Genealogy services not similar to services to trace living relatives

In Intellectual Reserve Inc v Sintes (CIV 2007-404-2610, December 13 2007), the High Court has dismissed an appeal from the decision of the assistant commissioner of trademarks in relation to a stylized version of the words 'family search'.

Intellectual Reserve Inc is a not-for-profit corporation based in the United States which licenses the right to use the trademark FAMILYSEARCH in New Zealand and elsewhere to the Church of Jesus Christ Latter-Day Saints. Intellectual Reserve owns:

• registrations in New Zealand for stylized and word versions of FAMILYSEARCH for genealogical services, among other things;
  
  
• word mark registrations for FAMILYSEARCH for training, educational and cultural activities relating to genealogical research; and
  
  
• stylized representations for wholesale and distribution of various media containing information and advice on ancestry, family history and genealogy, among other things.

Intellectual Reserve opposed an application by an individual, Robert Sintes, for the registration of a stylized version of the words 'family search' in Class 45 of the Nice Classification for services for locating birth parents and adopted children.

The assistant commissioner compared only the stylized versions of each party's marks and found that the marks were not similar.

In comparing the services, the assistant commissioner held that Sintes's services help to find living family members, birth parents or adopted children, whereas Intellectual Reserve's services concerned genealogy. The assistant commissioner also found that the markets overlapped because a person might be looking for both dead and living family members. However, she did not make a separate ruling on whether Sintes's mark covered the same or similar services, perhaps because having ruled that the marks were not similar, there was no need to make any finding as to the similarity of the services. The assistant commissioner thus dismissed the opposition. Intellectual Reserve appealed.

The High Court considered that the marks were similar. Turning to the services, the court found that there was only a superficial similarity between the services offered in that they relate to genealogy. Intellectual Reserve's services offer the tools for a person to research his or her own family genealogy, while Sintes's services help to research and trace lost family members. The judge concluded that the services were not similar and, as such, confusion or deception between the marks was unlikely.

Therefore, the court dismissed the appeal and ordered the registration of Sintes's mark.

Kate Duckworth, Baldwins, Wellington