In an interesting decision earlier this month, the Assistant Commissioner of the Intellectual Property Office of New Zealand rejected a trade mark application made by Central Emergency Communications Limited, Her Majesty the Queen in the right of New Zealand acting by and through the Commissioner of Police, NZ Fire Service Commission, St John Emergency Communications Limited and the National Rural Fire Authority (the “
Applicants”) for the phone number “111”.
In light of the number of false calls made to 111 (64% of calls are non-genuine), the Applicants sought to protect the integrity of 111 by applying for its registration as a trade mark in classes 9, 12, 35, 37, 38, 39, 40, 41, 44 and 45.
However Telecom, who receives all calls made to 111 and provides an initial screening service before diverting the call to the appropriate emergency service, opposed to application. Telecom claimed that, among other grounds, it had rights to ownership of the number 111 by reason of its role in the provision of emergency service communications and that 111 was not capable of registration as a trade mark because it is a free community service.
This was essentially what the decision turned on. Is 111 a generic telephone number which other traders would be likely to use, or alternatively is 111 only associated with the emergency services and therefore a “badge of origin”?
The Decision
Telecom put forward its opposition, pointing to almost every requirement for trade mark registration in the Act and arguing that it had not and could not be met. We have summarised a few of the most interesting grounds of opposition below.
Registration of 111 is likely to deceive or cause confusion to the public
Telecom argued that if the Mark was registered, its function as a free
community service would likely be confused with its
commercial function as a trade mark. The Assistant Commissioner agreed giving two examples of this potential perplexity:
- where the public would ring 111 to order goods and services akin to that of 0800 83 83 83 in relation to pizza from PIZZA HUT; and
- where the public would be dissuaded from calling 111 in the event of a genuine emergency because they believed they would be charged.
Registration of 111 would be against New Zealand law
If the mark 111 were to be registered, it would essentially grant the Applicants the right to operate as commercial traders of the various goods and services the mark 111 was applied for in respect of, for example selling ambulances or police cars (class 12). However the Applicants failed to prove that this function would be permitted by their empowering Acts, therefore doing so would be ultra vires conduct.
111 does not have distinctive character and other traders would be likely to use it
Whether a mark has distinctive character is generally assessed by considering “whether other traders would be likely to, in the ordinary course of their business and without any improper motive, desire to use the mark in connection with their own goods”.
Here, Telecom provided evidence that other traders, including itself, have and would similarly wish in the future to refer to 111 as a telephone number to call in order to access the appropriate Emergency Service, or otherwise regarding its correct use, for example “… teach your children the proper use of 111”.
The Assistant Commissioner agreed with Telecom and held that 111 had not acquired distinctive character due to the following reasons:
- Emergency services are free services. Accordingly 111 is not used in the course of trade and therefore cannot function as a badge of origin.
- Telecom used 111 which is a critical part of the provision of emergency services.
111 is descriptive
It was found that the number 111 had become synonymous with “emergency”, for example “111 services” means “emergency services”.
It would appear the this finding is partly illustrative of the Applicants’ argument for registration of 111, namely that 111 was so strongly perceived by consumers as the phone number to reach emergency services that it had adopted that very meaning.
The number 111 is not owned by the Applicants
The Assistant Commissioner referred to evidence provided by Telecom which indicated that the concept of 111 in New Zealand was not created by the Applicants. Instead it was created and approved by a committee set up in 1957 representing the Post and Telegraph, Police, Health Department and the Fire Service.
Further, as the 111 emergency service is free, 111 had never been used as a trade mark in the course of trade by the Applicants, nor did they intend to use it as such in the future.
Having found the application was not registerable on several grounds, the decision was made in Telecom’s favour which means that 111 will remain a free to dial phone number.
What does the decision mean?
The Assistant Commissioner took a firm stand on the capability of a mark to act as a badge of origin where the goods and services are provided gratuitously. In comparison to the trade marked phone number 0800 83 83 83, which is also a free phone number to dial, the purpose of the call is to order goods which you must then pay for. You do not have to pay for the provision of an ambulance to your house and therefore the number 111 is not being used in trade.
The same cannot be said of charities, many of which have trade marked their brands to protect their integrity. The distinction to be made is that charities, albeit through donations of sponsorship, process transactions and therefore “trade”.
Although the phrase “use in the course of trade” / “use in trade” is only referred to in the Act in relation to infringement, revocation, joint ownership or descriptiveness, the Assistant Commissioner considered this an important factor in relation to several other grounds, including acquired distinctiveness, ownership claims, likelihood to deceive or cause confusion and use contrary to New Zealand law. It follows that although not spelt out in the Act itself, whether or not a mark is used “in the course of trade” is a fundamental requirement of a trade mark. If a mark isn’t used in the course of trade, then it isn’t a “badge of origin”.