Fonterra comes out on top over "TIP TOP" trademark

A Dunedin Café has just lost its battle with Fonterra Brands (Tip Top Investments) Limited (“FB”) to register its trade mark “TIP TOP” in relation to its café and restaurant services.

On 27 June 2007, Tip Top Restaurant Limited (“TTRL”) applied to the Intellectual Property Office of New Zealand to register its “TIP TOP” trade mark, to which FB subsequently opposed.

In March 2011, the Assistant Commissioner of Trade Marks heard the matter and essentially decided that use of the trade name “TIP TOP” by TTRL would not be likely to deceive or confuse consumers (and could be registered) as:

• FB and TTRL’s goods and services were dissimilar – FB sells ice cream products, whereas TTRL was in the nature of selling restaurant and café services;

• Consumers are able to distinguish retail services from the actual product which is being sold – for example consumers do not think that a dairy that sells TIP TOP ice-creams is in any way connected with FB (other than pursuant to a distribution agreement);

• There is another entity trading (George Weston Foods) which sells bread under the “TIP TOP” brand and consumers are not confused between the goods of FB and the goods of George Weston.

FB successfully appealed the Assistant Commissioner of Trade Marks decision in the High Court.

Justice Young thought that both trade marks related to food and the provision of food to the public and that if TTRL’s trade mark was registered, the width of its trade mark specifications could mean that TTRL could (in the future) open an ice-cream parlour. Justice Young made the comment “that it is not simply the current use of the respective parties [of the trade marks], but the use to which the proposed and existing trade marks can be put”. Accordingly, Justice Young decided that FB’s goods were similar to TTRL’s services and that “the public inconvenience, if the mark is registered, will be significant. It will either confuse or deceive the public as to who is buying its ice cream and other goods from”.

Justice Young also questioned whether the application by TTRL “was an opportunistic application designed to trade on [FB’s] existing TIP TOP trade mark and thereby advantage itself”.

Perhaps if TTRL’s specifications were drafted in a much narrower manner (which excluded the possibility of TTRL opening an ice-cream parlour) the decision may have been different. It is vital that if you are thinking of registering a trade mark, you discuss the risks/benefits associated with a narrower as opposed to a wider trade mark specification with your trade mark lawyer. Each trade mark will be different depending on prior registered marks, what goods/services you wish to protect and the possibility of a third party registering a similar trade mark in the same class in the future.