FAMILYSEARCH decision affirmed on appeal

In Intellectual Reserve Inc v Sintes (Case CA 31/2008 [2009] NZCA 305, July 16 2009), the Court of Appeal of New Zealand has dismissed an appeal against a High Court decision involving the trademark FAMILYSEARCH.

In 2005 Robert Sintes applied to register the stylized trademark FAMILYSEARCH for services in Class 45 of the Nice Classification - namely, web-based services for finding and reuniting missing family members. The application was opposed by Intellectual Reserve Inc, a non-profit organization owned by the Church of Jesus Christ of Latter-Day Saints. Intellectual Reserve is the owner of a number of registrations for the word mark FAMILYSEARCH, as well as registrations for a stylized version of the mark. The registrations cover a range of goods and services in Classes 9, 16 and 42, focusing mainly on genealogical services and research.

The assistant commissioner considered a number of grounds of opposition, including:

• whether Sintes’s mark satisfied the distinctiveness requirements under the Trademarks Act; and
• if so, whether use of the mark would be likely to deceive or cause confusion in the marketplace.

The assistant commissioner found for Sintes on both issues, holding, in particular, that the marks were not similar. Intellectual Reserve appealed to the High Court, which also found in favour of Sintes. The High Court considered that the marks were similar, but that the services were not. As such, it was unlikely that confusion or deception between the marks would arise (for further details please see "Genealogy services not similar to services to trace living relatives"). Intellectual Reserve appealed.

Before the Court of Appeal, Intellectual Reserve challenged Sintes’s entitlement to register as a trademark a sign containing the commonly used words 'family search' on the grounds that the sign in question was not distinctive. The court also considered whether Sintes’s use of the same words as Intellectual Reserve’s registered marks, albeit in a different format, was likely to deceive or cause confusion in the marketplace.

On the first point, the Court of Appeal held that Sintes’s mark was distinctive. Referring back to, and agreeing with, the assistant commissioner’s analysis of the mark, the court held that the mark consisted of not only the word combination 'family search', but also the devices of an arrow and a koru (a stylized fern scroll motif used in Maori carving), giving the mark as a whole the requisite distinctiveness for the purposes of the act.

The Court of Appeal then turned to the issue of whether use of Sintes's mark was likely to deceive or cause confusion. The court’s focus rested on the specific services claimed by Sintes in his registration, and the goods and services covered by Intellectual Reserve’s registrations for its FAMILYSEARCH marks. The court took the view that there was an element of potential overlap between the respective marks. The purpose of Sintes’s mark related to the research of births, deaths and marriage records, and so did that of Intellectual Reserve.

However, Sintes satisfied the Court of Appeal - as he did the assistant commissioner and the High Court - that “the overlap between the fields occupied by him and by [Intellectual Reserve] is simply insubstantial”. Intellectual Reserve’s marks are registered in relation to genealogy services, which primarily concern the research of the past, family ancestral lines or family histories, services which the Court of Appeal considered to be in contrast to Sintes’s services, which concern personal services to assist in the location of lost family members.

The court also held that with "largely" descriptive marks, the public expects other traders to use similar marks and will be alert to details that distinguish one trader from another. This has the effect of neutralizing a common feature and focusing attention on other elements which may distinguish the marks. This, combined with the differences between the services, allowed the court to dismiss the appeal.

Carl Dunne, James & Wells Intellectual Property, Auckland