Case review by Sarah Dixon
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New Zealand Post Limited successfully opposed registration of the trade mark SILVER FERN in respect of "coins and goods made of precious metal in this class; none of the foregoing being shapes or representations of flora".
Evidence filed in support of the opposition included evidence that:
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- 'silver fern' is an important national icon that any person or organisation in New Zealand should be able to use for legitimate reasons, including the Reserve Bank of New Zealand, which has used images of silver ferns on past and present coins and bank notes;
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- goods which are either silver ferns or feature silver ferns are offered for sale in New Zealand and the words 'silver fern' are used to describe these goods (for example fern brooches, pendants, cufflinks, charms, shirts)
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New Zealand Mint Limited filed no evidence in support of the application.
The opposition succeeded on the grounds that the mark was descriptive and non-distinctive (ss 18(1)(b) & (c)), on the basis that the words SILVER FERN were descriptive of a characteristic of the goods, being coins or jewellery in the shape of, or including a representation of, a silver fern. In addition, it was held that other traders would be likely to wish to use the words 'silver fern' on or in relation to their own coins and jewellery.
The Hearings Officer considered whether the exclusion of goods being "shapes or representations of flora" in the specification of goods saved the trade mark SILVER FERN from being descriptive and non-distinctive and decided that it did not (see Court of Appeal's decision in Cadbury Limited v Effem Foods Limited (2007) 11 TCLR 966, 40). She also referred to the change in IPONZ practice regarding exclusions of characteristics of the goods and noted that the exclusion in this application was now unlikely to be allowed.
(Note: the opposition did not succeed under the grounds that the trade mark would be likely to deceive or confuse (s 17(1)(a)) or was contrary to law (s 17(1)(b)).
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