The "Jandal Scandal" Takes a New Twist

Article: Ellis Terry – 24 January 2014

The "Jandal Scandal" Takes a New Twist

In a scandal of jandal proportion, Fairfax news site Stuff is reporting an army of fanatics has formed following the stoush which emerged yesterday regarding the monopolisation of this quintessential kiwi word.

Yesterday a Hamilton based online retailer lastseason.co.nz received a cease and desist letter from Stanford Industries Limited asking it to cease using the word "jandal" to advertise its footwear, claiming breaches of trade mark law.

The website owners have now taken to the social networking site Facebook seeking public support for their use of the term "jandal". The page "Jandal Scandal" currently has 909 likes.

Stanford Industries Limited is the owner of two New Zealand trade mark registrations for JANDALS (nos 60683 and 108195) for goods including footwear.

The registration of a trade mark grants its owner nationwide exclusivity in a trade mark.

However, registration is only part of the picture, and trade mark registrations may be attacked or challenged.

The purpose of a trade mark is to differentiate the goods or services for which it is registered from those of other traders.

If a trade mark can no longer serve to differentiate the particular goods or services because it has become generic or descriptive when used in relation to those goods or services, it can no longer serve its fundamental purpose.

Under the Trade Marks Act 2002 a trade mark may be revoked if, as a consequence of "inactivity of the owner, the trade mark has become a common name in general public use for a product or service in respect of which it is registered".

This is known in trade mark law as "genericism". Some examples of words which were formerly the subject of trade mark registrations in the United States, but which have later been found to be generic are:

AQUA-LUNG
ESCALATOR
HEROIN
KEROSENE
THERMOS
YO-YO
ZIPPER

It has been suggested by some commentators that the trade mark JANDALS has obtained this generic status in the minds of New Zealanders.

Another level of attack lastseason.co.nz may have open is revocation on the basis of "non- use". Under New Zealand trade mark law a registration may be revoked if "at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered".

So far two New Zealand intellectual property law firms have offered to take up the case for lastseason.co.nz, namely Catalyst Intellectual Property and James and Wells, so the end of this particular saga does not appear imminent.

ENDS

Please visit www.ellisterry.com for further information on all aspects of Intellectual Property.

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