Telecom trademark gets go-ahead after court case

“Lone Ranger” trade mark owner fails to outlaw Telecom's “phone ranger”

Telecom has prevailed in a trade mark dispute with Classic Media, owner of the Lone Ranger trade mark in New Zealand.

The case centred around Telecom’s registration of the trade marks “phone ranger” and “phone rangers” in 2008, for use in the process of marketing products and services to its corporate clients.

Classic Media, which owns the rights to the Lone Ranger character in New Zealand from the 1950s television series Lone Ranger, filed a notice of opposition to Telecom’s trade mark application, citing several sections of the Trade Marks Act.

In a judgment on May 10, following a hearing in April, assistant commissioner of trade marks J Walden considered the various provisions of the Act under which Classic Media opposed Telecom’s registration of the trade mark, before ruling in Telecom’s favour and granting the trade mark.

The first was section 17(1)(a) of the Act, which says: “[the] Commissioner must not register as a trade mark or part of a trade mark any matter … the use of which would be likely to deceive or cause confusion”.

Walden ruled that “[Classic Media] does not succeed on this ground of opposition because, in my view, the opposed mark and the opponent’s mark, which is well known, are visually, aurally and conceptually different, and [Classic Media]’s goods and [Telecom’s] goods and services are different”.

The second part of the Act on which Classic Media applied to have the Telecom trade mark disallowed was section 17(1)(b), which says: “the Commissioner must not register as a trade mark or part of a trade mark any matter … the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court.”

Again, Walden dismissed this, on the grounds that the phone ranger and lone ranger trade marks are visually, aurally and conceptually different.

The third section of the Act on which Classic Media relied is section 18(1)(b), which states that the Commissioner must not register a trade mark that “has no distinctive character”.

Walden ruled that, “I consider that the opposed mark, when considered as a whole, has qualities that mark it as of distinctive character”.

The next section of the Act that Classic Media cited was section 25(1)(b), which states that the Commissioner “must not register a trade mark in respect of any goods or services if … it is similar to a trade mark that belongs to a different owner and that is registered, or has priority under section 34 or 36, in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse.”

Again, Walden found that because the phone ranger and lone ranger trademarks are visually, aurally and conceptually different, Classic Media couldn’t rely on that clause.

The final section of the Act pointed to by Classic Media was section 25(1)(c), which contains provisions instructing the Commissioner not to register a trade mark that is identical or similar to a translation of a trade mark that is well-known in New Zealand.

Once more, the fact that the two trade marks are visually, aurally and conceptually different meant the ruling went in Telecom’s favour, with Walden adding “In addition, I also consider that the goods and services of [Telecom] are different to the goods of [Classic Media], which is the Lone Ranger 1950s television series.

“I have found that [Classic Media] does not succeed on this ground of opposition.

“Accordingly, I direct that trade mark application no. 786642 for phone ranger; phone rangers (series mark) may be registered.”

Costs of $3290 were awarded against Classic Media.