Qantas successfully opposes registration of mark for coffee, tea and biscuits

New Zealand

In NV Sumatra Tobacco Trading Company v Qantas Airways Limited ([2012] NZIPOTM 13, April 30 2012), Qantas Airways Limited, Australia’s national airline, has successfully opposed a New Zealand trademark application by NV Sumatra Tobacco Trading Company for the word mark JETSTAR for various goods including coffee, tea, biscuits and confectionery in Class 30 of the Nice Classification.

Qantas operates the airline Jetstar in New Zealand, as well as in other countries. It also owns a trademark registration in New Zealand in Classes 39 and 43 for services such as airline services, provision of food and beverages and catering services.

The assistant commissioner of trademarks firstly considered whether the goods applied for by Sumatra were similar to the services for which Qantas holds a registration. The assistant commissioner referred to a recent decision of the High Court, Fonterra Brands (Tip Top Investments) Ltd v Tip Top Restaurant Ltd (High Court Wellington CIV-2011-485-001011, November 4 2011), where the operation of a restaurant under the name Tip Top was found to be a similar service to ice cream sold under the same mark.

The central finding in the JETSTAR case was that the goods consisted of a kind that might be provided by Qantas in relation to its airline service - for example, coffee in a JETSTAR-branded disposable cup and a biscuit wrapped in JETSTAR-branded cellophane might be provided to Jetstar passengers on board its aircraft or at a food and beverage outlet in an airport.

Although Qantas is unlikely to manufacture the goods itself, it is likely to licence or authorise the use of the trademark JETSTAR to those supplying food for its airline service.

The assistant commissioner also noted that Qantas does not offer food and drink as part of the air ticket on Jetstar, but food and drink can be purchased on board. She therefore found that the provision of food and beverages on the opponent’s Jetstar aircraft is effectively presented in trade as a separate service (ie, the provision of food and beverages in relation to airline services).

Having found that the goods were similar to Qantas’s registered services, and the marks being identical, a finding of likely deception and confusion was inevitable. The assistant commissioner also noted that JETSTAR is a highly distinctive trademark, and this would increase the chances of deception and confusion.

The assistant commissioner went on to rule that the JETSTAR mark had become well known in the New Zealand market since Qantas began offering flights in New Zealand in December 2005. She found that use of the opposed mark would be likely to prejudice the interests of Qantas, not only in the form of likely deception and confusion, but also by blurring of a “well-known distinctive mark”.

Although Class 30 food-related goods, on first blush, seem different to Class 39 and 43 services, the assistant commissioner’s findings are unsurprising given that food and drink are offered on board flights.

Kate Duckworth, Baldwins, Wellington

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