Video | Agriculture | Confidence | Economy | Energy | Employment | Finance | Media | Property | RBNZ | Science | SOEs | Tax | Technology | Telecoms | Tourism | Transport | Search

 


Jandals – Trademarked name or generic term?

Jandals – Trademarked name or generic term?

In the wake of a Hamilton online retailer being ordered to cease and desist selling ‘jandals’, an intellectual property expert says the line between trademarked names and generic terms is often blurred.

Baron Sandford of Sandford Industries Ltd recently sent a cease and desist letter to the Hamilton-based online discount apparel store Lastseason.co.nz to demand they stop selling the popular style of footwear by using the term ‘jandals’.

Intellectual Property lawyer Gus Hazel says the retailer argues that ‘jandals’ is a generic term for everybody to use which raises questions about whether the trademark can be enforced.

“Trademarks act as a badge of origin. They are rights that can be registered in things like brand names, logos and even colours, to inform consumers of the source of goods or services and therefore what sort of quality of they can expect from them,” Mr Hazel says.

Mr Hazel has researched the history of the jandals trademark. ‘Jandals’ is said to be a derivative of Japanese sandals. Morris Yock (alleged to be the inventor of the shoe) filed to protect the word in 1957, and it was registered as a trademark on 4 January 1963. The trademark was on sold to several other companies before being bought by Sandford Industries Ltd in 1995. The register shows that the Trademark is registered for ‘footwear and all types of hosiery’ and ‘articles of clothing’.

“So the question is, could Sandford enforce its rights in the trademark when many say the word jandals is generic?”

“In reality,” says Mr Hazel, “Trademarked names can become genericised. The purpose of a trademark is to be distinctive of a supplier, not descriptive of the goods. Therefore, trademarks are one area of law where a registered rights owner can be a victim of its own success. Once a word becomes ‘a common name in general public use for a product or service in respect of which it is registered’ – that is, generic – it can in fact be revoked from the trademarks register in New Zealand.”

Mr Hazel cites examples of trademarks that have been revoked from registers around the world for becoming generic including aspirin, thermos, yo-yo and escalator. Trademarks such as Hoover and Google have been said to be in danger of being revoked for genericism, as they are commonly used to describe an action in every day language (i.e. you could Google someone hoovering).

While James and Wells is not representing any party in the jandals case, the firm recently acted for Knauf Insulation in the first case before a court on this question under the Trade Marks Act 2002. Among other issues, Knauf challenged the trade mark Batts which is owned by Tasman Insulation New Zealand, contending that it is part of everyday Kiwi language. The High Court has reserved judgment on this case and a decision is expected in early 2014.

Mr Hazel says businesses concerned that they might receive a letter like the one about jandals or any other trademark, or those that think someone is misusing their trademark should seek specialised legal advice from an intellectual property lawyer.

ends

© Scoop Media

 
 
 
 
 
Business Headlines | Sci-Tech Headlines

 

Future Brighter Money: RBNZ Releases New Bank Note Designs

New Zealand’s banknotes are getting brighter and better, with the Reserve Bank today unveiling more vibrant and secure banknote designs which will progressively enter circulation later next year. More>>

ALSO:

Commerce: Supermarket Inquiry Finds No Breaches By Countdown

The Commerce Commission inquiry into anti-competitive behaviour by Countdown supermarkets, alleged by former Labour Party MP Shane Jones, has found nothing to warrant prosecution, although it warns supermarkets to take care in the way they communicate... More>>

ALSO:

Crown Accounts: English Flags ‘Challenge’ To Budget Surplus

Finance Minister Bill English is warning next month’s half yearly fiscal and economic update from the Treasury may not forecast a budget surplus, saying that returning the government’s accounts to surplus in 2015 will be “a challenge”, given the decline in commodity prices and weak global inflation. More>>

ALSO:

March 2015: Netflix To Launch In Australia And New Zealand

World’s Leading Internet Television Network to Offer Original Series, Movies, Documentaries, Stand-Up Comedy Specials and TV Shows for Low Monthly Price More>>

ALSO:

Price Of Cheese (Is Up): Dairy Product Prices Fall To Five-Year Low

Dairy product prices fell in the latest GlobalDairyTrade auction to the lowest level in more than five years, led by declines in rennet casein and skim milk powder. More>>

ALSO:

Gordon Campbell: On The Australians Scoring Trade Points Against Us With The Chinese

It hasn’t been a great year for Trade Minister Tim Groser... To top it off, Australia has just signed a FTA with China that has far better provisions on dairy exports than what New Zealand currently enjoys in our own FTA with China. More>>

ALSO:

Iwi & Local Consultation: Oil And Gas Block Offer 2015 Begins

Energy and Resources Minister Simon Bridges today announced the start of the Block Offer 2015 process for awarding oil and gas exploration permits. More>>

Industrial Action: Stats NZ Throwing Public Money Away Duplicating Data

The Public Service Association (PSA) says Statistics NZ are throwing money away by collecting the same data twice for official statistics such as the Consumer Price Index... As part of the ongoing industrial action, field interviewers who are PSA members are continuing to collect data, but are not sending it through to Statistics NZ. More>>

ALSO:

Other Stats:

Space: Rosetta's 'Philae' Makes Historic First Landing On A Comet

After more than a decade traveling through space, a robotic lander built by the European Space Agency has made the first-ever soft landing of a spacecraft on a comet. More>>

ALSO:

Get More From Scoop

 
 
Standards New Zealand

Standards New Zealand
 
 
 
 
 
 
 
 
Business
Search Scoop  
 
 
Powered by Vodafone
NZ independent news