Hamish Fletcher

Hamish Fletcher is a business reporter for the NZ Herald

Pink Batts scrap heads back to court

Photo / APN
Photo / APN

Pink Batts' maker Tasman Insulation has confirmed that both it and rival Knauf Insulation are appealing parts of a High Court judgment about the term "batts" and how it can be used in New Zealand.

Knauf failed to convince a Justice Brendan Brown that the term "batts" is in common use in this country and that the Fletcher Building unit Tasman Insulation's trademark of this word should be revoked.

The judgment followed Pink Batts' maker Tasman suing rival Knauf for trademark infringement for using the word "batt" and "batts" on its Earthwool products and also on the earthwool.co.nz website.

Both sides also claimed the other's marketing had breached the Fair Trading Act and the legal stoush was heard by Justice Brown in the High Court last year.

Tasman owns the trademark "Batts" for insulation materials in this country and has since 1973.

The term "batts" is not covered by trademark protection outside New Zealand and is used in Australia and the USA to generically describe pre-cut pieces of insulation material.

Apparently believing that the words were generic in New Zealand, Knauf began exporting some of its Earthwool products into this country in 2011 with packaging that displaying the words "batt" and "batts" in the installation instructions.

In November 2011 Knauf applied to revoke Tasman's "batts" trade mark and the following month Tasman launched trade mark infringment proceedings.

One of the chief disputes in the case was Knauf's contention that Tasman's trade mark registration was not valid because in New Zealand the word "batts" had also become generic and that it should be revoked.

To succeed, Knauf needed to prove that word "batts" had become a common name in general use by the public in this country but also that this came about by Tasman's acts or omissions.

In his decision, released last month Justice Brown did not believe it had.

Both sides are now appealing various parts of that judgement, Tasman Insulation Queen's Counsel Julian Miles told the Herald this afternoon.

In last month's decision, the judge said evidence before the court "was not of a quantity or a quality to cause [him] to be satisfied that the trade mark has become a common name in general public use for pieces of fibrous insulation".

Even if he was wrong on this point, Justice Brown said the defendants had fallen "significantly short" of establishing that it was the acts and inactivity of Tasman that caused the trademark to become a common name in general use.

On Tasman's claims of trademark infringement for use of the words "batts" and "batt" on installation instructions and packaging of the Earthwool product, Justice Brown said the public would not perceive the way the word was being used as a trademark.

He therefore dismissed this claim, as well as a claim the use of the word "batts" on the earthwool.co.nz website infringed Tasman's trademark.

The judge, however, said use of the word "Batt" in the website's code did infringe the plaintiff's trademark.

It is understood this was at issue in the case because of the website showing up in internet searches for "batts".

In the Fair Trading Act part of the stoush, Tasman claimed Earthwool gave the misleading impression to consumers that Knauf's products are substantially made of natural wool when they are in fact made of recycled glass.

Justice Brown in his decision found that Knauf's use of the Earthwool name and brand was "misleading and deceptive":

"Because there is a real likelihood that a substantial number of people including prospective purchasers will be misled about the composition of the product."

The judge ordered that the defendants were restrained from using the Earthwool name or brand, except where it is printed immediately alongside the words "glasswool" or "glass insulation" in the same font and size.

Justice Brown also made a declaration that some marketing of the Earthwool product on the ecoinsulation.co.nz website and earthwool.co.nz website breached the Fair Trading Act.

Furthermore, Brown said a newspaper advert which Knauf took out also contained a misleading statement and breached the law.

But not everything went Tasman's way.

The judge also found the Pink Batts' maker breached the Fair Trading Act when it ran a demonstration it dubbed the "Titanic test", putting its product and Earthwool in water to show the later sank first.

Knauf said such presentations gave rise to misleading or deceptive distinctions regarding the products' respective qualities.

Justice Brown ordered an inquiry for damages should take place into what Tasman should be paid for the Fair Trading Act breaches and trademark infringment and the same for what Knauf should be paid for Tasman's breach.

- NZ Herald

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