Question: Alice, Michael and Peter ask you for advice regarding the following aspects:
What product name should they choose to register as a trade mark in order to obtain the best level of legal protection? They would like a short analysis of each of their proposals on which they will base their final decision. (10 marks)
What are the legal risks of using an orange wheel for their board, and could they register the flashy orange colour as a trade mark? (10 marks)
They would also want your advice on how they should reply to the letter from Future Technologies and what steps you recommend they take. (10 marks) [Total marks: 30 marks]
INSTRUCTIONS:
For the purpose of this assignment, assume that you are employed as a new adviser at MARKIA, a business consultancy that offers specialist intellectual property (IP) advice to a range of clients, particularly small and medium-sized tech start-ups. Youve been approached by new clients, Alice, Michael and Peter, who would like advice on some intellectual property issues they have encountered while developing a new product. You will need to research the options available and provide advice that you think best addresses the issues and the clients interests.
Your advice should be set out as a report of a maximum of 3000 words. It should be written in clear, simple language and offer practical advice that is suitable for the client. Your Briefing note should explain the law simply and clearly. Referencing should be in APA style (see https://www.library.auckland.ac.nz/subject-guides/edu/docs/APAbooklet.pdf) and your Briefing note should include a reference list at the end. The reference list is not included in the word count. Include any legislation or cases you have used in your reference list - these do not need to be in APA style.
IMPORTANT: note the following general points on case analysis:
The facts given in this assignment contain all the information available to answer the issues at stake (excluding legal sources). While some of the information might be based on real goods, services and their marks, you should rely on the information provided only.
You must refer to legal sources to substantiate your position.
Facts are in the below picture:
In their free time, Alice, Michael and Peter are avid wave riding kneeboarders. Kneeboarding in the waves also known as kneeboard surf or knee-riding is an alternative form of stand-up surfing (see Fig. 1). The paddler rides the board in a kneeling position and performs tricks in open face waves. Fig. 1 Because they ride waves closer the water surface, kneeboarders often say that the sensation of speed is greater than in surfing. Alice, Mike and Peter thought it would be great if the same sensation could be achieved on land. Based on this idea, they developed a kneeboard with a centrally mounted electrically-powered wheel, allowing the board to move while balancing itself (see Fig. 2). The board will be manufactured in Piha, near Auckland, close to their favourite surf spot. Fig. 2 They have several ideas for the product's name, which they intend to register as a trade mark. Alice, having a close relationship with the surf town of Piha, proposes PIHA BOARD. She feels that the link to this location will connect their product to the surfing community and the image and "feel" of the town. Mike proposes WAVERIDER. He thinks the name sounds cool and emphasises the sensation of riding the board. Peter, who also surfs big waves, prefers a minimalist approach and puts forward BHMTH, referring to "the behemoth", the biggest wave ever ridden off the coast of Nazar, Portugal. Alice, who's responsible for the exterior design of the board want to ensure that their product stands out and is associated with positive characteristics. In order to differentiate their board from other electrical boards and potential competitors she is considering to manufacture all boards with the wheel in a flashy orange colour (see Fig. 3). She got her inspiration from WHEELIO, a company in Piha that for the past 35 years has been manufacturing wheelbarrows with orange wheels. These wheelbarrows are very popular in New Zealand and are renowned for their extreme durability and build quality. Fig. 3 They have also encountered an issue relating to their logo. Prior to contacting you, Alice, Mike and Peter devised a logo they will use in marketing campaigns. They applied for the registration of the logo including the slogan "kneel, one wheel" (see Fig. 4) in class 12 for electronically motorised surf-style skateboards. KNEEU ONE WHEEL Fig. 4 Two and a half months after a trade mark application for the logo was published, they received a letter from the legal representative of Future Technologies, the company behind "one wheel", a self-balancing single wheel electric board (see Fig. 5). Fig. 5 4 The message goes as follows: Dear Sir/Madam; I am the legal representative of Future Technologies, owner of New Zealand trade mark nr. 1098198 for the combination mark (as shown below) in class 12 for vehicles, namely, electronically motorized skateboards. NEWHEEL Considering section 25 of the Trade Marks Act, we are of the opinion that your mark creates a likelihood of confusion with our registered mark and, therefore, cannot not be registered. We ask you to retract your trade mark application nr. 5676343 for the combination mark "kneel, one wheel" in class 12. If you do not comply with our request within three weeks, we will start the opposition procedure before IPONZ. Kind regards, Marc Traide In their free time, Alice, Michael and Peter are avid wave riding kneeboarders. Kneeboarding in the waves also known as kneeboard surf or knee-riding is an alternative form of stand-up surfing (see Fig. 1). The paddler rides the board in a kneeling position and performs tricks in open face waves. Fig. 1 Because they ride waves closer the water surface, kneeboarders often say that the sensation of speed is greater than in surfing. Alice, Mike and Peter thought it would be great if the same sensation could be achieved on land. Based on this idea, they developed a kneeboard with a centrally mounted electrically-powered wheel, allowing the board to move while balancing itself (see Fig. 2). The board will be manufactured in Piha, near Auckland, close to their favourite surf spot. Fig. 2 They have several ideas for the product's name, which they intend to register as a trade mark. Alice, having a close relationship with the surf town of Piha, proposes PIHA BOARD. She feels that the link to this location will connect their product to the surfing community and the image and "feel" of the town. Mike proposes WAVERIDER. He thinks the name sounds cool and emphasises the sensation of riding the board. Peter, who also surfs big waves, prefers a minimalist approach and puts forward BHMTH, referring to "the behemoth", the biggest wave ever ridden off the coast of Nazar, Portugal. Alice, who's responsible for the exterior design of the board want to ensure that their product stands out and is associated with positive characteristics. In order to differentiate their board from other electrical boards and potential competitors she is considering to manufacture all boards with the wheel in a flashy orange colour (see Fig. 3). She got her inspiration from WHEELIO, a company in Piha that for the past 35 years has been manufacturing wheelbarrows with orange wheels. These wheelbarrows are very popular in New Zealand and are renowned for their extreme durability and build quality. Fig. 3 They have also encountered an issue relating to their logo. Prior to contacting you, Alice, Mike and Peter devised a logo they will use in marketing campaigns. They applied for the registration of the logo including the slogan "kneel, one wheel" (see Fig. 4) in class 12 for electronically motorised surf-style skateboards. KNEEU ONE WHEEL Fig. 4 Two and a half months after a trade mark application for the logo was published, they received a letter from the legal representative of Future Technologies, the company behind "one wheel", a self-balancing single wheel electric board (see Fig. 5). Fig. 5 4 The message goes as follows: Dear Sir/Madam; I am the legal representative of Future Technologies, owner of New Zealand trade mark nr. 1098198 for the combination mark (as shown below) in class 12 for vehicles, namely, electronically motorized skateboards. NEWHEEL Considering section 25 of the Trade Marks Act, we are of the opinion that your mark creates a likelihood of confusion with our registered mark and, therefore, cannot not be registered. We ask you to retract your trade mark application nr. 5676343 for the combination mark "kneel, one wheel" in class 12. If you do not comply with our request within three weeks, we will start the opposition procedure before IPONZ. Kind regards, Marc Traide
