A New Zealand charity has won the right to use Red Nose Day in New Zealand after a challenge by an Australian charity, but it has not won its case outright.
Earlier this year Cure Kids appealed against an Intellectual Property Office of New Zealand (IPONZ) decision which revoked the charity's rights to the trademark, on the grounds of non-use between 1997 and 2010, after it was challenged by the National Sids Council of Australia.
In May Assistant Commissioner Jane Glover ordered Cure Kids' five trademarks be revoked.
It appealed against that decision, taking its case to the High Court.
In a lengthy judgement, released to NZME. today, Justice Simon Moore upheld the appeal in part, ruling that Cure Kids could keep one of its five registered trademarks - 'The Red Nose Day'.
The charity had shown it had used the trademark during the relevant period in the three years to May 2010, and that the use qualified as "genuine use", he said. However, it was not used in line with how it was registered in 1989.
During the High Court hearings, lawyer for Cure Kids Julian Miles QC argued that Cure Kids had pulled its Red Nose Day appeal in 1997 following a public backlash in response to attacks by controversial forensic scientist Dr Jim Sprott. The charity said it was forced to put the fundraiser on hold until 2010, when public opinion was in favour of bringing it back, and claimed this qualified as 'special circumstances' for its lack of use of the Red Nose Day trademarks.
Justice Moore agreed, saying that the controversy did amount to a special circumstance.
However, he said that the charity could have brought the fundraiser back in 2007, and said that there were no special circumstances preventing its use between June 2009 and May 2010.
But he also ruled that the charity did not "abandon" the trademark when it decided not to hold an appeal in 1997, and had clearly intended to use it in the future. This was also seen in its continued renewal of the trademark registrations.
"This ... conveys a clear intention to keep the marks alive in the expectation that at an appropriate time in the future Red Nose Day would be re-launched," he said.
Justice Moore also agreed that the charity had a strong reputation in New Zealand with Red Nose Day, saying that the evidence showed there was "strong residual awareness around the mark and the brand generally, despite the hiatus of nearly 13 years".
"I am satisfied that ... it is appropriate for me to exercise my discretion in favour of Cure Kids, but only in relation to the mark that has subsequently been used. I thus order that the mark, 'The Red Nose Day' is not revoked," Justice Moore said in his decision.
A number of cross appeals by the Sids Council against some of the findings in the IPONZ decision were dismissed by Justice Moore, including its assertion that the public were deceived into believing that goods and services provided by Cure Kids in relation to the Red Nose Day trademarks would be identified with the Australian organisation.
By Patrice Dougan of NZME. News Service
