Posted on 07/02/2008
In Great Barrier Airlines Flight Operations Limited v Great Barrier Air Limited (CIV 2007-404-5710, December 13 2007), the High Court has issued an interim injunction preventing the use of the name Great Barrier Air in relation to an airline service offering flights to and from Great Barrier Island.
Both parties operate airlines to Great Barrier Island, a small island off the coast of New Zealand. Great Barrier Airlines Flight Operations Limited, which sought the injunction, had been trading since 1995 under the name Great Barrier Airlines. Great Barrier Air Limited had been offering flights to and from Great Barrier Island for some time, but had previously traded under the names Great Barrier Xpress and Mountain Air.
Great Barrier Airlines claimed that Great Barrier Air was engaging in passing off and breaching the Fair Trading Act, which prohibits misleading and deceptive conduct in the course of trade. It sought an interim injunction in the district court. The district court refused to grant the injunction and Great Barrier Airlines appealed to the High Court.
Despite the fact that both parties' names were descriptive, the court ruled that Great Barrier Airlines had a strong case. The court did not consider whether Great Barrier Airlines had the requisite reputation, a necessary ingredient for a passing off or Fair Trading Act claim.
The court found no difficulty in awarding an interim injunction against Great Barrier Air. The problem was that Great Barrier Air had acquired a telephone directory listing for Great Barrier Air; it admitted that this move was designed to ensure that its listing appeared before the listing for Great Barrier Airlines. The telephone directory was reprinted only yearly and it was impossible to remove Great Barrier Air's listing from the thousands of hard copies which had been distributed.
Great Barrier Airlines suggested an independent telephone monitoring service whereby the caller would be interrogated as to which airline he or she had intended to call. Great Barrier Air objected to the imposition of a monitoring service, citing cost and annoyance to customers. The court had little sympathy for Great Barrier Air, stating that it had placed itself in a difficult position by choosing a name so close to its principal competitor. The judge ruled that the monitoring service was the best available means of minimizing any confusion between the parties, while still allowing the respondent to trade. The judge ordered the costs of the monitoring service to be shared equally between the parties on an interim basis, leaving the question of which party should ultimately pay for the service until trial.
This article was published in World Trademark Report - February 7, 2008