Trade marks: ABN AMRO granted injunction

The ABN case provides an interesting insight into the meaning of "identical sign" when assessing trade mark infringement. It also covers a number of procedural issues that are important to consider when ex parte injunctive relief is to be sought.

In the case of ABN Amro Holdings NZ v ABN Treasury Management Limited, an application was made by ABN Union Treasury Management Limited and ABN Union Building Society (the ABN Union entities) to rescind an ex parte injunction granted to ABN Amro Holdings NV and ABN Amro New Zealand Limited (the ABN Amro entities).

ABN Ambro Holdings NV is the registered proprietor in New Zealand of the trade marks ABN AMRO and ABN in relation to a wide range of financial services and ABN Amro New Zealand Limited is a licensee of those trade marks in New Zealand.

The ABN Amro entities had obtained an ex parte injunction restraining the ABN Union entities from using the ABN trade mark or any similar mark in New Zealand in any form, on or in relation to banking, financial or commercial services or any of the other services for which ABN is registered and on or in relation to similar goods or services.

The ABN Union entities sought to rescind the ex parte injunction on three grounds:

• the disclosure made on the ex parte application was inadequate;



• there was no seriously arguable case of trade mark infringement; and



• the balance of convenience favoured the ABN Union entities because the ABN Amro entities would not suffer significant loss if the ABN Union entities continued their operation.

Justice Heath found on the disclosure issue that adequate disclosure had been made. He did comment however that it is preferred practice to follow the Pickwick procedure especially in a case such as this where the solicitors for the ABN Amro entities were aware that a solicitor had been instructed by the ABN Union entities.

In the Pickwick procedure, the solicitors for the plaintiffs in an ex parte injunction application serve the solicitors for the defendants with the documents that relate to the application just prior to the application being heard.

However, he did not make a serious criticism as Justice Priestley had not required the Pickwick procedure to be followed when hearing the initial injunction application.

The case is interesting due to the second ground advanced by the ABN Union entities for the rescindment of the ex parte injunction - that is, the issue of whether there was a seriously arguable case of trade mark infringement.

Justice Heath adopted the well-known test set out in the Klissers case (Klissers Farmhouse Bakeries Limited v Harvest Bakeries Limited [1985] 2 NZLR 129 (CA)). He reached the conclusion that there was a serious issue to be tried - whether or not the ABN Union entities were infringing the ABN trade mark in New Zealand.

An interesting argument advanced on this issue was identifying what the "sign" was in this case. The ABN Union entities' solicitors argued that the "signs" used by the ABN Union entities were different to the ABN trade mark per se and that there was no arguable case that the ABN Union entities were using an identical sign and therefore that there was no arguable case of trade mark infringement.

In support of this argument, the solicitors for the ABN Union entities relied on several English cases which in turn relied upon European jurisprudence.

In particular, one decision - Reed Executive Plc v Reed Business Information Limited [2004] RPC 41 - was relied on. In that case, it had been held that "Reed Business Information" was not identical to the registered trade mark REED.

However, in this case, Justice Heath declined to follow that approach and followed the New Zealand Court of Appeal's approach in Anheuser-Busch Inc. v Budweiser Budvar National Corporation [2003] NZLR 472 (CA), where the Court took the view that use of BUDWEISER BUDVAR was use of the registered trade mark BUDWEISER and the additional features used with it did not obscure that identity.

On this basis, Justice Heath concluded that use by the ABN Union entities of the initials ABN would tend to lead a participant in the New Zealand financial markets to draw an immediate link with the ABN Amro entities so that there was a seriously arguable case that the ABN Union entities were infringing the ABN trade mark in New Zealand.

On the issue of the balance of convenience, Justice Heath again decided in favour of the ABN Amro entities on the basis that the ABN Union entities had no prior business connection in New Zealand and that the administrative arrangements for the secretariat of the ABN Union entities in New Zealand was put into place in a muddled fashion which may be detrimental to ABN Amro's goodwill if an association was drawn with the ABN Amro entities.

He also found scant evidence that the ABN Union entities would suffer loss due to the injunction being issued but that the potential damage to ABN Amro was significant.

Although ABN Union sought by way of counterclaim to set aside the registration of the ABN trade mark, Heath J noted that a trade mark search was conducted by the ABN Union entities before forming the ABN Union companies and therefore they had chosen to enter the market with knowledge of the potential problems arising from the use of the initials ABN.

He was not persuaded by an argument that ABN was potentially unregistrable as a trade mark on the basis that the letters were used to abbreviate "Australian Business Number".

Accordingly, the ABN Union entities were not successful in rescinding the ex parte injunction.

The case serves as a reminder to counsel acting in ex parte injunction applications of the need for thorough disclosure of all relevant material to the Court, and of the desirability, especially where it is known that the defendant has legal counsel, of adopting the Pickwick procedure to enable the defendant an opportunity, albeit a limited one, to be heard.

Ignoring these issues will simply provide an avenue for challenge by the defendant in the event of the granting of the injunction.

From a trade mark law perspective, the case supports earlier New Zealand jurisprudence that the addition of descriptive or other non-distinctive matter to a trade mark does not obscure the identity of a sign.

The case is also a reminder that the Courts will not view sympathetically an application made by a party which does not come to the court with clean hands - the ABN Union entities had proceeded in full knowledge of the existing ABN trade mark registration.

Enquiries and information

For more information on trade mark related matters, please email or call Colleen Cavanagh on 64 4 915 8646.