The fraught problem of distinctiveness was forefront in a recent New Zealand decision of the NZ Intellectual Property Office (Pankhurst v Saramar LLC ( NZIPOTM 2, January 16 2012). The applicant wanted to register KIWISOLES for flip flops (called by the generic name ‘jandles’ in New Zealand), and was opposed by the owned of the long-established and well-known mark KIWI Logo, registered and used for shoe polish and shoe laces.
According to the case report, the KIWI brand was chosen by an Australian originally, back in 1906. The shoe polish was used by the British and US armies in World War I and the brand has been so extensively used since then that it is said to be one of the world’s best-selling brands of shoe polish. But this was not enough, in the view of the assistant commissioner, to indicate a likelihood of confusion. After all, the word KIWI is so iconic in New Zealand that it is often used to describe New Zealanders themselves, as well as the flightless bird that is the symbol of the country. It is also common to find the word KIWI used to describe goods and services of all kinds which emanate from New Zealand.
In this situation, the assistant commissioner seems to have felt that the owner of the KIWI shoe polish mark has only very restricted rights - restricted to the specific goods in relation to which it has used the mark, and for the specific mark for which it holds registration. KIWISOLES was not too close to the KIWI Logo.
However, she was prepared to grant registration to KIWISOLES, finding it distinctive enough, despite rather obviously referring to footwear from New Zealand.
In another aspect of the decision, the assistant commissioner decided that shoe polish and flip-flop footwear were not goods of the same description, nor likely to be confused. After all, wearers of flip-flops are not likely to use shoe polish on them. Despite the razor sharp logic here, can we just ask whether New Zealand flip-flop wearers might sometimes own and polish more formal footwear? Or if they have ever heard of brand extension?
Read the full decision here.