TELECOM has acquired secondary meaning

New Zealand

In Nortel Networks Corporation v Telecom Corporation of New Zealand, the New Zealand High Court has upheld the registrar's decision to refuse to register Nortel Networks Corporation's NT NORTHERN TELECOM logo on the grounds that it was similar to Telecom Corporation of New Zealand's (New Zealand Telecom) TELECOM mark. The court held that TELECOM had acquired secondary meaning in New Zealand (HC WN CV-2003-485-2631, June 24 2004).

Nortel registered the logo NT NORTHERN TELECOM in 1976 in New Zealand for telecommunication-related goods. New Zealand Telecom was created in 1987 to take responsibility for all of the telecommunications services in New Zealand and Nortel became one of its suppliers.

On the first day trademark registration for services became available in New Zealand, Nortel filed an application to register its NT NORTHERN TELECOM logo for telecommunication services. On the same day, New Zealand Telecom filed an application to register TELECOM CENTRE as a service mark for telecommunications services. New Zealand Telecom's application proceeded to registration and it opposed Nortel's on the basis of (i) its newly registered TELECOM CENTRE mark, and (ii) its unregistered TELECOM mark. The registrar upheld the opposition. Nortel appealed to the High Court, arguing that the term 'telecom' is a generic term for telecommunications.

The High Court affirmed the registrar's decision. It upheld New Zealand Telecom's argument that, even though it had only used the term 'telecom' for one year at the time both it and Nortel applied for their respective TELECOM marks, New Zealand Telecom's position as sole supplier of telecommunications services in New Zealand afforded its TELECOM mark secondary meaning, which would make the use of the term by another telecommunications company confusing. The court also took into consideration the fact that Nortel was no longer using the NT NORTHERN TELECOM trademark.

The Court of Appeal will hear the case before the end of the year.

Kate Duckworth, Baldwins, Wellington

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