The antipodean battle has concluded between the International Olympic Committee (IOC) and Tempting Brands over the trade mark "Pierre de Coubertin", in New Zealand. Pierre de Coubertin was founder of the modern Olympic Games.

As we reported in August, the Intellectual Property Office of New Zealand (IPONZ) dismissed the IOC's opposition to registration of Pierre de Coubertin, as the IOC failed to demonstrate a reputation in the mark in the New Zealand market, in stark contrast to the office decision in Australia.

The IOC appealed the IPONZ decision and on 30 September 2019 in Comite International Olympique v Tempting Brands Netherlands B.V. [2019] NZHC, the High Court of New Zealand (Churchman J) dismissed the appeal, affirming the IPONZ decision.

Lausanne is not in New Zealand!

The court concluded that there was very little, if any, evidence of use of the name as a trade mark. The clearest evidence of use of the mark related to merchandise sold at the IOC store in Lausanne. However, there was no evidence to show that New Zealanders purchased such merchandise from the store. Although presented with a medal bearing the name, the award to former All Black Tana Umaga of the Pierre de Coubertin Medal was found not to constitute use of the name as a trade mark.

Famous people, including dead ones, do not have a monopoly on the use of their name

The court dismissed as 'pure speculation' the IOC's argument that knowledge of the mark includes considering whether New Zealanders would be aware of Pierre de Coubertin and his historical significance to the IOC in the future:

'Famous people, including dead ones, do not have a monopoly on the use of their name as a trade mark. It also cannot automatically be assumed that the public would regard a product bearing the name of a famous person as having an endorsement from that person or their estate,' stated Churchman J.

The court may more readily infer that the public might suppose such an endorsement if there is a strong connection between the product and the famous person. In this case, aside from t-shirts, there was no obvious overlap between the goods sold at the Olympic Museum shop in Lausanne and Tempting Brands' claimed goods.

Speculation is not evidence

The IOC further submitted that those awarded the Pierre de Coubertin medal would be harmed by the sale of Pierre de Coubertin branded jewellery and other goods that are not produced and sold by the IOC or National Olympic Committees. However, the court found that submission 'fanciful' and pointed to evidence of sports journalists in 2008 who wrongly claimed that the International Fair Play Committee, rather than the IOC, awarded the Pierre de Coubertin trophy to former All Black coach, Graham Henry.

Accordingly, the court held that the lack of understanding by New Zealanders who specialise in sport indicates that few ordinary New Zealanders would conclude that jewellery sold under the mark somehow devalued the medal.

The court also found no evidence to support the IOC's claim that Tempting Brands attempted to 'speculatively freeload' off the reputation of Pierre de Coubertin and his 'prestigious connection to the Olympic Games'.

Once again, the court affirms that 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.

Battle continues in Australia

While the New Zealand battle ends here, the battle continues in Australia as Tempting Brands filed an appeal in the Federal Court of Australia and the matter is scheduled to be heard in 2020.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.