Common sense prevails in refusal of ‘my’ trademark applications

New Zealand
In AA Insurance Limited v AMI Insurance Limited (HC Wellington CIV-2010-485-2427 [2011] NZHC 1453, November 2 2011), the High Court has overturned the assistant commissioner of trademarks’ decision to accept for registration several trademarks including the words 'my' and 'insurance' for various services in Class 36 of the Nice Classification, including insurance, financial, monetary, investment and real estate services.

AMI Insurance Ltd
had applied to register a variety of 'my' marks, including MY INSURANCE, MY CAR INSURANCE and MY HOUSE INSURANCE. The applications were opposed by a number of insurance providers.

Interestingly, the assistant commissioner found that the trademarks were not descriptive. Her reasoning was that a trademark such as, for example, MY INSURANCE, would be taken by the average consumer to refer to insurance personal to that consumer, rather than being descriptive of the applicant’s services.

In her decision (T21/2010, November 8 2010), the assistant commissioner found that:
  • the trademarks were capable of distinguishing because the word 'my' (in combination with the descriptive words) was not a generic description for the type of services on offer, namely insurance services; and
  • other traders were not likely to want to use the words in the course of trade to describe their own services. 
Not surprisingly, the decision was appealed. How the court would ultimately decide the issue was perhaps signaled very early on in the decision (at 2):

"AMI Insurance Limited seeks registration of a series of trademarks comprising, for the most part, purely descriptive words - insurance, car insurance, house insurance, etc - preceded by the possessive adjective 'my'."

The court disagreed with the assistant commissioner’s view that:

"the term 'my' is the crucial ingredient by making what follows awkward or unusual to the observer because the mark is cast from the perspective of the insurer itself while speaking in the voice of the consumer. The assistant commissioner accepted that the awkwardness introduced by the use of 'my' made the mark distinctive when it would not otherwise be.” (at 28)

Instead, the court held (at 29) that 'my' “does not make distinctive what would otherwise be a descriptive or generic mark. It cannot, of itself, denote the origin of a product”.

In applying the test for distinctiveness set out in Registrar of Trademarks v W & G du Cros, the court held that, in the ordinary course of their business and without any improper motive, competitors are likely to want to use 'my'-oriented phrases in connection with their own products. The court's position was summarised nicely by the comment that “[a] generic 'my' mark would be seen for what it is - a generic description in the voice of the consumer” (at 59), which is clearly the approach that should have been taken by the commissioner of trademarks.

The court allowed the appeal, but indicated that, if AMI Insurance wanted to seek registration of the marks in relation to non-insurance services, it could do so before the assistant commissioner.

Carrick Robinson, James & Wells Intellectual Property, Auckland

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