No love lost for heart shape mark application

In Build-A-Bear Workshop v Commissioner of Trademarks (CIV 2007-485-196 and 775, June 21 2007), the High Court of New Zealand has upheld a decision to refuse registration of the three-dimensional shape of a heart in Classes 28 and 35 of the Nice Classification in relation to, among other things, toys and dolls, and the retail of such items.

The Intellectual Property Office of New Zealand (IPONZ) rejected Build-A-Bear Workshop Inc's application on the basis that the proposed mark had no distinctive character. Build-A-Bear Workshop did not submit any evidence of use and relied on the inherent distinctiveness of the shape. On appeal, a hearing officer at IPONZ confirmed the initial ruling.

Build-A-Bear Workshop appealed to the High Court claiming IPONZ had rejected the application prematurely. It argued that if there was any risk of legitimate use by other traders, such traders could have opposed the application. However, it accepted that there was nothing in the application to limit the size, colour, material or use of the shape.

Assessing the criteria set out in the Trademarks Act 2002, the court noted the following:

• The commissioner of trademarks at IPONZ must examine trademark applications.
  
  
• If the commissioner thinks an application does not comply, he or she must give the applicant an opportunity to respond or amend the application.
  
  
• If the commissioner remains of the same view he or she must tell the applicant.
  
  
• The applicant must be given the opportunity of a hearing and can submit evidence.
  
  
• If the commissioner is still not satisfied, then he or she must reject the application.

The High Court stated that the commissioner has a duty to consider an application, whether or not anyone opposes that application. The grant of a trademark registration is the grant of a statutory monopoly and there is a public interest factor to consider. The commissioner has to satisfy himself/herself that the application meets the criteria of the act or is bound to reject the application. The High Court made it clear that the onus is on the applicant to satisfy the commissioner.

The High Court agreed with the hearing officer's view, which was based on evidence of use of heart shapes in relation to toys by third parties, that the shape was capable of being used as a toy or part of a toy and that other traders were likely to want to use identical or similar marks.

Kate Duckworth, Baldwins, Wellington