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Higgins Coatings Pty Ltd v Higgins Group Holdings Ltd

(CIV 2009-485-2594, 30th June 2010)

Higgins Coatings appealed a Commissioner’s decision refusing to register two trade marks, one for the word mark HIGGINS COATINGS, and the other for a logo incorporating the word ‘Higgins’. Both applications were in class 37 and were limited to a full range of painting services.

The respondent, Higgins Group Holdings had used the mark HIGGINS in relation to road contracting services for more than 50-years. It had recently registered trade marks for HIGGINS and a logo incorporating the word ‘Higgins’, although the application dates were later than the applications by Higgins Coatings. The Higgins Group registrations included class 37 services for civil engineering and civil construction; construction, maintenance and repair of roading; building construction and construction management services.

Higgins Group opposed registration, primarily on the basis of section 17(1)(a) of the Trade Marks Act 2002 (likely to deceive or cause confusion), but also on sections 18(1)(b) (no distinctive character) and 25(l)(c) (identical or similar to a trade mark that is well known in New Zealand). The Assistant Commissioner upheld the challenges under sections 17(1)(a) and 25(l)(c), but held that the marks had sufficient distinctiveness for section 18(l)(b) purposes. Higgins Coatings appealed, and Higgins Group cross-appealed on distinctiveness.

Higgins Coatings primary market was identified as commercial, construction, industry and public sector clients who require painting services, while residential property owners were a secondary market. Higgins Group was found to be well known in the relevant market. However, the Judge cast doubt on whether Higgins Group should have obtained a registration to the family name ‘HIGGINS’, and noted that once registration had been obtained it could easily unduly hinder subsequent applications. Such registrations need to have there specification narrowly construed. In this regard the Judge took issue with the Assistant Commissioner’s finding that the two parties provide complimentary services given that they could work on the same project site. The Judge found that even if they worked on the same site, they were still providing very different services. The concept of ‘complimentary’ service was held to be unhelpful, especially in the current case as it would broaden the monopoly of a mark that should at best have a narrow monopoly. The Judge also rejected the Assistant Commissioner’s conclusion a substantial number of persons in the relevant markets would be caused to wonder if there was a connection in trade. While there was some evidence of actual confusion, it was not of an extent or nature that suggested it met the test of a substantial portion of the relevant market. Indeed, it was noted that given the large scale of the projects and hence money some due diligence could be expected by those in the relevant market, thereby elevating the standard for confusion in this case. Hence, the Assistant Commissioner’s finding under section 17(1)(a) was overturned.

The judge also overturned the Assistant Commissioner’s finding under section 25(1)(c), since it followed that a rejection under section 17(1)(a) would also lead to a rejection under section 25(1)(c). The Judge also noted that he had some reservations as to whether the opponent's reputation in its mark met the necessary level for section 25(1)(c).

The Judge also overturned the Assistant Commissioner’s finding that the marks have sufficient distinctiveness for section 18(1)(b). The Judge applied the test in W & G du Cros Ltd, (1913) RPC 660 recently endorsed by the Court of Appeal in Intellectual Reserve Inc v Sintes 2009 NZCA 305. He said that, while there was no absolute prohibition on a surname obtaining a trade mark registration, it must not be so common a surname as to have no distinctive character. The Judge said that ‘Higgins’ standing alone did not have any distinctiveness, it was just a name, not so prevalent as ‘Smith’ but by no means unusual or distinctive. By itself it had no capacity to distinguish in relation to the goods and services for which it was sought. The issue was whether the additions assisted. In relation to HIGGINS COATINGS, the Judge said that the addition of COATINGS did not add any distinctiveness. In relation to the logo, he said that it was a matter of degree and impression, and that the essence of the logo was weaker from a distinctiveness viewpoint than HIGGINS COATINGS because it was only the surname standing alone with added italics and two lines underneath, and these additions did not really make a difference. The Judge therefore allowed the cross-appeal finding that the marks lacked distinctiveness for s 18(l)(b). While the Judge was surprised that Higgins Group had successfully registered HIGGINS, he observed that had objection been made, they may have relied on acquired distinctiveness under s 18(2).