KIWI held to lack distinctiveness in New Zealand

New Zealand

In Pankhurst v Saramar LLC ([2012] NZIPOTM 2, January 16 2012), the Intellectual Property Office of New Zealand has rejected an opposition against the registration of the trademark KIWISOLES.

In 2009 a Candice Pankhurst applied to register the word mark KIWISOLES in Class 25 of the Nice Classification for flip flops carved, embossed and etched with custom-designed ornamentation and patterns.

Saramar LLC, which is part of the Sara Lee group of companies, opposed on the basis of its stylised KIWI mark, under which it sells shoe polish and shoe laces in New Zealand, and has done for many years:

Kiwi shoe polish was apparently coined by an Australian who named it 'Kiwi' after the home country of his wife. The popularity of the product was enhanced when it was used by both the British and US armies in World War I. Kiwi shoe polish is sold in many countries around the world, and is said to be one of the world’s best-selling brands of shoe polish.  

The difficulty with a brand like Kiwi in New Zealand is that a 'kiwi' is a native flightless bird and a national icon, and a word that is used to described New Zealanders. It thus lacks inherent distinctiveness, as it is commonly used in New Zealand in relation to goods and services.

Despite finding that Saramar had a reputation in its stylised KIWI logo, and in the word 'kiwi' so far as it is used in relation to the Saramar product bearing the stylised mark, the assistant commissioner found that the marks were not similar. The assistant commissioner held that KIWISOLES, when used in relation to flip flops - which she noted are commonly worn in New Zealand, but are known as 'jandals' - skilfully alludes to this type of footwear because it sounds as though it is a name for a type of shoes made in New Zealand and/or worn by New Zealanders. On the other hand, she found that the Kiwi name used in relation to shoe products and accessories carries with it the concept of performing some kind of supportive function in relation to shoes, namely that Kiwi has been "Loving shoes since 1906". As Kiwi had never been used as the name of a type of shoe, it was found to be unlikely to have those connotations in light of its trading history, and the fact that shoe polish would never be used on flip flops. 

The goods were also found to be different. Although the users of the goods were found to be the same, the goods were found to be physically different, have different uses and not be competitive (arguably people who wear flip flops do not need shoe polish or shoe laces).   

The opposition failed and, unless there is a successful appeal, the trademark KIWISOLES must be registered. The case highlights the fact that, although a trademark can be well known, its lack of inherent distinctiveness can be a hindrance when challenging third-party trademarks. 

Kate Duckworth, Baldwins, Wellington

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