Dutch Brewery’s Appeal On Use Of Trade Mark

Press, Volume CI, Issue 29903, 17 August 1962, Page 12

Dutch Brewery’s Appeal On Use Of Trade Mark

(New Zealand Press Association)

WELLINGTON, August 16.

The use of the word “Steinecker” on a bottle label was “very much a New Zealand effort to get a word of Continental flavour,” counsel for New Zealand Breweries, Ltd., Mr R. G. Collins, said in the Supreme Court, at Wellington, today. ' Heineken’s Bierbrowert Maatschappij, of Amsterdam, manufacturers of Heineken’s lager, appealed against the decision of the Commissioner of Trade Marks permitting registration by New Zealand Breweries of “Steinecker Lager” as a trade mark.

Mr Justice McGregor is on the Bench. Mr E. D. Blundell, with him Mr L. M. Greig, is appearing for the Dutch breweries, and Mr R. G. Collins, with him Mr C. I. Patterson, for New Zealand Breweries. The commissioner had registered “Steinecker’s” under Part B of the Trade Mark Register. New Zealand Breweries is cross-appealing against the refusal of the commissioner to registration of the label as trade mark under Part A, which affords greater protection to the proprietor of a trade mark than a registration under Part B. When New Zealand Breweries’ application for registration of the label was advertised in 1958, it was opposed by Heineken’s, whose label had been registered under Part A since 1955. New Zealand Breweries contended that the label qualified under Part A, and, in particular, that the word “Steinecker” was a word invented by servants of the company, that it had been arrived at by a combination of the German word “stein” (mug) and “ecke” (corner).

The Dutch firm opposed the registration on two main grounds—that the label did not comply with any of the requirements necessary before registration could be

granted under either Part A or B, and that there was a sufficient similarity between the Heineken and the Steinecker label to render it likely that the public would be deceived or confused. The commissioner rejected the submission that “Steinecker” was an invented word, primarily because it was a German surname, and also drew attention to the evidence showing that a German firm with “Steinecker” in its name had supplied brewing equipment to New Zealand Breweries tor several years. The commissioner was of the opinion that there was no reasonable likelihood of the public being deceived or confused as between the two labels.

On behalf of Heineken’s it was submitted that the commissioner had misdirected himself as to the test to be applied in respect of deception and confusion, and that viewing the matter as a whole, including evidence submitted, there was this tendency to deceive or confuse.

For New Zealand Breweries it was submitted that there was no likelihood of deception or confusion, and that the commissioner was correct in holding that the mark qualified for registration and ought to be registered. Mr Collins said no German dictionary gave a derivative meaning of "stein” as “mug” or anything like it. “Stein songs” appeared to be an American college derivative not used in Germany. Mr Patterson submitted that the crucial question was whether a word known to some officers of New Zealand Breweries could be said to have been invented by the company. He could find no direct authority on the question.

“On the face of it, taking ‘invented’ in the sense of ‘newly c-eated,’ then, of course, we did not ‘invent’ the word. But, in my submission, an inventive word for the purposes of this actsection 14 (1) C of the Trade Marks Act—need not be a newly-created word at all,”

said Mr Patterson. “The inventive word for the purposes of this section is a word introduced as a new term in the market place.” It was submitted that “Steinecker” had no meaning at all in 1958 “according to the usages of New Zealanders.” Some people in New Zealand knew the word existed, and some knew it as a surname, but the test was whether the word had a recognised meaning. “In my submission, it had no official sanction, it was merely gibberish in 1958,” said Mr Patterson.

The hearing will continue on Monday