licensed this for use by the first appellant. The first appellant was established in 2001. It was a Wellington-based communications consultancy. It provided a range of services including public relations, communications, marketing, promotion, brand development, website development and critique, media strategies, training, advertising, research and analysis, lobbying, and reputation management services.
The appellants’ grounds of opposition were:
Use of the opposed marks would be likely to deceive or cause confusion.
Use of the opposed marks would be contrary to New Zealand law because it would amount to passing off and breach of the Fair Trading Act 1986.
The applications were made in bad faith.
The opposed marks were similar to the opponents’ trade marks which were registered in respect of the same or similar goods, and use of the opposed marks would be likely to deceive or confuse.
The opposed marks, or an essential element of those marks, were identical to the opponents’ trade marks that were well known in New Zealand, and use of the opposed marks would be taken as indicating a connection in the course of trade between the applicant’s goods and the opponents, and would be likely to prejudice the interests of the opponents.
The respondent’s applications were accepted. The appellants appealed that decision on the following grounds.
The Assistant Commissioner erred by applying the “Smith Hayden test”, when it should not in fact apply. The Smith Hayden test was “having regard to the reputation acquired by the opponent’s mark, is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?” The reason this test did not apply was because there was evidence of actual deception and confusion and it was therefore not necessary to apply a hypothetical.
The Assistant Commissioner erred by finding that the deception and confusion caused by the Respondent’s use of the TomTom marks did not satisfy s 17(1)(a).
The Assistant Commissioner was wrong to conclude that “wrong way round” deception or confusion was not sufficient to meet an objection pursuant to s 17(1)(a).
On the assumption that the “Smith Hayden test” did apply, the Assistant Commissioner was wrong to conclude that it was not likely that there would be confusion or deception.
The respondent cross-appealed against the Assistant Commissioner’s decision that there was sufficient threshold awareness of the appellants’ marks at the relevant date.
Held, dismissing the appeal and cross appeal:
A The “Smith Hayden test’
The Court was satisfied that the Assistant Commissioner’s approach to the applicability of the Smith Hayden test was correct . The principles stated in the Court of Appeal cases cited by the parties applied to all applications under s 17(1)(a), and therefore to all applications where there was evidence of actual confusion or deception .
Re Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 (EWHC); Sexwax Inc v Zoggs International Ltd (2014) 109 IPR 131, NZCA 311; Pioneer Hi-Bred Corn Company v Hy-line Chicks Pty Ltd  2 NZLR 50 (CA); Roby Trustees Ltd v Mars New Zealand Ltd (2012) 98 IPR 353,  NZCA 450 referred to.
- For the avoidance of doubt, the Court recorded its view that the Smith Hayden test applies to both the threshold test and the main enquiry. It therefore rejected the appellants’ submission that, where there was actual evidence of confusion or deception, “there is no requirement that the likelihood of deception or confusion be considered in the context of the opponent’s reputation in its mark, and there is no need to adopt the approach taken by the Court of Appeal on the facts in Virbac and Sexwax.” . The test was of general application. This conclusion was reinforced by interpretation of s 17(1)(a) and by comments in the relevant authorities . Section 17(1)(a) was “inherently a hypothetical assessment” and actual evidence of confusion was only relevant insofar as it coloured an assessment of whether confusion or deception was likely to occur with regards to a significant number of people in the future .
Pioneer Hi-Bred Corn Company v Hy-line Chicks Pty Ltd  2 NZLR 50 (CA).
Evidence of actual confusion would often be a complete answer to the s 17(1)(a) assessment, and absence of evidence of actual confusion could be considered to indicate that likelihood of confusion was not high. That general proposition applied to evidence of actual confusion which was not confusion of the type to which s 17(1)(a) was directed .
Wineworths Group Ltd v Comite Interprofessional du vin de Champagne  2 NZLR 327 (CA); General Electric Co v General Electric Co Ltd  1 WLR 729 (HL); Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641; Hannaford & Burton Ltd v Polaroid Corporation  2 NZLR 14 (PC); An-heuser-Busch Inc v Budweiser Budvar National Corp  1 NZLR 472 (CA); Virbac SA v Merial (2014) 110 IPR 224,  NZCA 619; Higgins Coatings Pty Ltd v Higgins Group Holdings Ltd HC Wellington CIV-2009-485-2594, 30 June 2010 referred to.
B The respondent’s cross-appeal – reputation and awareness in appellants’ marks
Registration of the appellants’ marks did not support the appellants’ case of reputation or awareness existing in their marks to any relevant extent. The legal consequence of registration did not “bear on the evidential question of factual awareness and the extent of that awareness” .
NV Sumatra Tobacco Trading Co v British American Tobacco (Brands) Inc (2010) 86 IPR 206,  NZCA 24 disagreed with.
Registration of the appellants’ domain name, the presence of their website, the Google search function and the hits on the website were not strong evidence of reputation. The number of times a website was visited was not necessarily demonstrative of the reputation of the owner or operator of the website .
Despite the fact that the Court had given more emphasis to matters that were against the appellants in its judgment, the threshold was a low one and was an evidential burden of a preliminary nature. The Judge was not persuaded that the Assistant Commissioner’s assessment of the evidence was wrong . The appellants had established the necessary awareness or reputation as at the relevant date .
C Likelihood of confusion or deception
Wrong way round confusion evidence (confusion arising through members of the public contacting the appellants thinking they were the respondent, or through the appellants approaching people who knew of the respondent but not the appellants) did not assist the appellants . The Court agreed with the Assistant Commissioner’s reasons for concluding that wrong way round confusion was not relevant under s 17(1)(a). Those who were confused or deceived were not aware of the appellants’ marks .
Pioneer Hi-Bred Corn Company v Hy-line Chicks Pty Ltd  2 NZLR 50 (CA); Sexwax Inc v Zoggs International Ltd (2014) 109 IPR 131, NZCA 311; Zoggs International Ltd v Sexwax Inc  NZSC 16; Virbac SA v Merial (2014) 110 IPR 224,  NZCA 619 referred to.
Comic Enterprises Ltd v Twentieth Century Fox Film Corp  EWHC 185 (Ch); Thomas Pink Ltd v Victoria’s Secret UK Ltd  EWHC 2631 (Ch); Enterprise Holdings Inc v Europcar Group UK Ltd  EWHC 17 (Ch) not followed.
The confusion which had occurred was not confusion as to the origin of the respondent’s goods. It was simply a failure by people to make contact with the organisation they were trying to make contact with .
It was “most unlikely” that a substantial number of people with requisite knowledge of the goods and services of both parties would be confused or deceived .
Pioneer Hi-Bred Corn Company v Hy-line Chicks Pty Ltd  2 NZLR 50 (CA); Sexwax Inc v Zoggs International Ltd (2014) 109 IPR 131 applied.
D Section 17(1)(b)
There was no evidence sufficient to conclude that there had been an equivalent of a misrepresentation from conduct by the respondent . The ground of opposition based on s 17(1)(b) had not been made out .
(obiter) The respondent’s use of its marks would not be “likely to mislead or deceive” in terms of s 9 Fair Trading Act 1986. Consumers contacting the appellants, thinking they were the respondent, did “not come close to misleading or deceptive conduct by the respondent”. There was no evidence that consumers contacted by the respondent were misled or deceived . The conduct which occurred was not of the type that the Fair Trading Act was intended to guard against .
Neumegen v Neumegen & Co  3 NZLR 310 (CA); Red Eagle Corp Ltd v Ellis  NZSC 20; Goldsbro v Walker  1 NZLR 394 (CA) referred to.
E Section 17(2)
The observation in Royal Enfield Trade Marks that “a plea of fraud should not be lightly made …. and if made should be distinctly alleged and distinctly proved” was applicable. There was no evidence justifying an inference of bad faith .
Royal Enfield Trade Marks  RPC 24 applied.
F Section 25(1)(b)
The Court was satisfied that use of the respondent’s mark was not likely to deceive or confuse .
G Section 25(1)(c)
It was unnecessary to decide what was meant by the words “well known in New Zealand” in s 25(1)(c). It was sufficient to say that, on any interpretation of the words used, the level of awareness to be well known in New Zealand required substantially more than what would be sufficient to establish the low threshold of awareness under s 17(1)(a) .
The evidence did not show that the appellants’ mark was well known in New Zealand and actually supported the conclusion that the appellants’ mark was not well known at all .
(obiter) The Court agreed that the “connection” in the course of trade between the respondent’s goods and the owner of the mark must be such as to give rise to the impression that the owner of the well known mark was involved in the production of the goods or services in question, or offering the goods or services, or that the production or offering was licensed or sponsored by the owner of the well known .
Intel Corporation Inc v CPM United Kingdom Ltd  RPC 15,  EWCA Civ 431 and Wistbray Ltd v Ferrero SpA HC Wellington CIV-2007-485-460, 11 December 2008 approved.