'Impractical' interim injunction issued in car hire logo case

New Zealand
In Ace Tourist Rentals (NZ) Limited v Clouth & Giles Investments Limited (CIV 2008-404-7743, December 4 2008), the High Court of New Zealand has awarded an interim injunction to Ace Tourist Rentals (NZ) Limited, trading as Ace Rental Cars.
Ace Tourist traded as a rental car company and had been using its registered logo since 2000. The logo consisted of the word 'Ace' with an arched arrow, both in yellow, on a blue background.
Clouth & Giles Investments Limited, trading as Hireace and Trailerace, owned a registered trademark consisting of the word 'Hireace' in white with the 'Ace' component in italics. The word 'Ace' was surrounded by a yellow semi-circle and two stars on a blue background.
Clouth had previously been in the business of truck and trailer hire, but moved into the car hire market in 2008 following the acquisition of a car hire business. In March 2008, following its business expansion, Clouth moved into new premises and repainted the building blue, with the Hireace logo prominently on display.
Ace Tourist alleged that Clouth's change of livery and identical colour palette, coupled with the use of the name Ace, would cause confusion in the market and infringe its Ace logo.
The court stated that had Clouth stayed within the truck and trailer hire business, there would have been no confusion. The court doubted that, as a standalone factor, the word 'Ace' was capable of causing confusion. However, taking into account the overall impact of both logos, the court was satisfied that the similarities would cause confusion in the market, describing damages to Ace Tourist as “virtually inevitable”.
Clouth was ordered to refrain from using the Hireace logo in its advertising and promotional material in relation to the hire of cars, but not with regard to truck or trailer hire, or commercial hire. Arguably, the court made an impractical order in that if a car was being dropped off or picked up from Clouth’s premises, staff should not wear apparel bearing the Hireace logo. However, if a truck or commercial hire vehicle was being dropped off or picked up, then staff were permitted to wear apparel bearing the logo. 

The interim injunction orders stand until the parties resolve their differences or the substantive issues are determined by the court at a full hearing.
Kate Duckworth, Baldwins, Wellington

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