EARTH mark application comes to ground

In Effem Foods Limited v Cadbury Limited (High Court, CIV 2005-485-1487, March 21 2007), the New Zealand High Court has confirmed that a sign can be used as a trademark when it is not used on the goods themselves and there is no intention to sell goods physically bearing the sign.

Cadbury Limited applied to register the mark EARTH for a range of confectionery and related goods. Effem Foods Limited, a Mars Inc company, opposed the application on the grounds that Cadbury was not the true proprietor of the trademark EARTH, because Effem had made prior use of the mark EARTH in relation to confectionery. Effem also alleged that Cadbury did not intend to use EARTH as a trademark.

The use relied on by Effem was a television commercial which screened three weeks before Cadbury's application was filed. The commercial features a large billboard depicting a chocolate bar in MARS get-up, but featuring the word 'Earth' instead of 'Mars'. A voiceover concludes the commercial by intoning: "Earth. What you'd eat if you lived on Mars".

In its evidence, Cadbury said that it filed the application to protect its MOTHER EARTH trademark.

The assistant commissioner held that Effem had not used EARTH as a trademark in the commercial because there was no actual trade or offer to trade in goods bearing the mark or intention to offer or supply goods bearing the mark in trade. As Effem had never offered to supply EARTH bars in New Zealand, it had not made prior use of the trademark EARTH and could not therefore claim proprietorship. Accordingly, the opposition failed.

On appeal, Justice Miller held that on the facts Effem had not used EARTH as a trademark, but Cadbury's application should be rejected because of a lack of intention to use.

The judge referred to the definition of 'sign' in the Trademarks Act 2002 and to Section 2(2), which reads:

"References to the use of a sign in relation to goods shall be construed as references to the use of the sign upon, or in physical or other relation to, goods."

He concluded that the legislation did not require that there be goods physically bearing the trademark or an intention to offer such goods. Nevertheless, he held that Effem had not used EARTH in a trademark sense. He held that there was no evidence that EARTH, used alone, was capable of indicating that Effem was the trade source of MARS bars.

The judge agreed with the assistant commissioner that Cadbury's "use of MOTHER EARTH was not tantamount to use of EARTH". He noted that:

"the intention to use must be a settled purpose and absence of a bona fide intention to use the mark prevents it from being a trademark."

He accepted that an application is prima facie evidence of intention to use. However, the legislation requires that the applicant demonstrates use or intention to use. The judge held that:

"the inference of intention to use that arose from the application itself was displaced by Cadbury's own evidence, which established that the purpose of registration was purely defensive."

Accordingly, he rejected Cadbury's application.

Rhonda Steele, Mars Inc, Sydney, with the assistance of Barbara Sullivan and Richard Hing, Henry Hughes, Wellington