Slogan for soft drink held to be registrable

New Zealand
In Coombe v Coca-Cola Amatil (NZ) Limited (CIV-2010-485-000816, April 8 2011), the High Court of New Zealand has held that the phrase 'World Famous in New Zealand' was registrable as a trademark.

Coca-Cola Amatil (NZ) Limited produces a distinctly local product called Lemon and Paeroa (Paeroa being a small New Zealand town) or, as it is more commonly known, L&P. In around 1993 Coca-Cola came up with a marketing campaign for L&P: 'World Famous in New Zealand'. The phrase has been used extensively by Coca-Cola since.
Coco-Cola applied to register the phrase in 2004 in relation to drinks in Class 32 of the Nice Classification. A local Paeroa accountant (Coombe) opposed the registration, claiming that it was a descriptive slogan which had entered the everyday language.
Coombe claimed that the phrase:
  • consisted only of signs or indications that may serve in trade to designate the kind, quality, quantity, value or geographic origin of the goods;
  • has become customary; and
  • has no distinctive character or has not acquired distinctive character.
Coombe’s opposition was unsuccessful and he appealed to the High Court. In the High Court, Coombe submitted that, even if the phrase were a 'lexical invention' when first coined, the adoption of the phrase into common usage rendered it a descriptive term.
The court emphasised that the phrase was not to be considered in the abstract - it had to be tested in relation to the relevant goods.
The court disagreed with all of Coombe’s submissions, stating that 'World Famous in New Zealand' was an oxymoron that produced a quirky, original, incongruous and self-contradictory statement. It was not found to be laudatory of soft drinks, as it did not indicate any particular characteristics of the product.
Coombe was not able to point to any traders, other than Coco-Cola, wanting to use the phrase. Consumers were said to be likely to associate the phrase with the L&P product.
The final point dealt with by the court was whether 'World Famous in New Zealand' was a 'limping mark'. Coombe submitted that it was a slogan or catchphrase, rather than a trademark. The court held that the phrase did not “come close to being a limping mark”. Despite being associated with the trademarks LEMON AND PAEROA and L&P, it was found to be capable of “standing up on its own right”.
While the phrase was said to be a popular slogan (mostly due to the success of Coca-Cola’s marketing), that alone was not said to be a reason to refuse the application. The appeal was thus refused.
Kate Duckworth, Baldwins Intellectual Property, Wellington

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