FAMILYSEARCH appeal lost

The New Zealand Court of Appeal has affirmed the decision by the Assistant Commissioner and the New Zealand High Court to dismiss Intellectual Reserve Inc’s trade mark opposition in Intellectual Reserve Inc v Sintes[2009] NZCA 305.

The appellant, Intellectual Reserve Inc, is the owner of a number of trade mark registrations for either the word mark FAMILYSEARCH or the stylised mark FAMILYSEARCH in respect of a range of goods and services relating to genealogy.

Intellectual Reserve opposed the application for registration by Robert Sintes of the stylised mark FAMILYSEARCH, in respect of investigation and research services for the purposes of reuniting living family.

The relevant issues before the Court of Appeal were whether this mark was sufficiently distinctive, and if so, whether its use was likely to deceive or cause confusion in the marketplace due to Intellectual Reserve’s prior trade marks.

It is slightly ironic that Intellectual Reserve pursued the distinctiveness ground, given its own registrations for FAMILYSEARCH.  In considering this issue, the Court of Appeal stated that a mark consisting simply of the words “family search” (whether separated or run together) would be non-distinctive in either plain block letters or cursive form, and expressed surprise (obiter) that Intellectual Reserve had been granted registrations for the plain words FAMILYSEARCH.

Nonetheless, the opposed mark as a whole was held to be distinctive, as the koru/arrow device combined with the words FAMILYSEARCH created a “total sign capable of being memorable to a consumer”.  However to avoid any misunderstanding within the marketplace, the court directed that as a condition of registration a disclaimer be entered that “registration of this trade mark shall give no right to the exclusive use of the words ‘family search’”.  Interestingly, this disclaimer does not appear in relation to the registration’s entry on the Intellectual Property Office of New Zealand’s online database.

Regarding the likelihood of confusion or deception between the marks, the Court considered whether there was any potential that the marks would be used in respect of overlapping services.  Although the services offered by Mr Sintes and Intellectual Reserve both concerned research of births, deaths and marriage records, it was held that the overlap between the two parties’ fields was “simply insubstantial”.  Genealogy-type services were concerned with research of the past, whereas Mr Sintes’ services were for helping others to locate family members in the present and the future.

The fact that Intellectual Reserve’s registrations covered different classes to the class listed for Sintes’ application (class 45) was also considered to be material to the finding that the services were different.  This is unfortunate for Intellectual Reserve, as genealogy services are classified in the current edition of the Nice classification in class 45, a class which did not exist at the time Intellectual Reserve’s trade marks were registered.

The fact that the words “family search” are in common parlance was another reason for finding that confusion or deception was unlikely.  The Court noted that the public is alert to small variations in largely descriptive marks because they expect others to use similar marks.  Therefore, the common features of the marks were neutralised.

It was found that Mr Sintes’ application did not breach any of the provisions relied on by Intellectual Reserve, and that the mark could be registered.