Council of Ivy Group Presidents t/a The Ivy League v Pacific Dunlop (Asia) Ltd

Wellington HIgh Court, AP42/00

3 October 2000

John Hansen J

This was an appeal from the Assistant Commissioner of Trade Marks. The respondent, Pacific Dunlop had applied to register the trade mark IVY LEAGUE in class 25 for clothing, footwear and headgear. The appellant was the Council of Ivy Group Presidents t/a The Ivy League. The Ivy League comprised eight well-known University Colleges in the North Eastern United States (Brown, Columbia, Cornell, Dartmouth, Harvard, Pennsylvania, Princeton and Yale). They had used the trade mark IVY LEAGUE for over 50 years. The appellant had no trade mark registrations in New Zealand. However it opposed registration, relying on section 16 of the New Zealand Trade Marks Act which is closely equivalent to section 11 of the former UK Trade Marks Act 1938 and section 28(a) of the former Australian Trade Marks Act 1955. This prohibits registration as a trade mark of “any matter the use of which would be likely to deceive or cause confusion”.

(The respondent was not able to rely on the well-known trade mark provisions in the New Zealand Trade Marks Act since these contain a legislative error. At present a mark which is well-known in respect of goods can only prevent registration in respect of goods. Similarly a mark which is well-known in respect of services can only prevent registration for services. There is no cross-over from goods to services or vice versa.)

At first instance, the Assistant Commissioner had held that the appellant/opponent had failed to show sufficient awareness or cognisance of its IVY LEAGUE trade mark in New Zealand. In particular, the Assistant Commissioner had held that under section 16 it was necessary for the appellant/opponent to prove that it had in New Zealand a sufficiently substantial awareness or reputation of IVY LEAGUE in respect of clothing, footwear and headgear. On appeal, the appellant contended that there was no need to show the mark was well-known in respect of the goods for which registration was sought. It was sufficient for section 16, if as a result of an opponent’s name or mark being known in New Zealand, use of the applicant’s mark would result in confusion or deception.

Hansen J overruled the approach of the Assistant Commissioner and was satisfied that section 16 extended to protect both unregistered trade marks and even names - citing a dictum of Lord Wilberforce in Berlei (UK) Limited v Barley Brassiere Co Inc [1969] 2 All ER 812, 830 and the High Court of Australia decision Radio Corporation Pty Limited v Disney (1937) 57 CLR 448.

Hansen J held:

It is not necessary for the opponent to show the use of the mark in New Zealand provided there is an awareness or cognisance.
The awareness or cognisance relied on by the opponent may be in respect of goods or services of a quite different description from those covered by the applicant.

On the facts of this case, the Court was satisfied that the evidence put forward showed a cognisance or awareness of IVY LEAGUE as a result of dictionary definitions and use in the press.

“The cumulative effect of this evidence makes it clear that there is cognisance or awareness of the name in New Zealand. In my view, any well educated New Zealander would be aware of the term and the connotations it carries. All of the evidence shows that the term IVY LEAGUE points to the opponent and its constituent Universities. There is no contradiction in the applicant’s evidence.”

Here the appellant opponent had discharged the initial evidential onus of proof of showing awareness of its mark. As the respondent had failed to discharge the overall onus to show there was no likelihood of confusion or deception, the mark was not permitted to proceed to registration.