“Re-calculating … turn around when possible” – In TomTom decision, clear thinking on “wrong way round” confusion
It’s an interesting issue, and it’s also incredibly important in the context of a global economy in which fame can arrive overnight.
Given the uncertainties and complexities, it’s a pleasure to read a recent decision from one of New Zealand’s newly appointed Assistant Commissioners that demonstrates clear thinking on this topic.
Way back in 1998, Gaylene Ruth Hosking registered the trade mark TOM TOM for various services in classes 35, 41 and 42. The mark was used in respect of a communications consultancy business. TomTom Communications Limited was incorporated in 2001 and used the mark since that time.
And then along came TomTom International. You know who we’re talking about. You might for example have listened to the dulcet tones of a TomTom navigation device whilst driving – hopelessly lost – through vineyards in Burgundy in torrential rain, on a muddy “road”, eventually turning up in a confused farmer’s driveway. The farmer’s (rather aggressive) dogs are not happy to see you. You shouldn’t have chosen the “avoid tollways” function. But I digress …
TomTom International is a behemoth, with 3600 employees in 35 countries. It is a market leader in navigation and mapping products and services.
Somewhat predictably, wholesale confusion ensued in New Zealand.
TomTom International filed for TOMTOM and the logo version of the mark below in classes 9, 38 and 39 and those applications were accepted.
Gaylene Hosking and Tomtom Communications Limited (referred to collectively as TCL for convenience) opposed.
The main ground considered is that under section 17(1)(a), namely that a mark must not be registered “the use of which would be likely to deceive or cause confusion”. Notwithstanding that s17(1)(a) is an “absolute ground”, it is interpreted under New Zealand practice very much as if it is a relative ground based on earlier rights.
To make out the grounds, TCL had to establish that there was awareness of its mark in New Zealand at the 23 August 2011 filing date. The Assistant Commissioner was satisfied based on TCL’s evidence that the threshold for awareness of TCL’s TOM TOM marks was met. The onus then shifted to TomTom International to demonstrate that its use was not likely to deceive or cause confusion.
It was relevant to consider here the close similarities between the respective marks on the one hand, and the “very little similarity” between the respective goods and services of the parties on the other.
Consideration then turned to the evidence of confusion. According to the evidence, the parties had been in the market in NZ since 2007, and TCL received many misdirected enquiries regarding TomTom International’s GPS products (even before TomTom International launched in NZ). In her declaration of 1 March 2011, Gaylene Hosking said that her company received “at least 2 – 3 calls per day” for people trying to contact TomTom International. On being told that TCL is not TomTom International, such customers are “often argumentative” and in fact (on our reading of the evidence) downright rude. There was also evidence of misdirected post and emails.
So – what was the relevance of this evidence? TCL argued that the fact of confusion established the likelihood of confusion. End of story. However, the Assistant Commissioner was careful to point out that she had to look at the materiality of the confusion, the nature of it, and whether it was the use of the marks that gave rise to the confusion, or something else.
One of the main contributing factors here was that TomTom International proved difficult for its NZ customers to contact especially in the first few years after its launch. The AC took the view that “if TomTom International had provided readily accessible contact details and had been easier to reach, then much of the confusion described above would have fallen away, despite the similarities between the marks”. The evidence had to be viewed in this light.
On “wrong way round” confusion, the AC took the view that much, if not all, of the evidence was of the public being confused into thinking that TCL was associated with TomTom International. The AC noted that this was not a typically considered form of confusion in trade mark opposition proceedings, and the relevance of such confusion to s17(1)(a) was unclear. Pragmatically, she took the view that consumers are not interested in legal niceties, and mentioned that the aim of s17(1)(a) has as its aim consumer protection. It was here that the AC took note of the Glee decision (under appeal), which was relied on by the Opponent. The AC also considered the more recent decision of Arnold J in Europcar in which Arnold J considered that it was not necessary to consider whether the approach taken in Glee to wrong way round confusion was “an accurate and complete statement of the law”.
The AC took the view that:
- If wrong way round confusion was sufficient, there would be little point in considering the awareness of the opponent’s mark as a threshold question for establishing s17(1)(a).
- Such an approach would also be inconsistent with the Smith Hayden decision which judged the likelihood of deception or confusion having regard to “the reputation acquired for the opponent’s marks”.
The AC concluded that the s17(1)(a) ground was not made out. The normal operation of that provision relates to circumstances in which an opponent evidences its reputation, and confusion flows due to that reputation:
“A small trader is not entitled to special, additional protection on the basis that the other party’s mark is famous or well known and that the small trader’s reputation is being swamped as a result.”
Other grounds (s17(1)(b), s17(2) and s25(1)(b) and (c)) were also rejected, in relatively cursory terms.
Where to from here? Glee …
As mentioned earlier, the Glee appeal is scheduled to be heard by the UK Court of Appeal in November. We are keeping an eye on that case expectantly, and will bring you the news as it breaks.
It is worth noting here for completeness that the s17(1)(a) ground that was not made out in the TomTom decision in NZ is not a direct equivalent of the infringement provisions considered in the Glee case.