In Tempting Brands Netherlands B.V. v Comite International Olympique  NZIPOTM 3 (28 February 2019), the Intellectual Property Office of New Zealand (IPONZ) dismissed the International Olympic Committee's (IOC) opposition to registration of the trade mark Pierre de Coubertin, in stark contrast to the equivalent Australian opposition – demonstrating once more the importance of evidence in New Zealand.
Tempting Brands, a Dutch company, sought to register the mark Pierre de Coubertin for menswear in various countries, including New Zealand and Australia. The IOC opposed its registration in New Zealand and Australia.
In New Zealand, the IOC failed to establish through evidence that there was sufficient awareness of Pierre de Coubertin as a trade mark in New Zealand, because IPONZ found significant deficiencies in the IOC's evidence. In particular, the evidence of Pierre de Coubertin as a historical figure associated with the Olympic Games did not constitute use of the name as a trade mark. Furthermore, in relation to the IOC's evidence of its use of "Pierre de Coubertin" online, the majority of that evidence did not refer to the IOC and there was no evidence of the number of New Zealand visitors to those pages. There was also no evidence as to whether New Zealanders visited or purchased from the Olympic Museum Store in Lausanne.
Moreover, IPONZ regarded IOC's comments that New Zealanders would by virtue of their interest in sport and the Olympic Games be aware of the significance of Pierre de Coubertin in Olympic history as "merely expressions" of opinion – a stark contrast to the treatment afforded the IOC in Australia.
Interestingly, the IOC did not file written submissions or appear at the hearing.
On 25 March 2019, the Australian Trade Marks Office (ATMO) handed down the opposite outcome in Comite International Olympique v Tempting Brands Netherlands BV  ATMO 41.
In Australia, the IOC successfully established that there is some connotation with the name Pierre de Coubertin and the Olympic movement and therefore the use of the mark Pierre de Coubertin by Tempting Brands for the merchandise would be likely to deceive or cause confusion.
The IOC filed evidence about the annual Pierre de Coubertin Award created by the Australian Olympic Committee in 1992 and a total of 15,862 recipients of the Awards throughout Australia. Some articles also explicitly stated that the "awards are named after the founder of the modern Olympic Games". Interestingly, the ATMO was not concerned that the evidence did not refer to the IOC, and was prepared to infer much more from the evidence than its counterpart (IPONZ) in New Zealand.
The ATMO also accepted statements that the Australians are aware of Pierre de Coubertin because he is honoured publicly in numerous ways, including at the two Olympic Games in Australia – despite the fact that this awareness was not supported by direct evidence.
The ATMO concluded that "there is a no doubt in my mind that there is a real tangible danger of deception or confusion arising out of the use of [Tempting Brand's mark] in connection with [its] Goods."
This time the IOC filed written submissions prior to the hearing and appeared at the hearing.
Is New Zealand really that different to Australia?
These decisions demonstrate once more that greater scrutiny is placed upon evidence in New Zealand than seems to occur in Australia. An opponent who is attempting to assert reputation in a trade mark in New Zealand must provide direct evidence of that reputation in the New Zealand market, and cannot assume that IPONZ will infer the presence of such reputation from general evidence. This is consistent with the recent New Zealand High Court decision in Beirersdorf AG v Unilever Plc  NZHC 44 where the court held that it cannot rely on overseas circumstances unless there are evidence and a link to how this has affected the New Zealand market.
The battle continues as Tempting Brands has filed an appeal in Australia.
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