AMI Loses Case to Register "MY" Trade Marks

A trade mark cannot be registered in New Zealand unless it is distinctive of a single trader’s goods or services. As such, it must be unusual enough that consumers would identify it with only one trader.

In a recent case in the High Court, AA Insurance Ltd (along with IAG New Zealand Limited, Vero Insurance New Zealand and Tower Insurance Limited) appealed against the decision of the Assistant Commissioner of Trade Marks to allow registration of a series of trade marks by AMI Insurance Limited, which incorporated the word “MY”. Some of these trade marks were as follows:  “MY INSURANCE”, “MY CAR INSURANCE”, “MY HOUSE INSURANCE”.

The Appellants argued that AMI’s trade marks did not identify the origin of AMI’s products and could not distinguish AMI’s insurance products from those of the Appellants. Indeed, the terms “MY INSURANCE”, “MY CAR INSURANCE” and “MY HOUSE INSURANCE” (amongst others) were terms that the Appellants already used in both their marketing and contractual material with their customers. Examples being:

• In FAQ in marketing material, where the trade marks were used as follows: “How soon will MY INSURANCE cover take effect”; and
• In contractual material, where the trade marks are used as follows: “Failure to provide the information sought may result in MY INSURANCE being void from the beginning”.

Should the Assistant Commissioner’s decision remain, the Appellants would be prevented from using the trade marks in relation to their own insurance products and would further be restricted from communicating with customers in simple English.

The High Court overruled the Assistant Commissioner’s decision and held that the “MY” series of trade marks were not distinctive and were unable to be registered and monopolised by AMI.

Should you have any queries about whether your trade mark is indeed distinctive (for the purposes of registration with the Intellectual Property Office of New Zealand), then please contact us.