‘Wrong way round’ confusion

Friday 11 March 2016 | Kate Duckworth

In 2011 Dutch navigation company TomTom applied in New Zealand to register two trademarks – TOMTOM and TOMTOM combined mark. Gaylene Hosking owns an earlier filed mark for TOM TOM in New Zealand and has licensed the company which she controls, TomTom Communications Limited, to use that trademark.

Hosking and TomTom Communications Limited (collectively, ‘Hosking’) have provided communications, marketing, promotion, brand development, website development, media strategy, training, advertising, research and analysis, lobbying and reputation management services under the TOM TOM trademark since 1998.

Tom Tom International’s applications were accepted by the Intellectual Property Office of New Zealand (IPONZ). Hosking opposed. In 2015 IPONZ issued a decision denying the opposition and allowing the applications. One of the key issues in the opposition was what was referred to as ‘wrong way round’ confusion.

Since Tom Tom International’s launch in New Zealand in 2006, Hosking had been receiving misdirected enquiries intended for the Dutch company by telephone, email and post. Hosking also said that it had become difficult to promote her own company because people assumed that it was Tom Tom International.

One of the major contributing factors for the misdirected enquiries was that Tom Tom International did not have a New Zealand-specific website and listed no New Zealand contact details on its international website.

The assistant commissioner therefore ruled that not all of the instances of confusion had arisen simply as a result of similarities between the marks and the respective goods and services, and held that the evidence of confusion must be viewed in this light.

Hosking appealed the opposition decision to the High Court (TomTom Communications Limited v TomTom International BV [2015] NZHC 3333). The judge ruled that most, if not all, of the evidence related to people who knew of Tom Tom International, but not of Hosking and her business – hence the description ‘wrong way round’ confusion. The judge went on to say that this evidence did not assist Hosking. The test for determining a likelihood of deception or confusion is, having regard to the opponent’s reputation, use of the applicant’s mark that is likely to deceive or confuse. Because in this case those who had been confused – or even deceived – were unaware of Hosking’s marks, the evidence of confusion and deception was irrelevant. The confusion was said to be simply a failure by people to make contact with the organisation that they had been trying to contact.

As a final kick to Hosking, the judge also ruled that the marks had only just met the threshold for having a reputation and fell short of being well known in New Zealand.

The moral of the story is that not just any evidence of confusion will do; evidence of confusion and deception must be carefully analysed as to the cause of it. Hosking has a right of appeal to the Court of Appeal.

Published by World Trademark Review on 29 January 2016

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