what does KIWI mean to you?

Famous mark?

The fraught problem of distinctiveness was forefront in a recent New Zealand decision of the NZ Intellectual Property Office (Pankhurst v Saramar LLC ([2012] 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. 

the brand battle

A STAR

The blog Markify recently posted an interesting item about the overwhelming number of boring everyday words that are used in trade marks. Markify was underwhelmed, and made the perfectly correct and lawyerly point that these common words do not help brands to stand out. Additionally, a common or descriptive word is difficult to register, meaning that it is difficult to claim any exclusivity. A trade marks attorney will groan (metaphorically if not literally) when a brand owner comes up with yet another mark containing the word STAR or SOLUTIONS or POWER or SMART or GREEN, or one of the two newest (according to Markify) to join the list : SOCIAL or MOBILE.

This set me thinking.

The attorneys reading this will nod - so what? That’s ‘Trade Marks 101’. Always advise your client to choose a distinctive mark, so that they can protect it and so that they can stand out in the marketplace.

But attorneys are not marketers, and marketers may disagree about what a brand can and should do in the marketplace. It’s not that easy to establish a completely invented word (that Holy Grail for ease of registration) as associated with a particular product. Brands often need to at least subtly, and maybe not so subtly, suggest what the product is, what its qualities are, what the brand owner’s ethos is. An invented word may not cut the ice.

And so the perennial battle quietly rages: the attorneys wondering why marketers can’t be more “original” and come up with much more distinctive marks which would make their life easier; and the marketers wondering why their attorneys seem to be working against them and not with them.

Somewhere in between lies the perfect brand choice: creative enough to carry the freight of suggestion that good marketing needs, but clever enough to be considered distinctive at law.

Here are a few examples to ponder:

THE SOCIAL GETWORK for employment services

TREND FOOD for food products

JAVA CITY for coffee bar services

THE MONEY STORE for money lending services

Good attorneys need to be able to explain the distinctiveness concept, but appreciate that there may be other equally important issues in brand selection.

Good marketers need to be able to include the magic ingredient of distinctiveness while still creating a brand that works for them.