Marks containing common surname refused registration

New Zealand
In Higgins Coatings Pty Limited v Higgins Group Holdings Limited (CIV 2009-485-2594, June 30 2010), the High Court of New Zealand has refused to allow the registration of two marks containing the surname Higgins.
 
Higgins Group Holdings Limited opposed the registration of the word mark HIGGINS COATINGS and of a stylised version of the surname Higgins in the name of Higgins Coatings Pty Limited. Higgins Group primarily provides roading services in New Zealand. Higgins Coatings, as the name suggests, provides painting services. 
 
The assistant commissioner concluded that confusion and deception were likely to result if Higgins Coatings used the HIGGINS marks, primarily on the basis that coating services were complementary to roading services. Higgins Group submitted evidence of several instances of actual confusion during the opposition, including:
  • invoices addressed to the wrong company;
  • a driving complaint; and
  • responses to the wrong company for job advertisements.
Higgins Coatings appealed to the High Court. 

The High Court began its analysis by noting that the case illustrated the danger of registering a common surname. The potential ambit of the monopoly was said to be great. The court then stated that, once registered, others who wish to use the name for similar services will find it difficult to “avoid its clutches”.
 
In analysing the different services of each company, the court noted that the companies do not do the same work, nor in any way offer the same services. The court concluded that a complementary service is not sufficient, of itself, to create a real risk of confusion. It was said to broaden the scope of Higgins Group's monopoly too much. The fact that Higgins Coatings offers painting services, and Higgins Group never does, was said to be of considerable weight.
 
Turning to the question of confusion, the court ruled that the evidence fell short of establishing that a substantial number of persons would be confused or deceived. Some confusion was said to be inevitable if a common surname achieves trademark registration. The court found that the confusion and deception envisaged by the assistant commissioner was too speculative and overturned the latter on her finding of likely confusion or deception.
 
Higgins Group also opposed on the basis that Higgins Coatings' marks lacked distinctiveness because they would “always be confusingly associated, or connected, with the respondent’s services”. Higgins Group sought to argue that the marks lacked distinctiveness because they were surnames. Higgins Coatings opposed because the pleading on distinctiveness was limited to being associated with Higgins Group. The court allowed further submissions, and also allowed Higgins Group to argue the distinctiveness point. 
 
The HIGGINS word mark was said to be “just a name, not so prevalent as Smith, but by no means unusual or distinctive”. By itself, it was said to have no capacity to distinguish. In terms of the stylised version, this included two wave-like lines underneath an italicised version of the word 'Higgins'. Noting cases such as Fanfolds ((1928) RPC 326), the court found that the addition of italics and two lines did not make much difference to distinctiveness, and that the stylised version had no greater aptitude to distinguish than the word itself.
 
The court noted the oddity that Higgins Group holds registrations for the very same marks that it had found to lack distinctiveness, but denied registration to Higgins Coatings.
 
Higgins Group, which ultimately won because registration was denied, has appealed the finding to the Court of Appeal. The case is likely to be heard in the next six to 12 months.
 
Kate Duckworth, Baldwins, Wellington

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