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Mr Hazel cites examples of trademarks that have been revoked from registers around the world for becoming generic including aspirin, thermos, yo-yo and escalator.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

 

PGPs: New Programme Sets Sights On Strong Wool

A new collaboration between The New Zealand Merino Company (NZM) and the Ministry for Primary Industries (MPI), announced today, aims to deliver premiums for New Zealand's strong wool sector... More>>

ALSO:

Restrictions Lifted: No Further Tau Flies Found

The Ministry for Primary Industries (MPI) confirms that all restrictions on the movement of fruit and vegetables in Manurewa, Auckland, due to the Tau fly, have been lifted as of 2.26pm on Sunday 7 February. More>>

Crowdfinding: Awaroa Beach To Become Public Land If Appeal Succeeds

Conservation Minister Maggie Barry says a privately-owned beach will become part of the Abel Tasman National Park if an online crowdfunding campaign to buy it succeeds... More>>

ALSO:

Meat Workers Union: Waitangi Mondayisation Flaunted By Large Employer Of Maori

At the AFFCO Talley owned meat plant in Rangiuru, the company has resorted to bullying and threats... saying they could be disciplined and their union sued for an unlawful strike if workers exercise their rights to a paid day off tomorrow. More>>

Earlier:

ETS Review: Modelling Documents Released

Three technical documents are being released to help New Zealanders engage with the Emissions Trading Scheme (ETS) review, Climate Change Minister Paula Bennett says. More>>

ALSO:

Northland: Govt Plan Targets Transport, Web, Maori Assets

The government has released a 10-year plan to attract investors and lift economic growth in Northland, a region that perennially underperforms the rest of the country even while being endowed with natural beauty, productive land, minerals, a potential workforce, scope for manufacturing, forestry and aquaculture, and proximity to Auckland. More>>

ALSO:

Statistics: Unemployment Rate Falls To 5.3 Percent

The unemployment rate fell to 5.3 percent in the December 2015 quarter (from 6.0 percent), Statistics New Zealand said today. This is the lowest unemployment rate since March 2009. There were 16,000 fewer people unemployed than in the September ... More>>

ALSO:

Get More From Scoop

 
 
 
 
 
 
 
 
 
Business
Search Scoop  
 
 
Powered by Vodafone
NZ independent news