Significant Use of Mark in Sponsorships Assists Pirelli’s Opposition to Similar Mark

In Rodin Cars Limited v Pirelli Tyre S.P.A. [2022] NZIPOTM 4 Pirelli’s sponsorships of various highly viewed events partially made up for its lack of New Zealand trade or consumer related evidence on confusion.

Pirelli opposed Rodin’s application for FZERO for a wide range on goods and services in classes 7, 12, 37, 40, 41 and 42 on the basis of both its registration for PZERO in class 12 for various vehicle tyres, wheels, inner tubes, rims and parts and fittings and its use of that mark and the substantially identical mark P ZERO. 
Pirelli contended that the FZERO mark would be likely to deceive or cause confusion (s. 17(1)(a)), conflict with its similar prior registration (s. 25(1)(b)) and conflict with its well-known mark (s. 25(1)(c)).

Reputation:
Pirelli have a long history of manufacturing tyres and associated items and positions itself as a producer of high end tyre related goods for high performance vehicles. The first P ZERO tyre launched in Italy in 1987 and they have been promoted and sold in New Zealand since at least 2006. The P ZERO brand also features in many motorsport events which Pirelli is a sponsor of. Pirelli have been the exclusive supplier of tyres for Formula 1 cars since 2011 and for the Electric GT Championship since 2017, both of which display the P ZERO brand on the unenclosed tyres. Pirelli’s P ZERO tyres have also been used in the World Rally Championship which has taken place in New Zealand on numerous occasions. In 2013 Pirelli’s sponsorship of Team New Zealand’s boat at the highly viewed 35th America’s Cup even resulted in the P ZERO mark being on the boat’s rudders which were visible above the waterline when the boat was foiling.

Similar Prior Registration:
The Assistant Commissioner first considered the opposition under section 25(1)(b) on the basis of Pirelli’s PZERO registration, which proceeds on a notional basis of assumed fair use of the registered mark without taking into account the reputation in that mark. With the exception of whole vehicles in class 12, the Assistant Commissioner considered the rest of the goods in classes 7 and 12, which relate to parts for vehicles and machines for vehicle maintenance and modification, to either be the same or similar to the goods of the registered mark on account of involving similar uses and users. The application’s class 37 specification covered services related to the maintenance and repair of motor vehicles. This was found to be sufficiently similar as Pirelli’s goods or information about them may sometimes be expected to be involved in the provision of the services. The class 40, 41 and 42 specifications are not restricted to vehicle related services, but to the extent that they do they were found to be similar to the goods specified in Pirelli’s registration. The Assistant Commissioner found the visual similarity of the two marks to be very high, with the marks being the same length and the different first letters being visually similar. Given the different pronunciations of those first letters the marks were found to have a low to moderate aural similarity. A moderate to high conceptual similarity was found, with the lead letter of each mark not being shown to have any particular significance and so being somewhat arbitrary. These findings led the Assistant Commissioner to conclude overall that FZERO is similar to PZERO. However, when considering the likelihood of deception or confusion, the Assistant Commissioner only found that to be the case where the application’s goods or services relate to tyres, vehicle wheels, and parts and fittings for tyres and wheels and so required removal of references thereto along with disclaimers thereto. The Assistant Commissioner found support for the limited scope of that prohibition from the High Court case Automobile Club De L'Ouest, Aco v South Pacific Tyres New Zealand Limited CIV 2005-485-248, which also involved tyres and found essentially the same disclaimer appropriate where both parties claimed rights in the mark LE MANS.

Likelihood of Deception or Confusion:
Nonetheless, Pirelli was found to have a stronger case under the consumer protection ground of section 17(1)(a). Pirelli’s reputation in the PZERO mark was sufficient to put the onus on Rodin to establish that normal and fair use of the FZERO mark would not be likely to deceive or confuse a substantial number of persons. Particularly in light of its use in sponsorships the public’s awareness of the PZERO mark was found to create a reputation that is wider than the goods it was registered in respect of. The Assistant Commissioner found confusion or deception would be likely for any goods or services in the application for the FZERO mark that relate to vehicles and/or motor sports, which resulted in the entire specifications for classes 7, 12 and 37 of Rodin’s application being removed along with significant portions of the class 40, 41 and 42 specifications.

Prior Well Known Mark:
At this point Pirelli might have considered it could mop up the remaining class 40, 41 and 42 services of Rodin’s application through its section 25(1)(c) ‘well known’ mark ground of opposition. However, despite acknowledging that it is not necessary for a trade mark to be “iconic” in order for it to be “well known”, the Assistant Commissioner held there was insufficient evidence to conclude that the PZERO mark is well known amongst those interested in high performance tyres in New Zealand. There was no evidence from anyone in the tyre trade in New Zealand, nor any survey evidence. There was no corresponding New Zealand evidence to the evidence which led to the mark being held to be well known in Australia. The Assistant Commissioner downplayed the above noted reputation mainly attained via various sponsorships of high viewer events, noting that a 2008 High Court decision cast doubts on what can be inferred about such reputation in the absence of market survey evidence regarding brand awareness. Yet such sponsorships would involve several millions of dollars, which contrary to another of the Assistant Commissioner’s findings, would at least be indicative of the value associated with the mark. Further, some of that sponsorship specifically involved events in New Zealand. Nonetheless, the Assistant Commissioner proceeded to further consider the section 25(1)(c) ground on the assumption that the PZERO mark is well known. For the goods and service that had already been found to be similar the Assistant Commissioner held there was insufficient evidence that Pirelli’s interests would be prejudiced. The Assistant Commissioner was not willing to infer prejudice to Pirelli’s interests despite Pirelli contending that consumers would likely be confused regarding the origin of the goods or that there is some association or affiliation with their own goods or that the FZERO brand is related to the PZERO brand. For the goods and services that were not found to be similar the opponent has the additional requirement of showing that use of the applicant’s mark would be taken as indicating a connection on the course of trade with the opponent. Despite having found the marks to be similar, the Assistant Commissioner considered that the link was too tenuous to indicate such a connection.

Concluding Remarks:
While Pirelli might consider the Assistant Commissioner’s findings in relation to its prior similar registration of little comfort, the reputation it established in its mark through various sponsorships compensated for that in relation to similar goods and services under the consumer protection ground. Pirelli could feel aggrieved about the finding that there was insufficient evidence to show that its mark is well known or that its interests were not prejudiced. However, given that Rodin has an unchallenged registration for RODIN FZERO in class 12 covering all the goods, including tyres, that were removed from the specification for its FZERO application, there is little to be gained from appealing the decision.

Author: Quinn Miller

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