Motorcycle Application Rides off into the Sunset

The Honda Motor Co Ltd (“Honda”) has been unsuccessful in its attempt to register “ST” as a trade mark in relation to “motorcycles and their parts and accessories”, despite using the letter combination in New Zealand since 1973. It was held that the use has been as a particular model ST, and was not as trade mark use: Honda Motor Co Ltd [2011] NZIPOTM 25 (18 August 2011)

The application was initially rejected on the basis that “ST” is a non-distinctive mark, (section 18(1)(b) of the Trade Marks Act 2002). Honda disputed the finding, and sought to rely on section 18(2), which requires The Commissioner of Trade Marks to register a trade mark that has become distinctive through either use or due to other special circumstances.

Section 18(1)(b)

The Assistant Commissioner concluded that acronyms were common to the motorcycle trade, and therefore it was likely that other traders, without improper motives, would wish to use the ST mark in relation to their goods. Additionally, the Assistant Commissioner said that someone with the initials ST could legitimately want to use their initials in the motorcycle trade and to prevent them from doing so would be unjust. The Assistant Commissioner seemed to suspect that ST represented “sports touring”, which meant it likely that others would wish to use the letter combination.

Section 18(2)

Honda’s evidence demonstrated that the company has been using the initials ST in New Zealand since 1973. However, the examples of use were held to be instances of use of ST as a model code, not as a trade mark. At best, the Assistant Commissioner concluded, the evidence demonstrated that “motorcycles with the model code ST1300 are likely to be associated with [Honda]; but that is not the same as establishing that the relevant mark by itself has acquired a distinctive character”.

Comment

This case appears to set the bar high in relation to two-letter trade marks. The Assistant Commissioner relied on the principle established in W & G du Cros Ltd’s Application (1913) 30 RPC 60, which held that it would be improper to deny someone the right to use their initials in trade. It will be interesting to see if the Assistant Commissioner would find the same way in circumstances where the use of acronyms is not common to the trade, unlike the circumstances in this case. What is clear from this decision is that if an applicant wishes to rely on evidence of acquired distinctiveness, then it must show use of the mark not only as a trade mark but preferably also on its own, not coupled with other elements.