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Nzme-V-Trademe.Pdf 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.
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