BROWN NOSE DAY V RED NOSE DAY
A recent decision of Assistant Commissioner Wendy Aldred, in the Intellectual Property Office of New Zealand regarding the New Zealand designation of international trade mark registration BROWN NOSE DAY filed by the National Cancer Foundation Limited of Australia has caused a bit of a “stink” in an opposition by Cure Kids and Red Nose Limited.
What is a Brown Nose?
The term BROWN NOSE is prevalent in the vocabulary of many. The Collins English Dictionary defines “Brown Nose” as follows: "(verb) as to be abjectly subservient (to); curry favour (with) (noun) an abjectly subservient person; sycophant."
It does not necessarily have the most positive of meanings and often used negatively to describe someone with the aforementioned qualities. As the opponents' state – “a scatological association”.
The Applicant
The National Cancer Foundation Limited is an Australian charitable organisation working to reduce cancer and assisting those affected by cancer. It applied for the trade mark BROWN NOSE DAY as part of an international registration and designated New Zealand.
The Opponents
Cure Kids, the New Zealand based opponent was founded in the 1970’s. It is the largest funder in New Zealand, outside of government, of child health research into a range of child health conditions. Red Nose Limited, an Australian entity (formerly the Sudden Infant Death (SIDS) Research Foundation Inc.) was also established in the 1970’s. The opponents’ evidence is that they co-own the various registered and unregistered marks relied on in their pleadings.
The History of Red Nose Day
Both opponents have a history of using the RED NOSE DAY brand for fundraising appeals or events and both have used the mark since the late 1980’s, it was first used by Cure Kids for a fundraising appeal in 1989. In the decision it states RED NOSE DAY was chosen by Cure Kids because a RED NOSE DAY branded event for similar causes had been successful overseas.
This is quite an interesting point in itself as the decision at [15] does gloss over this fact and infers Cure Kids may have in fact piggy backed off the trade mark use of another campaign overseas! There is earlier use in the UK by Comic Relief – and on the history of Red Nose Day UK web page it states “the very first Red Nose Day was in 1988 and raised a huge £15 million! Over 30 million people tune in to watch 'Blackadder - the Cavalier Years' and the Young Ones on 'University Challenge'. Mel Smith and Kim Wilde.” Nothing turns on this point in the decision and there may well be consents or an agreement in place although, it is an interesting point nevertheless!
Evidence of the Opponents in the Opposition
Cure Kids evidence shows extensive use in New Zealand across the Internet in website analytics, social media and in media articles and fundraising events. Evidence of marketing expenditure was significant and large amounts of funds were raised over the years 2010-2020. Red Nose Limited gave evidence predominantly in relation to its use in Australia with some references to publications circulated in New Zealand.
Mr Datson, Co-Chair of the Fundraising Institute of New Zealand gave expert evidence on behalf of the opponents – the focus of his evidence is directed at the reputational harm to RED NOSE DAY. He states potential donors will “be more likely to initially think that it is Cure Kids that has ill-chosen a derogatory symbol – possible inadvertently – but sufficiently so for people to potentially decide against supporting levels for Cure Kids”. His evidence also focuses on the “impact on beneficiaries – in this case people who suffer from bowel cancer” and in his view the likelihood of damaged to the goodwill associated with the RED NOSE DAY brand. Other evidence was presented by a marketing lecturer at the University of Auckland, commenting on the similarity of the marks, likely confusion, and the risk of tarnishment and reputational damage due to the “off-colour connotations” of BROWN NOSE DAY.
Evidence of the Applicant in the Opposition
In the applicant’s evidence, their CEO Mr John Thompson “advocated the possible use of “Brown Nose” and “Brown Nose Day” for a charitable fundraising and awareness campaign specifically for bowel cancer. This was because the concept of a “Brown Nose” brings up various, sometimes conflicting, images; and this gives the opportunity to use a mixture of humour and bluntness to raise awareness of colorectal cancers; and raise charitable funds to use to address the issues that arise from bowel cancer.” Mr Thomson's evidence was that he was aware of RED NOSE DAY for fundraising in relation to SIDS by Red Nose Limited but later became aware of Cure Kids’ RED NOSE DAY campaigns in New Zealand. His evidence expressed his view, that consumers would not be confused by the registration of the BROWN NOSE DAY mark for fundraising services only in relation to bowel cancer, which he said does not affect children and the New Zealand public would be well equipped to distinguish RED NOSE DAY from BROWN NOSE DAY. Additional evidence was given by a professor of marketing at the University of new South Wales, Australia – who stated BROWN NOSE DAY was “a confronting mark but not any more offensive than a number of other public campaigns and trade marks”.
Evidentiary Issues
Ultimately the evidence of all experts was held to be not particularly helpful, and the Assistant Commissioner did not need to rely on it to reach the conclusion in the decision. The value of the experts in this opposition had limited probative value as ultimately the Assistant Commissioner can and did assess the facts and made their own assessment on the evidence.
Pleadings
The Opponents pleaded the following six grounds:
- Section 17(1)(a) Use of the opposed mark would be likely to deceive or cause confusion.
- Section 17(1)(b) Use of the opposed marks is contrary to New Zealand law because it: would amount to a breach of sections 9 and 13 of the Fair Trading Act 1986; or would constitute passing off.
- Section17(1)(c) Registration would be likely to offend a significant section of the community, including Māori.
- Section 17(2) The opposed mark was applied for in bad faith - this ground was not pursued at the hearing.
- Section 25(1)(b) The opposed mark is similar to the opponents’ registered marks.
- Section 25(1)(c) The opposed mark, or an essential element of it, is identical or similar to the opponents’ well known trade mark and use of the opposed mark by the applicant would be likely to prejudice the opponents’ interests.
Findings
Of the six grounds pleaded the opponent succeed on three although, bad faith was not pursued at hearing. It was held:
- The opposed mark is similar to the opponents’ registered marks THE RED NOSE DAY (No. 192207), RED NOSE DAY (Nos. 825872, 826329), THE RED NOSE DAY (No. 826330), RED NOSE DAY (figurative) (No. 827232), RED NOSE DAY (figurative) (No. 955497) and BLACK NOSE DAY (No. 955500) and its use as a trade mark would be likely to confuse or deceive under s 25(1)(b) of the Act.
- Bearing in mind the opponents’ reputation in their RED NOSE DAY mark, the use of the opposed mark would be likely to confuse or deceive consumers in terms of s 17(1)(a) of the Act.
- The opponents’ RED NOSE DAY mark is well known in New Zealand and use of the opposed mark would be contrary to s 25(1)(c) of the Act.
Commentary
Given the extensive reputation of the opponents' marks RED NOSE DAY, it was likely that it would succeed on the reputational grounds. I do note that the passing off ground did not succeed although, that may have founded on the misrepresentation element of the tort. On the offensive trade mark ground it was held that use of the mark BROWN NOSE DAY in relation to fundraising for a bowel cancer charity would be in poor taste but would probably not meet the high bar contemplated in section 17(1)(c). My own view is that this is a fair finding on the facts. Notwithstanding BROWN NOSE DAY not being found to be offensive, I agree with the findings for the opponents under s 25(1)(c) as at least in New Zealand, the opponents’ interest would be likely to be prejudiced by the potential dilution of the RED NOSE DAY mark in the market for charitable fundraising. Additionally, it is fair finding that although people would consider the BROWN NOSE DAY mark to be in poor taste, there was a not an insignificant risk of tarnishment of the RED NOSE DAY trade mark, by virtue of an assumed association with BROWN NOSE DAY.
There are a number of unofficial observances in New Zealand - the recent Crate Day observed in New Zealand on the first Saturday in December, one suspects might have suffered a similar fate to BROWN NOSE DAY. On this day participants set themselves the challenge to drink a crate of twelve 745 ml bottles of beer between 12pm and midnight. The NATIONAL CRATE DAY trade mark may have been considered potentially offensive, particularly as the day encourages and promotes binge drinking and often leads to a number of disturbances, arrests, offensive behavior and injuries. However, the trade mark NATIONAL CRATE DAY (figurative) in the name of Mediaworks Holding Limited is registered in New Zealand and IPONZ must have reached a similar decision that it is not offensive, even though it is quite possibly in poor taste. This NATIONAL CRATE DAY trade mark was registered in 2017 and is due for renewal in 2026. According to reports Mediaworks and its The Rock radio station has withdrawn support for National Crate Day.
It is likely that BROWN NOSE DAY is dead in the water, at least in New Zealand and given the strong resistance by the opponents I expect that it will not be appealed to the High Court.
