Newsletter – May 2016

In this Newsletter Issue:

  • New Zealand Trade Mark Scam – Interim Agreement Reached
  • Apple lose out in Chinese Trade Mark decision
  • Manuka Doctor not a Health Claim
  • International Trademark Association
  • Queens Birthday Weekend

Apple lose out in Chinese Trade Mark decision

A recent Trade Mark decision in China highlights the need for brand owners to secure their trade marks if they are entering the Chinese market.

A Chinese company, Xintong Tiandi Technology (Beijing) Co., Ltd. filed the trade mark IPHONE in 2007 in relation to leather products, such as wallets and phone cases. This was the year the first iPhones went on sale.

While Apple had filed the trade mark IPHONE in relation to computer hardware and software in 2002, they did not have the trade mark in relation to leather goods. Apple tried to sue Xintong Tiandi to have the mark taken off them, but the court dismissed their appeal. Chinese Trade Mark Law operates on a first to file system, meaning whoever files their trade mark first owns the rights in the mark.

The court held that Apple could not prove the IPHONE brand was “well known” in China before 2009, as Apple only began selling the iPhone in China in 2009. Xintong Tiandi were granted the right to continue using the mark. In practical terms, this means Apple do not own the “iPhone” brand in China in relation to leather goods.
For trade mark owners thinking about exporting to China, this shows the importance of securing your brands in China early, on all the goods and services for which protection is necessary.

If Apple had filed for their trade mark in relation to leather goods when they filed their trade mark in 2002, the case could have turned out much differently. Even if Apple had won the case, they have surely spent hundreds of thousands of dollars fighting the case when they could have secured the mark in first place for much less.

New Zealand Trade Mark Scam – Interim Agreement Reached

The Commerce Commission has reached an interim agreement with TM Publisher, the international web-based trade mark publication company which sent fake invoices for unauthorised services to New Zealand trade mark owners.
Under the interim agreement, the company has agreed that any businesses or individuals who have already paid their invoice from 06 April 2016 will receive a refund straight from ANZ Bank. The Commerce Commission is still in mediation with TM Publisher about any payments received before 06 April 2016.
Anyone who has paid the invoice should get in touch with the Commerce Commission on 0800 943 600.
Before this agreement was reached, TM Publisher had raised over $200,000 worth of payments from New Zealanders. This shows the need to be vigilant. Any correspondence that requests payment should be treated with caution and checked for authenticity prior to payment. If in doubt call your lawyer or IP professional.

Manuka Doctor not a Health Claim

In a good decision for food exporters, the Court of Appeal has ruled that the trade mark MANUKA DOCTOR does not constitute a health claim and so does not breach food standards.

In our view, it seemed unlikely from the outset that consumers would see the brand MANUKA DOCTOR as making a “health claim” given the lack of specificity about the health. Moreover, we consider consumers are well used to embellishment from food producers.

The issue started when Honey New Zealand (International) Limited (HNZ) was declined an export certificate by the Ministry of Primary Industries (MPI) for its honey sold under its trade mark MANUKA DOCTOR. MPI considered the mark constituted a health claim under the New Zealand food standards code. This meant HNZ could not export its product.

The High Court found the name MANUKA DOCTOR implied that the goods have properties that would be good for your health. However, the Court of Appeal has now overturned that decision.

In their findings, the Court of Appeal held that the health claims purported to be made by MANUKA DOCTOR were “somewhat strained”. They noted several other products are marketed and sold using the word “doctor” such as DR PEPPER and RUG DOCTOR. They concluded that consumers exercising reasonable care would not make the association between the name of the product and any health claim.

This is a good decision for trade mark owners, particularly those who export food products. If the original High Court decision had been upheld, it may have set a precedent and fundamentally changed the way food manufacturers marketed and branded their products both in New Zealand and internationally. The result could also have led to expensive re-branding for some of these companies.

International Trade Mark Association

We are delighted to announce that Zone Law and Zone IP will be represented at the upcoming INTA Annual Meeting.  This year the meeting is being held in Orlando, Florida from 21st May – 25th May.

Queen’s Birthday Weekend

06 June 2016

Zone IP and Zone Law will be closed for business on Queen’s Birthday, Monday 06 June 2016.
Our websites and online platform will still be available. We will be open for normal business hours from Tuesday 07 June 2016.

May 2016