Is it “Use” of a Trade Mark if it is Not Used on the Goods?

In Aqua Technics Pool and Spa Centre New Zealand Limited v Aqua-Tech Limited (unreported, CA257/05, 22 March 2007, Court of Appeal) the Court of Appeal was asked to consider whether the respondent, Aqua-Tech Limited (Aqua-Tech), had established use of the trade mark “Aqua-Tech” in relation to spa and swimming pools.

Aqua-Tech was the manufacturer of spa and swimming pools and sold mostly to trade. In particular it sold to an associated company, Cascade Industries Limited, who acted as a retailer. Aqua-Tech’s materials referred to these pools as “Cascade pools”, however, all products were advertised under the heading of “Aqua-Tech” and “Aqua-Tech” featured on catalogues as well as each pool having a notice attached referring to “Aqua-Tech”.

The appellant, Aqua Technics Pool and Spa Centre New Zealand Limited (Aqua Technics), argued that the use was part of a company or trading name, as in “Aqua- Tech Industries Limited” or Aqua-Tech Industries”, which featured on some materials. It also argued that it was not use on or in relation to goods, not use as a trade mark and it was use for services not for goods. The Court of Appeal rejected all of Aqua Technic’s arguments.

The Court of Appeal had no difficulty in accepting that a trade mark could be used as part of a company or trading name and still constitute use as a trade mark. It also had no difficulty in accepting that use could be on promotional materials and not on the goods themselves.

The use was said to be sufficient to qualify as use of a trade mark because it was designed to establish a connection between the goods and the manufacturer. This was considered to be a link between Aqua-Tech and the origin of the goods and was therefore use as a trade mark.

Because Aqua-Tech was the manufacturer the Court of Appeal accepted that that was use in relation to goods, as opposed to services. The Court of Appeal linked this back to the connection between the goods and the manufacturer and a manufacturer being responsible for the quality of goods.

An interesting aspect to this case was Aqua Technics criticisms of Aqua Tech’s evidence for being unreliable. The case began as a trade mark opposition where evidence is given by statutory declaration or affidavit. There is a right to cross-examine witnesses but this is rarely done. The Court of Appeal said that if Aqua Technics had wanted to challenge Aqua-Tech’s evidence it should have asked for the right to cross-examine. It went on to say that it is unfair to challenge the veracity of a witness on appeal when the challenge had not been put earlier.

Aqua Technic’s application for leave to appeal has been declined by the Supreme Court. There are no further rights of appeal and the Court of Appeal’s ruling stands.