The Intellectual Property Office of New Zealand has issued the first New Zealand decision on wrong way round confusion (TomTom International BV v TomTom Communications Limited  NZIPOTM 2). If it stands, this decision is a cautionary tale for smaller businesses that may not be able to prevent another business with a large reputation entering the market with an identical mark, even where there is evidence of consumer confusion.
TomTom Communications is a small New Zealand company. It has used the Tom Tom mark in New Zealand since 1998 in relation to PR and communications services. It has registrations for Tom Tom.
In 2009 TomTom International, the maker of the well-known portable navigation device, applied to register TomTom in word and stylised form. It had been using the mark in New Zealand since 2007.
TomTom Communications opposed these applications, arguing that TomTom International should not be able to register the TomTom mark over TomTom Communications' existing registrations, and that use of the TomTom mark would cause confusion in the marketplace. TomTom Communications filed evidence of actual confusion, including calls from customers looking for TomTom International, misdirected mail, and difficulties with potential clients assuming the companies were connected (or assuming that TomTom Communications had used TomTom International's mark).
The Assistant Commissioner found that the marketplace confusion was not a result of TomTom Communications' reputation. Rather, the confusion was due to consumers knowing about TomTom International and looking for TomTom International, but finding TomTom Communications' contact details instead. She found that the likelihood of confusion needed to satisfy the grounds of opposition must arise from the reputation of the opponent, and not that of the applicant. She observed that while an opponent whose mark is famous or well-known has special protection under the Trade Marks Act, "a small trader is not entitled to special, additional protection on the basis that the other party's mark is famous or well-known and that the small trader's reputation is being swamped as a result".
The opposition also failed on the basis that TomTom Communications' services were not similar to the goods and services covered by TomTom International's applications.
It appears that the decision has been appealed to the High Court. Therefore, it will be some months before we have the Court's view on whether this wrong way round confusion can be relied on by a smaller, pre–existing user of a mark.
Johan de Wittlaan 7
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