Foster’s fails to prevent registration of FIJI BEER marks

In Flour Mills of Fiji Limited v Foster's Group Pacific Limited ([2009] NZIPOTM 15, August 10 2009), the assistant commissioner of trademarks has dismissed an opposition against the registration of two marks containing the words 'Fiji beer'.

In 2007 Flour Mills of Fiji Limited filed applications for the registration of two figurative trademarks containing the words 'Fiji beer'. Foster’s Group Pacific Limited, the largest producer of beer in the South Pacific, sells beer under the trademark FIJI BEER. Foster's opposed the applications based on two registered figurative trademarks containing the words  'Fiji beer'.

In addition, Foster's sought to show that its trademarks for beer were well known in New Zealand, despite the fact that its beer was not sold in that country. Foster's contended that many New Zealanders travel to Fiji, where its beer is widely sold and advertised.

The assistant commissioner accepted that Foster's beer was known in New Zealand despite not being available for sale in that country. She also accepted that the goods of both parties were the same and that the relevant markets and trade channels were likely to be the same. The assistant commissioner also concluded that the general idea of the marks was the same - namely, beer from Fiji. However, the trademarks themselves were found to be visually, aurally and conceptually different, particularly with regard to the stylization. According to the assistant commissioner, the inclusion of the letters 'fmf' (short for 'Flour Mills of Fiji') in the marks applied for strongly suggested that the beer was produced by Flour Mills and made it “immediately clear” that Flour Mills' marks were not those of Foster's.

In addition, Foster's requested a disclaimer over the word 'Fiji' on the basis of its strong reputation in that word for beer. Section 71 of the Trademarks Act 2002 gives the commissioner discretion to allow a disclaimer where there are public interest reasons for doing so. Despite the fact that in the recent decision of Intellectual Reserve Inc v Sintes ([2009] NZCA 305), the Court of Appeal ordered a disclaimer over the words 'family search' as part of a device mark, which as a whole was found to be distinctive (for further details please see "FAMILYSEARCH decision affirmed on appeal"), the assistant commissioner declined to order one.

The assistant commissioner found that a disclaimer would create misapprehension within the market, as consumers might think that Flour Mills' monopoly in its marks does not include the word 'Fiji' - especially if that word has been singled out for a disclaimer and the word 'beer' has not. It was also thought that consumers might consider that the word 'Fiji' (if it is ever used by itself by Flour Mills) may never acquire a distinctive character if there were a disclaimer.

It is difficult to reconcile the findings of the Court of Appeal with the findings of the assistant commissioner. In Intellectual Reserve, both the applicant’s and the opponent's marks were stylized, both included the words 'family search' and both were considered to be distinctive, despite the presence of descriptive words.

While there is provision for disclaimers in the Trademarks Act, the Intellectual Property Office of New Zealand dropped the practice of requiring disclaimers some years ago. It is possible that the assistant commissioner was reluctant to revive the practice, despite the Court of Appeal’s decision in Intellectual Reserve.

Kate Duckworth, Baldwins, Wellington