IN THE INTELLECTUAL PROPERTY OFFICE OF NEW ZEALAND

[2017] NZIPOTM 22

IN THE MATTER of the Trade Marks Act 2002

AND

IN THE MATTER of trade mark application no. 1005681 SHOPME, application no. 1005682 DRIVEME, and application no. 1005684 PROPERTYME, in classes 35 and 41 in the name of NZME. PUBLISHING LIMITED

Applicant

AND

IN THE MATTER of an opposition by TRADE ME LIMITED

Opponent

Hearing on 11 April 2017

S Wheeldon for the applicant

G Arthur and D Winfield for the opponent

Page 2 of 77

Introduction

1. Trade Me Limited has brought three separate opposition proceedings against the following trade mark applications, which were originally filed by Ridge Road Investments Limited and later assigned to NZME. Publishing Limited:

Trade mark Opposed marks Filed date Classes application no.

1005681 SHOPME 23 September 2014 35 and 41

1005682 DRIVEME 23 September 2014 35 and 41

1005684 PROPERTYME 23 September 2014 35 and 41

2. Full details of the above applications are set out at Schedule 1.

3. Trade Me relies on its TRADE ME / TRADEME marks, and various other registered trade marks incorporating the term “ME”, including in classes 35 and 41. Details of these registrations are provided in Schedule 2.

Grounds of opposition

4. Trade Me opposes registration of NZME’s marks under ss 13(1)/32(1), 17(1)(a), 17(1)(b), 25(1)(b), and 25(1)(c) of the Trade Marks Act 2002 (Act). NZME denies all five grounds of opposition.1

Evidence

5. Trade Me’s evidence in chief is comprised of statutory declarations from the following:2

5.1 James McGee – Trade Me’s “General Manager – Commercial” (McGee).

5.2 Stuart McLean – Trade Me’s Head of Marketplace since 9 February 20153 (McLean).

1 Counter-statements dated 30 April 2015, paragraphs 1, 2, 3, 4, 5, and 6. 2 Trade Me filed different evidence for each of its three opposition proceedings. However, the parties agreed at a case management conference held on 21 March 2017 that the evidence filed in each proceeding should be treated as evidence for all three proceedings. TM No.s 1005684, 1005682 & 1005681 Page 3 of 77

5.3 Nigel Jeffries – responsible for Trade Me’s property offerings4 (Jeffries).

5.4 Jeffrey Dacombe – Sales Manager with Armstrong Prestige (Wellington) Limited (a motor vehicle dealership)5 (Dacombe).

5.5 John Goss – Chief Executive Officer of Motomart Limited (a motorcycle dealership in Wellington)6 (Goss).

5.6 Daniel Shaw – an independent expert witness who is an employee of Perceptive Insight Limited (a market research and brand strategy company).7 Mr Shaw has provided a separate declaration for each opposition proceeding, relating to the SHOPME trade mark (Shaw 1), PROPERTYME mark (Shaw 2) and DRIVEME mark (Shaw 3) respectively.

5.7 Jesse Melrose – manager at Astral Music (a CD, DVD, and vinyl records retailer)8 (Melrose).

5.8 Richard Markham-Barrett – director and shareholder of I-Tools (an internet based direct import company)9 (Markham-Barrett).

5.9 Grieg Metcalfe – director of George Boyes & Company Limited (t/a L J Hooker George Boyes)10 (Metcalfe).

5.10 Antonia Baker – director and shareholder of The NZ Property Market Limited (a licensed real estate agency operating in Auckland)11 (Baker).

6. NZME’s evidence in chief is comprised of statutory declarations from:

6.1 Bradley James Glading – Head of Research and Insights at NZME (Glading); and

3 McLean, paragraphs 1 – 2. Mr McLean was Chief Revenue Officer with Xero prior to joining Trade Me. 4 Jeffries, paragraph 1. 5 Dacombe, paragraphs 1 – 2. 6 Goss, paragraphs 1 – 2. 7 Shaw, paragraphs 1 and 4. 8 Melrose, paragraphs 1 – 2. 9 Markham-Barrett, paragraphs 1 and 3. 10 Metcalfe, paragraph 1. 11 Baker, paragraphs 1 -2. TM No.s 1005684, 1005682 & 1005681 Page 4 of 77

6.2 Allison Sarah Whitney – Legal Counsel at NZME (Whitney 1). Ms Whitney also provided a supplementary declaration (Whitney 2).12

7. The opponent filed evidence in reply from:

7.1 Daniel Shaw (Shaw Reply); and

7.2 Marissa Flowerday – Head of Legal and Regulatory at Trade Me13 (Flowerday).

Background

Trade Me Limited

8. In 1999, Sam Morgan established Trade Me Limited.14 Mr Morgan designed and launched the New Zealand e-commerce website www.trademe.co.nz under the brand TRADE ME.15 By June 2011, this website was one of the top five viewed websites in New Zealand.16

9. Mr McGee, Trade Me’s Commercial General Manager, says that Trade Me’s website was, from its inception, an auction platform on which members could list items for sale.17 He states that all such listings were, and remain, viewable by the general public, with the New Zealand public and New Zealand businesses being able to list and purchase items for sale if they are a registered member.18 By June 2014, the number of registered TRADE ME members had grown to over 3.5 million.19

10. Display advertising has been offered on Trade Me’s website since its launch, and it appears on every page of the website.20 Mr McGee describes such advertising as “general advertising which sits on the website alongside or in line with classified and auction listings”.21

12 Ms Whitney’s supplementary declaration was filed in order to rectify the omission of an exhibit from her first statutory declaration. 13 Flowerday, paragraph 1. 14 McGee, paragraph 5. 15 Ibid. 16 McGee, paragraph 12. 17 McGee, paragraphs 1 and 6. 18 McGee, paragraph 6. 19 McGee, paragraph 8. 20 McGee, paragraph 7. 21 Ibid. TM No.s 1005684, 1005682 & 1005681 Page 5 of 77

11. In New Zealand and Australia, anybody can access Trade Me’s services via its website, and the website can be accessed from any internet capable device, such as a desktop computer, mobile phone, or tablet.22 Mr McGee observes that internet users link through to Trade Me’s website in different ways, including by directly typing the trademe.co.nz website into a web browser, using an application on their mobile device, via a saved ‘favourite’ in their web browser, or via search engines such as Google.23

12. In 2003, a vehicle auction and classifieds section was added to Trade Me’s website under the name TRADE ME MOTORS.24 The TRADE ME MOTORS offering is accessible via a link on the front page of Trade Me’s website, which also features at the top of each page of the website. Mr McGee’s evidence is that TRADE ME MOTORS has been the leading online advertising platform for vehicle sales in New Zealand for over ten years.25 He also states that, as of mid 2015,26 TRADE ME MOTORS was the leading, or one of the leading, vehicle sales advertising platforms across all forms of media.27

13. In 2007, a property auction and classifieds section was added to Trade Me’s website under the name TRADE ME PROPERTY.28 The TRADE ME PROPERTY offering is also accessible via a link on the front page of Trade Me’s website, which is also featured at the top of each page of that website.29 Mr Jeffries, who is responsible for Trade Me’s property offerings,30 states that for many years TRADE ME PROPERTY has been a leading online advertising platform for property sales and rentals in New Zealand.31

22 Trade Me has applications for a variety of mobile phone operating systems (including Windows Phone, iOS and Android) that enable access from devices running those operating systems: McGee, paragraph 15. 23 McGee, paragraph 17. 24 McGee, paragraph 18. 25 McGee, paragraph 22. 26 Mr McGee’s statutory declaration was declared on 3 July 2015. 27 McGee, paragraph 22. 28 Jeffries, paragraph 18. 29 Jeffries, paragraph 19. 30 Jeffries, paragraph 1. 31 Jeffries, paragraph 22. TM No.s 1005684, 1005682 & 1005681 Page 6 of 77

NZME. Publishing Limited

14. NZME is a major New Zealand media organisation.32 Its activities include:33

14.1 Publishing newspapers, including The New Zealand Herald and a number of regional newspapers.

14.2 Operating the New Zealand Herald website (www.nzherald.co.nz), which NZME’s Legal Counsel, Ms Whitney, describes as “one of New Zealand’s most popular websites”.

14.3 Operating a number of radio stations, including Newstalk ZB.

14.4 E-commerce businesses, including GrabOne.

14.5 Organising events, including lifestyle and fashion events associated with The New Zealand Herald’s “Viva” weekly supplement.

15. Ms Whitney’s evidence is that approximately 2.9 million people in New Zealand engage with one or more of NZME’s brands every week.34 It is unclear whether Ms Whitney’s reference to “NZME’s brands” includes brands such as The New Zealand Herald and GrabOne, which do not include the word “NZME” or the suffix “ME”.

16. Prior to 24 September 2014, NZME’s business was called APN.35 Ms Whitney states that NZME. Publishing Limited is a wholly owned subsidiary of APN Holdings NZ Limited (APN).36 She says that the new “NZME” brand was launched on 24 September 2014 to unify the company’s various brands under the name New Zealand Media and Entertainment.37

17. A number of activities were arranged to coincide with the re-brand to NZME, including:38

32 Whitney 1, paragraph 5. 33 Ibid. 34 Whitney 1, paragraph 6. 35 Whitney 1, paragraph 7. 36 Whitney 1, paragraph 13. 37 Whitney 1, paragraph 7. 38 Whitney 1, paragraph 9. TM No.s 1005684, 1005682 & 1005681 Page 7 of 77

17.1 Decorating the exterior of NZME’s head office in Auckland city to include “NZME. NEW ZEALAND MEDIA AND ENTERTAINMENT” and various - ME brands, such as “CHEER ME.”, “INFORM ME.” And “WOW ME.”39

17.2 All NZME staff (approximately 2,000 people throughout New Zealand) using a “–ME” brand or term in their email signoffs. For example, ASK ME. and ROCK ME..

17.3 The launch of NZME’s website at www.NZME.co.nz.

18. Ms Whitney’s evidence is that the above activities have continued since 24 September 2014.40 However, as at 10 December 2015, NZME had not yet actively used any of the opposed marks (SHOPME, DRIVEME, PROPERTYME).41

Preliminary issue – evidence filed in reply by Trade Me

19. The applicant objects to the admission of the “reply” declarations of Mr Shaw and Ms Flowerday, on the basis that they are not, as a matter of fact, reply evidence. The applicant also objects to the admission of the Flowerday declaration on the basis that it has no relevance. Counsel for NZME, Ms Wheeldon, raised these objections shortly after the “reply evidence” was filed.42

20. Regulation 85 of the Trade Marks Regulations 2003 (Regulations) provides:

An opponent to an application for registration may, if the applicant has filed evidence, file evidence strictly in reply within 1 month after the opponent has received a copy of the applicant’s evidence.

21. In The Scotch Whiskey Association v The Mill Liquor Save Limited [2012] NZHC 3205, Kós J stated that the real test under Regulation 85 is whether:43

39 Whitney 1, Exhibit AW2. 40 That was at least the position through to the date of Ms Whitney’s statutory declaration (10 December 2015), which is well after the relevant date: Whitney 1, paragraph 10. 41 Whitney 1, paragraph 11. 42 Refer to letter from NZME’s counsel to IPONZ, copied to Trade Me’s legal representatives, dated 26 April 2016. In IPONZ’s response of the same date, IPONZ noted the applicant’s position and its request that IPONZ refuse to admit the evidence in question, but stated that IPONZ is of the view that this is a matter for consideration at the substantive hearing. 43 At [45]. The same test was applied by Ellis J in Merial v Virbac S A [2012] NZHC 3392. TM No.s 1005684, 1005682 & 1005681 Page 8 of 77

(a) The “reply evidence” could have been filed in support of the notice of opposition, pursuant to reg 82; and

(b) the dominant purpose for its being adduced in reply is to support the original notice of opposition, as opposed to responding directly to something said in evidence from the applicant.

Mr Shaw’s “reply evidence”

22. Trade Me’s evidence in chief includes three statutory declarations provided by an expert witness, Mr Shaw. As stated, Mr Shaw is an employee of Perceptive Insight Limited, a market research and brand strategy company. Each of Mr Shaw’s initial declarations introduces an independent survey conducted in June 2015 to assess whether the public would think two businesses operating as TRADE ME on the one hand, and PROPERTYME / DRIVEME / SHOPME on the

other, were associated.

23. In response, the applicant filed the statutory declaration of Mr Glading, Head of Research and Insights at NZME. Mr Glading criticises the survey conducted by

Perceptive, and goes on to say:44

A more neutral and fair way of measuring any potential association between ‘Shop Me’ and ‘Trade Me’ would have been to ask respondents:

‘If there was a service called ‘Shop Me’, would you associate it with any other business?’

It would have been necessary to ask this question without first asking the earlier questions of the survey, particularly without previously mentioning Trade Me at all.

24. Mr Shaw’s “reply evidence” introduces a new survey conducted by Perceptive in February 2016.45 Mr Shaw states that:46

Following Mr. Glading’s suggested format of questioning, we constructed the following question format for the New Survey:

12.1 (ASKED OF EVERYONE)

44 Glading, paragraph 34. 45 Shaw Reply, paragraph 10. 46 Shaw Reply, paragraph 12. TM No.s 1005684, 1005682 & 1005681 Page 9 of 77

Question 1*: If there was a service called SHOPME / DRIVEME / PROPERTYME, would you associate it with any other business?

Answer option: Yes/No/Unsure

12.2 (ASKED OF THOSE WHO ANSWERED ‘YES’ or ‘UNSURE’ to Question 1)

Question 2: What business or brand would you think it might be associated with?

Answer option: Open text response (An empty comments box was provided for survey respondents to free type their response)

*This question was asked separately for SHOPME, DRIVEME and PROPERTYME but in each case followed the format outlined above.

25. Mr Shaw’s “reply evidence” then annexes the results of the new survey and provides his interpretation and analysis of the new survey results.47

26. NZME submits that the first survey was deeply flawed, and that by conducting a second survey, Trade Me is simply attempting to have another bite at the cherry.48 NZME asserts that, if Trade Me was justified in arguing that its new survey is a reply to NZME’s criticisms of the first survey, then every time a survey was criticised in evidence the party introducing that evidence could have another go at the survey and call it “reply” evidence.

27. NZME refers to the decision of Merial v Virbac S A,49 in which Ellis J applied the test in The Scotch Whiskey case. The reply evidence in that case included the results of a market survey that had been undertaken by the opponent after the filing of the applicant’s evidence. The object of the survey was to ascertain the likelihood of consumer confusion caused by the opposed mark.50 At first instance the Assistant Commissioner upheld the objection to the survey evidence, observing amongst other things, that it did not respond to a specific factual matter put in evidence by the respondent.51 Ellis J agreed that the survey evidence should be excluded and stated:52

47 Shaw Reply, paragraphs 14 – 19.3 and exhibits A and B. 48 Written submissions, paragraph 19. 49 [2012] NZHC 3392. 50 Merial, supra at [12]. 51 Merial, supra at [14]. 52 Merial, supra at [25] – [26]. TM No.s 1005684, 1005682 & 1005681 Page 10 of 77

While I accept that the survey evidence did not exist at the time the notice of opposition was filed that was only because Merial did not see fit to commission it at that stage. Merial’s principal reason for adducing it at the reply stage was to support the original notice of opposition, not to respond directly to Virbac’s evidence.

I agree with Mr Marriott that permitting such a course creates the opportunity for the opponents in trade mark matters to “game” the system, by keeping their forensic powder dry until after an applicant has fired its best (and only) evidential shot. It would, in my view, be fundamentally unfair to allow an opponent to have such a new and substantive “last word”, without the applicant having the opportunity to answer it.

28. Ellis J acknowledged, however, that an applicant may seek to file further evidence under reg 34 of the Regulations, should the requirements of that regulation be met.53

29. I consider Merial v Virbac is distinguishable from the present case. In Merial no survey evidence was included in the opponent’s evidence in chief, and therefore the applicant’s evidence did not suggest an alternative question for survey respondents, unlike Mr Glading’s evidence in the present case. The first and only survey evidence was introduced at the reply stage in Merial, and the survey at issue was wide ranging and did not respond to a specific factual matter put in evidence. Another distinguishing feature is that the survey in the Merial case went so far as to include trade mark recognition evidence even though the applicant’s evidence did not address the awareness issue.54

30. In terms of the first part of The Scotch Whiskey test, I accept there is no reason why the questions in the second survey could not have been asked in the first survey. However, I also accept Trade Me’s submission that it could not have anticipated that the applicant would lead evidence proposing a particular survey question, thereby laying an evidential foundation for a submission as to the inference to be drawn from not asking such a question.55 In respect of the second inquiry under The Scotch Whiskey test, I consider the dominant purpose of Mr Shaw’s reply evidence was to respond, directly, to Mr Glading’s explicit

53 Merial, supra at footnote 10. 54 Merial, supra at [14](c). 55 Trade Me’s written submissions, paragraph 106. Counsel for Trade Me describes that inference as being that a “neutral and fair survey” would have been unfavourable to the opponent: written submissions, paragraph 103 and this is consistent with the assertions in Mr Glading’s evidence at paragraphs 40, 42, and 46. TM No.s 1005684, 1005682 & 1005681 Page 11 of 77

statement about a more fair and neutral way of measuring an association between the respective marks.56

31. Mr Shaw’s reply evidence essentially consists of Trade Me introducing a new survey that asks the very question proposed by Mr Glading. While one further question was asked in the new survey, that question is a necessary, and natural, follow on question from the first.57 I agree with Trade Me’s submission that the new survey was tightly drawn to address the question raised by Mr Glading.

32. If Mr Glading’s evidence had simply criticised Trade Me’s initial survey evidence without proposing what he considered to be a more neutral and fair question, then I would have upheld NZME’s objection to the new survey evidence. However, NZME’s evidence went one step further when Mr Glading referred to a more “neutral and fair” question, and this opened the door for Trade Me to file Mr Shaw’s reply evidence.

33. Counsel for NZME submits that admitting the new survey evidence would be prejudicial to NZME because it has not had an opportunity to obtain expert criticism of that survey.58 While I acknowledge that NZME does not have a right of reply to Mr Shaw’s reply evidence, it should have been aware of this when Mr Glading’s evidence brought the issue of an alternative survey approach into question, and presumably it was a risk it considered worth taking. Further, NZME has still taken the opportunity to provide submissions criticising the new survey, and it could have applied to file further evidence under regulation 34.59

34. In view of the above, I find that Mr Shaw’s reply evidence is admissible, as it constitutes “evidence strictly in reply”. I also observe that, even if I had found Mr Shaw’s reply evidence inadmissible, I consider that would not have been

determinative of the outcome in these proceedings.60

56 Refer paragraph 24 above and Glading, paragraph 34. 57 See paragraph 24 above, and Shaw Reply, paragraph 12. 58 Written submissions, paragraph 20(d). 59 An applicant has no right to file further evidence, but the Commissioner may allow such evidence to be filed “only if- (a) the Commissioner considers that there are genuine and exceptional circumstances that justify filing the evidence; or (b) the evidence could not have been filed earlier”: reg 34(3) of the Regulations. 60 Although my finding under the s 17(1)(a) ground of opposition would have been reached by a narrower margin. TM No.s 1005684, 1005682 & 1005681 Page 12 of 77

Ms Flowerday’s statutory declaration

35. Marissa Flowerday’s declaration annexes two articles published online on the National Business Review’s pay walled website in January 2016.61 The articles relate to Trade Me’s opposition proceedings, and include an online poll asking viewers “Who has the stronger claim on trademarks including the word ‘me’?”, with the answer options “NZME/Trade Me”.62

36. NZME submits that Ms Flowerday’s evidence is neither relevant to, nor probative of, any issue in the oppositions.63 Further, NZME asserts that Ms Flowerday’s evidence does not purport to be a reply to NZME’s evidence, despite being filed as evidence in reply.64 At the hearing counsel for Trade Me, Mr Arthur, stated that the opponent no longer relied on Ms Flowerday’s declaration and proposed that I ignore that evidence. In response, counsel for NZME submitted that the Flowerday declaration should be ruled inadmissible rather than being ignored.

37. The articles annexed to Ms Flowerday’s statutory declaration simply contain commentary on these proceedings, and these articles post date the relevant date. No context is provided for the online poll, such as the number of respondents, and the articles accompanying the poll are clearly of a leading nature. The online poll would not withstand the scrutiny usually applied when considering the admissibility of survey evidence. I accept NZME’s submission that Ms Flowerday’s evidence is neither relevant to, nor probative of, the issues in these opposition proceedings. I also consider that Ms Flowerday’s declaration is not “evidence strictly in reply” and therefore falls foul of regulation 85. The dominant, if not the only, purpose of Ms Flowerday’s declaration is to support the original notice of opposition. Her declaration does not respond to any statement in NZME’s evidence.

38. I, therefore, find that Ms Flowerday’s statutory declaration is inadmissible.

61 Flowerday, paragraphs 4 and 7, and exhibits A and B. 62 Flowerday, paragraphs 4 – 7 and exhibit A. 63 Written submissions, paragraph 22. 64 Ibid. TM No.s 1005684, 1005682 & 1005681 Page 13 of 77

Relevant date and onus

39. The relevant date for determining whether the opposed marks should be registered is the date on which the trade mark applications were filed, namely 23 September 2014. The onus is on the applicant to establish that none of the

grounds prohibiting registration apply.65

Section 17(1)(a) ground

40. Section 17(1)(a) of the Act provides that 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”. The purpose of this section is not to protect competitors, but rather to protect the public interest by refusing to accord monopoly rights to a mark, the use of which is likely to deceive or confuse those in the market for the relevant goods.66

41. In Sexwax Incorporated v Zoggs International Limited [2014] NZCA 311 the Court of Appeal shed light on how s 17(1)(a) of the Act should be approached (emphasis added):67

When applying this section, the Commissioner begins by inquiring whether the opponent’s mark has a reputation in New Zealand at the relevant date. Such reputation need not be widespread; it all depends on the nature of the marks and the goods to which it is applied. Where marks are used in respect of goods with only a very narrow or specialised use or purpose, the mark may be known only to a small number of people. … In other cases, a mark may be applied to goods sold very broadly or applied to numerous different goods under a brand’s penumbra. This is the initial inquiry into the “circumstances of trade”, against the background of which the marks are regarded as notionally in use.

42. The Court of Appeal further held that when applying s 17(1)(a):68

65 New Zealand Breweries Ltd v Heineken Bier Browerij Maatschapij NV [1964] NZLR 115 (SC). The New Zealand Breweries case related to section 17 of the former Trade Marks Act 1953, which was the predecessor to section 25 of the current Act. I consider the observations regarding the onus under section 17 of the 1953 Act in that case are equally applicable to section 25(1)(b) of the current Act. That is also the approach adopted impliedly in Intellectual Reserve Inc. v Robert Sintes HC Auckland CIV 2007-404-2610, 13 December 2007, Winkelmann J at [16](i). 66 Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 63; NV Sumatra Tobacco Trading Co v British American Tobacco (Brands) Incorporated [2010] NZCA 24, (2010) 86 IPR 206 (CA). 67 At [48] et seq (footnotes excluded). 68 Sexwax Incorporated, supra at [65]. TM No.s 1005684, 1005682 & 1005681 Page 14 of 77

The correct focus is on the awareness of the opponent’s mark in relation to prospective purchasers of the goods to which its mark attaches and individuals and entities involved in that trade; not the entirety of the purchasing public in New Zealand. The question of likelihood of deception or confusion must then be assessed against that reputation, considering the fair, notional use of the goods bearing each of the marks.

43. The applicant has the overall onus of establishing on the balance of probabilities that the opposed mark does not offend against s 17(1)(a) of the Act. First, however, the opponent has the onus of establishing awareness of its mark as at the relevant date of 23 September 2014.69

Awareness of opponent’s mark

44. The opponent needs to establish that the awareness of its mark at the relevant date was sufficient to lead to the possibility that the opposed services would be identified with the opponent.70 The threshold is a relatively low one, requiring only awareness, cognisance or knowledge of the opponent’s mark.71

45. For the purposes of the s 17(1)(a) ground of opposition, Trade Me relies on its reputation in the mark TRADE ME.72 Trade Me claims that it has a significant reputation in the TRADE ME mark in New Zealand in relation to “facilitating and assisting in the sale and trade of goods and services for others, amongst other [unspecified] services”.73

46. NZME admits that Trade Me has a significant reputation in the TRADE ME mark in New Zealand in relation to Trade Me’s “online auction business”.74 Likewise, Ms Whitney acknowledges that Trade Me’s online auction website at trademe.co.nz is very popular.75 NZME also admits that some aspects of Trade Me’s business relate to “facilitating and assisting in the sale and trade of goods and services for others”. However, it denies that Trade Me’s reputation is in relation to all services encompassed by that description.76

69 Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd, supra at 63. 70 Pioneer Hi-Bred, supra at 62. 71 NV Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated, supra at [77]. 72 That is the case for all three opposition proceedings: notices of opposition, paragraphs 2.1. 73 Notices of opposition, paragraphs 2.1 and 2.2. 74 Counter-statements, paragraph 2.1. 75 Whitney 1, paragraph 27. 76 Counter-statements, paragraph 2.2. TM No.s 1005684, 1005682 & 1005681 Page 15 of 77

47. In light of NZME’s admissions, I do not intend to repeat Trade Me’s extensive evidence of awareness of the TRADE ME mark in New Zealand. It suffices to say that I consider NZME’s admission appropriate, in general terms, given the extensive revenue, membership, listing and viewer figures for the TRADE ME mark,77 along with the advertising evidence filed on behalf of Trade Me.78 I also note that the results of Trade Me’s initial survey indicates that the TRADE ME brand has a very strong reputation in New Zealand given 99% of the 2,973 respondents had heard of ‘Trade Me’.79 When asked what services ‘Trade Me’ offers, respondents’ answers included “Buying”, “Selling”, “Goods”, “Services”, “Property”, “Jobs”, and “Cars”, amongst others.80 Trade Me observes that despite Mr Glading’s extensive critique of the survey evidence, he makes no criticism of the questions about the reputation of TRADE ME or the open ended questions about Trade Me’s services.81

48. It is not necessary to establish that there was an awareness of the TRADE ME mark in respect of the opposed services themselves.82 The question to ask is whether, having regard to the reputation attaching to Trade Me’s mark, and in light of the potential products bearing NZME’s marks being advertised and sold in the classes for which it applied, there is a sufficient number of individuals aware of Trade Me’s mark, and exposed to NZME’s marks, to engage s 17(1)(a).83 The services to which the TRADE ME mark has been applied are also part of the

77 For example, revenue for the year ended 30 June 2012 was $142,458,000, with approximately $62 million from general items and around $53 million from classifieds: Jeffries, paragraph 14 and exhibit NJ1. By 30 June 2014, total revenue had grown to $180,104,000, with approximately $64 million from general items and $85 million from classifieds: Jeffries, paragraph 14 and exhibit NJ1. By June 2014 the number of registered TRADE ME members had grown to over 3.5 million: Jeffries, paragraph 8. In 2013 over 1.5 million members logged into their TRADE ME account via the trademe.co.nz website at least once a year: Jeffries, paragraph 9. In 2013 there were over 135 million listings on Trade Me’s website: Jeffries, paragraph 10. A member does not need to log into their TRADE ME account to view listings on Trade Me’s website, and members of the public can also view listings without being a member: Jeffries, paragraph 11. By 30 June 2014 there were on average over 1.9 million visits to Trade Me’s website every month: Jeffries, paragraph 12. 78 In addition to Trade Me’s website, Trade Me engages directly with its registered members on a regular basis, including by way of over 80 million emails sent to its registered members each month: Jeffries, paragraph 37 and McGee, paragraph 35. All of these emails contain the TRADE ME brand: Jeffries, paragraph and McGee, paragraph 35. Trade Me also advertises its TRADE ME services to the public through mainstream advertising, including on free to air television channels during peak viewing times, and was doing so prior to September 2014: McGee, paragraph 36 and Jeffries, paragraph 38. 79 Shaw 3, paragraphs 10 and 13, and exhibit B. 80 Shaw 3, exhibit B. 81 Written submissions, paragraph 98. NZME has raised a number of issues with the surveys conducted on behalf of Trade Me and these are addressed separately below. 82 The Council of Ivy Group Presidents (t/as The Ivy League) v Pacific Dunlop (Asia) Ltd (2000) 66 IPR 202 at [39] and [50]. 83 Adopting the Court of Appeal’s terminology in Sexwax Incorporated, supra at [77]. TM No.s 1005684, 1005682 & 1005681 Page 16 of 77

initial inquiry into the “circumstances of the trade”, against the background of which the marks are regarded as notionally in use.84

49. In this regard, NZME accepts that Trade Me has a reputation in the mark TRADE ME in relation to:85

Auctioneering services; the provision of an internet website advertising goods and services; compilation and systemisation of information into computer databases; online general merchandise auction website; organisation of internet auctions; advertising of goods and services for sale and bartering; advertising services; retail and wholesale services in relation to all the above.

Business intermediary services in relation to the aforesaid services – linking real estate agents, motor vehicle dealers, commercial retailers and accommodation providers to customers.

Dissemination in any format of advertising material; rental of advertising space; advertising services provided through any media; classified advertisements and display advertising.

50. NZME does not, however, accept Trade Me’s claim that it has a reputation in the TRADE ME mark in relation to:86

Marketing services; market research services; business information services; online business directories – the extended offerings of, for example, motor vehicle information or insurance information and quotes.

Executive selection, management consulting; human resources; job placement services; recruitment services; personnel location services – jobs section.

51. In that regard, Trade Me’s reputation submissions refer to a range of “extended offerings”,87 being services that can be accessed under the TRADE ME mark through the trademe.co.nz website. For example, the MOTORWEB service, which provides online vehicle information, such as owner details,88 and the

84 Sexwax Incorporated, supra at [48] citing Pioneer, supra at 63 per Richardson J, in turn citing Gaines Animal Foods Ltd’s Application (1951) 68 RPC 178 (HC) at 180, and Sexwax Incoroprated, supra at [70]. 85 NZME’s written submissions, paragraph 58. Trade Me claims to have a very significant reputation in the trade mark TRADE ME for these services, amongst others: written submissions, paragraph 60. 86 NZME’s written submissions, paragraph 59. 87 Written submissions, paragraph 58. Trade Me states that, as at 23 September 2014, these extended offerings comprised MOTORWEB, LIFEDIRECT, FINDSOMEONE (a personals listing and connections service), HOLIDAY HOUSES (a holiday home listing and booking service), TRAVELBUG BY TRADE ME (a New Zealand accommodation listing and booking service), and HARMONEY (a peer to peer lending platform): written submissions, paragraphs 58.1 – 58.6 and McGee, paragraph 34. 88 McGee, paragraph 31. TM No.s 1005684, 1005682 & 1005681 Page 17 of 77

LIFEDIRECT service that provides users with information on insurance and quotes from insurance providers.89 The websites motorweb.co.nz and lifedirect.co.nz are co-branded with various combined marks incorporating the TRADE ME name.90 The services offered under the MOTORWEB and LIFEDIRECT brand names can be accessed directly through their own websites in addition to via trademe.co.nz.91

52. NZME submits there is little or no evidence that the mark TRADE ME has been sufficiently used or promoted in relation to these extended offerings prior to the relevant date, and therefore TRADE ME does not have an adequate reputation for these “extended offerings”.92 At the hearing, counsel for Trade Me responded by submitting that the extended offerings fall within the “marketing services” and “business information services” referred to in paragraph 50 above. Trade Me’s counsel also submitted that Trade Me’s “Jobs” section on its website uses the TRADE ME mark in relation to the “job placement services” referred to in paragraph 50 above.

53. On the evidence before me I accept that Trade Me offered these extended services prior to the relevant date. However, the extent to which potential purchasers were aware of these extended services being offered under, or in connection with, the TRADE ME mark is less clear.

54. Turning first to Trade Me’s claim that it has a reputation in the TRADE ME mark for “marketing services; market research services; business information services; online business directories – the extended offerings of, for example, motor vehicle information or insurance information and quotes”. Trade Me purchased its online vehicle reporting business, under the brand MOTORWEB, in December 2013.93 Trade Me also purchased an online insurance comparison and purchasing business, called LIFEDIRECT, in September 2013.94 Therefore, the “motor vehicle information” and “insurance information” services, offered by

89 McGee, paragraph 33. 90 McGee, exhibits JM6 and JM7. Trade Me submits that all of the extended offerings referred to at footnote 87 above are cobranded with TRADE ME: written submissions at paragraph 59, referring to McGee at [30] - [34]; exhibits JM5 – JM8. However, NZME notes that this evidence only establishes that the MOTORWEB, LIFEDIRECT and TRAVELBUG extended services are cobranded with the TRADE ME mark, and submits there is no evidence with regard to the other extended offerings, being FINDSOMEONE, HOLIDAY HOUSES, and HARMONEY. 91 McGee, paragraph 34. 92 NZME’s written submissions, paragraph 60. 93 McLean, paragraph 32. 94 McLean, paragraph 34. TM No.s 1005684, 1005682 & 1005681 Page 18 of 77

Trade Me under the MOTORWEB and LIFEDIRECT brands, were only available, at the earliest, from around December 2013 and September 2013, respectively.95

55. Mr McLean’s evidence is that the MOTORWEB and LIFEDIRECT services are co-branded with the TRADE ME mark,96 and that these services can be accessed via a tab along the top of each page of Trade Me’s website.97 However, it is unclear how long this was the case prior to the relevant date. Even if this occurred reasonably quickly after Trade Me purchased these businesses, Trade Me still only had a short period of time prior to 23 September 2014 to build awareness of its brand in relation to these particular services.

56. There is no evidence as to how many of the people that accessed Trade Me’s website in fact noticed the links to the MOTORWEB and LIFEDIRECT websites, or how many visits there were to the standalone websites www.motorweb.co.nz and www.lifedirect.co.nz,98 which can be accessed directly, that is without going through trademe.co.nz.99 Perhaps most importantly, even though there are links on Trade Me’s website to the MOTORWEB and LIFEDIRECT websites, that does not mean that, as a result, viewers will assume those services are provided by Trade Me. This is particularly so given one of the other tabs along the top of Trade Me’s website as at 20 September 2014 is “Stuff.co.nz”, a common New Zealand news website that is not owned by Trade Me.100

57. Further, the results from the initial survey carried out by Perceptive Insight shows that when respondents were asked “What services does ‘Trade Me’ offer?” only a very small number of respondents mentioned “insurance”. While “cars”, “vehicles” and “motors” were referred to by respondents more frequently, it is unclear whether those respondents were simply referring to Trade Me’s online auction services relating to buying and selling motor vehicles,101 or whether any had heard of Trade Me’s motor vehicle information services. This is despite the

95 McLean, paragraphs 32 and 34. It is unclear from the evidence whether Trade Me launched these extended offerings immediately after purchasing the MOTORWEB and LIFEDIRECT businesses, or whether they were only available under the TRADE ME mark at a later stage, closer to the relevant date. 96 McLean, paragraphs 33-34. 97 McLean, paragraph 33; exhibit SM2, and McLean, paragraph 22. The MOTORWEB website can also be accessed via a branded link within each motor vehicle listing within TRADE ME MOTORS: McLean, paragraph 33. 98 McLean, paragraph 33 and exhibits SM6 and SM7. 99 McLean, paragraphs 33 and 35. 100 McLean, exhibit SM3. 101 That is, TRADE ME MOTORS. TM No.s 1005684, 1005682 & 1005681 Page 19 of 77

survey being completed in around June 2015,102 well after Trade Me purchased the MOTORWEB business.

58. The evidence is even less persuasive for Trade Me’s other extended offerings that were available at the relevant date (namely FINDSOMEONE, a personals listing and connections service; HOLIDAY HOUSES, a holiday home listing and booking service; TRAVELBUG BY TRADE ME, a New Zealand accommodation listing and booking service; and HARMONEY a peer to peer lending platform).103 It is unclear how long these services were offered by Trade Me prior to the relevant date, and how long they have appeared on its website. There is no evidence that these extended offerings are co-branded with Trade Me, except for the TRAVELBUG BY TRADE ME website.104 There is also no evidence as to the number of visits to the websites for these extended offerings, which can be accessed directly. Further, any viewers of Trade Me’s website who saw the tabs referring to these extended offerings may not have assumed that the extended services originate from Trade Me for the reasons already discussed.

59. In view of the above, I consider that the TRADE ME mark has not met the awareness threshold for the marketing and business information services referred to in paragraph 50 above.

60. The evidence is more compelling in relation to Trade Me’s claim that it has a reputation in the TRADE ME mark for “executive selection, management consulting; human resources; job placement services; recruitment services; personnel location services – jobs section”. Mr McLean states that over 10 million page impressions were made of pages in the TRADE ME JOBS section of Trade Me’s website in 2012, over 17 million in 2013 and over 18 million in 2014.105 Therefore, the “Jobs” part of Trade Me’s website has been in existence since well before the relevant date, and has clearly been viewed by many New Zealanders. In addition, Mr Shaw’s survey evidence shows that when asked “what service does ‘Trade Me’ offer?” a significant number of respondents said

102 Shaw, paragraph 9 and exhibits B and C. 103 McLean, paragraph 35. 104 McLean, exhibit SM8. 105 McLean, paragraph 28.5. I have taken into account that some of the visits to the TRADE ME JOBS section of the website in 2014 would have occurred after the relevant date. The “Jobs” category has appeared on the homepage of Trade Me’s website since at least the relevant date: McLean, exhibit SM3. TM No.s 1005684, 1005682 & 1005681 Page 20 of 77

“job vacancies”, “job listings”, “jobs”, “employment” or a similar description of Trade Me’s services relating to job placement.106

61. I, therefore, consider the evidence shows that, in addition to the services for which NZME accepts TRADE ME has a reputation (being those set out at paragraph 49 above) there is also sufficient awareness of the TRADE ME mark for “executive selection, ...; job placement services; recruitment services; [and] personnel location services”.

Likelihood of deception or confusion

62. The usual test to determine whether or not a mark is likely to deceive or confuse under s 17(1)(a) of the Act is that set out in Smith Hayden & Co Ltd’s Application (1945) 63 RPC 97, 101:107

Having regard to the reputation acquired by … [the TRADE ME mark], is the Court satisfied that the marks applied for [SHOPME, PROPERTYME, DRIVEME], if used in a normal and fair manner in connection with [the opposed services], will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.

63. This is a fact-specific inquiry. It is a matter of assessing “practical business probabilities”, having regard to all the surrounding circumstances and the degree of similarity of the marks.108

64. For the purposes of comparing the relevant marks, I am required to consider the TRADE ME mark as it has in fact been used, and NZME’s marks on a notional fair use basis.109

65. The following factors are relevant to the exercise of comparing the marks:110

 The two words must be judged both by their look and their sound.

106 Shaw 1, exhibits B and C; Shaw 2, exhibits B and C; and Shaw 3, exhibits B and C. 107 Applied by the New Zealand Court of Appeal in Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 63 and Sexwax Incorporated v Zoggs International Limited [2014] NZCA 311 at [27]. 108 Sexwax Incorporated, supra at [49], citing Pioneer Hi-Bred.

109 Anheuser Busch Inc. v Budweiser Budvar National Corporation [2003] 1 NZLR 472 at [30]. 110 In re Pianotist Co.’s Application (1906) 23 RPC 774, 777, and as approved in New Zealand Breweries, supra at 139. TM No.s 1005684, 1005682 & 1005681 Page 21 of 77

 The goods and services to which the marks are to be applied and the nature and kind of customer who is likely to buy these goods and services must be considered.

 All the surrounding circumstances must be considered as well as what is likely to happen if each of the marks is used in a normal way as a trade mark for the goods/services of the respective owners of the marks.

66. The idea conveyed by the marks is also significant in assessing how they will be recalled.111 The idea of a mark is more likely to be recalled than its precise details.112

67. Allowance must be made for consumers’ imperfect recollection.113 In De Cordova v Vick Chemical Coy (1951) 63 RPC 103 it was held that:114

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

68. The focus is on the whole of each mark, and not a side by side comparison.115 While, the totality of impression of the two marks is of fundamental importance,116 the court can properly look at an essential feature in both marks as being key. For example, in N V Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated the Court of Appeal stated:117

[31] As Mr Brown submits, when making a s 17 comparison, while the focus is on the totality of the mark applied for, the court can properly look at a common or essential feature in both marks as being key. In Heineken, North P stated:

111 Anheuser-Busch Inc v Budweiser Budvar National Corporation [2003] 1 NZLR 472 (CA) at [75]. See also Mars New Zealand Limited v Heinz Wattie’s Limited [2012] NZHC 591 at [67]. 112 Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 (PC). 113 Rysta Limited’s Application (1943) 60 RPC 87 and De Cordova, supra at 106. 114 At 106. 115 De Cordova v Vick Chemical Coy (1951) 63 RPC 103 at 106. 116 Polaroid Corp v Hannaford and Burton [1975] 1 NZLR 566 (CA). See also Sabel BV v Puma AG [1998] RPC 199 at 224. 117 NV Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated, supra at [31]. TM No.s 1005684, 1005682 & 1005681 Page 22 of 77

While it is true that it is necessary to have regard to “the totality” of the proposed trade mark, yet often enough the real risk of confusion may lie in some common feature in the two labels which is liable to linger in the minds of persons requiring a particular kind of goods. Sometimes indeed it will be a word appearing in the labels which either looks or sounds the same.

69. Further, the focus is on the similarities, not the differences, between the marks.118

Look and sound of the marks

70. They key visual and aural similarity between the TRADE ME mark and the opposed marks (SHOPME, PROPERTYME and DRIVEME) is the suffix “ME”. In all of the respective marks the first person singular pronoun “ME” is immediately preceded by an ordinary, non-distinctive term (i.e. TRADE, SHOP, PROPERTY or DRIVE).

71. Trade Me submits that the more distinctive part of the TRADE ME mark is the word ME, and that ME is also the more memorable word, and essential feature, of SHOPME, PROPERTYME and DRIVEME.119 NZME disagrees and asserts that the ME element of the TRADE ME mark is a relatively minor addition, which is not distinctive or unique to Trade Me.120 At the hearing Mr Arthur responded by observing that “ME” is not descriptive of the relevant services, and nor is it laudatory or common. I agree.121 In my view, “ME” is also the dominant or essential part of the TRADE ME mark and the opposed marks, and is more likely to linger in the minds of potential purchasers of the relevant services.

72. The survey evidence is consistent with my view. For example, Mr Shaw’s summary of the survey findings relating to SHOPME states, that “Of those [respondents] who felt there was an association [between ‘Shop Me’ and ‘Trade Me’, or were unsure, the main reason was the similarity of name, particularly the

118 VB Distributors Limited v Matsushita Electric Industrial Co Limited (1999) 9 TCLR 349, 357 – 358. Having said that, in Coca-Cola Canada v Pepsi-Cola Canada (1942) 59 RPC 127 at 133-134, it was held that “[W]here you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common – although it does not flow from that … that you must treat the words as though the common part was not there at all”. 119 Written submissions, paragraphs 70, 76.3, 112.3 and 126.2. 120 Written submissions, paragraphs 72(b) and 73. 121 At the hearing counsel for NZME also appeared to accept that ‘ME’ is not descriptive or laudatory. TM No.s 1005684, 1005682 & 1005681 Page 23 of 77

‘Me’ suffix”.122 I have taken into account NZME’s criticisms of the survey evidence, which are discussed below.123

73. Another important visual and aural similarity is the common memorable syntax violation shared by the respective marks. The marks do not adopt normal English sentence structure. Instead, the ordinary words that comprise the marks are combined in an unusual manner that is unlikely to be heard in everyday English discourse.124 The jarring and memorable violation of the rules of grammar and sentence structure also contributes to the inherent distinctiveness of the earlier mark, TRADE ME.

74. A further aural similarity between the TRADE ME mark on the one hand, and the SHOPME and DRIVEME marks on the other, is that they all have two syllables and sound short.

75. Visually, the respective marks are also a very similar length, consisting of the same, or nearly the same, number of letters in all but one case.125 There are many examples in the evidence where Trade Me’s mark appears as one word,126 and in those instances the visual similarity is even greater given all the opposed marks are one word.

76. NZME submits, however, that the TRADE ME mark is usually used in combination with the prominent “Kiwi” device, in which case it says there are even greater differences between the respective marks.127 The evidence shows

122 Shaw 1, exhibit B (page 2). Similarly, the survey findings relating to the PROPERTYME mark include a statement that “Of those who felt there was an association, or were unsure, the main reason was the similarity of name (particulatly the ‘Me’ aspect), and because Trade Me deals in property too”: Shaw 2. The survey findings relating to the DRIVEME mark also include a statement that “Of those who felt there was an association, or were unsure, the main reason was the similarity of name, particularly the ‘Me’ component. 123 Two traders who use the TRADE ME/ TRADE ME PROPERTY platform have also given evidence about the importance of the “ME” part of the marks when considering an association between Trade Me and PROPERTYME. Ms Baker says “The reason I would assume a connection existed is the powerful signal that ‘ME’ carries for me that the offering is provided by Trade Me. The addition of ‘PROPERTY’ to ‘ME’ isn’t enough to dispel my immediate assumption that the businesses are connected”: Baker, paragraph 5. Mr Metcalfe also states that “To my mind the combination of PROPERTY and ME in PROPERTYME is a combination of a description about the offering (property related) and ME, which is an important part of the distinctive TRADE ME and TRADE ME PROPERTY brands creates [sic] an immediate association with Trade Me”: Metcalfe, paragraph 8. Again, I have taken into account NZME’s criticisms of this evidence, which is discussed in more detail below. 124 The only probably exception being “drive me”, e.g. “please drive me home”. 125 PROPERTYME is clearly longer than TRADE ME although only by 3 letters. 126 For example, McGee, exhibit JM4. 127 Written submissions, paragraph 95. TM No.s 1005684, 1005682 & 1005681 Page 24 of 77

that the TRADE ME word mark is not always used alongside the “Kiwi” device,128 that device does not always accompany the word mark.129 The kiwi device is also clearly not relevant to the aural comparison between the marks. Further, NZME has applied to register word marks, and therefore it is open to NZME to adopt a similar stylisation, including font and colours, to that used by Trade Me, when it uses the opposed marks, although such use must be fair.130

77. NZME also submits that the first part of a trade mark is usually the more important in assessing similarity.131 However this is only a general rule,132 and I do not consider it determinative in these proceedings.

78. Overall, I consider the TRADE ME mark and the opposed marks are similar. While the similarity between these marks is not at the high end of the spectrum, in my view the similarities identified above are far from trivial.

Idea of the marks

79. Conceptual similarity between the marks is clearly a legitimate consideration.133 The weight to be accorded to the ideas of the marks will depend on the circumstances.134

80. Trade Me submits that conceptually the phrases SHOPME and TRADE ME are nearly identical.135 The court may properly refer to dictionaries in order to ascertain the meaning of a word.136 “Shop” has a number of definitions in the Oxford Dictionary. In the context of the services at issue in this proceeding, the most relevant of those definitions are “A building or part of a building where

128 McGee, exhibits JM2 and JM4. 129 For example, McGee, exhibits JM7 and JM8 and in the domain name trademe.co.nz. Further, the first tab along the top of Trade Me’s home page refers to “Trade Me Where Kiwis Buy & Sell”: McGee, exhibit JM4. 130 If the stylised format in which the opposed marks are used is so similar to Trade Me’s use of its mark that it constitutes passing off or a breach of the Fair Trading Act 1986, such use would not be fair and would therefore be irrelevant for the purposes of this assessment under s17(1)(a) of the Act. 131 NV Sumatra Tobacco Trading Co v British American Tobacco (Brands) Incorporated, supra at [32] citing London Lubricants (1920) Limited’s Application (1925) 42 RPC 264 at 279. 132 See the comments of Ronald Young J in Telecom IP Ltd v Beta Telecom Ltd [2006] NZHC 1132 where he stated that “I have no difficulty in accepting as a general rule the first syllable of the first word or the first word in a phrase may be the more important. However, this proposition is not as the respondent has expressed it, some form of principle of law. It is no more than an observation about speech patterns and emphasis. However, in each case the actual phrase or words, as well as their place, will be significant” at [36]. 133 NV Sumatra v British American Tobacco, supra at [29] citing the Privy Council in Polaroid and the Court of Appeal in Stichting Lodestar v Austin Nichols [2007] NZCA 61. 134 NV Sumatra v British American Tobacco, supra at [29]. 135 Written submissions, paragraph 76.1. 136 Kerly’s Law of Trade Marks and Trade Names (12th ed) at 17-28. TM No.s 1005684, 1005682 & 1005681 Page 25 of 77

goods or services are sold” and “Visit one or more shops or websites to buy goods”.137 “Trade” is defined in the same dictionary as “The action of buying and selling goods and services”.138 I therefore accept Trade Me’s submission that the words “shop” and “trade” have overlapping meanings, although I do not consider the degree of conceptual similarity to be so high as “nearly identical”.

81. Trade Me also submits that the marks PROPERTYME and TRADE ME are conceptually similar.139 In particular, Trade Me asserts that there is an overlap in meaning between “property” and “trade” because “property” can mean trading in property, for example, “She works in property”.140 NZME disputes any overlap in concept,141 and submits that, on Trade Me’s reasoning, there could be an overlap in meaning between “trade” and almost any other word.142 In light of the services in issue, and the most relevant definitions of “property”,143 I consider PROPERTYME and TRADE ME are not conceptually similar.

82. Trade Me further refers to a conceptual similarity between DRIVEME and TRADE ME.144 However, NZME submits that none of the possible meanings of “drive” have any connection with the meaning of “trade”, and therefore there is no meaningful similarity between DRIVEME and TRADE ME.145 In the context of the services in question, I consider the most relevant definitions of “drive” are “Operate and control the direction and speed of a motor vehicle” and “A trip or journey in a car”.146 Therefore, I consider the marks DRIVEME and TRADE ME are not conceptually similar.

83. On the issue of conceptual similarity, NZME refers to Platinum Homes (NZ) Ltd v Golden Homes (1998) Ltd,147 where the High Court found that PLATINUM HOMES and GOLDEN HOMES were not confusingly similar in relation to home building services. The Court found that the Assistant Commissioner had paid too much attention to the idea of the mark, and too little to the distinctive differences

137 Oxford Dictionary online https://en.oxforddictionaries.com/definition/shop. 138 Oxford Dictionary online https://en.oxforddictionaries.com/definition/trade. 139 Written submissions, paragraph 113.1. 140 Written submissions, paragraph 109. 141 Written submissions, paragraphs 109 – 110. 142 Written submissions, paragraph 109. 143 Definitions in the Oxford Dictionary include “A thing or things belonging to someone; possessions collectively” and “A building or buildings and the land belonging to it or them”: Oxford Dictionary online https://en.oxforddictionaries.com/definition/property. 144 Written submissions, paragraphs 127.1 and 127.4. 145 Written submissions, paragraph 102. 146 Oxford Dictionary online https://en.oxforddictionaries.com/definition/drive. 147 HC Wellington CIV-2005-485-1870, 11 August 2006. TM No.s 1005684, 1005682 & 1005681 Page 26 of 77

in look and sound.148 However, I consider the Platinum Homes case is distinguishable on a number of grounds. The suffix “HOMES” is far less distinctive than the suffix ME in the present case. The marks as a whole in Platinum Homes are clearly laudatory and descriptive, unlike the ME element of the marks in the present case.149 Further, the services in the Platinum Homes case are exceedingly high involvement services in comparison to the services involved in the present case.150

84. Trade Me submits that NV Sumatra v British American is more recent Court of Appeal authority in New Zealand, which does not endorse the approach in Platinum Homes, and which confirms that conceptual similarity still bites. In NV Sumatra registration was refused for the marks LUCKY DRAW and LUCKY DREAM in light of the opponent’s LUCKY STRIKE mark. The goods at issue were cigarettes and cigarette related products, which the Court described as frequently purchased items rather than occasional, high-priced luxury items.151 The Court of Appeal found there was a conceptual similarity in the idea behind the respective marks.152 The Court of Appeal did not consider that the High Court Judge gave too much weight to conceptual similarity, given his finding of some possibility of confusion or deception from look and sound alone.153

85. In my view, the circumstances of the present case are more aligned with those in NV Sumatra v British American Company, particularly for the SHOPME mark where I have found there is a conceptual similarity with the TRADE ME mark.

The opposed services and Trade Me’s services

86. The inquiry under s 17(1)(a) of the Act is unrestrained by the requirement for identical or similar goods/services that applies under s 25(1)(b).154 Section 17(1)(a) is concerned with confusion resulting from use of the opposed mark

148 Platinum Homes, supra at [23]. 149 This is appears to have been accepted at the hearing by counsel for NZME. 150 In Platinum Homes Miller J said “... few decisions are more considered than the construction and purchase of a new home”: supra at [26]. 151 NV Sumatra v British American Tobacco, supra at [44]. 152 NV Sumatra v British American Tobacco, supra at [28]. 153 The Court of Appeal considered the High Court Judge probably understated the similarity between the look and sound of the marks and stated “The use of the word “lucky” followed by a single syllable word in our view creates a reasonably significant risk of confusion even though neither “draw” nor “dream” sounds like “strike”: at [25]. 154 P Sumpter Trade Marks in Practice (3rd ed, LexisNexis NZ Limited, Wellington, 2015) at p41 citing The Council of Ivy Group Presidents t/a The Ivy League v Pacific Dunlop (Asia) Ltd HC Wellington AP42/00, 3 October 2000 and Re Hack’s Application (1940) 58 RPC 91. TM No.s 1005684, 1005682 & 1005681 Page 27 of 77

regardless of whether the services are the same, similar, or entirely different.155 However, the risk of confusion may be higher where the parties’ goods or services are the same or similar.156

87. The inquiry under s 17(1)(a) relates to the actual services sold under the TRADE ME mark rather than the services in respect of which that mark is registered. Therefore, the services for comparison under this ground of opposition are as follows.

Services for which Trade Me had a Services specified in the opposed SHOPME, reputation in its TRADE ME mark as at PROPERTYME and DRIVEME trade mark the relevant date157 applications158

Class 35: Auctioneering services; the provision Auctioneering services including online of an internet website advertising auctioneering services; the provision of an goods and services; compilation and internet website advertising the goods and systemisation of information into services of others for the purposes of computer databases; online general facilitating purchase by end customers; merchandise auction website; compilation and systemisation of information organisation of internet auctions; into computer databases; online general advertising of goods and services for merchandise auction website; organisation sale and bartering; advertising of internet auctions; advertising of goods services; retail and wholesale services and services for sale and bartering services in relation to all the above. (facilitating the trade exchange of goods and services) offered by others via a website Business intermediary services in including but not limited to facilitating third relation to the aforesaid services – party offerings; business intermediary linking real estate agents, motor services in relation to all the aforesaid, vehicle dealers, commercial retailers including facilitating all the aforesaid; and accommodation providers to advertising services including the updating customers. of advertising material; dissemination and/or Dissemination in any format of publication in any format or media of advertising material; rental of advertising material; rental of advertising advertising space; advertising services space; advertising services provided through provided through any media; classified any media including printed advertising, advertisements and display electronic advertising and advertising on advertising. billboards; marketing services; market research services; business information services, Executive selection; job placement including services in the nature of product and services; recruitment services; and service information; providing on-line business personnel location services. directories; publication of publicity texts and materials; publicity services; preparation of

155 Nexcorp Australia Proprietary Limited v Next Retail Limited [2016] NZIPOTM 17 at [80] citing Next Group Plc Australia Proprietary Limited [2016] ATMO 34 (14 June 2016) at [38]. In Re Edward Hack’s Application (1940) 58 RPC 91 (HC) the registered proprietor of the mark “Black Magic” relating to chocolate successfully opposed the application of the mark “Black Magic” in respect of laxative products. The registered mark was said to have become a “household word” in connection with chocolate products, as is TRADE ME for online auction services. The Court was satisfied that, even though the goods would not be sold at the same stores (and if they were so sold, they would be general stores), and even though they were very different products, enough people would be caused to wonder, upon seeing a laxative sold under the name Black Magic, whether it was created by the opponent. Merely associated good may also be enough to create a likelihood of deception or confusion: The Council of Ivy Group Presidents, supra. 156 Although s 17(1)(a) is not confined to such cases: Sexwax Incorporated, supra at [60]. 157 These are the services identified in the reputation section above. 158 The opposed services are the same for each of the opposed marks. TM No.s 1005684, 1005682 & 1005681 Page 28 of 77

publicity columns; public relations; organisation of exhibitions or trade fairs for commercial or advertising purposes; demonstration of goods, including demonstration for promotional and advertising purposes; promotion of fairs for trade purposes; retail and wholesale services; services in endorsement and dissemination of promotional material in connection with a promotional event; executive selection services, management consulting; human resources consulting, job placement services; recruitment services; personnel location services; information, advice and consultancy services in relation to all the aforesaid services.

Class 41:

Publishing services including electronic publishing services; publication of newspapers, magazines, books, texts and other types of printed matter; education, entertainment and cultural activities in this class including (without limitation) the organisation and running of competitions relating to or for education, cultural purposes, sporting purposes and/or entertainment; information services (including on-line information services) all relating to publishing, education, entertainment, sporting or cultural activities; news reporter services; photographic reporting; providing on-line electronic publications; publication of all types of texts including (without limitation) books, electronic books, newspapers, magazines, periodicals; script writing services; electronic and online recording, booking and ticketing services for seating and reservation for sporting, education and entertainment events, and for theatres and other places of entertainment and other events requiring reservations and ticketing; arranging and conducting exhibitions and events for cultural, recreational, educational and/or entertainment purposes; event management services including organisation and management of cultural, recreational, educational and/or entertainment events; services in the production of an event; production and distribution of television and radio shows and programmes; production and distribution of films and recordings; information, advice and consultancy services in relation to all the aforesaid services

88. NZME admits, sensibly, that some of the class 35 services of its applications for registration are the same or similar to the services for which Trade Me has a

TM No.s 1005684, 1005682 & 1005681 Page 29 of 77

reputation in its TRADE ME mark.159 Trade Me submits that the initial part of the class 35 specification of services for the opposed marks shown in bold above is practically a description of the services Trade Me offers under the TRADE ME mark. I agree. Furthermore, applying the criteria in British Sugar Plc v James Robertson & Sons Ltd160 I find that the other opposed class 35 services shown in bold further down the specification are also the same as or similar to Trade Me’s services.

89. In my view, the opposed services in class 41 are not the same as or similar to the services for which Trade Me has a reputation in its TRADE ME mark.161 However, similar services are not a prerequisite for a finding of likely confusion under s 17(1)(a) of the Act.

90. I am also required to consider the nature and kind of customer who is likely to purchase the relevant services. There is no evidence before me as to the fees for the relevant services. However, these are unlikely to be particularly expensive, especially for buyers using auction services. Where the service fees are reasonably inexpensive, or even free, the level of consumer engagement in purchasing decisions is likely to be reasonably low. However, even average consumers are usually regarded as being “reasonably well-informed and reasonably observant and circumspect”.162 I also acknowledge that where the goods that are being sold or purchased using the online auction services are high value, such as houses and cars, consumers are likely to be more attentive when choosing an auction service. Overall though, I consider customers are likely to be less focussed on the origin of the auction service than the origin of the goods

159 Counter-statements, paragraphs 2.4. it is unclear exactly which class 35 services this admission relates to for the purposes of the s 17(1)(a) ground of opposition. Particulars of the services NZME admits are the same or similar have only been provided in the submissions for the s 25(1)(b) ground of opposition: written submissions, paragraphs 151 - 153 160 In comparing the parties’ respective goods/services it is usual to seek general guidance from the list of factors in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 296-297. These include consideration of the respective uses, the respective users, the physical nature of the goods, the respective trade channels and where they are likely to be sold, and the extent to which the goods/services are competitive. In that case Jacob J, as he was then, stated “I do not pretend that this list can provide other than general guidance”: at 297. 161 This is despite Trade Me’s submission that the following opposed services in class 41 are natural extensions of the services offered under the TRADE ME brand: “... electronic and online recording; booking and ticketing services; arranging and conducting exhibitions ... [p]ublishing and publication services; [and] education services ...”: written submissions, paragraphs 81 and 84. Trade Me states that it already uses television advertising and that it is a short brand extension to publish and produce under the well-known - ME brand: written submissions, paragraph 84. 162 Anthony Brian Coombe v Coca-Cola Amatil (NZ) Limited HC Auckland CIV 2010-485-000816, 8 April 2011 at [40], which cited: Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ETMR 690 at [26]; Bach and Bach Flower Remedies Trade Marks [2000] RPC 513 at 534. TM No.s 1005684, 1005682 & 1005681 Page 30 of 77

themselves. Auction services are also provided at arm’s-length, and are essentially self-service. Therefore, there are unlikely to be many opportunities for the customer to enquire about the provider of the auction services.

Survey evidence

91. As referred to above, Trade Me instructed Perceptive Insight Limited to conduct two surveys for the purposes of these opposition proceedings. Perceptive provides market research and strategic marketing needs to over 250 clients throughout New Zealand, Australia, Hong Kong, and Japan, including 8 out of the top 10 advertising agencies in New Zealand.163

92. At the time of providing his first declaration, Mr Shaw had approximately 7.5 years’ experience at Perceptive working with clients and conducting market surveys.164 He also has a Bachelor of Business Studies from Massey University, which included papers in marketing research.165 Mr Shaw says he has a good knowledge of the use of surveys for the purposes of quantitative research and is experienced at analysing survey results.166 Therefore, I consider Mr Shaw’s evidence to be expert evidence for the purposes of these proceedings.167

93. As stated, the first survey was conducted in June 2015 to assess whether the public would think businesses operating as TRADE ME and SHOPME (or PROPERTYME or DRIVEME) were associated.168 The second survey was conducted in February 2016.169 Both surveys were deployed to a nationwide sample of New Zealanders through Perceptive’s online platform.170

94. In the first survey each individual received an email invitation with a unique link to access the survey through Perceptive’s secure research platform.171 Mr Shaw explains that this negates the ability for a respondent to complete the survey

163 Shaw 1, paragraph 4. 164 Shaw 1, paragraph 6. 165 Shaw 1, paragraph 5. 166 Shaw 1, paragraph 6. Mr Shaw has also provided survey and survey interpretive evidence in previous trade mark proceedings: Shaw 1, paragraph 7. 167 Mr Shaw states that he has read the Expert Code of Conduct contained in the High Court Rules. Further, he states that he understands what the code requires of him and agrees to comply with the code: Shaw 1, paragraph 8. 168 Shaw 1, 2 and 3, paragraphs 9. 169 Shaw Reply, paragraph 10. 170 Shaw 1, 2 and 3, paragraphs 12, and Shaw Reply, paragraph 11. Mr Shaw says the reason for this is that the services offered under the TRADE ME brand are utilised by the general public: Shaw 1, 2 and 3, paragraphs 12, and Shaw Reply, paragraph 11. 171 Shaw 1, 2, and 3, paragraphs 12. TM No.s 1005684, 1005682 & 1005681 Page 31 of 77

more than once or share with others.172 Mr Shaw states that the sample was selected at random, and was selected to ensure it was representative of the New Zealand population.173 In total, 876 individuals completed the survey relating to the SHOPME mark,174 1,002 individuals completed the survey for PROPERTYME,175 and 1,095 completed the survey relating to DRIVEME.176

95. The second survey collected responses from a random sample of 1,012 New Zealanders.177 The questions in that survey ran through Perceptive’s “Omnibus survey format”, which uses a nationwide sampling framework to ensure the overall sample is nationally representative of the New Zealand population for those aged 18 years and over.178

96. In its submissions, Trade Me refers to Levi Strauss & Co v Kimbyr Investments Limited,179 a High Court decision relating to the survey evidence filed in a trade mark infringement proceeding. In that case Williams J observed that before the survey results can be considered, the admissibility of the survey must be determined.180 The two essential requirements of an admissible survey are that the interviewees are selected so as to represent a cross-section of the relevant public, and that the precise instructions to the interviewers as to how to carry out their survey is disclosed.181 Clearly the first requirement has been met in these proceedings. In terms of the second requirement, there were no “interviewers” as such given the surveys were completed online, however the precise questions asked of respondents and the format of the questions has been disclosed.182 Therefore, I consider both surveys are admissible.

172 Shaw 1, 2 and 3, paragraphs 12. 173 Shaw 1, 2 and 3, paragraphs 12. 174 Shaw 1, paragraph 12. 175 Shaw 2, paragraph 12. 176 Shaw 3, paragraph 12. The margins of error are +/- 3.31% for the SHOPME results (Shaw 1, paragraph 16), +/- 3.02% for the PROPERTYME mark (Shaw 2, paragraph 16), and +/- 2.88% for the DRIVEME mark (Shaw 3, paragraph 16). 177 Shaw Reply, paragraph 10. 178 Shaw Reply, paragraph 11. Mr Shaw further says that the sampling criteria used to achieve this runs across three demographic categories being age, gender and region, and that all responses are weighted to ensure they are aligned with latest New Zealand Census data sourced from Statistics New Zealand. 179 Levi Strauss & Co v Kimbyr Investments Limited [1994] 1 NZLR 332. 180 Levi Strauss, supra at 364. 181 Ibid. 182 The Levi Strauss case was decided in 1994 when online surveys would not have been commonplace like they are today. TM No.s 1005684, 1005682 & 1005681 Page 32 of 77

97. In Levi Strauss Williams J went on to state that:183

As to weight to be given to the survey conclusions it is clear that, even if a survey is held to be admissible, the value of the answers and weight to be accorded to them depends on the structural integrity and fairness of the survey questionnaire and the individual questions incorporated in it: Klissers Farmhouse Bakeries Ltd v Harvest Bakeries Ltd [1985] 2 NZLR 129, 133.

... It is true that in surveys of this type it is preferable to avoid leading questions ... [but] at some point the survey respondents need to be brought from a non-leading question, such as the opening question in this survey, to questions which, to some extent, direct the respondents to the point at issue.

... In my view, ... [the expert who acted as a consultant for the survey] made the valid point that in constructing surveys one seldom achieves the perfect questionnaire.

98. Williams J accepted the expert evidence as to the soundness of the survey format and the overall reliability of the statistical results it produced, and found that the deficiencies identified were not of such a nature and magnitude that the survey should be discounted.184 In His Honour’s view, the survey evidence gave some support to the proposition that confusion existed or was likely to occur in that case.185

99. Counsel for both parties provided comprehensive and thoughtful submissions regarding the survey evidence. Extensive expert evidence on the surveys has also been filed in the form of four statutory declarations from Mr Shaw and one declaration from Mr Glading. I do not intend to repeat the lengthy submissions or evidence on the survey issues. Instead I have addressed what I consider to be the key survey issues below.186

100. In my view, the main findings of the first survey are as follows:

100.1 A little under one third of respondents (30%) answered “yes” to the survey question “If there was a service called ‘Shop Me’, do you think that it would be associated with ‘Trade Me’?”.187 Mr Shaw says that,

183 Levi Strauss, supra at 364 – 365. 184 Levi Strauss, supra at 366. 185 Levi Strauss, supra at 367. 186 I have given due consideration to the other shortcomings identified by NZME and they do not change my view as to the weight to be given to the survey evidence. 187 Shaw 1, paragraph 15 and exhibit B. A further 45% of respondents were “unsure”: Shaw 1, paragraph 15 and exhibit B. TM No.s 1005684, 1005682 & 1005681 Page 33 of 77

based on his experience, the findings of the first survey demonstrate a “significant perceived association between SHOPME and TRADE ME”.188

100.2 Almost half of respondents (45%) answered “yes” to the survey question “If there was a service called ‘Property Me’, do you think that it would be associated with ‘Trade Me’?”.189 Mr Shaw considers this finding demonstrates “an extremely clear perceived association” between PROPERTY ME and TRADE ME.190

100.3 Around 1 in 5 respondents (21%) answered “yes” to the question “If there was a service called ‘Drive Me’, do you think that it would be associated with ‘Trade Me’?”.191 Mr Shaw’s evidence is that this finding shows that “there is confusion relating to the perceived association between DRIVE ME and TRADE ME”.192

101. NZME’s counsel and Mr Glading are highly critical of the first survey,193 but NZME has not filed any independent evidence criticising the survey methodology or findings.194 Mr Glading has been employed by NZME for nine years,195 and therefore he is not an independent witness. Trade Me submits that, as a result, very little weight should be given to Mr Glading’s opinions.196 While I accept that Mr Glading is an expert witness, I agree that he is not independent, and I have taken this into account when assessing the weight to be given to his evidence.

102. I consider NZME’s most important criticisms of the first survey are as follows:

188 Shaw 1, paragraph 15 and exhibit B. Given the sample size of 876 individuals, Mr Shaw considers these results to be “an extremely robust representation of the general public, with a margin of error of +/- 3.31%”: Shaw 1, paragraph 16. 189 Shaw 2, paragraph 15 and exhibit B. A further 38% were “unsure”: Shaw 2, paragraph 15 and exhibit B. 190 Shaw 2, paragraph 15 and exhibit B. Given the sample size of 1,002 respondents, Mr Shaw considers these results can be taken as “an extremely robust representation of the general public, with a margin of error of +/- 3.02%”: Shaw 2, paragraph 16. 191 Shaw 3, paragraph 15 and exhibit B. A further 54% were unsure: Shaw 3, paragraph 15 and exhibit B. 192 Shaw 3, paragraph 15 and exhibit B. Given the sample size of 1,095 respondents, Mr Shaw considers these results can be taken as “an extremely robust representation of the general public, with a margin of error of +/- 2.88%”: Shaw 3, paragraph 16. 193 NZME’s written submissions, paragraphs 123 – 136; and Glading, paragraphs 12-47. 194 Written submissions, paragraph 100. 195 Glading, paragraph 4. 196 Written submissions, paragraph 101, referring to Commissioner of Inland Revenue v BNZ Investments Limited (2009) 19 PRNZ 553 at [21] where evidence was admitted from a solicitor and an accountant notwithstanding that their respective firms had an association with the respondent, but the issue of independence still went to weight. TM No.s 1005684, 1005682 & 1005681 Page 34 of 77

102.1 The survey methodology, and the questions themselves, are in Mr Glading’s opinion, very leading.197

102.2 The purpose of the survey is very broad and does not seem to correlate with the potential answers respondents were given,198 and in particular the “association” terminology is unclear.199

103. Turning to the first major criticism, I agree that the key survey question is a leading one, namely “If there was a service called ‘Shop Me’ [‘Property Me’ or “Drive Me’], do you think that it would be associated with ‘Trade Me’?”.200 By referring to ‘Trade Me’ in the question itself, respondents have essentially received a prompt they would not be exposed to in the marketplace. Trade Me submits that, as observed in Levi Strauss, the respondents had to be brought to the issue.201 However, I consider this could have been achieved in a less leading manner, as occurred in the second survey. In my view, the degree to which this question is leading is not such that the responses should be ignored completely but I have placed less weight on these responses to account for the leading nature of the question.

104. Mr Glading also contends that the preceding survey questions have been asked in a leading way so as to create an association in respondents’ minds between TRADE ME and the opposed marks, and that the order of the questions has ensured that Trade Me is top of mind.202 In particular, Mr Glading observes that respondents were asked “What types of services would you expect ‘Shop Me’ to offer?”, and states that “... this question was not an open one. Respondents were given only three possible answers and all of these are services very specific to the business that Trade Me operates”.203

105. Mr Glading has, however, ignored the fourth “Answer option”, being “None of these”. Further, this criticism does not recognise that the services referred to in

197 Glading, paragraph 31. 198 Glading, paragraph 13. 199 Written submissions, paragraph 136. 200 This question appears towards the end of the survey questions (only two questions follow it). With regard to this question, Mr Glading states “The fact the question itself names ‘Trade Me’ is extremely leading. The question essentially creates the association it is asking about.”: Glading, paragraph 33. 201 Written submissions, paragraph 99. 202 Glading, paragraphs 20 – 22 and 46. 203 Glading, paragraph 19. TM No.s 1005684, 1005682 & 1005681 Page 35 of 77

the answer options essentially correspond with a number of services included in the specifications for NZME’s opposed marks.204

106. The likelihood of confusion should be assessed in the context of the relevant services,205 and that appears to be what Perceptive was trying to achieve by referring to at least some of the relevant services.206 Potential purchasers will not be encountering the respective marks in a vacuum, but rather in connection with the services in issue. My view is consistent with Mr Shaw’s independent expert evidence where he states “the openness of Mr Glading’s suggested question [“If there was a service called ‘Shop Me’, would you associate it with any other business?”]207 and the lack of reference in that question to the services which each of the applications at issue cover makes Mr Glading’s question less useful”.208 “Mr Glading claims that the line of questioning effectively suggests to respondents that there are businesses called ‘Shop Me’/’Drive Me’/’Property Me’, which provide the exact same services as Trade Me.209 Yet the reality is that many of the services for which the TRADE ME mark has a reputation are indeed exactly the same as some of the opposed services. Finally, Mr Glading’s criticism also only applies to 7.3% of respondents for the SHOPME survey, being 64 individuals.210 This is because the early survey questions that Mr Glading objects to were only asked of the small minority of respondents who had already said they had heard of the opposed marks.211

204 I consider the first answer option “Auction listings where people bid on an item” corresponds with “Auctioneering services”, “Advertising / classified listings where items are listed for sale at a fixed price” corresponds with “Advertising services” and “Advertising / classified listings for businesses and other services” are very similar to “dissemination and/or publication in any format or media of advertising material; rental of advertising space; [and] advertising services provided through any media ...”. 205 I am required to consider what is likely to happen if each of the marks is used in a normal way as a trade mark for the goods/services of the respective owners of the marks: Re Pianotist Co.’s Application, supra at 777, and as approved in New Zealand Breweries, supra at 139. 206 I accept, however, that the survey only refers to identical services for which Trade Me offers under its TRADE ME mark and which are essentially some, but by no means all, of the services in the specifications for the opposed marks. The survey results must therefore be considered to be a “best case scenario” for Trade Me, and I have taken that into account when assessing the weight of this evidence. 207 Mr Glading describes this question as a more neutral and fair way of measuring any potential association between ‘Shop Me’ and ‘Trade Me’: Glading, paragraph 34. 208 Shaw 1, paragraph 21. 209 Glading, paragraph 31. 210 Shaw 1, exhibit B, pages 5-6, and 8. For the DRIVEME survey results, Mr Glading’s criticism only applies to approximately 9% of respondents, namely 93 individuals, for PROPERTYME this criticism only applies to approximately 18% of respondents, being 176 people. 211 Shaw 1, exhibit B, pages 5-6, 8, 16-17, 19, 27-28 and 30. The questions ‘What service does ‘Drive Me’/ ‘Shop Me’ / ‘Property Me’ offer?’ and ‘What types of services would you expect ‘Drive Me’/ ‘Shop Me’ / ‘Property Me’ to offer?’ were only asked of the very small minority of respondents who answered “yes” to the first survey question, being ‘Have you heard of ‘Drive Me’/ ‘Shop Me’ / ‘Property Me’?’. This is acknowledged in Mr Glading’s evidence at paragraphs 16-18. TM No.s 1005684, 1005682 & 1005681 Page 36 of 77

107. NZME’s second key criticism is that the stated purpose of the survey, and the questions asked, do not line up with any questions relevant to the grounds of opposition. For example, NZME observes that the test under s 17(1)(a) is whether the opposed marks are likely to deceive or confuse, not whether an (unspecified) business operating under one of the opposed marks would be “associated” with Trade Me.212 NZME submits that people could associate two names for any number of reasons, for instance, one might simply remind them of the other.213 At the hearing, counsel for Trade Me accepted that the term “associated” has different meanings but submitted that the survey results clearly show that people see a connection between the TRADE ME mark and the opposed marks.

108. More importantly, it would have been inappropriate to use legalese in the survey by asking members of the public whether they were likely to be deceived or confused. Those are legal concepts, which need to be translated into plain English in a way that is best suited to getting to the heart of the issue at hand. This is not an easy task and, as the expert in Levi Strauss observed, the perfect questionnaire is elusive.

109. Further, I consider the terminology adopted in the survey (in particular the word “associated”) is consistent with the Court of Appeal’s description of the test under s 17(1)(a) in Sexwax v Zoggs. In that case the Court stated “It is enough if members of the public are caused to wonder whether goods bearing the applicant’s mark are related or connected in trade to the opponent’s goods”.214 “Related” and “connected” are the first two synonyms given for “associated” in the Oxford Dictionary.215

110. My view is also supported by the verbatim survey answers,216 which indicate that many respondents understood that the key survey question asking about the association, between the opposed marks and TRADE ME, was aimed at whether they thought services offered under the opposed marks were related to Trade Me. For example, one of the respondents said “Trade me already sells things,

212 Written submissions, paragraph 132. 213 Written submissions, paragraph 136. 214 Sexwax Incorporated, supra, at [46] (emphasis added). 215 Oxford Dictionary Online https://en.oxforddictionaries.com/definition/associated. 216 To the question immediately following the key association question, namely “And why do you think this is?”. TM No.s 1005684, 1005682 & 1005681 Page 37 of 77

like a ‘shop’ but the ‘me’ on the end makes you think it could be a part of trade me”.217

111. The key question relating to the “association” is by no means perfect but I have taken its shortcomings into account when assessing the weight to be given to the survey evidence. Mr Shaw’s expert evidence is that the first survey provided reliable and useful results.218 In my view the conclusions Mr Shaw sought to draw from the first survey were overall soundly based, even if slightly overstated given the leading nature of the key question.

112. In terms of the second survey, the two questions asked of respondents are set out in full at paragraph 24] above. Neither of these questions are leading. Mr Shaw says that, while he considered the initial survey provided reliable and useful results, given Mr Glading had called that survey into question, Perceptive constructed a new survey that followed his proposed question methodology.219 Mr Shaw’s expert evidence is that the results of the second survey:220

... demonstrate a strong perceived association between each of SHOPME, DRIVEME and PROPERTYME and TRADE ME within the general public. Given that the New Survey provided no background or context in introducing the brands to survey respondents, or at no point made reference to TRADE ME, there was a very strong unprompted association between the three different brands and the TRADE ME brand.

113. In particular, the key findings from the second survey are:

113.1 21% of the market named TRADE ME as the business or brand they would associate with SHOPME;221

113.2 29% of the market named TRADE ME as the business or brand they would associate with PROPERTYME;222 and

217 In answer to the question “And why do you think this” preceded by the question “If there was a service called ‘Shop Me’, do you think that it would be associated with ‘Trade Me’?”: Shaw 1, exhibit C, page 1. Other examples include “Just the similar sounding name would lead me to think it is a branch of the trademe tree”, “Because it sounds like a retail arm of trademe”, and “Because the business names appear as if they are linked or the same company”: Shaw 1, exhibit C. 218 Shaw Reply, paragraph 21. 219 Shaw Reply, paragraph 9. 220 Shaw Reply, paragraph 16. 221 Shaw Reply, paragraph 17.1. TM No.s 1005684, 1005682 & 1005681 Page 38 of 77

113.3 16% of the market named TRADE ME as the business or brand they would associate with DRIVEME.223

114. NZME’s primary criticism of the second survey,224 is the same issue with the word “associate” in the question “If there was a service called SHOPME / DRIVEME / PROPERTYME, would you associate it with any other business?”.225 I have already addressed that criticism above.

115. NZME also observes that respondents who said they were unsure whether they would associate a hypothetical business with “any other business” were still asked “What business or brand would you think it might be associated with?”. NZME submits that the fact a number of people said Trade Me merely demonstrates that people who were forced to think of a possible association came up with that name.226 I consider this criticism is overstated. The survey results show that 40% of the “unsure” respondents also answered “don’t know” to this question and therefore were not forced to name an associated business or brand.227 In addition, of the 219 “yes” respondents, who thought a service called SHOPME would be associated with another business, approximately 162 of them would associate SHOPME with TRADEME.228 Therefore, even if the “unsure” responses are ignored, 16% of total respondents would associate SHOPME with TRADEME.

116. As was the case in Levi Strauss, I consider the deficiencies identified with the surveys conducted on behalf of Trade Me are not of such a nature and magnitude that the survey evidence should be discounted. I accept Mr Shaw’s independent expert evidence that the results of the second survey show that a sizeable portion of the public perceive SHOPME, DRIVEME, and PROPERTYME as associated with the TRADE ME brand and business.229

222 Shaw Reply, paragraph 18.1. The “market” is not defined in Mr Shaw’s declaration in reply but it is clear from the figures provided that “market” means all 1,012 respondents to the survey. As a result, the 29% figure reached for PROPERTYME equates to 297 respondents. 223 Shaw Reply, paragraph 19.1. 224 Leaving aside admissibility, which has already been addressed as a preliminary issue above. 225 Written submissions, paragraph 137. 226 Written submissions, paragraph 138. 227 Shaw Reply, exhibit A, page 4. 228 That is, 74%: Shaw Reply, exhibit A, page 4. 229 Shaw Reply, paragraph 21. TM No.s 1005684, 1005682 & 1005681 Page 39 of 77

Trade declarations

117. Trade Me has filed six statutory declarations from traders, two for each opposition proceeding.230 When these traders gave their declarations their companies or employers had been customers of Trade Me for anywhere between at least a year,231 and over 10 years.232 These witnesses all essentially say that if they saw an auction or advertising service operating under any of the three opposed marks, they would believe that service was provided by Trade Me, part of Trade Me, or connected to Trade Me.233

118. NZME submits that the traders’ evidence should be given no weight.234 In particular, NZME asserts that we do not know how these witnesses were selected, what questions were asked and in what order, or how many other potential witnesses were approached but discarded because their answers were different.235 In response, Trade Me observes that the trade declarations were given on oath and NZME did not seek leave to cross-examine these witnesses.

119. Overall I acknowledge the deficiencies identified by NZME, and observe that the traders’ evidence is not truly independent given they are all likely to have developed a working relationship with Trade Me over the years they have been doing business with Trade Me. I consider the trade declarations are only of very minimal assistance, although I observe that the declarations appear to be consistent with Mr Shaw’s interpretation of the comprehensive survey results, and therefore lend support to his conclusions. Ultimately, I have not needed to rely on this evidence to come to the conclusion I have reached below on the likelihood of confusion.

230 Dacombe and Goss for the DRIVEME opposition proceeding, Melrose and Markham-Barrett for the SHOPME opposition, and Metcalfe and Baker for the PROPERTYME opposition. 231 Goss, paragraph 3. 232 Markham-Barrett, paragraph 5. 233 Goss, paragraph 6, Dacombe, paragraph 6, Melrose, paragraph 7, Markham-Barrett, paragraph 8, Metcalfe, paragraph 7 and Baker, paragraph 5. 234 Written submissions, paragraph 121. 235 In fact at least one, if not the only, question that was asked of the traders is disclosed in their declarations, being whether “as a trader using the TRADE ME platform ... I would think a service under the name DRIVEME was related to Trade Me’s TRADE ME service”, and various minor variations of that question, in part depending on the relevant opposed mark: for example, Dacombe, paragraph 5. TM No.s 1005684, 1005682 & 1005681 Page 40 of 77

Surrounding circumstances

120. There are various surrounding circumstances that are relevant to the assessment of likely deception or confusion in the present case.236 Firstly, I consider the very strong reputation Trade Me has for providing services in connection with property and motor vehicles is relevant to the oppositions against the PROPERTYME and DRIVEME marks.

121. The TRADE ME PROPERTY section of Trade Me’s website was launched in 2007 and since then has become the leading, or one of the leading, property sales and rental advertising platforms across all forms of media.237 Trade Me’s “Property” section appears in a prominent position on the trademe.co.nz landing page.238 As stated, that website was visited on average over 1.9 million times every month in the financial years ending 30 June 2013 and 2014.239

122. The number of listings on TRADE ME PROPERTY is significant, with over one million listings over the course of the financial years ending 30 June 2012, 2013 and 2014.240 On average, the number of unique browsers viewing the TRADE ME PROPERTY section of trademe.co.nz each September was over 110,000 in 2012, over 120,000 in 2013, and over 130,000 in 2014.241 Viewers of the TRADE ME PROPERTY section of Trade Me’s website looked at over 200 million pages within that section of the website in each of the financial years ending 30 June 2012, 2013, and 2014.242

123. In 2013, Trade Me engaged Perceptive Insight to conduct independent survey research to assess the extent of awareness and effectiveness of the TRADE ME PROPERTY offering.243 The 2013 survey gathered responses from 300 recent home buyers and 300 recent home sellers throughout New Zealand,244 via

236 As stated, I am required to consider all the surrounding circumstances: Re Pianotist Co.’s Application, supra at 777, as approved in New Zealand Breweries, supra at 139. 237 Jeffries, paragraphs 18 and 22. 238 Jeffries, paragraphs 19 – 20, exhibits NJ2 and NJ4. 239 Jeffries, paragraph 12. 240 Jeffries, paragraph 23. 241 Jeffries, paragraph 25. I have taken into account that some of the September 2014 views would have occurred after the relevant date. 242 Jeffries, paragraph 26. 243 Jeffries, paragraph 34, exhibits NJ9 and NJ10. 244 Jeffries, paragraph 35 and exhibit NJ9 pages 1-2. “Recent” means within the past 12 months: Jeffries, exhibit NJ9, page 2. TM No.s 1005684, 1005682 & 1005681 Page 41 of 77

computer assisted telephone interviews over the period 14 August to 25 October 2013.245 The survey found that:246

123.1 81% of all home buyers surveyed used TRADE ME PROPERTY when searching for a property.

123.2 47% of buyers surveyed first found their home via TRADE ME PROPERTY.

123.3 68% of buyers surveyed considered TRADE ME PROPERTY to be their primary channel for property hunting.

124. Mr Metcalfe, the director of a large real estate agency,247 also states that in the property market there are two main providers of online advertising services, being Realestate.co.nz and Trade Me.248 Mr Metcalfe’s evidence is that the TRADE ME brand stands out in that marketplace, and he says he is not aware of any similar marks, for example ‘ME’ marks, being used by others.249

125. The TRADE ME MOTORS section of Trade Me’s website was launched in 2003.250 Trade Me’s “Motors” section appears in a prominent position on the trademe.co.nz landing page.251 As stated, that website was visited on average over 1.9 million times every month in the financial years ending 30 June 2013 and 2014.252 The number of listings on TRADE ME MOTORS is very substantial and has grown over time.253 In 2012 there were over 630,000 new listings on TRADE ME MOTORS, more than 640,000 in 2013, and over 700,000 in 2014.254 On average, the number of unique browsers viewing the TRADE ME MOTORS section of trademe.co.nz each September was 159,000 in 2012, 163,000 in 2013,

245 Ibid. 246 Jeffries, paragraph 35 and exhibit NJ9. 247 Metcalfe, paragraphs 1 – 2. 248 Metcalfe, paragraph 6. 249 Ibid. 250 McGee, paragraph 18. 251 McGee, paragraphs 19 – 20, exhibits JM2 and JM4. 252 McGee, paragraph 12. 253 McGee, paragraph 23. Ms Baker, a director and shareholder of a licensed real estate agency in Auckland with sales of almost $100 million, also states that the Trade Me website is its leading source of purchaser enquiries: Baker, paragraphs 1 – 3. 254 McGee, paragraph 23. I have taken into account that some of the new listings in 2014 would have occurred after the relevant date. TM No.s 1005684, 1005682 & 1005681 Page 42 of 77

and 180,000 in 2014.255 Viewers of the TRADE ME MOTORS section of Trade Me’s website made over 300 million page impressions in both 2013 and 2014.256

126. NZME appears to question the relevance of Trade Me’s Motors section.257 It submits there is no evidence that Trade Me uses the word DRIVE as part of any trade mark or in any context.258 NZME emphasises that Trade Me’s connection with vehicles is largely in the activities of buying, selling and advertising and asserts that the DRIVEME mark has to be seen primarily as a reference to “driving”, in which case it would potentially be denoting a taxi or chauffeur service.259 However, this ignores that NZME has applied to register the DRIVEME mark, at least in part, for the same and very similar services to the services for which the TRADE ME mark is used. Taxi and chauffeur services are not in the specifications for the DRIVEME mark. I also agree with Trade Me’s submission that “drive” clearly relates to vehicles.260 Indeed, the dictionary definitions for “drive”, given above, refer to a “motor vehicle” and a “car”.

127. In my view, the popularity of Trade Me’s services relating to property and motor vehicles is such that this increases the likelihood of confusion if NZME offers the opposed services under the PROPERTYME and DRIVEME marks.

128. The second surrounding circumstance relates to Trade Me’s submission that the significant reputation of the TRADE ME mark increases the risk that consumers will perceive the opposed marks as a brand extension of the distinctive original brand.261 Trade Me notes that consumers are aware that the TRADE ME business has associated categories of Jobs, Motors, and Property and that another branded offering is business-as-usual.262 I accept that the TRADE ME mark has a strong reputation for services relating to motors, property, and jobs for the reasons given above.

129. In terms of the SHOPME mark, Trade Me submits that the overall conceptual similarity and the essential and common ME element, say to the consumer that

255 McGee, paragraph 26. 256 McGee, paragraph 27. Again, I have taken into account that some of the page impressions in 2014 would have occurred after the relevant date. 257 Written submissions, paragraphs 100 – 101. 258 Written submissions, paragraph 101. 259 Ibid. 260 Written submission, paragraph 124. 261 Written submissions, paragraph 77.3, 113.3 - 113.4, and 127.3 – 127.4. 262 Written submissions, paragraph 77.2. TM No.s 1005684, 1005682 & 1005681 Page 43 of 77

this is a brand extension.263 Trade Me asserts this is even more so where consumers know that Property is a featured category of trademe.co.nz.264 Further, Trade Me submits it is a small step from seeing Property as a category of TRADE ME to being caused to wonder whether PROPERTYME is a brand extension of TRADE ME.265 With regard to the DRIVEME mark, Trade Me also submits that where consumers know that vehicles are a featured category of trademe.co.nz, it is a small step from seeing vehicles as a category on TRADE ME to being caused to wonder whether DRIVEME is a brand extension of TRADE ME.266

130. NZME does not accept Trade Me’s brand extension submissions and instead focuses on the fact that Trade Me’s evidence does not establish a reputation in any other “-ME” marks, or a “family” of ME marks.267 It says the significant reputation in the TRADE ME mark for Trade Me’s core services does not attach specifically to the “ME” suffix,268 and states there is no evidence that the word or suffix ME is associated with Trade Me’s business, other than as part of the combination TRADE ME.269 NZME also claims there is no evidential basis for the argument that consumers will see the opposed marks as brand extensions of TRADE ME.270 However, verbatim survey responses, to the question why do you think ‘Shop Me’ would be associated with ‘Trade Me’, include the following, among other similar responses:271

Trade Me currently has other things under its umbrella, this would just become another althouh [sic] I struggle to think what it would offer that is not already offered ...

Because of the name – Shop Me might be new item shopping ...

Keeps the family of brands together ...

Names are too similar. It sounds like a Trade Me spinoff just for online shops ...

263 Written submissions, paragraph 77.3. 264 Written submissions, paragraph 113.3. 265 Ibid. 266 Written submissions, paragraph 127.3. 267 Written submissions, paragraph 82. 268 Ibid. 269 Written submissions, paragraph 141(d). 270 Written submissions, paragraph 117. 271 Shaw 1, exhibit C. TM No.s 1005684, 1005682 & 1005681 Page 44 of 77

131. A further surrounding circumstance is the existence of other website names and trade marks on the Register, which comprise “ME” preceded by another word.272 NZME submits these are common and are in respect of services identical, similar or comparable to those of Trade Me.273 In addition, NZME asserts that such trade marks have been on the Register for many years and that these websites existed at the relevant date.274 NZME submits that these “ME” websites and registered marks demonstrate that the [WORD]ME structure is far from exclusive to Trade Me, and that these businesses coexist with Trade Me’s business.275

132. The evidence of NZME’s Legal Counsel includes exhibits from a series of websites that have domain names ending in ME.276 However, Trade Me observes that those exhibits do not show any trading entity using a “-ME” mark on any of the services at issue in these proceedings, and that several of the websites are overseas based.277 For the most part, there are far fewer similarities between the services offered on these websites and Trade Me’s services, in comparison to the opposed services. For example, none of the websites appear to relate to online auction services.

133. Trade Me observes there is no evidence to substantiate the extent of use of the “- ME” marks referred to by NZME,278 and therefore it is unclear whether such marks have any impact on consumers’ perception. In terms of the registered trade marks, counsel for Trade Me submits that what is important is what marks are being used in the marketplace, and refers to Kerly’s Law of Trade Marks and Trade Names, which states:279

... mere evidence of entries on the register of trade marks, without evidence of whether and to what extent the marks or names concerned are used, is of little or no value.

272 Whitney, paragraphs 18 – 23 and exhibits AW4 and AW5. 273 Written submissions, paragraph 81. 274 Ibid. 275 Written submissions, paragraph 79. 276 Whitney, paragraph 20, and exhibit AW4. 277 Written submissions, paragraph 79. 278 Oral submissions at the hearing and written submissions, paragraph 79 279 Kerly’s Law of Trade Marks and Trade Names, (12th ed). The latest edition of Kerly’s Law of Trade Marks and Trade Names states that “... evidence of entries in the register of trade marks will not be of assistance. Such entries do not necessarily reflect the position in the marketplace or affect the way in which marks are perceived and remembered” (footnotes ommitted) at 9-098. TM No.s 1005684, 1005682 & 1005681 Page 45 of 77

134. At the hearing counsel for Trade Me emphasised that the opponent is not seeking to prevent all registrations of “-ME” marks for the relevant services. Indeed, Trade Me has not opposed registration of NZME’s other “ME” marks, such as INFORMME, ROCKME, AMPLIFYME, WATCHME, EXPERIENCEME and BITEME.280 Instead, Trade Me observes that it is only the opposed marks in the present case that it has taken issue with due to their visual, aural, and conceptual similarity, and in light of the particular use of the TRADE ME mark. I also note that the memorable jarring syntax shared by the opposed marks and the TRADE ME mark is not present in many of NZME’s registered marks, which adopt usual grammar and which one would expect to see in an ordinary sentence, for example INFORMME, ROCKME, WATCHME, and BITEME. The same applies to most of the other registered trade marks relied on by NZME,281 and is another distinguishing feature between those marks and the opposed marks.

Overall assessment of likelihood of deception or confusion

135. The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. 282 But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck, and this is ultimately a question of significance of the numbers in relation to the awareness of the mark in question.283

136. The evidence in the present case establishes that, at the relevant date, the TRADE ME mark had a very strong reputation in New Zealand for a range of services. By contrast, the opposed marks had not been used in New Zealand prior to the relevant date, and therefore NZME’s marks had no reputation at that time.284 I consider this a factor that increases the likelihood of confusion.

137. NZME submits that because of the well known status of TRADE ME it is inconceivable that people would be confused or deceived by use of the opposed

280 Whitney, paragraph 12. 281 Set out in Whitney, paragraph 22. 282 Pioneer Hi-Bred, supra at 62. 283 Sexwax Incorporated, supra at [49]. 284 Given there is no evidence of the opposed marks being used in New Zealand prior to the relevant date, it is not surprising that there is no evidence of any confusion. Indeed, if, as appears to be the case, the opposed marks have not been used in New Zealand, it would not be possible for any evidence of confusion to exist between the opposed mark and the opponent’s marks. Regardless, assessing the likelihood of confusion is an abstract exercise and does not depend on whether anyone has in practice been confused or deceived: Rousselon Frères et Cie v Horwood Homewares Ltd [2008] RPC 30 in the context of the validity of a mark in an invalidity application. TM No.s 1005684, 1005682 & 1005681 Page 46 of 77

marks.285 However, no authority is cited for this proposition and I consider it runs counter to the Court of Appeal’s statement in Sexwax v Zoggs that the question of likely confusion must be assessed against the reputation of the opponent’s mark.286 In addition, the Court of Appeal dismissed a similar submission in Anheuser-Busch Inc v Budweiser Budvar National Corporation. In that case Budweiser Budvar argued that because Anheuser-Busch’s BUD and BUDWEISER products were so well known, the likelihood of Budweiser Budvar’s product being confused with it was minimised.287 The Court of Appeal stated (emphasis added):288

Such an argument does not take into account the dynamic nature of product markets with new purchasers entering as others depart. Further, if it were to become established as a principle, it would conflict with New Zealand’s international obligations to protect “Well-known marks” in Art 6bis of the Paris Convention for the Protection of Industrial Property and Art 16.2 of the TRIPS Agreement.

138. NZME submits that imperfect recollection will only forgive a limited degree of difference between the marks.289 However, Trade Me does not rely solely on recollection confusion. It also refers to “source confusion” where consumers may better remember TRADE ME, and realise the opposed marks are different, but still think the services offered under the opposed marks are from the same organisation as the TRADE ME service, due to the common memorable syntax violation and conceptual similarity.290

139. Trade Me observes that the more distinctive the earlier mark, whether distinctive per se or due to acquired reputation, the greater the likelihood of confusion.291 For the reasons discussed above, I consider the TRADE ME mark is distinctive to such a degree that this contributes to the likelihood of confusion.

140. Ms Whitney’s evidence is that in addition to the NZME mark, terms such as WOWME, ROCKME and ASKME have been used by NZME since the relevant

285 Written submissions, paragraph 116. 286 Sexwax Incorporated, supra at [65]. 287 Anheuser-Busch Inc v Budweiser Budvar National Corporation [2003] 1 NZLR 472 at [135]. 288 Ibid. 289 Written submissions, paragraph 89. 290 Written submissions, paragraphs 77.1, 113.1, and 127.1. 291 Written submissions, paragraph 67, citing Sabel BV v Puma AG [1998] RPC 199 at 224/7-35. A mark may have a particularly distinctive character either per se, or because of the reputation it enjoys with the public: Sabel v Puma, supra at 22-24. TM No.s 1005684, 1005682 & 1005681 Page 47 of 77

date.292 Ms Whitney says that from 24 September 2014 to the date of her declaration, on 10 December 2015, she has not heard of any incidences of people thinking NZME or its businesses are associated with Trade Me.293 She also says that, given her role as Legal Counsel, she would expect any incidents of confusion to come to her attention.294 However, this evidence does not relate to the specific opposed marks in issue here, and I am not convinced that reports of confusion would necessarily have been brought to Ms Whitney’s attention. Further, in Nortel Networks Corporation v Telecom Corporation of New Zealand,295 Goddard J stated that “... the absence of any such evidence [of past confusion or deception] only proves a negative and is not particularly helpful …”.

141. The distinctions between deception and confusion are set out in Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd.296 Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the opposed mark come from some other source and confused to being caused to wonder whether that might not be the case.297

142. Given the services in issue are sold to the general public for domestic use, I am entitled to take into account my own experience and reactions as a member of the public when considering whether purchasers are likely to be deceived or confused by use of the opposed mark on the opposed services.298 In the present case my reaction is that use of the opposed marks by NZME on the opposed services would cause me to wonder whether those services originated from Trade Me.

143. Ultimately, for the reasons set out above, I consider that, if NZME began offering the opposed services under the SHOPEME, PROPERTYME or DRIVEME marks, at the relevant date, a substantial number of people are likely to be caused to wonder whether those services originated from Trade Me or are associated with

292 Whitney, paragraphs 9 – 10. 293 Whitney, paragraphs 10 and 25. 294 Whitney, paragraph 10. 295 [2004] CIV-2003-485-2631 at [45]. 296 Pioneer Hi-Bred, supra at 62. 297 Ibid, citing New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115, 141. 298 Pioneer Hi-Bred, supra at 62. TM No.s 1005684, 1005682 & 1005681 Page 48 of 77

Trade Me’s services. I consider the marks are not so similar as to deceive consumers.

Finding

144. Trade Me has established a sufficient reputation in its TRADE ME mark. It, therefore, falls to NZME to establish, on the balance of probabilities, that the opposed marks are not likely to deceive or confuse. NZME has not discharged that onus. Accordingly, Trade Me’s ground of opposition based on s 17(1)(a) of the Act is successful in all three proceedings.

Remaining grounds of opposition

145. In view of my conclusion for the above ground of opposition, it is unnecessary to reach a determination on the other grounds. However, for the sake of completeness, I have considered the remaining grounds briefly.

Sections 13(1) and 32(1) - ownership

146. Section 13(1) of the Act provides that a trade mark is registrable under the Act when all the requirements set out in s 13(2) are met.299 The first requirement under s13(2) of the Act is that “an application for the registration of the trade mark must be made in accordance with this Act”.300

147. Pursuant to section 32(1) of the Act:301

A person claiming to be the owner of a trade mark ... may, on payment of the prescribed fee (if any), apply in the prescribed manner (if any) for the registration of the trade mark ... used or proposed to be used ....

148. “Owner” is defined in s 5 of the Act. Section 5(1)(d) states that “owner” “in relation to an unregistered trade mark, means the person who owns all of the rights in the mark”.

299 Section 13(1) of the Act. 300 Section 13(2)(a) of the Act. 301 The words “claiming to be the owner” were added in order to clarify “that it is the owner of the trade mark who applies for its registration”: Statutes Amendment Bill (No. 5) 2005 (249-1) (explanatory note) at 12. TM No.s 1005684, 1005682 & 1005681 Page 49 of 77

149. The relevant date for determining a claim to ownership is the date of the application to register the trade mark in issue.302 The applicant for registration carries the onus of proving ownership.303 Therefore, NZME has the onus of establishing that it was the true owner of the opposed marks in New Zealand as at 23 September 2014. The standard of proof is the balance of probabilities.

150. A person “claiming to be the owner” must justify its claim and establish its right.304 It is clear that the applicant for registration should be in possession of some proprietary right, which if questioned, can be substantiated.305

151. In Aqua Technics Pool and Spa Centre NZ Ltd v Aqua-Tech Ltd the Court of Appeal confirmed that a claim to proprietorship under s 26 of the 1953 Trade Marks Act must be a “legitimate claim”.306 The Court of Appeal approved the statement in Newnham v Table for Six (1996) Ltd as to the requirements for a legitimate claim to proprietorship, being that:307

151.1 There is no prior use or prior assertion of proprietorship.

151.2 The applicant is using or has a sufficiently definite intention to use the mark.

302 Chettleburgh v Seduce Group Australia Pty Limited [2012] NZHC 2563 at [3](c) and [52] per Woodhouse J. See also Chettleburgh v Seduce Group Australia Pty Limited [2014] NZHC 2220 at [64] per Fogarty J and The North Face Apparel Corporation v Sanyang Industry Company Limited [2014] NZCA 398 at [12], [14], and [16]. In Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 5 Richardson J also observed that “On an application for registration the rights of the parties are to be determined as at the date of the application” at 61. Richardson J’s statement was made in the context of a claim under s 16 of the Trade Marks Act 1953, being the predecessor to s 17(1) of the current Trade Marks Act. 303 The North Face, supra at [21] citing Pioneer Hi-Bred Corn, supra at 61 and Polaroid Corp v Hannaford & Burton Ltd [1975] 1 NZLR 566 (CA) at 569. 304 The North Face, supra at [21] citing North Shore Toy Company Limited v Charles l Stevenson Limited [1973] 1 NZLR 562 (SC) at 571. 305 Re Vitamins Ltd’s Application [1956] RPC 1 at 12, as cited in North Shore Toy Company, supra at 571. A claim to ownership, in a trade mark application, must have some substance: Chettleburgh, supra at [33]- [37] per Woodhouse J. What is meant by “substance” is that the claim must be capable of being established in law and in fact as valid if there is a challenge: Chettleburgh, supra at [40] per Woodhouse J. 306 Aqua Technics Pool and Spa Centre NZ Ltd v Aqua-Tech Ltd [2007] NZCA 90 at [13] – [16]. Cited by Woodhouse J with approval in Chettleburgh, supra at [48]. Woodhouse J was satisfied that the law under the 1953 Act in respect of the scope of the expression “claiming to be the proprietor” continues to apply under the 2002 Act: at [49]. 307 Aqua Technics, supra at [15] – [16], and Newnham v Table for Six (1996) Ltd (1998) 44 IPR 269 at 278 (HC) citing Brown and Grant, The Law of Intellectual Property in New Zealand (1989) at [2.8]. Those authorities applied section 26(1) of the former Trade Marks Act 1953. However, decisions relating to claims to “proprietorship” under the old Act continue to apply directly to “ownership” issues under the current Act: The North Face Apparel Corporation v Sanyang Industry Company Limited [2014] NZCA 398 at [20] referring to Ian Finch (ed) James and Wells Intellectual Property Law in New Zealand (2nd ed, Thomson Reuters, Wellington, 2012) at 417. TM No.s 1005684, 1005682 & 1005681 Page 50 of 77

151.3 There is no fraud or breach of duty involved.

152. In essence, this ground of opposition is based on Trade Me’s claim that, when the trade mark applications were filed, the original applicant (Ridge Road Investments Limited (RRI)) did not own all the rights in the opposed marks, and had no intention to use those marks.

153. Trade Me relies on the following in support of its allegation that RRI was not the owner of the opposed marks as at the application date (23 September 2014):308

153.1 RRI is a Kensington Swan nominee company.309 Kensington Swan are the solicitors on record for the applicant in this proceeding. RRI filed the applications for the opposed marks on the instructions of APN Holdings NZ Limited (the parent company of NZME).310 NZME’s Legal Counsel, Ms Whitney, says the applications were filed pursuant to a declaration of trust dated 20 August 2014 by RRI, as nominee and bare trustee for APN, with the intention that they be assigned to APN or a subsidiary of APN.311 Trade Me observes that RRI was not a trustee of NZME.312 On APN’s instructions, the relevant trade mark applications were assigned from RRI to NZME on 10 February 2015,313 approximately a week after notice of a possible opposition by Trade Me was given.314

153.2 NZME’s pleadings state that, at all material times, APN and/or NZME was the owner of the opposed marks and the beneficial owner of the applications.315 Ms Whitney also states that at all times before and during the trade mark application process APN and/or NZME was the owner of the opposed marks and the beneficial owner of the relevant trade mark applications while they remained nominally in the name of RRI.316 Trade Me therefore considers that NZME has admitted that RRI

308 Written submissions, paragraph 19. 309 Whitney, paragraph 13. 310 Ibid. 311 Whitney, paragraph 14. The declaration of trust has not been annexed to Ms Whitney’s statutory declaration. 312 Written submissions, paragraph 24. 313 Whitney, paragraph 15. 314 Trade Me filed an application for an extension of time to oppose, via IPONZ’s online case management system, on or about 3 February 2015. However, counsel for NZME observes that the application for an extension did not specifically refer to any ownership dispute, and that this ground was only raised clearly in the notice opposition, which was filed after the assignment took place. 315 Counter-statements, paragraphs 1.2(c). 316 Whitney, paragraph 15. TM No.s 1005684, 1005682 & 1005681 Page 51 of 77

did not own all (or any) rights in the opposed marks at the relevant date.317

153.3 Trade Me submits that, given the rights granted by a registered trade mark effectively arise from the date of application, it is critical for the commercial community to know from the outset who has applied to register a trade mark.318 Registration is notice to the world,319 and such notice enables commercial decisions.320 Regulation 42(1)(a) of the Trade Mark Regulations 2003 provides that an application for registration must include the applicant’s name and address.

153.4 Ms Whitney says that the reason the applications were filed by RRI as nominee and bare trustee for APN, was that the planned new NZME branding was highly confidential until it was made public on 24 September 2014 (being the day after the applications were filed).321 Ms Whitney’s evidence is that APN wished to apply for trade mark protection but did not want competitors or other parties to be able to find out that it was interested in these trade marks before the high profile public launch of the new brand NZME.322 Trade Me submits that the motivation for APN to keep the applications secret was to conceal that information from competitors, and that is contrary to the purpose of a public register and regulation 42.323

153.5 Trade Me alleges that applications filed by a solicitors nominee company with no interest in the trade marks, and deliberately designed to frustrate the public information component of the trade mark system, were not made in accordance with the Act.324 Trade Me refers to Chettleburgh v Seduce Group Australia Pty Limited where Woodhouse J stated that “if an Act of Parliament requires that an applicant must claim to be the owner, Parliament would not have intended that it would be sufficient if

317 Written submissions, paragraph 23. The relevant date being the date the trade mark applications were filed. 318 Written submissions, paragraphs 25-26. 319 NV Sumatra Tobacco Trading Company v British American Tobacco (Brands) Inc [2010] NZCA 24 at [80]. 320 Written submissions, paragraph 26. 321 Whitney, paragraph 14. 322 Ibid. 323 Written submissions, paragraph 27 324 Ibid, paraphrasing s 13(2) of the Act. TM No.s 1005684, 1005682 & 1005681 Page 52 of 77

the person who states a claim to ownership in fact has no genuine belief in the claim”.325

154. Trade Me also alleges that, as at 23 September 2014, RRI had no intention to use the opposed marks, whether by itself or by controlling the use by another party,326 because:

154.1 Ms Whitney’s evidence is that when the applications were filed APN had an intention to use the opposed marks and/or for them to be used by a subsidiary of APN.327 Further, Ms Whitney says that RRI filed the applications for the sole purpose of subsequently assigning them to APN or a subsidiary of APN.328 Accordingly, Trade Me submits that RRI never intended to use the opposed marks.329 Trade Me asserts that it is no answer that the opposed marks were subsequently assigned to NZME because at the date of the applications the applicant had no intention to use.330

154.2 Ms Whitney also says that, before the assignments, RRI would have consented to any use of the opposed marks.331 Trade Me submits that RRI was, therefore, never going to “control” the use of the opposed marks.332

155. In summary, NZME submits:

155.1 RRI filed the applications as a trustee, which is a normal arrangement in the circumstances of this case.333 Under s 183 of the Act, no notice of a trust may be entered on the Register but there is no prohibition on a registration being owned by a trust, through the mechanism of the trustees themselves being the registered owner.334 NZME submits that s

325 Chettleburgh v Seduce Group Australia Pty Limited [2012] NZHC 2563 at [34]. 326 Written submissions, paragraph 39. 327 Whitney, paragraph 17. See also paragraph 1.2(b) of the counter-statements. 328 Whitney, paragraph 17. 329 Written submissions, paragraphs 30 and 33. 330 Written submissions, paragraph 33. 331 Whitney, paragraph 16. The counter-statements also admit that RRI would have consented to any use of the opposed marks by APN or NZME prior to the assignments to NZME: paragraphs 1.2(e). 332 Written submissions, paragraphs 32-33. Section 7(2) of the Act provides that references in the Act to use of a trade mark by the owner includes use by a person other than the owner if that use is authorised by, and subject to, the control of the owner. 333 Written submissions, paragraphs 27 and 49. 334 Written submissions, paragraphs 35 and 49. TM No.s 1005684, 1005682 & 1005681 Page 53 of 77

183 effectively acknowledges this by prohibiting only notice of any trust being entered on the register.335

155.2 By filing the applications RRI became the legal owner of all the legal rights in the marks but the beneficial owner of the applications/marks was APN.336 NZME submits that, to the extent the rights were divided (legal with RRI, beneficial with APN) this must always be the case where trustees file an application,337 and that RRI was the owner of the marks to the extent that a trustee can be an owner. Further, NZME states that the fact RRI was a trustee for APN does not change that, and it reiterates that APN was the beneficial owner.338 However, Trade Me observed that on this basis NZME is neither the legal or beneficial owner.

155.3 The applications were filed on the instructions of APN.339 APN/NZME had an intention to use the marks.340 The applications were assigned to NZME a few months after filing. 341 NZME submits that, where an applicant is a trustee, intention to use by the applicant cannot be an applicable ownership principle. Rather, NZME contends that in that situation, the intention to use is on the part of the beneficial owner, and the evidence is clear that APN/NZME had an intention to use the marks.342

155.4 In terms of Trade Me’s criticism about the identity of the applicant being concealed from competitors, NZME notes that applications can be filed by trustees, and there is no prohibition on keeping secret the identity of the beneficial owner of a trade mark application.343

155.5 NZME submits that it is a relatively common practice for firms to file trade mark applications on behalf of a commercial entity, in the name of

335 Written submissions, paragraph 35. 336 Written submissions, paragraph 40(c)-(e). 337 Written submissions, paragraph 40(f). 338 Written submissions, paragraph 42. 339 Whitney, paragraph 13. 340 Written submissions, paragraph 49. 341 Within five months: Whitney, paragraphs 2 and 15. Written submissions, paragraph 49. 342 Written submissions, paragraph 46. 343 Written submissions, paragraphs 43-44. TM No.s 1005684, 1005682 & 1005681 Page 54 of 77

a nominee.344 No evidence was filed in support of this proposition. NZME submits that the reason for such an approach is usually for the same as in the present case, namely that the planned new NZME branding was highly confidential and it did not want competitors or other parties to find out that it was interested in the opposed marks before the high profile public launch of the new brand NZME on 24 September 2014.345 However, it seems to me that this purpose could have been achieved by filing the applications for the opposed marks as late as possible on the day before the launch, given that even if that came to the attention of competitors that day it is unlikely they would have time to act on that information before the public launch.

156. This is a complex and novel issue. Neither party referred to any authorities directly on point. However, counsel for both parties cited the Australian decision of Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406.346 In that case a company director filed the trade mark application in his own name, instead of in the name of his company (the correct owner). While the trade mark application was still pending, the company became the owner by way of an assignment from the director.

157. Trade Me acknowledges that the Insight decision suggests that in Australia it is sufficient for an assignee and subsequent applicant to be the true owner with the intention to use the trade mark.347 However, Trade Me submits that the decision turns on the definition of “applicant” in s 6 of the Australian Trade Marks Act, which states that “applicant” means the “person in whose name the application is for the time being proceeding” (emphasis added).348 Trade Me observes that the definition of applicant in the New Zealand Act does not include such a time adjustment, and the validity of a trade mark application is assessed at the date of application.349 Trade Me also refers to s 13(2)(a) of the New Zealand Act and notes that it is the application that must be made in accordance with the Act,350 and submits that the Insight case does not sit comfortably with the statutory structure in New Zealand. Further, Trade Me argues that the Australian decision

344 Written submissions, paragraphs 26 and 49. 345 Written submissions, paragraph 26 and Whitney, paragraph 14. 346 Trade Me’s written submissions, paragraph 34 and NZME’s oral submissions. 347 Written submissions, paragraph 34. 348 Ibid. 349 Written submissions, paragraph 35. 350 Written submissions, paragraph 36. TM No.s 1005684, 1005682 & 1005681 Page 55 of 77

deals with innocent mistake unlike the present case of deliberate concealment, and contends that subsequent assignment cannot overcome a deliberate application by an entity that does not intend to use the mark.351

158. NZME submits that the Insight case is very persuasive authority to the effect that even if an original claim to ownership is defective,352 it can be cured by an assignment during the opposition process, i.e. prior to registration. NZME asserts that there is effectively no difference between the definition of “applicant” in the Australian and New Zealand Trade Marks Acts because the definition of “assignee” in s 5(1)(b) of the New Zealand Act includes the assignee of an application, if the assignment has been effected under s 82.353

159. In my view, this issue is finely balanced. On the one hand, I have reservations about prohibiting registration, on a seemingly technical ground, when the Act and Regulations do not clearly address this precise situation. There are also exceptions to the statutory ownership principles, for example, in the case of a certification trade mark the parties who intend to use the mark are those whose goods or services the applicant/owner intends to certify.354 Similarly, in the case of a collective trade mark the intention is for the members of the collective association to use the mark, which has been registered in the name of the collective association, as applicant/owner.355

160. I also have concerns about the ramifications of allowing such a ground of opposition if the approach adopted by NZME, when filing in RRI’s name, is indeed a common practice. However, I have no evidence before me to confirm whether the approach taken by the applicant in the present case is a longstanding or usual practice in these sorts of circumstances. Even if it is, that of course does not mean it is a practice that complies with the Act.

351 Written submissions, paragraphs 35 and36. 352 NZME does not accept, though, that the application, originally filed in RRI’s name, was defective. 353 Section 82(1) of the Act provides that a trade mark is assignable in respect of all or some of the goods for which it is registered. Section 82(4) states that if a trade mark is assigned before the actual date of registration, the applicant or the person to whom the trade mark has been assigned may apply to the Commissioner to change the name of the applicant on the application. 354 Under s 14 of the Act a certification mark may be registered in the name, as owner, of the person who certifies the goods/services but may not be registered in the name of a person who carries on a trade in goods/services of the kind to be certified. 355 Under s 15 a collective mark may be registered in the name of a collective association, as owner, in respect of goods/services provided by its members. TM No.s 1005684, 1005682 & 1005681 Page 56 of 77

161. On the other hand, on a plain reading of s 32(1) only a person “claiming to be the owner of a trade mark” may apply for registration of that mark. As I understand it, NZME does not assert that RRI is claiming to be the owner of all the rights in the opposed marks.356 Further, the evidence does not support RRI ever having an intention to use the opposed marks.357 While there are statutory exceptions to the requirements for a legitimate claim to ownership,358 such as those mentioned above, there is no express statutory exception providing that a bare nominee and trustee, such as RRI, satisfies the statutory ownership principles where it has filed the application on behalf of a commercial entity that intends to use the mark.

162. I am also not convinced that NZME needed to file the applications in RRI’s name in order to keep the launch of its “ME” brands confidential. As stated, if the applications for the opposed marks had been filed at the eleventh hour on the day before NZME’s brand launch it seems unlikely that competitors would have become aware of those applications prior to the launch.359

163. Ultimately I am not required to reach a decision on this ground, given my finding in relation to 17(1)(a). However, in light of the cogency of the competing arguments, applicants who adopt the same approach as NZME should be aware there is a risk that an ownership ground of opposition, such as that argued by Trade Me, may succeed.

Section 17(1)(b) ground – Fair Trading Act 1986 and passing off

164. Section 17(1)(b) of the Act provides that:

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.

356 Applying the definition of “owner” in s 5 of the Act. 357 A requirement of a legitimate claim to ownership under Newnham v Table for Six. Whitney, paragraphs 14 and 17. 358 Another example referred to by counsel for NZME at the hearing is honest concurrent use. In those circumstances there has been a prior use or prior assertion of ownership by the other owner. However, counsel for Trade Me observed that s 26(b) of the Act is a clear statutory exception to the requirements for a legitimate claim to ownership (no prior use or prior assertion of ownership being the first of the three requirements in Newnham v Table for Six). Mr Arthur submitted that the Act is clear and absent any statutory exception there is no provision for RRI to avoid the standard ownership rules in circumstances such as the present case. 359 At the hearing, counsel for NZME observed that it would not have been prudent to file the applications simultaneously with the launch of the relevant brands because there is no priority as a result of the time of day an application is filed. That is, under s 34(3) of the Act if two competing applications are filed by different parties on the same day, they are to be treated as if they were received at the same time. TM No.s 1005684, 1005682 & 1005681 Page 57 of 77

165. Trade Me claims that use of the opposed marks by NZME for the services in the application would be contrary to New Zealand law because such use would breach ss 9, 11, 13 and 16(1)(c) of the Fair Trading Act, and would constitute passing off.360 The evidential thresholds for establishing breaches of the Fair Trading Act and passing off are higher than the threshold for establishing that use of a mark is likely to deceive or cause confusion under s 17(1)(a) of the Act.361

166. The parties agreed at the hearing that it is not necessary for me to reach a finding on this ground of opposition if the s 17(1)(a) ground is successful. Counsel for Trade Me observed there is no particular advantage for Trade Me if it succeeds with both s 17(1) grounds. That approach is consistent with the recent decision in Tyremax LP v Bridgestone Licensing Services, Inc [2017] NZIPOTM 13, where Assistant Commissioner Glover observed that it is not often appropriate for a definitive finding to be made in this forum that use of a mark amounts to a breach of the Fair Trading Act or passing off.362 It is particularly difficult to make the sort of assessment required under the Fair Trading Act and the tort of passing off in circumstances where NZME had not yet used the opposed marks for the opposed services, as at the relevant date. This is because both passing off and Fair Trading Act claims are highly fact-specific causes of action.363

167. In Shenzen Motoma Power Co Ltd v Motorola Trademark Holdings LLC [2016] NZIPOTM 25 Assistant Commissioner Casey QC also commented that raising alternative grounds of opposition under ss 17(1)(a) and 17(1)(b) is of limited utility when the alleged unlawfulness is breach of the Fair Trading Act or passing off.364 If the opponent’s s 17(1)(a) ground is successful, registration will already be prohibited. If the opponent does not establish that s 17(1)(a) applies, then it is

360 Notices of opposition, paragraphs 3 and 4. 361 Daimler AG (formerly DaimlerChrysler AG) v Sany Group Co Limited [2014] NZHC 532 at [49] – [51]. See also The Scotch Whisky Association, supra at [70](b) and [85]; K-Swiss Inc v Federation of the Swiss Watch Industry FH (2009) 83 IPR 635, supra at [51]-[53] referring to New Zealand Milk Brands Ltd v NV Sumatra Tobacco Trading Co HC Wellington CIV-2007-485-2485, 28 November 2008 at [59]-[60]. 362 Tyremax, supra at [157]. 363 See, for example, the comments of Dobson J in In New Zealand Milk Brands Ltd v N V Sumatra Tobacco Trading Co, supra at [61]. The “fair and notional use” test under s 17(1)(b) does not fit comfortably with the fact-specific nature of the Fair Trading Act or passing off: Tyremax, supra at [157] citing Switza Watch Company Limited v Federation of the Swiss Watch Industry FH [2016] NZIPOTM 13 at [110] – [123]. 364 Shenzen Motoma, supra at [78]. TM No.s 1005684, 1005682 & 1005681 Page 58 of 77

well established that the higher thresholds for establishing a breach of the Fair Trading Act or the tort of passing off will not be met.365

Section 25(1)(b) ground

168. Section 25(1)(b) of the Act provides that:

The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if….it is similar to a trade mark (trade mark C) that belongs to a different owner and that is registered, or has priority under section 34 or section 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.

169. The comparison, under s 25 of the Act, is between use of both the opposed marks and the opponent’s registered marks in a normal and fair manner.366 The comparative exercise under s 25(1)(b) is an entirely notional one.367

170. For the purposes of this ground of opposition, Trade Me relies on the following registered trade marks (Trade Me’s registered marks):368

170.1 TRADE ME; TRADEME; trade me; trademe, registration no. 734566.

170.2 ; , registration no. 734525.

170.3 ; , registration no. 734507.

365 Tyremax, supra at [78] citing Daimler AG (formerly DaimlerChrysler AG) v Sany Group Co Limited [2014] NZHC 532 at [49] – [51] (approach generally accepted by the Court of Appeal in Daimler AG v Sany Group Co Limited [2015] NZCA 418 at [39] – [43]) and K-Swiss Inc v Federation of the Swiss Watch Industry FH CIV-2009-485-197 at [53]. 366 VB Distributors v Matsushita Electric Industrial Co (1999) 9 TCLR 349 at [45] (which was a case under the predecessor to s 25(1)(b) of the Act, being s 17(1) of the Trade Marks Act 1953) citing Effem Foods Ltd v Commissioner of Trade Marks (1996) 7 TCLR 246, at 251. 367 It contemplates any fair use of the marks in relation to any of the goods covered by the registration: Anheuser-Busch Inc v Budweiser Budvar National Corp [2003] 1 NZLR 472 at [66] (which was a case under s 17(1) of the Trade Marks Act 1953). 368 Paragraph 5.1. TM No.s 1005684, 1005682 & 1005681 Page 59 of 77

170.4 Trade Me Jobs; TRADE ME JOBS; trade me jobs, registration no. 762112.

171. IPONZ’s online register shows that Trade Me’s registered marks no.s 734525 and 734507 expired on 25 August 2015 with renewal fees unpaid. Trade Me submits that nothing turns on that because the issue is whether there was deception or confusion as at the date of application, at which point those marks were still on the register.369 NZME does not accept this, and submits that Trade Me cannot rely on registration no.s 734525 and 734507 given both registrations have expired.370 NZME relies on the wording of s 25(1)(b), which refers to a trade mark that belongs to a different owner “and that is registered”.

172. Counsel for Trade Me submits that assessing the parties’ rights as at the application date is consistent with the scheme of the Act, given the rights that attach to registered marks accrue from the “deemed date of registration”, which is defined as the date of the application.371 Trade Me also refers to s 60 of the Act, which applies where the opponent’s marks have expired due to non-payment of the renewal fee, as is the case with two of Trade Me’s marks. Under s 60(1) of the Act a mark that has been removed from the register for non-payment of the renewal fee must be taken into account for a period of one year after the date of expiry of the registered trade mark when determining the registrability of a later application.

173. In view of Trade Me’s successful s 17(1)(a) ground of opposition, it is not necessary for me to determine the exact date for assessing whether registration should be prohibited under s 25(1)(b) of the Act.372 For the purposes of my obiter comments on this ground I have considered Trade Me’s expired marks given it is at least arguable that they are relevant despite expiring after the application date.

174. There are three inter-related elements to the inquiry under s 25(1)(b) of the Act. These elements are usually considered and answered separately in the course of

369 Written submissions, footnote 81. 370 Written submissions, paragraphs 155 and162. 371 Sections 11, 10 and 5(1)(b) of the Act. 372 It was also unnecessary to determine this issue in S.C. Johnson & Son, Inc v International Consolidated Business Pty Ltd [2017] NZIPOTM 4 (17 January 2017), which related to a revoked, rather than expired, mark. However, some of the discussion around the relevant date in that case is also relevant to this issue in the present case. TM No.s 1005684, 1005682 & 1005681 Page 60 of 77

making an overall global assessment.373 In NV Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated the Court of Appeal set out the order of inquiry as follows:374

 Are the opposed goods and services the same as or similar to the goods and services covered by the opponent’s registered marks?

 If so, is the opposed mark similar to the opponent’s registered marks for the same or similar goods and services identified in the first inquiry?

 If so, is use of the opposed mark likely to deceive or confuse? 375

175. The first hurdle requires consideration of the complete range of services covered by Trade Me’s registered marks, not only the services in relation to which those marks have in fact been used. Trade Me’s registered marks cover a wide range of goods and services, particularly for the TRADE ME mark, registration no. 734566. NZME has also applied to register the opposed marks for a reasonably broad range of services.

176. Trade Me submits that all of the opposed services are the same as or similar to one or more of the services covered by its registered mark no. 734566 for TRADE ME.376 NZME accepts that some of the services covered by its applications are similar or identical to those of Trade Me’s registration no. 734566.377 Both parties’ written submissions are silent on any similarities between NZME’s opposed services and the goods and services covered by the rest of Trade Me’s registered marks.

177. Taking all the British Sugar criteria together,378 I consider the opposed services in bold in Schedule 1 are the same as or similar to at least some of the services

373 NV Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated [2010] NZCA 24, (2010) 86 IPR 206 (CA) at [18]. 374 NV Sumatra Tobacco Trading Company v New Zealand Milk Brands Limited [2011] NZCA 264 at [32] which related to the order of inquiry under section 25(1)(b) of the Act. 375 Intellectual Reserve Inc. v Robert Sintes HC Auckland CIV 2007-404-2610, 13 December 2007 at [15]: [15] While the outcome of the third issue is likely to be largely informed by the resolution of the first two, it remains a separate issue, but it need only be determined if the answer to [the first and second issues] … is yes. 376 Written submissions, paragraph 143. 377 Written submissions, paragraph 153 and highlighting identifying similar or identical services in Schedule A of those submissions. 378 Set out at paragraph 88 and footnote 160 above. TM No.s 1005684, 1005682 & 1005681 Page 61 of 77

covered by the TRADE ME registration no. 734566.379 I also consider that at least some of the opposed services in class 35 are the same as or similar to some of the services covered by class 35 of registration no.s 734525

and 734507 . Finally, at least some of the opposed services in class 35 are the same as or similar to the services of registration no. 762112 TRADE ME JOBS, also in class 35.

178. Turning to the second part of the inquiry under s 25(1)(b) of the Act, I have already found that the opposed marks are similar to the TRADE ME word mark.

In my view, registration no. 734525 is also similar to PROPERTYME, even with the device included in Trade Me’s mark. Both marks contain the distinctive “ME” suffix in the first word, as well as the memorable syntax violation referred to in my reasoning under s 17(1)(a). In addition, both marks contain the word “property”, and there is some conceptual similarity between these marks. To a lesser degree, I consider registration no. 734507

is similar to DRIVEME. However, in my view, registration no. 762112 for TRADE ME JOBS is not sufficiently similar to any of NZME’s opposed marks to engage s 25(1)(b) of the Act.

179. In terms of the final part of the inquiry, this is one of those cases where a conclusion on likely deception or confusion, assessed on a fair and notional basis, would be finely balanced. In the present case the key difference between this ground of opposition and the s 17(1)(a) ground is that under the latter the very strong reputation in the TRADE ME mark, when compared with the absence of awareness of the opposed marks, is an important factor in establishing likely confusion. If, however, the marks are assessed on a fair and notional use basis, the likelihood of confusion is less clear. Ultimately, it is not necessary to determine this issue given my finding under s 17(1)(a).

379 These are mostly the same as the services NZME accepts are the same or similar. All of the services in the specifications for each of the three opposed marks are identical.

TM No.s 1005684, 1005682 & 1005681 Page 62 of 77

Section 25(1)(c) ground – well known mark?

180. Section 25(1)(c) of the Act provides that:

The Commissioner must not register a trade mark (Trade Mark A) in respect of any goods… if … it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand (Trade Mark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of Trade Mark A would be taken as indicating a connection in the course of trade between those goods or services and the owner of Trade Mark D, and would be likely to prejudice the interests of the owner.

181. The following issues arise under section 25(1)(c) of the Act:380

1. Is the opposed mark, or an essential element of it, identical or similar to the opponent’s mark, which is well known?

2. Are the opposed goods and services the same as or similar to the goods of the opponent? If not,

3. Would use of the opposed mark be taken as indicating a connection in the course of trade with the opponent?

4. If the answer to issue 2 or 3 is yes, would use of the opposed mark be likely to prejudice the interests of the opponent?

182. For the purposes of this ground of opposition, Trade Me relies on its TRADE ME mark.381 Trade Me has the initial onus of establishing that its mark was well known in New Zealand as at the relevant date.382 The onus of proof then shifts to NZME to demonstrate that use of the opposed marks is not prohibited by s 25(1)(c) of the Act.

380 Intellectual Reserve Inc. v Robert Sintes HC Auckland CIV 2007-404-2610, 13 December 2007 at [40]. 381 Notices of opposition, paragraphs 6.1. 382 New Zealand Breweries, supra at 145 per Haslam J. TM No.s 1005684, 1005682 & 1005681 Page 63 of 77

Was the TRADE ME mark well known in New Zealand as at 23 September 2014?

183. The level of awareness required to be well known is substantially higher than what will be sufficient to establish the low threshold of awareness under s 17(1)(a) of the Act.383

184. NZME accepts that the mark TRADE ME is well known in New Zealand in respect of the same services for which a reputation in this mark was admitted for the purposes of s 17(1)(a) of the Act,384 being those services set out at paragraph 49 above. Trade Me submits that it is sufficient to engage s 25(1)(c) of the Act if the TRADE ME mark is well known for any services.385 At the hearing, counsel for NZME appeared to accept this submission but emphasised that the services for which the TRADE ME mark is well known is relevant for the remainder of the test under s 25(1)(c).

185. For the reasons set out in respect of s 17(1)(a) above, I consider the evidence filed by Trade Me is sufficient to establish that the TRADE ME mark was well known in New Zealand as at 23 September 2014, at least for the services set out at paragraph 49 above.

Are the opposed marks identical or similar to the TRADE ME mark, or is an essential element of that mark identical or similar to the TRADE ME mark?

186. For the reasons detailed above in relation to s 17(1)(a), I consider that the opposed marks are similar to the TRADE ME mark.

Are the opposed goods/services the same as, or similar to, the goods/services of Trade Me?

187. I have already found that some of the opposed services in class 35 are the same as or similar to some of Trade Me’s services (see those services in bold at

383 TomTom Communications Limited v Tomtom International BV [2015] NZHC 3333 at [117]. 384 Written submissions, paragraph 171. See also counter-statements, paragraphs 6.1. 385 Written submissions, paragraph 151. TM No.s 1005684, 1005682 & 1005681 Page 64 of 77

paragraph 87 above).386 The opposed services in class 42 are different to the services for which the TRADE ME mark is well known.

Would use of the opposed marks be taken as indicating a connection in the course of trade between the opposed services and Trade Me?

188. I consider the evidence before me is sufficient to establish, on the balance of probabilities, that use of the opposed marks would be taken as indicating a connection in the course of trade between the opposed services and Trade Me. In particular, some of the survey responses support such a connection, including those referred to at paragraph 130 above, for example “[SHOPME] sounds like a Trade Me spinoff just for online shops”.

Would use of the opposed marks be likely to prejudice Trade Me’s interests?

189. This question pertains to identical, similar and dissimilar services.387 The relevant factors for assessing whether use of a trade mark are likely to prejudice the interests of the opponent are set out in the High Court decision in Intellectual Reserve:388

It is clear that the closeness of the similarity between the goods and services will be a highly relevant factor in the assessment of trade connection and prejudice. Where marks are conceptually similar, consumers may consider that the later mark is an extension or variation of the original mark: Kerly’s Law of Trade Marks and Trade Names (13th ed., 2001) p 603. As to prejudice, the inclusion of the word “likely” suggests that it is permissible to look for potential prejudice rather than just actual or the real risk of unfair advantage or potential confusion. The section does not refer directly to any requirement for confusion.

190. On the evidence before me, I consider there is a risk of confusion between the opposed marks and Trade Me, as at the relevant date. At that time NZME’s opposed marks were not in use in New Zealand, and I consider that a substantial number of consumers are likely to have wondered if the opposed marks were an extension or variation of the TRADE ME brand. Confusion in the market as to

386 As I have indicated above, I am not, however, convinced that Trade Me’s TRADE ME mark is well known for “executive selection; job placement services; recruitment services; and personnel location services”. 387 P Sumpter, Trade Marks in Practice (3rd ed), supra citing Intellectual Reserve Inc v Robert Sintes [2009] NZCA 305. Sumpter observes that the approach in Intellectual Reserve was apparently followed in New Zealand Milk Brands Ltd v NV Sumatra Tobacco Trading Company, supra. 388 Supra at [42]. TM No.s 1005684, 1005682 & 1005681 Page 65 of 77

whether Trade Me is connected to competing services is likely to dilute the market position of the TRADE ME brand.389

191. In New Zealand Milk Brands v NV Sumatra Trading Co, the Court held that the “logical consequence” of confusion or deception is prejudice to the opponent’s interests. Therefore, I consider that use of the opposed marks is likely to prejudice Trade Me’s interests.

Finding

192. In view of the above, I consider that Trade Me has established its ground of opposition under s 25(1)(c) in respect of the opposed services in class 35.

Summary of findings and directions

193. Trade Me’s s 17(1)(a) ground of opposition is successful. As a result, I am not required to make a determination on the remaining grounds of opposition, although I consider that at least the ground based on s 25(1)(c) has also been made out.

194. I direct that trade mark application no.s 1005681, 1005682, and 1005684 must not be registered in respect of any of the services covered by those applications.

Costs

195. Trade Me seeks scale costs for three opposition proceedings with a single hearing.390 I award scale costs to Trade Me in the sum of $9,410, calculated as follows:

Item in IPONZ scale of costs Amount

Preparing and filing notices of opposition x 3 1,500

Notice of opposition fee x 3 1,050

Preparing and filing opponent’s evidence x 3391 2,400

389 As was the case in Swatch AG v Apple Inc [2016] NZIPOTM 20 referring, by way of example, to Roby Trustees Ltd v Mars New Zealand Ltd [2012] NZCA 450, (2012) 98 IPR 353 at [68]. 390 Written submissions, paragraph 161. 391 Trade Me filed different evidence in chief for each proceeding. TM No.s 1005684, 1005682 & 1005681 Page 66 of 77

Receiving and perusing applicant’s evidence392 400

Preparing and filing opponent’s evidence in reply393 200

Preparation of case for hearing 500

Attendance at hearing by counsel (1 day) 810

Hearing fee x 3 2,550

TOTAL: $9,410

Dated this 26th day of July 2017

______N Alley Assistant Commissioner of Trade Marks

392 NZME filed the same evidence for all three proceedings. 393 Trade Me filed the same evidence in reply for all three proceedings. TM No.s 1005684, 1005682 & 1005681 Page 67 of 77

Schedule 1: Details of NZME. Publishing Limited’s trade mark applications

Application no. 1005681

Trade mark SHOPME

Trade mark type Word

Classes 35 and 41 [Nice Classification Schedule 10]

Goods/services Class 35:

Auctioneering services including online auctioneering services; the provision of an internet website advertising the goods and services of others for the purposes of facilitating purchase by end customers; compilation and systemisation of information into computer databases; online general merchandise auction website; organisation of internet auctions; advertising of goods and services for sale and bartering services (facilitating the trade exchange of goods and services) offered by others via a website including but not limited to facilitating third party offerings; business intermediary services in relation to all the aforesaid, including facilitating all the aforesaid; advertising services including the updating of advertising material; dissemination and/or publication in any format or media of advertising material; rental of advertising space; advertising services provided through any media including printed advertising, electronic advertising and advertising on billboards; marketing services; market research services; business information services, including services in the nature of product and service information; providing on-line business directories; publication of publicity texts and materials; publicity services; preparation of publicity columns; public relations; organisation of exhibitions or trade fairs for commercial or advertising purposes; demonstration of goods, including demonstration for promotional and advertising purposes; promotion of fairs for trade purposes; retail and wholesale services; services in endorsement and dissemination of promotional material in connection with a promotional event; executive selection services, management consulting; human resources consulting, job placement services; recruitment services; personnel location services; information, advice and consultancy services in relation to all the aforesaid services.

Class 41:

Publishing services including electronic publishing services; publication of newspapers, magazines, books, texts and other types of printed matter; education, entertainment and cultural activities in this class including (without limitation) the organisation and running of competitions relating to or for education, cultural purposes, sporting purposes and/or entertainment; information services (including on-line information services) all relating to publishing, education, entertainment, sporting or

TM No.s 1005684, 1005682 & 1005681 Page 68 of 77

cultural activities; news reporter services; photographic reporting; providing on- line electronic publications; publication of all types of texts including (without limitation) books, electronic books, newspapers, magazines, periodicals; script writing services; electronic and online recording, booking and ticketing services for seating and reservation for sporting, education and entertainment events, and for theatres and other places of entertainment and other events requiring reservations and ticketing; arranging and conducting exhibitions and events for cultural, recreational, educational and/or entertainment purposes; event management services including organisation and management of cultural, recreational, educational and/or entertainment events; services in the production of an event; production and distribution of television and radio shows and programmes; production and distribution of films and recordings; information, advice and consultancy services in relation to all the aforesaid services.

Statement of use The mark is being used or proposed to be used, by the applicant or with his/her consent, in relation to the goods/services

Status Under opposition

Filed on 23 September 2014

Application no. 1005682

Trade mark DRIVEME

Trade mark type Word

Classes 35 and 41 [Nice Classification Schedule 10]

Goods/services Class 35:

Auctioneering services including online auctioneering services; the provision of an internet website advertising the goods and services of others for the purposes of facilitating purchase by end customers; compilation and systemisation of information into computer databases; online general merchandise auction website; organisation of internet auctions; advertising of goods and services for sale and bartering services (facilitating the trade exchange of goods and services) offered by others via a website including but not limited to facilitating third party offerings; business intermediary services in relation to all the aforesaid, including facilitating all the aforesaid; advertising services including the updating of advertising material; dissemination and/or publication in any format or media of advertising material; rental of advertising space; advertising services provided through any media including printed advertising, electronic advertising and advertising on billboards; marketing services; market research services; business information services, including services in

TM No.s 1005684, 1005682 & 1005681 Page 69 of 77

the nature of product and service information; providing on-line business directories; publication of publicity texts and materials; publicity services; preparation of publicity columns; public relations; organisation of exhibitions or trade fairs for commercial or advertising purposes; demonstration of goods, including demonstration for promotional and advertising purposes; promotion of fairs for trade purposes; retail and wholesale services; services in endorsement and dissemination of promotional material in connection with a promotional event; executive selection services, management consulting; human resources consulting, job placement services; recruitment services; personnel location services; information, advice and consultancy services in relation to all the aforesaid services.

Class 41:

Publishing services including electronic publishing services; publication of newspapers, magazines, books, texts and other types of printed matter; education, entertainment and cultural activities in this class including (without limitation) the organisation and running of competitions relating to or for education, cultural purposes, sporting purposes and/or entertainment; information services (including on-line information services) all relating to publishing, education, entertainment, sporting or cultural activities; news reporter services; photographic reporting; providing on- line electronic publications; publication of all types of texts including (without limitation) books, electronic books, newspapers, magazines, periodicals; script writing services; electronic and online recording, booking and ticketing services for seating and reservation for sporting, education and entertainment events, and for theatres and other places of entertainment and other events requiring reservations and ticketing; arranging and conducting exhibitions and events for cultural, recreational, educational and/or entertainment purposes; event management services including organisation and management of cultural, recreational, educational and/or entertainment events; services in the production of an event; production and distribution of television and radio shows and programmes; production and distribution of films and recordings; information, advice and consultancy services in relation to all the aforesaid services.

Statement of use The mark is being used or proposed to be used, by the applicant or with his/her consent, in relation to the goods/services

Status Under opposition

Filed on 23 September 2014

Application no. 1005684

Trade mark PROPERTYME

TM No.s 1005684, 1005682 & 1005681 Page 70 of 77

Trade mark type Word

Classes 35 and 41 [Nice Classification Schedule 10]

Goods/services Class 35:

Auctioneering services including online auctioneering services; the provision of an internet website advertising the goods and services of others for the purposes of facilitating purchase by end customers; compilation and systemisation of information into computer databases; online general merchandise auction website; organisation of internet auctions; advertising of goods and services for sale and bartering services (facilitating the trade exchange of goods and services) offered by others via a website including but not limited to facilitating third party offerings; business intermediary services in relation to all the aforesaid, including facilitating all the aforesaid; advertising services including the updating of advertising material; dissemination and/or publication in any format or media of advertising material; rental of advertising space; advertising services provided through any media including printed advertising, electronic advertising and advertising on billboards; marketing services; market research services; business information services, including services in the nature of product and service information; providing on-line business directories; publication of publicity texts and materials; publicity services; preparation of publicity columns; public relations; organisation of exhibitions or trade fairs for commercial or advertising purposes; demonstration of goods, including demonstration for promotional and advertising purposes; promotion of fairs for trade purposes; retail and wholesale services; services in endorsement and dissemination of promotional material in connection with a promotional event; executive selection services, management consulting; human resources consulting, job placement services; recruitment services; personnel location services; information, advice and consultancy services in relation to all the aforesaid services.

Class 41:

Publishing services including electronic publishing services; publication of newspapers, magazines, books, texts and other types of printed matter; education, entertainment and cultural activities in this class including (without limitation) the organisation and running of competitions relating to or for education, cultural purposes, sporting purposes and/or entertainment; information services (including on-line information services) all relating to publishing, education, entertainment, sporting or cultural activities; news reporter services; photographic reporting; providing on- line electronic publications; publication of all types of texts including (without limitation) books, electronic books, newspapers, magazines, periodicals; script writing services; electronic and online recording, booking and ticketing services for seating and reservation for sporting, education and

TM No.s 1005684, 1005682 & 1005681 Page 71 of 77

entertainment events, and for theatres and other places of entertainment and other events requiring reservations and ticketing; arranging and conducting exhibitions and events for cultural, recreational, educational and/or entertainment purposes; event management services including organisation and management of cultural, recreational, educational and/or entertainment events; services in the production of an event; production and distribution of television and radio shows and programmes; production and distribution of films and recordings; information, advice and consultancy services in relation to all the aforesaid services.

Statement of use The mark is being used or proposed to be used, by the applicant or with his/her consent, in relation to the goods/services

Status Under opposition

Filed on 23 September 2014

TM No.s 1005684, 1005682 & 1005681 Page 72 of 77

Schedule 2: Trade Me’s registered marks relied on for the purposes of its section 25(1)(b) ground of opposition394

Registration no. 734566

Trade mark TRADE ME; TRADEME; trade me; trademe (series of four)

Trade mark type Combined

Classes 9, 16, 35, 36, 38, 39, 41-43, 45 [Nice Classification Schedule 8]

Goods/services Class 9: computer software for use in the provision of business intermediary services including business facilitation services, telecommunication services including internet broadcasting, internet service provider services, and the provision of information online via the internet and other computer networks; computer hardware; electronic data storage media in this class; apparatus and equipment for the reproduction, transmission and recording of sound and images; telecommunications equipment; parts, fittings and accessories in this class for all the aforesaid

Class 16:

printed matter and publications including promotional publications, posters, bills, prints, cards, stickers, calendars, news sheets, newsletters, booklets, pamphlets, catalogues, programmes, guides and magazines; albums, binders, covers, manifolds, blotters, bookends, book markers, seals; stationery; writing and painting instruments; writing and painting sets; paper knives and letter openers, paper weights, photographs, picture stands, printing sets; diaries and notebooks; packaging including wrapping paper; instructional and teaching materials; bags and cases for all the aforesaid; parts and fittings in this class for all the aforesaid

Class 35:

sale of goods in the fields of DVDs and movies, health and beauty, gaming, antiques and collectables, art, baby products, books, farming, vehicles including cars, boats and motorbikes, clothing including footwear, headgear and clothing accessories, computers including computer software and hardware, crafts, electronics including home, car and boat electronics, photography, home and living, jewellery including imitation jewellery, watches, telephony including mobile phones, movies and television, music and musical instruments, pottery and glass, sports, stamps and coins, and toys and models, building and renovation,

394 Originally Trade Me’s notice of opposition relied on 18 registered trade marks (notices of opposition, paragraph 5.1). However, in accordance with its written submissions, Trade Me now only relies on the four registered marks listed above.

TM No.s 1005684, 1005682 & 1005681 Page 73 of 77

office products including office furniture, postage and packaging supplies and goods for use in the retail and hospitality industries; sale of compressors, pumps, diggers, excavators, engines, motors, forklifts, pallet movers, generators and water blasters; auction services; advertising services including classified advertising services; employment services including employment and recruitment agency services; business intermediary services in relation to all the aforesaid, including facilitating all the aforesaid; business intermediary services in relation to the sale of real estate, rental of real estate including lessor and lessee finding services and flatmate finding services, financial services including facilitating financial transactions, funds transfer services including secure funds transfer services, financial verification services, insurance services, telecommunications services including internet broadcasting and internet service provider services, the provision of information online via the internet and other computer networks, internet access services, electronic mail services, provision of access including multi-user access to databases and computer networks for the transfer of information, electronic message services including chat services, bulletin board services, message board services, newsletter services and SMS messaging, transport and storage of goods including letters and parcels, transportation of people, travel arrangement including tourist and travel agency services, education and entertainment including training services and publishing services, website design, creation, hosting and maintenance, hosting computer software, search engine services, domain name registration services, creating indexes of online information and providing online links to that information, provision of accommodation, food and beverages, travel and tourist agency services relating to obtaining accommodation, food and beverages, accommodation and reservation services for travellers, veterinarians', doctors', dentists' and physiotherapists' services, health, beauty and personal care services including hair, skin and nail care services, escort services, commercial sexual services, brothel services, massage services, counselling services, security services, introduction and dating services, services in locating individuals and groups of people, and including facilitating all of the aforesaid; information, advice and consultancy in relation to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 36:

sale of real estate; rental of real estate including lessor and lessee finding services and flatmate finding services; financial services including facilitating financial transactions, funds transfer services including secure funds transfer services, and financial verification services; insurance services; information, advice and consultancy in relation to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 38:

telecommunication services, namely, the provision of online access to the internet and other computer networks, provision of access including multi-user

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access to databases and computer networks for the transfer of information, electronic message services including chat services, bulletin board services, message board services, newsletter services and SMS messaging; search engine services; information, advice and consultancy in relation to all the aforesaid

Class 39:

transportation and storage of goods including letters and parcels; transportation of people; travel arrangement including tourist and travel agency services; information, advice and consultancy in relation to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 41:

education and entertainment including training services and publishing services; information, advice and consultancy relating to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 42:

website design, creation, hosting and maintenance; hosting computer software; domain name registration services; creating indexes of online information and providing online links to that information; information, advice and consultancy relating to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 43:

provision of accommodation, food and beverages; travel and tourist agency services relating to obtaining accommodation, food and beverages; accommodation and reservation services for travellers; information, advice and consultancy relating to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 45:

security services; introduction and dating services; services in locating individuals and groups of people; escort services, commercial sexual services, brothel services; information, advice and consultancy relating to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Priority date 25 August 2005

Status Registered

Registration no. 734525

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Trade mark

(series of two)

Trade mark type Combined

Classes 35,36,42 [Nice Classification Schedule 8]

Goods/services Class 35:

auction services; advertising services including classified advertising services; business intermediary services in relation to all the aforesaid, including facilitating all the aforesaid; business intermediary services in relation to the sale of real estate, rental of real estate including lessor, lessee and flatmate finding services, financial services including facilitating financial transactions, funds transfer services including secure funds transfer services, financial verification services, insurance services, website hosting, hosting computer software, search engine services, creating indexes of online information and providing online links to that information, and including facilitating all the aforesaid; information, advice and consultancy in relation to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 36:

sale of real estate; rental of real estate including lessor, lessee and flatmate finding services; financial services including facilitating financial transactions, funds transfer services including secure funds transfer services, and financial verification services; insurance services; information, advice and consultancy in relation to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 42:

website hosting; hosting computer software; search engine services; creating indexes of online information and providing online links to that information; information, advice and consultancy relating to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Priority date 25 August 2005

Status Expired on 25 August 2015 with renewal fees unpaid but restorable and then expired as of 23 August 2016

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Registration no. 734507

Trade mark

; (series of two)

Trade mark type Combined

Classes 35 and 42 [Nice Classification Schedule 8]

Goods/services Class 35:

sale of goods in the field of vehicles including cars, boats and motorbikes, and parts, fittings and accessories for the same including car and boat electronics; auction services; advertising services including classified advertising services; business intermediary services in relation to all the aforesaid, including facilitating all the aforesaid; business intermediary services in relation to website hosting, hosting computer software, search engine services, creating indexes of online information and providing online links to that information, including facilitation all the aforesaid; information, advice and consultancy in relation to all the aforesaid; provision of all the aforesaid online via the internet or other computer networks

Class 42:

website hosting; hosting computer software; search engine services; creating indexes of online information and providing online links to that information; information, advice and consultancy relating to all the aforesaid; provision of all the aforesaid online via the Internet or other computer networks

Priority date 25 August 2005

Status Expired on 25 August 2015 with renewal fees unpaid but restorable and then expired as of 23 August 2016

Registration no. 762112

Trade mark Trade Me Jobs; TRADE ME JOBS; trade me jobs (series of three)

Trade mark type Word

Class 35 [Nice Classification Schedule 9]

Goods/services Class 35:

advertising services including classified advertising services; Internet advertising including Internet classified advertising services

Priority date 17 January 2007

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Status Registered

TM No.s 1005684, 1005682 & 1005681