Vodafone NZ chief executive Jason Paris in front of the telco's new "One NZ" branding, which it plans to introduce early this year. Photo / Dean Purcell
Vodafone NZ chief executive Jason Paris in front of the telco's new "One NZ" branding, which it plans to introduce early this year. Photo / Dean Purcell
TVNZ has increased pressure on Vodafone NZ over its pending ‘One’ rebrand, by filing a series of opposition claims with the Intellectual Property Office of NZ (Iponz).
The state broadcaster’s communications GM Rachel Howard told the Herald the trademark opposition claims were filed last week.
The two sides acknowledged talkspre-Christmas but described them as routine and constructive. Now, TVNZ has taken things up a notch. It has formalised the stoush by filing opposition against seven Vodafone NZ applications to trademark One.NZ logos - although the broadcaster frames the move simply as a mechanism to ensure talks continued after a three-month challenge period (which began in early October) expired.
Under Iponz’s process, Vodafone now has up to two months to file a counter-claim, or withdraw its trade mark application.
“TVNZ 1 and 1 News are reputable, valuable and iconic local brands and we’re keen to protect them. Given these discussions are ongoing, we are simply exercising our rights until the parties reach a position they are comfortable with. We continue to partner with Vodafone commercially and on a range of projects,” Howard told the Herald.
Vodafone NZ chief executive Jason Paris in front of the telco's new "One NZ" branding, which it plans to introduce early this year. Photo / Dean Purcell
Vodafone NZ has said it will relaunch as One NZ in “early 2023″ (the rebrand follows the second anniversary of Vodafone selling its New Zealand business to a joint venture between NZX-listed Infratil and Canada’s Brookfield Asset Management).
Howard said that from TVNZ’s standpoint, “We do not have a deadline to finish by. TVNZ and Vodafone will restart discussions on the One NZ trademark application in the coming weeks when those involved are back from their respective summer breaks.
“We’ve received trademarks for the One NZ name and will complete our rebrand early this year,” Vodafone spokesman Conor Roberts said.
Vodafone has applied for more than 70 trade marks related to One NZ and One New Zealand and associated terms. 16 are under examination, and seven have been opposed by TVNZ, but the balance have been accepted. Roberts said with key trademarks secured, the TVNZ challenge would not delay the launch.
The name and logo that TVNZ used for its 6pm news until 2016. Image / NZ On Screen
“We’re now going through various processes for other elements associated with the brand, which has included constructively working through technicalities with TVNZ.
“This included an extension to the opposition period. However, given that extension cannot be renewed and discussions having paused for the holiday break, we expected TVNZ to lodge these objections. The remaining issues are minor and procedural and relate to various uses of the brand - rather than whether it can be used at all - and as such we believe they can be resolved.”
Howard said, “We have not filed an opposition previously”. Under Iponz rules, a three-month deadline to challenge Vodafone NZ’s trademarks was expiring. By filing an opposition, TVNZ ensured that discussions would continue. Also, “If we had not filed an opposition by the deadline, that option would not remain down the track if required.”
TVNZ's news branding today.
Roberts added, “The rationale for our brand change remains unchanged. Three years ago, we separated from the global Vodafone group to focus 100 per cent on New Zealand. The transformation to One New Zealand means we can invest more into the things our customers value and more into our business needs including increased network coverage, more innovative technology solutions, and better customer service.”
Gus Hazel, a partner with intellectual property specialists James & Wells, said it was likely TVNZ and Vodafone would want to resolve their differences through Iponz’'s process rather than escalating their fight to the courts, which could be a long and costly process.
Hazel said while Vodafone could push ahead with its One rebrand with the dispute ongoing, the telco would be unlikely to want to take the risk of its move being derailed by a successful legal challenge down the track.
He saw it as probable that TVNZ and Vodafone would hammer out a deal on how each could use “One” and in what contexts.
Vodafone earlier told the Herald that it did not give TVNZ a heads-up before its “One” brand was revealed in September, but that a “courtesy call” was made on the day.
There are lots of reckons about "One". Personally, I'll keep my powder dry and see how it goes - mindful that everyone rubbished Telecom's shift to Spark - only for it to prove a very successful rebrand after the knee-jerk reactions faded.
Vodafone NZ successfully trademarked the words One New Zealand, One NZ and various related terms, last year, staying under the radar by using fully-owned subsidiary Baycity Communications (the operator of the Farmside rural broadband service it bought in 2017).
TVNZ’s opposition filings relate to “picture” trademarks, or logos and marketing images.
But of course, these are all the reasons that TVNZ is rather fond of "One" too.
Auckland University marketing expert Bodo Lang predicted possible trouble back in September when Vodafone first revealed its “One” plans.
“I think TVNZ won’t be pleased about this. That’s potentially an issue because it’s got TVNZ 1. It’s not a great differentiation.” Lang said.
Vodafone also copped flak from the social media mob for everything from what some saw as racist connotations to co-opting Kiwibank’s colours to adopting a name that some claimed would be impossible to Google - a fear that seems unfounded today, with Vodafone’s One.NZ site topping results when the Herald ran a search, followed by 1News.
